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DEPARTMENT OF COMMERCE

Patent and Trademark Office

CFR Citation: 37 CFR Parts 2, 3, 6 and 7

Docket ID: [Docket No. PTO-T-2005-0018]

RIN ID: RIN 0651-AB89

NOTICE: PROPOSED RULES

SUBJECT CATEGORY: Miscellaneous Changes to Trademark Rules of Practice

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

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

SUMMARY: Miscellaneous Changes to Trademark Rules of Practice,

SUPPLEMENTAL INFORMATION

References below to ``the Act,'' ``the Trademark Act,'' or ``the statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as amended. References to ``TMEP'' or ``Trademark Manual of Examining Procedure'' refer to the 5th edition, September 2007. References to the Trademark Trial and Appeal Board Manual of Procedure refer to the 2nd edition, Rev. 1, March 12, 2004.

Where appropriate, the Office proposes to reword or reorganize the rules for clarity, and to add headings to make it easier to navigate through the rules.

Applications for Registration

The Office proposes to amend Sec. 2.21(a) to require that an application must be in the English language to receive a filing date.

The Office proposes to amend Sec. 2.23(a)(2), which requires that a TEAS Plus applicant continue to receive communications from the Office by electronic mail during the pendency of the application, to add a requirement that a TEAS Plus applicant maintain a valid email correspondence address in order to maintain TEAS Plus status. If the e mail address changes, the applicant must notify the Office of the new email address. If applicant chooses to receive correspondence on paper, applicant will have to pay the processing fee required by Sec. Sec. 2.6(a)(1)(iv) and 2.23(b).

The Office proposes to amend Sec. 2.32(a)(3)(iii) to indicate that the requirement for inclusion of the names and citizenship of the general partners in an application by a partnership applies only to domestic partnerships. Because the Office does not track the varying legal effects of partnership status in foreign countries, and the relevance of this additional information has not been established, this requirement does not apply to foreign partnerships. This is consistent with TMEP section 803.03(b).

The Office proposes to add new Sec. 2.32(a)(3)(iv) to provide that if the applicant is a domestic joint venture, the application must include the names and citizenship of all active members of the joint venture. This is consistent with TMEP section 803.03(b).

The Office proposes to amend Sec. Sec. 2.32(a)(7) and (a)(8) to change periods to semicolons.

The Office proposes to add new Sec. 2.32(a)(9), providing that if a mark includes nonEnglish wording, the applicant must submit an English translation of that wording; and new Sec. 2.32(a)(10), providing that if the mark includes nonLatin characters, the applicant must submit a transliteration of those characters and either a translation of the corresponding nonEnglish word(s) or a statement that the transliterated term has no meaning in English. This is consistent with the longstanding practice of the Office. TMEP sections 809 et seq.

The Office proposes to amend Sec. 2.33(b)(1) to remove the requirement that an application include a verified statement that the applicant ``has adopted'' the mark. This language is not required by statute and is deemed unnecessary.

The Office proposes to amend Sec. Sec. 2.34(a)(1)(i), (a)(2), (a)(3)(i), and (a)(4)(ii) to change ``must allege'' to ``must also allege.'' This makes it clear that the requirement for an allegation of current use or bona fide intention to use the mark in commerce, applies to verifications filed after the application filing date.

The Office proposes to add new Sec. 2.34(a)(1)(v) to provide that if more than one item of goods or services is specified in a section 1(a) application, the dates of use need be for only one of the items specified in each class, provided that the particular item to which the dates apply is designated. This requirement for section 1(a) applications previously appeared in Sec. 2.33(a)(2), but was inadvertently removed effective October 30, 1999, by the final rule published at 64 FR 48900 (Sept. 8, 1999). This requirement is consistent with the requirements for allegations of use under Sec. Sec. 2.76(c) and 2.88(c).

The Office proposes to amend Sec. Sec. 2.44(b) and 2.45(b), which pertain to collective and certification marks, to add a reference to section 66(a) applications. This corrects an oversight.

The Office proposes to amend Sec. 2.47(a) to remove the requirement for a specific allegation that a mark has been in ``lawful'' use in commerce in an application for registration on the Supplemental Register. Because the definition of ``commerce'' in section 45 of the Trademark Act is ``all commerce which may lawfully be regulated by Congress,'' the Office presumes that an applicant who alleges that ``the mark is in use in commerce,'' is claiming lawful use. The Office generally questions the lawfulness of the alleged use in commerce only where the record shows a clear violation of law, such as the sale or transportation of a controlled substance. TMEP section 907.

The Office proposes to add new Sec. 2.48 to provide that the Office does not issue duplicate registrations. If two applications on the same register would result in registrations that are exact duplicates, the Office will permit only one application to mature into registration, and will refuse registration in the other application. This codifies the longstanding practice of the Office. TMEP section 703. The Office will normally refuse registration in the laterfiled application. The applicant may overcome the refusal by abandoning the earlierfiled application or surrendering the registration.

The Office proposes to amend Sec. 2.52(b) to provide that special form drawings of marks that do not include color ``should'' show the mark in black on a white background, rather than that the drawing ``must'' show the mark in black on a white background. This gives examining attorneys discretion to accept a drawing that shows the mark in white on a black background, if this will more accurately depict the mark.

The Office proposes to amend Sec. 2.52(b)(1) to change the heading ``Color marks'' to ``Marks that include color.'' This corrects an error. Color marks are marks that consist solely of one or more colors used on particular objects, and Sec. 2.52(b)(1) applies to all marks that include color.

The Office proposes to amend Sec. 2.53(a) to remove the reference to submission of a digitized image of a standard character mark as a drawing in an application filed via the Trademark Electronic Application System (``TEAS''). This is no longer an option. An applicant who wants to apply for a standard character mark through TEAS must enter the mark in the appropriate field on the TEAS form, and check the box to claim that the mark consists of standard characters. TEAS generates the drawing. The Office also proposes to combine Sec. Sec. 2.53(a)(1) and (2), because the requirements for standard character drawings in TEAS and TEAS Plus applications are now the same.

