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TRADEMARK LAW RULES OF PRACTICE & FEDERAL STATUTES 37 - CFR PART 2 - RULES OF PRACTICE IN TRADEMARK CASES §2.1-§2.7 - RULES APPLICABLE TO TRADEMARK CASES §2.1 - [Reserved] §2.2 - Definitions. §2.6 - Trademark fees. §2.7 - Fastener Recordal Fees. §2.11-§2.19 - REPRESENTATION BY ATTORNEYS OR OTHER AUTHORIZED PERSONS §2.11 - Applicants may be represented by an attorney. §2.17 - Recognition for representation. §2.18 - Correspondence, with whom held. §2.19 - Revocation or withdrawal of attorney. §2.20 - DECLARATIONS §2.20 - Declarations in lieu of oaths. §2.21-§2.48 - APPLICATION FOR REGISTRATION §2.21 - Requirements for receiving a filing date. §2.22 - Requirements for a TEAS Plus application. §2.23 - Requirements for a TEAS RF application. §2.24 - Designation and revocation of domestic representative by foreign applicant. §2.25 - Documents not returnable. §2.26 - [Removed] §2.27 - Pending trademark application index; access to applications. §2.32 - Requirements for a complete trademark or service mark application. §2.33 - Verified statement for a trademark or service mark. §2.34 - Bases for filing a trademark or service mark application. §2.35 - Adding, deleting, or substituting bases. §2.36 - Identification of prior registrations. §2.37 - Description of mark. §2.38 - Use by predecessor or by related companies. §2.41 - Proof of distinctiveness under section 2(f). §2.42 - Concurrent use. §2.43 - Service mark. §2.44 - Requirements for a complete collective mark application. §2.45 - Requirements for a complete certification mark application; restriction on certification mark application. §2.46 - Principal Register. §2.47 - Supplemental Register. §2.48 - Office does not issue duplicate registrations. §2.51-§2.54 - DRAWING §2.51 - Drawing required. §2.52 - Types of drawings and format for drawings. §2.53 - Requirements for drawings filed through the TEAS. §2.54 - Requirements for drawings submitted on paper. §2.56-§2.59 - SPECIMENS §2.56 - Specimens. §2.59 - Filing substitute specimen(s). §2.61-§2.69 - EXAMINATION OF APPLICATION AND ACTION BY APPLICANTS §2.61 - Action by examiner. §2.62 - Procedure for filing response. §2.63 - Action after response. §2.64 - Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error. §2.65 - Abandonment. §2.66 - Revival of abandoned applications. §2.67 - Suspension of action by the Patent and Trademark Office. §2.68 - Express abandonment (withdrawal) of application. §2.69 - Compliance with other laws. §2.71-§2.77 - AMENDMENT OF APPLICATION §2.71 - Amendments to correct informalities. §2.72 - Amendments to description or drawing of the mark. §2.73 - Amendment to recite concurrent use. §2.74 - Form and signature of amendment. §2.75 - Amendment to change application to different register. §2.76 - Amendment to allege use. §2.77 - Amendments between notice of allowance and statement of use. §2.80-§2.84 - PUBLICATION AND POST PUBLICATION §2.80 - Publication for opposition. §2.81 - Post publication. §2.82 - Marks on Supplemental Register published only upon registration. §2.83 - Conflicting marks. §2.84 - Jurisdiction over published applications. §2.85-§2.87 - CLASSIFICATION §2.85 - Classification schedules. §2.86 - Multiple-class applications. §2.87 - Dividing an application. §2.88-§2.89 - POST NOTICE OF ALLOWANCE §2.88 - Statement of use after notice of allowance. §2.89 - Extensions of time for filing a statement of use. §2.91-§2.99 - CONCURRENT USE PROCEEDINGS §2.91 - [Reserved] §2.92 - [Reserved] §2.93 - [Reserved] §2.96 - [Reserved] §2.98 - [Reserved] §2.99 - Application to register as concurrent user. §2.101-§2.107 - OPPOSITION §2.101 - Filing an opposition. §2.102 - Extension of time for filing an opposition. §2.103 - [Added and Reserved] §2.104 - Contents of opposition. §2.105 - Notification to parties of opposition proceeding(s). §2.106 - Answer. §2.107 - Amendment of pleadings in an opposition proceeding. §2.111-§2.115 - CANCELLATION §2.111 - Filing petition for cancellation. §2.112 - Contents of petition for cancellation. §2.113 - Notification of cancellation proceeding. §2.114 - Answer. §2.115 - Amendment of pleadings in a cancellation proceeding. §2.116-§2.136 - PROCEDURE IN INTER PARTES PROCEEDINGS §2.116 - Federal Rules of Civil Procedure. §2.117 - Suspension of proceedings. §2.118 - Undelivered Office notices. §2.119 - Service and signing. §2.120 - Discovery. §2.121 - Assignment of times for taking testimony and presenting evidence. §2.122 - Matters in evidence. §2.123 - Trial testimony in inter partes cases. §2.124 - Depositions upon written questions. §2.125 - Filing and service of