The Office proposes to amend Sec. 2.56(b)(1) to add a reference to ``displays associated with the goods.'' This makes the rule consistent with the definition of ``use in commerce'' in section 45 of the Act.

The Office proposes to amend Sec. 2.56(d)(2) to add a provision that
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where an applicant files a paper specimen that exceeds the size requirements of paragraph (d)(1), and the Office creates a digital facsimile copy of the specimen, the Office will destroy the original bulky specimen. This is consistent with current practice. TMEP section 904.02(b).

The Office proposes to amend Sec. 2.56(d)(4) to provide that specimens filed through TEAS may be in .pdf format. This provides TEAS filers with an additional option for filing specimens, and is consistent with current practice.

The Office proposes to amend Sec. 2.62 and its heading to add a requirement that a response to an Office action be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of Sec. 10.14 (``qualified practitioner''). This is consistent with TMEP section 712.01.

The Office proposes to amend Sec. 2.64(c)(1) to state that the filing of an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action, appeal to the Trademark Trial and Appeal Board, or petition to the Director. This is consistent with current practice. TMEP section 1104.

The Office proposes to amend Sec. 2.65(a) to add a reference to a notice of appeal as a response that avoids abandonment of an application. This is consistent with section 12(b) of the Act.

The Office proposes to revise Sec. 2.73 to provide that only an application that includes section 1(a) of the Trademark Act as a filing basis, or for which an acceptable allegation of use under Sec. 2.76 or Sec. 2.88 has been filed, may be amended to seek concurrent use registration. The rule currently provides that applications under section 44 or section 66(a) of the Act may be amended to recite concurrent use. However, because section 2(d) of the Act requires concurrent lawful use in commerce by the parties to a concurrent use proceeding, the Office deems it inappropriate to allow amendment to seek concurrent use absent allegations and evidence of use in commerce. The Office also proposes to add a statement to Sec. 2.99(g) that applications based solely on section 44 or section 66(a) are not subject to concurrent use registration proceedings.

The Office proposes to revise Sec. 2.74 to modernize the language, and to add a provision that an amendment to an application must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. This is consistent with TMEP section 605.02.

Intent To Use

The Office proposes to amend Sec. 2.76(d) to provide that an amendment to allege use (``AAU'') should be captioned ``Allegation of Use'' rather than ``amendment to allege use.'' This is consistent with the language on the Office's TEAS form. The term ``allegation of use'' encompasses both AAUs under Sec. 2.76 and statements of use (``SOUs'') under Sec. 2.88. The principal difference between AAUs and SOUs is the time of filing, and the same TEAS form is used for both filings. The proposed rule merely sets forth the preferred title. The Office will still accept documents titled ``amendment to allege use'' or ``statement of use.''

The Office proposes to amend Sec. 2.77 to add a provision that amendments deleting a basis in a multiplebasis application, notices of change of attorney, and notices of change of address can be entered in a section 1(b) application during the period between the issuance of the notice of allowance and the submission of a statement of use. This is consistent with current practice. TMEP section 1107.

The Office proposes to amend Sec. 2.88(b)(1)(ii) to make it clearer that the dates of use specified in a statement of use must pertain to the goods or services identified in the notice of allowance.

The Office proposes to amend Sec. 2.88(b)(3) to provide that the applicant must pay a filing fee sufficient to cover at least one class within the statutory time for filing the statement of use, or the application will be abandoned. If the applicant submits a fee insufficient to cover all the classes in a multipleclass application, the applicant must specify the classes to be abandoned. If the applicant submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining classes, or specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid to the lowest numbered class(es) in ascending order, and will delete the goods/services in the higher class(es) from the application. This is consistent with current practice.

The Office proposes to amend Sec. 2.88(d) to provide that an SOU should be captioned ``Allegation of Use'' rather than ``statement of use.'' This is consistent with the proposed amendment to Sec. 2.76(d), discussed above.

The Office proposes to amend Sec. 2.88(i)(2) to remove the provision that if any goods or services specified in the notice of allowance are omitted from the identification of goods or services in the SOU, the examining attorney will inquire about the discrepancy and permit the applicant to reinsert the omitted goods/services, and substitute a provision that the Office will delete the omitted goods/ services from the application and will not permit the applicant to reinsert them. Currently, if goods/services identified in the application are omitted from a paper SOU, but the applicant has not indicated an intention to delete those goods/services from the application or filed a request to divide the application, the examining attorney will contact the applicant to confirm that the applicant intends to delete the omitted goods/services, and will permit the applicant to amend the SOU to claim use on or in connection with the omitted goods/services. However, when an SOU is filed electronically, the TEAS form requires the applicant to expressly indicate an intention to delete a class, or to delete goods/services within a class. Therefore, if any of the goods/services identified in the application do not appear in the identification of goods/services in a TEAS SOU, the examining attorney does not inquire about the discrepancy and the applicant may not reinsert the omitted goods/services. TMEP section 1109.13. There have been cases in which these inquiries concerning paper SOUs caused unnecessary delay in applications after the applicant intentionally omitted goods/services. Therefore, the Office is changing its practice with paper SOUs, and will discontinue issuing inquiries about omitted goods/services. Under the proposed rule, the practice with paper SOUs would be consistent with the current practice for electronically filed SOUs. Applicants are responsible for setting forth (or incorporating by reference) the goods/services on or in connection with which the mark is in use. This is consistent with the Office's longstanding practice with respect to requests for extensions of time to file a statement of use, set forth in Sec. 2.89(f).

The Office proposes to revise Sec. Sec. 2.89(a)(2) and (b)(2) to add a provision that if an applicant timely submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not
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specified the class(es) to which the fee applies, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining classes, or specify the class(es) to be abandoned. If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid to the lowest numbered class(es) in ascending order, and will delete the goods/services in the higher class(es) from the application. This is consistent with current practice. TMEP section 1108.02(c).

Amendments to Classification

The Office proposes to amend Sec. 2.85(a) to add a reference to amendments to adopt international classification.

The Office proposes to combine Sec. Sec. 2.85(b) and (c), pertaining to the United States classification, and to add a reference to amendments to adopt international classification.

The Office proposes to redesignate Sec. 2.85(f), pertaining to certification marks and collective membership marks, as Sec. 2.85(c), and to add a statement that the classes set forth in Sec. Sec. 6.3 and 6.4 do not apply to applications based on section 66(a) of the Trademark Act and registered extensions of protection. This is consistent with current practice. TMEP section 1904.02(b). Classes A, B, & 200 are classes from the old United States classification system that are still used in the United States to classify certification and collective membership marks, but are not included in the international classes under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (``Nice Agreement''). Therefore, they do not apply to section 66(a) applications and registered extensions of protection, in which classification is determined by the International Bureau of the World Intellectual Property Organization (``IB''). The Office proposes to make conforming amendments to Sec. Sec. 6.3 and 6.4, indicating that these sections apply only to applications based on sections 1 and 44 of the Trademark Act and registrations resulting from such applications.

The Office proposes to redesignate Sec. 2.85(d), which now provides that renewals filed on registrations issued under a prior classification system will be processed on the basis of that system, as Sec. 2.183(f), and amend it to add an exception for registrations that have been amended to adopt international classification pursuant to Sec. 2.85(e)(3).

Proposed Sec. 2.85(d) provides that in an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification assigned by the IB; classes cannot be added; and goods or services cannot be transferred from one class to another in a multipleclass application. This is consistent with current practice. TMEP sections 1401.03(d) and 1904.02(b). Under Article 3(2) of the Madrid Protocol, the IB controls classification. A section 66(a) application and any resulting registration remains part of the international registration, and a change of classification in the United States would have no effect on the international registration.

The Office proposes to remove Sec. 2.85(e), which now pertains to appeal and renewal fee deficiencies in multipleclass applications and registrations, and move the provisions on appeal fees to Sec. 2.141(b). Procedures for processing renewal fee deficiencies in multipleclass registrations are already covered in Sec. 2.183(e).

Proposed Sec. 2.85(e) provides for changes in classification pursuant to the Nice Agreement. The international classification changes periodically, and these changes are listed in the International Classification of Goods and Services for the Purposes of the Registration of Marks, which is published by the World Intellectual Property Organization. The Nice Agreement edition currently in effect is the 9th edition, 2006, which became effective January 1, 2007.

Proposed Sec. 2.85(e)(1) provides that when international classification changes, the new requirements apply only to applications filed on or after the effective date of the change.

Proposed Sec. 2.85(e)(2) provides that in section 1 and 44 applications filed before the effective date of a change in classification, and registrations resulting from such applications, the applicant or registrant may reclassify the goods or services in accordance with the current edition, upon payment of the required fees. Proposed Sec. 2.85(e)(3) sets forth the requirements for amendment of a pending application, and proposed Sec. 2.85(e)(4) sets forth the requirements for amendment of a registration to reclassify the goods or services in accordance with the current edition of the Nice Agreement. This is consistent with current practice, set forth in TMEP sections 1401.11 and 1609.04.

The Office proposes to redesignate Sec. 2.85(g), which provides that classification schedules shall not limit or extend the applicant's rights, as Sec. 2.85(f), and amend it to note an exception that in section 66(a) applications, the scope of the identification of goods or services for purposes of permissible amendments is limited by the class, because the classification assigned by the IB cannot be changed. This is consistent with TMEP section 1402.07(a).

Requests To Divide

The Office proposes to break the current Sec. 2.87(c) into subsections 2.87(c)(1) and (c)(2).

The Office proposes to add new Sec. 2.87(c)(3) to provide that an applicant may file a request to divide out one or more bases of a multiplebasis application during the period between the issuance of the notice of allowance under section 13(b)(2) of the Act and the filing of a statement of use under Sec. 2.88. This is consistent with current practice.

The Office proposes to add Sec. 2.87(e) to provide that any outstanding time period for action by the applicant in the original application at the time of the division will be applicable to each new separate application created by the division. This provision appeared in Sec. 2.87(a) when the rule was first enacted in 1989, but was inadvertently removed when the rules were amended to adjust application filing fees on January 19, 2005. See notices at 54 FR 37562 (Sept. 11, 1989) and 70 FR 2952 (Jan. 19, 2005). The Office proposes to add certain specified exceptions, consistent with current practice, as set forth in TMEP sections 1110.04 and 1110.05.

The Office proposes to add new Sec. 2.87(f) to add a requirement that a request to divide be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. This is consistent with TMEP section 1110.

The Office proposes to add new Sec. 2.87(g), setting forth the procedures for division of a section 66(a) application after a change in ownership with respect to some, but not all, of the goods or services. This incorporates existing practice, set forth in TMEP section 1110.08.

The Office proposes to add Sec. 2.171(b)(2), providing for division of registered extensions of protection upon notification by the IB that ownership of an international registration has changed with respect to some, but not all, of the goods or services. This reflects current practice. TMEP section 1615.02.

Post Registration

The Office proposes to amend Sec. 2.153 to remove the requirement for specification of the type of commerce in
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an affidavit claiming the benefits of section 12(c) of the Trademark Act of 1946 for a registration issued under the Trademark Acts of 1881 or 1905. Because the definition of ``commerce'' in section 45 of the Act is ``all commerce which may lawfully be regulated by Congress,'' the Office presumes that a registrant who alleges that the mark is in use in commerce is alleging that the mark is in use in a type of commerce that Congress can regulate. The Office amended the Trademark Rules of Practice to remove the requirement for a specification of the type of commerce in applications for registration under section 1(a) of the Act, allegations of use in applications under section 1(b) of the Act, and affidavits under sections 8 and 15 of the Act, effective October 30, 1999 (see notice at 64 FR 48900 (Sept. 8, 1999)), but inadvertently overlooked Sec. 2.153.

The Office proposes to amend the center heading immediately after Sec. 2.158 to delete the wording ``DURING SIXTH YEAR.'' This corrects an oversight. The heading covers rules pertaining to affidavits or declarations under section 8 of the Act (``section 8 affidavits''). Effective October 30, 1999, such affidavits must be filed every tenth year after registration as well as during the sixth year.

The Office proposes to amend Sec. 2.161(g)(3) to provide that specimens filed through TEAS may be in .pdf format. This provides TEAS filers with an additional option for filing specimens, and is consistent with current practice.

The Office proposes to amend Sec. 2.163(b) to provide that a registration will be cancelled for failure to respond to an Office action issued in connection with a section 8 affidavit only if there is no time remaining in the grace period under section 8(c)(1) of the Act. This corrects an oversight in the current rule. It would be inappropriate to cancel a registration under section 8 before expiration of the grace period. If there is time remaining in the grace period, the owner may file a complete new affidavit.

The Office proposes to amend Sec. 2.167 to provide that an affidavit or declaration of incontestability under section 15 of the Trademark Act must be filed in the name of the owner of the registration, and verified by the owner or a person properly authorized to sign on behalf of the owner (Sec. 2.161(b)). This is consistent with TMEP section 1605.04.

The Office proposes to amend Sec. 2.171(a) to remove the requirement that a request for a new certificate of registration upon change of ownership include the original certificate of registration. This is consistent with current practice, and with Office practice in connection with requests to amend or correct registrations under section 7 of the Trademark Act. See notice at 69 FR 51362 (Aug. 29, 2004), removing the requirement that the original certificate be included with a section 7 request.

The Office further proposes to add a statement to Sec. 2.171(a) that in a registered extension of protection, the assignment must be recorded with the IB before it can be recorded in the Office. This is consistent with current Sec. 7.22.

The Office proposes to redesignate Sec. 2.171(b) as (b)(1), and amend it to indicate that it applies only to registrations resulting from applications based on section 1 or 44 of the Act.

The Office proposes to add Sec. 2.171(b)(2), providing for division of registered extensions of protection upon notification by the IB that ownership of an international registration has changed with respect to some, but not all, of the goods or services. This reflects current practice. TMEP section 1615.02.

The Office proposes to reorganize Sec. 2.173, pertaining to amendment of registrations. The current paragraph (a) is broken into proposed paragraphs (a) through (d).

Proposed Sec. 2.173(a) provides that the owner of a registration may file a written request to amend a registration or to disclaim part of the mark in the registration; and that if the registration is involved in an inter partes proceeding before the Trademark Trial and Appeal Board (``TTAB''), the request must be filed by appropriate motion to the Board. This is consistent with the current Sec. 2.173(a) and TMEP section 1609.01(b).

The current paragraph (b) is broken into proposed paragraphs (e) and (g).

Proposed Sec. 2.173(b) sets forth the requirements for the request for amendment.

Proposed Sec. 2.173(b)(2) requires that the request be filed by the owner and signed by the owner, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. The requirement for filing in the name of the owner is consistent with current practice. However, the requirement for signature by someone with legal authority to bind the owner or by a qualified practitioner changes current practice slightly. TMEP section 1609.01(b) now permits signature by a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner, which could include someone without legal authority to bind the owner. The Office believes that the better practice would be to require that a request to amend a registration be signed by someone with legal authority to bind the owner or by a qualified practitioner.

Proposed Sec. 2.173(b)(3) provides that an amendment to change the mark include: A specimen showing the mark as used on or in connection with the goods or services; an affidavit or a declaration under Sec. 2.20 stating that the specimen was in use in commerce at least as early as the filing date of the amendment; and a new drawing of the amended mark. This is consistent with current Sec. 2.173(a) and TMEP section 1609.02(c).

Proposed Sec. 2.173(c) provides that the registration must still contain registrable matter, and proposed Sec. 2.173(d) provides that the amendment may not materially alter the mark. This is consistent with current Sec. 2.173(a).

Proposed Sec. 2.173(e) provides that no amendment to the identification of goods or services in a registration will be permitted, except to restrict the identification or change it in ways that would not require republication of the mark. This is consistent with current Sec. 2.173(b).

The Office proposes to add new Sec. 2.173(f) to provide that if the registration includes a disclaimer, description of the mark, or miscellaneous statement, any amendment must include a request to make any necessary conforming amendments to the disclaimer, description, or other miscellaneous statements. For example, if the mark is XYZ INC., with a disclaimer of the entity designator ``INC.,'' and the owner of the registration proposes to amend the mark to remove ``INC.,'' the proposed amendment should also request that the disclaimer be deleted. If an amendment is filed that does not include all necessary conforming amendments, the examiner will issue an Office action requiring the amendments.

Proposed Sec. 2.173(g) provides that an amendment seeking the elimination of a disclaimer will not be permitted, unless deletion of the disclaimed portion of the mark is also sought. The proposed rule provides an exception to the general prohibition against amendments to delete disclaimers, currently set forth in Sec. 2.173(b), in the limited situation where the mark is amended to delete the disclaimer.

The Office proposes to amend Sec. 2.175(b)(2) to require that a request to correct the owner's error in a registration be filed by the owner and signed by the owner, someone with
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legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. This is consistent with proposed Sec. 2.173(b)(2), discussed above.

The Office proposes to redesignate Sec. 2.184(b) as Sec. 2.184(b)(1), and amend it to provide that a registration will expire for failure to respond to an Office action issued in connection with a renewal application only if there is no time remaining in the grace period under section 9(a) of the Act. This corrects an oversight in the current rule. It would be inappropriate to cancel a registration for failure to renew prior to expiration of the renewal grace period. If there is time remaining in the grace period, the registrant may file a complete new renewal application.

The Office proposes to add new Sec. 2.183(f) to provide that applications for renewal of registrations issued under a prior classification system will be processed on the basis of that system, except where the registration has been amended to adopt international classification. The provision that applications for renewal of registrations issued under a prior classification system are processed on the basis of that system is currently set forth in Sec. 2.85(d). The reference to amendment of classification is consistent with proposed Sec. 2.85(e)(3), discussed above.

The Office proposes to add Sec. 2.184(b)(2), requiring that a response to an Office action issued in connection with a renewal application be signed by the registrant, someone with legal authority to bind the registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. This is consistent with TMEP section 1606.12.

Madrid Protocol

The Office proposes to amend Sec. 7.11(a)(2) to provide that the applicant's entity in an application for international registration must be identical to the entity listed as owner of the basic application or registration. This is consistent with current practice. TMEP section 1902.02(c). Under section 61(a) of the Trademark Act, only the owner of the basic application or registration can file an international application.

The Office proposes to amend the last sentence of Sec. 7.14(e) to change ``submitted to'' to ``received in,'' for clarity.

The Office proposes to amend Sec. 7.25(a) to remove Sec. Sec. 2.175 and 2.197 from the list of rules in part 2 that do not apply to an extension of protection of an international registration to the United States. Section 2.175 pertains to correction of mistakes by a registrant. Generally, all requests to record changes to an international registration must be filed at the IB, because an extension of protection of an international registration remains part of the international registration even after registration in the United States. However, in the limited circumstance where the holder of an international registration makes a mistake in a document filed during prosecution in the Office that affects only the extension of protection to the United States, the registrant may request correction of the error pursuant to Sec. 2.175. For example, if there were a minor typographical error in an amendment to the identification of goods in a section 66(a) application, and the mark registered, the owner of the registration could request correction under Sec. 2.175. If the Office grants the request, the Office will notify the IB of the change to the extension of protection to the United States.

Section Sec. 2.197 provides a ``certificate of mailing or transmission'' procedure to avoid lateness due to mail delay. This procedure may currently be used by section 66(a) applicants during prosecution of applications. The procedure may also be available to owners of registered extensions of protection who file affidavits of use or excusable nonuse under section 71 of the Trademark Act. Therefore, its inclusion in Sec. 7.25(a) was an error. Under Sec. Sec. 2.197(a)(2)(ii) and 7.4(e), the certificate of mailing or transmission procedure remains inapplicable to international applications under Sec. 7.11, responses to notices of irregularity under Sec. 7.14, subsequent designations under Sec. 7.21, requests to record changes of ownership under Sec. 7.23, requests to record restrictions of the holder's right of disposal (or the release of such restrictions) under Sec. 7.24, and requests for transformation under Sec. 7.31. Note: On February 29, 2008, the Office published a notice of proposed rulemaking that would prohibit the use of certificates of mailing or transmission for certain specified documents for which an electronic form is available in the Trademark Electronic Application System (``TEAS''). See notice at 73 FR 11079. The Office is currently reviewing the comments received in response to this proposal. Assignment Cover Sheet

The Office proposes to amend Sec. 3.31 to add a new paragraph (a)(8), requiring that a cover sheet submitted with a request to record a change of ownership of a trademark application or registration must include the citizenship of the party receiving the interest; and that if the party receiving the interest is a domestic partnership or domestic joint venture, the cover sheet must include the names, legal entities, and national citizenship (or state or country of organization) of all general partners or active members that compose the partnership or joint venture. Currently, Sec. 3.31(f) provides that the cover sheet ``should'' include this information, but the Office proposes to make it mandatory. This will allow for more efficient processing of trademark applications and registrations.

The applicant's entity and citizenship is required in an application for registration under Sec. 2.32(a)(3)(iii) and must be submitted before the Office can issue a registration certificate in the name of the new owner. It is also required when the new owner of a registration wants to change ownership in the trademark database and/or obtain a new certificate of registration in the name of the new owner. Requiring the information whenever a change of ownership is recorded will eliminate the need for the examining attorney or the Post Registration examiner to issue an Office action requiring that it be submitted, which can cause substantial delay. Furthermore, in many cases, having complete information about the receiving party will ensure that the trademark database is automatically updated at the time of recordation or shortly thereafter. See TMEP sections 504 et seq. regarding automatic updating of the trademark database upon recordation of a change of ownership. This will often ensure that the original certificate of registration issues in the name of the new owner. References to ``Paper''

The Office proposes to amend Sec. Sec. 2.6(b)(6), 2.21(b), 2.21(c), 2.27(d), 2.87(d), 2.146(e)(1), 2.146(e)(2), and 2.146(i) to delete references to ``papers'' and substitute ``documents'' where appropriate, in order to encompass documents filed or issued electronically.

The Office proposes to amend Sec. Sec. 2.6(a)(19), 2.6(b)(3), and 2.56(d)(2) to delete references to ``file wrapper'' and substitute ``record'' or ``official record.'' The Office now maintains electronic records of applications and registrations.

The Office proposes to amend Sec. Sec. 2.62, 2.65(a), 2.66(a)(1), 2.66(d), 2.66(f)(1), 2.81(b), 2.89(a), 2.89(a)(3), 2.89(g), 2.93, 2.99(d)(2), 2.146(d), 2.146(e)(1), 2.146(e)(2), 2.146(j)(1), 2.163(b), 2.165(b), 2.176, 2.184(b), 2.186(b), 7.39(b) and 7.40(b) to change references to ``mailing'' to ``issuance,'' to encompass Office actions and
[[Page 33362]]

communications that are issued electronically.

The Office proposes to amend Sec. 2.81(b) to remove the sentence stating that ``The mailing date that appears on the notice of allowance will be the issue date of the notice of allowance,'' because it is unnecessary. The rule already states that the notice of allowance will include the issue date.

The Office proposes to amend Sec. Sec. 2.84(b), 2.173, 2.174, and 2.175 to delete references to ``printed,'' and substitute ``issued'' where appropriate, in order to encompass documents issued

electronically.

The Office proposes to amend Sec. Sec. 2.87(d), 2.146(e)(i), and 2.146(i) to delete references to ``paper'' and to substitute ``document,'' to encompass documents filed through TEAS.

The Office proposes to remove the references in Sec. 2.173(c), 2.174, and 2.175(c) to printed copies of amendments and corrections under section 7 of the Act.

Appeal Fees

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

Other Changes

The Office proposes to amend Sec. Sec. 2.6(a)(12) and (13), 2.38(b), 2.41(a), 2.44(a) and (b), 2.46, 2.47, 2.61(a), 2.64(c)(1), 2.65(c), 2.75(a) and (b), 2.81(a) and (b), 2.85(b), 2.88(a), 2.99(g), 2.146(b), and 2.167, to replace section symbols with the word ``section.'' This is consistent with references to the statute in other rules, and with the format recommended in the Federal Register Document Drafting Handbook, National Archives and Records Administration, Office of the Federal Register (Oct. 1998). Section symbols are used in rules and Federal Register notices only to refer to other sections of the CFR.

The Office proposes to amend Sec. 2.6(a)(8) to delete ``assignee'' and substitute ``registrant.'' This makes it clear that any registrant can request a new certificate of registration, upon payment of the required fee.

The Office proposes to revise Sec. 2.25 to provide that documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed. The rule currently provides only for applications, and the Office proposes to revise it to encompass all documents filed in connection with an application or registration. This is consistent with current practice. See TMEP section 404. The Office proposes to make an exception for documents ordered to be filed under seal pursuant to a protective order issued by a court or by the TTAB.

The Office proposes to remove Sec. 2.26, which provides that a drawing from an abandoned application may be transferred to and used in a new application, if the file has not been destroyed. This rule is no longer in use and is deemed unnecessary.

The Office proposes to amend Sec. 2.32(a)(6) to delete the word ``and'' after the semicolon, and to amend Sec. 2.32(a)(7) to change a period to a semicolon.

The Office proposes to amend Sec. 2.86(a)(2) to delete the period and substitute a semicolon, followed by the word ``and'' (``; and'').

The Office proposes to amend Sec. 2.146(c) to add a provision that a petition to the Director be signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. The proposed rule further provides that when facts are to be proved on petition, the petitioner must submit proof in the form of affidavits or declarations in accordance with Sec. 2.20, signed by someone with firsthand knowledge of the facts to be proved. This is consistent with TMEP sections 1705.03 and 1705.07.

The Office proposes to amend Sec. 2.195(b) to delete the phrase, ``In addition to being mailed,'' because it is unnecessary.

The Office proposes to amend Sec. 2.195(e) to clarify the procedures for filing a petition to the Director to consider correspondence filed on the date of attempted filing by Express Mail during a postal service interruption or emergency within the meaning of 35 U.S.C. 21(a). Proposed Sec. 2.195(e)(1) provides that a person who attempted to file correspondence by Express Mail, but was unable to deposit the correspondence with the United States Postal Service due to the interruption or emergency, may petition the Director to consider the correspondence to have been filed on the date of attempted filing. Proposed Sec. 2.195(e)(2) sets forth the requirements for the petition. Proposed Sec. 2.195(e)(3) notes that this procedure does not apply to correspondence that is excluded from the Express Mail procedure pursuant to Sec. 2.198(a)(1). This is consistent with current practice.

Rule Making Requirements

Executive Order 12866: This rule has been determined not to be significant for purposes of Executive Order 12866.

Administrative Procedure Act: This rule merely involves rules of agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A). Therefore, this rule may be adopted without prior notice and opportunity for public comment under 5 U.S.C. 553(b) and (c), or thirtyday advance publication under 5 U.S.C. 553(d). However, the Office has chosen to seek public comment before implementing the rule.

Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither a regulatory flexibility analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C. 603.

The proposed rules clarify certain requirements for trademark applications and other trademarkrelated documents, modernize the language of the rules, and make some other miscellaneous procedural changes. In large part, the proposed rule changes are intended to codify existing practice. Although the proposed rules may affect any trademark applicant or registrant, because they would merely codify the existing practice of the Office, or concern relatively minor procedural matters, the changes proposed in this notice will not have a significant economic impact on a substantial number of small entities.

Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 U.S.C. 1532, that agencies prepare an assessment of anticipated costs and benefits before issuing any rule that may result in expenditure by State, local, and tribal governments, in the aggregate, or by the private sector, of $100 million or more (adjusted annually for inflation) in any given year. This rule would have no such effect on State, local, and tribal governments or the private sector.

Executive Order 13132: This rule does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

Paperwork Reduction Act: This proposed rule involves information collection requirements which are subject to review by the Office of Management and Budget under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collections of information in this proposed rule have been reviewed and previously approved
[[Page 33363]]
by OMB under control numbers 06510009, 06510050, 06510051, 0651 0054, 06510055, and 06510056.

The United States Patent and Trademark Office is not resubmitting any information collection package to OMB for its review and approval because the changes in this proposed rule would not affect the information collection requirements associated with the information collections under the OMB control numbers listed above. The changes in this notice are limited to amending the rules of practice to simplify and clarify the requirements for amendments to applications and registrations, reword and reorganize the rules for clarity purposes, and codify current practices and procedures.

Interested persons are requested to send comments regarding these information collections, including suggestions for reduction of this burden to: (1) The Office of Information and Regulatory Affairs, Office of Management and Budget, New Executive Office Building, Room 10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for the Patent and Trademark Office; and (2) Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 223131451 (Attn: Mary Hannon).

Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number.
List of Subjects

37 CFR Part 2

Administrative practice and procedure, Trademarks. 37 CFR Part 3

Administrative practice and procedure, Trademarks. 37 CFR Part 6

Administrative practice and procedure, Trademarks, Classification. 37 CFR Part 7

Administrative practice and procedure, Trademarks, International Registration.

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

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

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

2. Revise Sec. Sec. 2.6(a)(8), (12), (13) and (19), and Sec. Sec. 2.6(b)(3) and (6) to read as follows:
Sec. 2.6 Trademark fees.
* * * * *
(a) * * *
(8) For issuing a new certificate of registration upon request of registrant$100.00.
* * * * *
(12) For filing an affidavit under section 8 of the Act, per class$100.00.
(13) For filing an affidavit under section 15 of the Act, per class$200.00.
* * * * *
(19) Dividing an application, per new application created$100.00. * * * * *
(b) * * *
(3) Certified or uncertified copy of a trademarkrelated official record$50.00.
* * * * *
(6) For recording each trademark assignment, agreement or other document relating to the property in a registration or application. * * * * *

3. Revise paragraphs 2.21(a) introductory text, (b), and (c) to read as follows:
Sec. 2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application under section 1 or section 44 of the Act that is in the English language and contains all of the following:
* * * * *
(b) If the applicant does not submit all the elements required in paragraph (a) of this section, the Office will deny a filing date and issue a notice explaining why the filing date was denied.
(c) If the application was filed on paper, the applicant may correct and resubmit the application and fee. If the resubmitted papers and fee meet all the requirements of paragraph (a) of this section, the Office will grant a filing date as of the date the Office receives the corrected document.

4. Revise Sec. 2.23(a)(2) to read as follows:
Sec. 2.23 Additional requirements for TEAS Plus application. (a) * * *
(2) Maintain a valid email correspondence address, and continue to receive communications from the Office by electronic mail.
* * * * *

5. Revise Sec. 2.25 to read as follows:

Sec. 2.25 Documents not returnable.

Except as provided in Sec. 2.27(e), documents filed in the Office by the applicant or registrant become part of the official record and will not be returned or removed.

6. Remove Sec. 2.26.

7. Revise Sec. 2.27(d) to read as follows:
Sec. 2.27 Pending trademark application index; access to applications.
* * * * *
(d) Except as provided in paragraph (e) of this section, the official records of applications and all proceedings relating thereto are available for public inspection and copies of the documents may be furnished upon payment of the fee required by Sec. 2.6.

* * * * *

8. Revise Sec. Sec. 2.32(a)(3)(iii), (a)(6), (a)(7), and (a)(8), and add new Sec. Sec. 2.32(a)(3)(iv), 2.32(a)(9), and (10) to read as follows:
Sec. 2.32 Requirements for a complete application.
(a) * * *
(3) * * *
(iii) If the applicant is a domestic partnership, the names and citizenship of the general partners;
(iv) If the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture;
* * * * *
(6) A list of the particular goods or services on or in connection with which the applicant uses or intends to use the mark. In a United States application filed under section 44 of the Act, the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration;
(7) The international class of goods or services, if known. See Sec. 6.1 of this chapter for a list of the international classes of goods and services;
(8) If the mark is not in standard characters, a description of the mark;
(9) If the mark includes nonEnglish wording, an English translation of that wording; and
(10) If the mark includes nonLatin characters, a transliteration of those characters, and either a translation of the transliterated term in English, or a statement that the transliterated term has no meaning in English.
* * * * *
[[Page 33364]]

9. Revise Sec. 2.33(b)(1) to read as follows:
Sec. 2.33 Verified statement.
* * * * *
(b)(1) In an application under section 1(a) of the Act, the verified statement must allege:

That the applicant is using the mark shown in the accompanying drawing; that the applicant believes it is the owner of the mark; that the mark is in use in commerce; that to the best of the declarant's knowledge and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services; and that the facts set forth in the application are true.

* * * * *

10. Revise Sec. Sec. 2.34(a)(1)(i), (a)(2), (a)(3)(i) and (a)(4)(ii), and add new Sec. (a)(1)(v), to read as follows: Sec. 2.34 Bases for filing.
(a) (1) * * *
(i) The trademark owner's verified statement that the mark is in use in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date; * * * * *
(v) If more than one item of goods or services is specified in the application, the dates of use required in paragraphs (ii) and (iii) of this section need be for only one of the items specified in each class, provided that the particular item to which the dates apply is designated.
(2) Intenttouse under section 1(b) of the Act. In an application under section 1(b) of the Act, the applicant must verify that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
(3) * * *
(i) The applicant's verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the filing date of the application.
* * * * *
(4) (i) * * *
(ii) Include the applicant's verified statement that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce as of the filing date of the application.
* * * * *

11. Revise Sec. 2.38(b) to read as follows:
Sec. 2.38 Use by predecessor or by related companies.
* * * * *
(b) If the mark is not being used by the applicant but is being used by one or more related companies whose use inures to the benefit of the applicant under section 5 of the Act, this must be indicated in the application.

* * * * *

12. Amend Sec. 2.41 by revising the heading and paragraph (a) to read as follows:
Sec. 2.41 Proof of distinctiveness under section 2(f).
(a) When registration is sought of a mark which would be unregistrable by reason of section 2(e) of the Act but which is said by applicant to have become distinctive in commerce of the goods or services set forth in the application, applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, affidavits, or declarations in accordance with Sec. 2.20, depositions, or other appropriate evidence showing duration, extent and nature of use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and affidavits, or declarations in accordance with Sec. 2.20, letters or statements from the trade or public, or both, or other appropriate evidence tending to show that the mark distinguishes such goods. * * * * *

13. Revise Sec. 2.44 to read as follows:
Sec. 2.44 Collective mark.
(a) In an application to register a collective mark under section 1(a) of the Act, the application shall specify and contain all applicable elements required by the preceding sections for trademarks, but shall also specify the class of persons entitled to use the mark, indicating their relationship to the applicant, and the nature of the applicant's control over the use of the mark.
(b) In an application to register a collective mark under section 1(b), section 44 or section 66(a) of the Act, the application shall specify and contain all applicable elements required by the preceding sections for trademarks, but shall also specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant will be, and the nature of the control applicant intends to exercise over the use of the mark.

14. Revise Sec. 2.45(b) to read as follows:
Sec. 2.45 Certification mark.
(a) * * *
(b) In an application to register a certification mark under section 1(b), section 44 or section 66(a) of the Act, the application shall include all applicable elements required by the preceding sections for trademarks. In addition, the application must: specify the conditions under which the certification mark is intended to be used; allege that the applicant intends to exercise legitimate control over the use of the mark; and allege that the applicant will not engage in the production or marketing of the goods or services to which the mark is applied. When the applicant files an allegation of use under Sec. 2.76 or Sec. 2.88, the applicant must submit a copy of the standards that determine whether others may use the certification mark on their goods and/or in connection with their services.

15. Revise Sec. 2.46 to read as follows:

Sec. 2.46 Principal Register.

All applications will be treated as seeking registration on the Principal Register unless otherwise stated in the application. Service marks, collective marks, and certification marks are registered on the Principal Register, if they are registrable in accordance with the applicable provisions of section 2 of the Act.

16. Revise Sec. Sec. 2.47(a), (b), (d) and (e) to read as follows: Sec. 2.47 Supplemental Register.
(a) In an application to register on the Supplemental Register under section 23 of the Act, the application shall so
[[Page 33365]]
indicate and shall specify that the mark has been in use in commerce, specifying the nature of such commerce, by the applicant.
(b) In an application to register on the Supplemental Register under section 44 of the Act, the application shall so indicate. The statement of use in commerce may be omitted.
* * * * *
(d) A mark in an application to register on the Principal Register under section 1(b) of the Act is eligible for registration on the Supplemental Register only after the applicant files an acceptable allegation of use under Sec. 2.76 or Sec. 2.88.
(e) An application for registration on the Supplemental Register must conform to the requirements for registration on the Principal Register under section 1(a) of the Act, so far as applicable.

17. Add new Sec. 2.48, to read as follows:

Sec. 2.48 Office does not issue duplicate registrations.

If two applications on the same register would result in registrations that are exact duplicates, the Office will permit only one application to mature into registration, and will refuse registration in the other application.

18. Revise Sec. Sec. 2.52(b) and (b)(1) to read as follows: Sec. 2.52 Types of drawings and format for drawings.
* * * * *
(b) Special form drawing. Applicants who seek to register a mark that includes a two or threedimensional design; color; and/or words, letters, or numbers or the combination thereof in a particular font style or size must submit a special form drawing. The drawing should show the mark in black on a white background, unless the mark includes color.
(1) Marks that include color. If the mark includes color, the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.
* * * * *

19. Revise Sec. 2.53(a) to read as follows:
Sec. 2.53 Requirements for drawings filed through the TEAS. * * * * *
(a) Standard character drawings. If an applicant seeks registration of a standard character mark, the applicant must enter the mark in the appropriate field on the TEAS form, and check the box to claim that the mark consists of standard characters.

* * * * *

20. Revise Sec. Sec. 2.56(b)(1), (d)(2) and (d)(4) to read as follows:
Sec. 2.56 Specimens.
* * * * *
(b)(1) A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods.
* * * * *
(d)(1) * * *
(2) If the applicant files a specimen exceeding these size requirements (a ``bulky specimen''), the Office will create a digital facsimile of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and put it in the record. The Office will destroy the original bulky specimen.
* * * * *
(4) For a TEAS submission, the specimen must be a digitized image in .jpg or .pdf format.

21. Revise Sec. 2.61(a) to read as follows:
Sec. 2.61 Action by examiner.
(a) Applications for registration, including amendments to allege use under section 1(c) of the Act and statements of use under section 1(d) of the Act, will be examined and, if the applicant is found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections.
* * * * *

22. Revise Sec. 2.62 to read as follows:
Sec. 2.62 Procedure for filing response.
(a) Deadline. The applicant's response to an Office action must be received within six months from the date of issuance.
(b) Signature. The applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner who meets the requirements of Sec. 10.14 of this chapter must sign the response.

23. Revise Sec. 2.64(c)(1) to read as follows:
Sec. 2.64 Final action.
* * * * *
(c)(1) If an applicant in an application under section 1(b) of the Act files an amendment to allege use under Sec. 2.76 during the six month response period after issuance of a final action, the examiner shall examine the amendment. The filing of an amendment to allege use does not extend the deadline for filing a response to an outstanding Office action, appeal to the Trademark Trial and Appeal Board, or petition to the Director.

* * * * *

24. Revise Sec. Sec. 2.65(a) and (c) to read as follows: Sec. 2.65 Abandonment.
(a) If an applicant fails to respond, or to respond completely, within six months after the date an action is issued, the application shall be deemed abandoned unless the refusal or requirement is expressly limited to only certain goods and/or services. If the refusal or requirement is expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services. A timely petition to the Director pursuant to Sec. Sec. 2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board (Sec. 2.142), if appropriate, is a response that avoids abandonment of an application.
* * * * *
(c) If an applicant in an application under section 1(b) of the Act fails to timely file a statement of use under Sec. 2.88, the application shall be deemed to be abandoned.

25. Revise Sec. Sec. 2.66(a)(1), (d) and (f)(1) to read as follows:
Sec. 2.66 Revival of abandoned applications.
(a) * * *
(1) Within two months of the date of issuance of the notice of abandonment; or
* * * * *
(d) In an application under section 1(b) of the Act, the Director will not grant the petition if this would permit the filing of a statement of use more than 36 months after the date of issuance of the notice of allowance under section 13(b)(2) of the Act.
* * * * *
(f) * * *
(1) Files the request within two months of the date of issuance of the decision denying the petition; and
* * * * *

26. Revise Sec. 2.73 to read as follows:

Sec. 2.73 Amendment to recite concurrent use.

An application that includes section 1(a) of the Trademark Act as a filing basis, or for which an acceptable allegation of use under Sec. 2.76 or Sec. 2.88
[[Page 33366]]
has been filed, may be amended to an application for concurrent use registration, provided that the application as amended meets the requirements of Sec. 2.42. The trademark examinin

FOR FURTHER INFORMATION CONTACT Mary Hannon, Office of the Commissioner for Trademarks, by telephone at (571) 2729569.