testimony. §2.126 - Form of submissions to the Trademark Trial and Appeal Board. §2.127 - Motions. §2.128 - Briefs at final hearing. §2.129 - Oral argument; reconsideration. §2.130 - New matter suggested by the trademark examining attorney. §2.131 - Remand after decision in inter partes proceeding. §2.132 - Involuntary dismissal for failure to take testimony. §2.133 - Amendment of application or registration during proceedings. §2.134 - Surrender or voluntary cancellation of registration. §2.135 - Abandonment of application or mark. §2.136 - Status of application or registration on termination of proceeding. §2.141-§2.145 - APPEALS §2.141 - Ex parte appeals from action of trademark examining attorney. §2.142 - Time and manner of ex parte appeals. §2.143 - [Added and Reserved] §2.144 - Reconsideration of decision on ex parte appeal. §2.145 - Appeal to court and civil action. §2.146-§2.148 - PETITIONS AND ACTION BY THE DIRECTOR §2.146 - Petitions to the Director. §2.148 - Director may suspend certain rules. §2.151 - CERTIFICATE §2.151 - Certificate. §2.153-§2.156 - PUBLICATION OF MARKS REGISTERED UNDER 1905 ACT §2.153 - Publication requirements. §2.154 - Publication in Official Gazette. §2.155 - Notice of publication. §2.156 - Not subject to opposition; subject to cancellation. §2.158 - REREGISTRATION OF MARKS REGISTERED UNDER PRIOR ACTS §2.158 - Reregistration of marks registered under Acts of 1881, 1905, and 1920. §2.160-§2.166 - CANCELLATION FOR FAILURE TO FILE AFFIDAVIT OR DECLARATION §2.160 - Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration. §2.161 - Requirements for a complete affidavit or declaration of continued use or excusable nonuse. §2.162 - Notice to registrant. §2.163 - Acknowledgment of receipt of affidavit or declaration. §2.164 - Correcting deficiencies in affidavit or declaration. §2.165 - Petition to Director to review refusal. §2.166 - Affidavit of continued use or excusable nonuse combined with renewal application. §2.167-§2.168 - AFFIDAVIT OR DECLARATION UNDER SECTION 15 §2.167 - Affidavit or declaration under section 15. §2.168 - Affidavit or declaration under section 15 combined with affidavit or declaration under sections 8 or 71, or with renewal application. §2.171-§2.176 - CORRECTION, DISCLAIMER, SURRENDER, ETC. §2.171 - New certificate on change of ownership. §2.172 - Surrender for cancellation. §2.173 - Amendment of registration §2.174 - Correction of Office mistake. §2.175 - Correction of mistake by owner. §2.176 - Consideration of above matters. §2.181-§2.186 - TERM AND RENEWAL §2.181 - Term of original registrations and renewals. §2.182 - Time for filing renewal application. §2.183 - Requirements for a complete renewal application. §2.184 - Refusal of renewal. §2.185 - Correcting deficiencies in renewal application. §2.186 - Petition to Director to review refusal of renewal. §2.188-§2.199 - GENERAL INFORMATION AND CORRESPONDENCE IN TRADEMARK CASES §2.188 - [Reserved] §2.189 - [Reserved] §2.190 - Addresses for trademark correspondence with the United States Patent and Trademark Office. §2.191 - Business to be transacted in writing. §2.192 - Business to be conducted with decorum and courtesy. §2.193 - Trademark correspondence and signature requirements. §2.194 - Identification of trademark application or registration. §2.195 - Receipt of trademark correspondence. §2.196 - Times for taking action: Expiration on Saturday, Sunday or Federal holiday. §2.197 - Certificate of mailing or transmission. §2.198 - Filing of correspondence by Priority Mail Express®. §2.199 - [Reserved] §2.200-§2.205 - TRADEMARK RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE §2.200 - Assignment records open to public inspection. §2.201 - Copies and certified copies. §2.202 - [Reserved] §2.203 - [Reserved] §2.204 - [Reserved] §2.205 - [Reserved] §2.206-§2.209 - FEES AND PAYMENT OF MONEY IN TRADEMARK CASES §2.206 - Trademark fees payable in advance. §2.207 - Methods of payment. §2.208 - Deposit accounts. §2.209 - Refunds. PART 3 - ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE §3.1 - Definitions §3.11-§3.16 - DOCUMENTS ELIGIBLE FOR RECORDING §3.11 - Documents which will be recorded. §3.16 - Assignability of trademarks prior to filing of an allegation of use statement. §3.25-§3.28 - REQUIREMENTS FOR RECORDING §3.25 - Recording requirements for trademark applications and registrations. §3.26 - English language requirement. §3.27 - Mailing address for submitting documents to be recorded. §3.28 - Requests for recording. §3.31-§3.34 - COVER SHEET REQUIREMENTS §3.31 - Cover sheet content. §3.34 - Correction of cover sheet errors. §3.41 - FEES §3.41 - Recording fees. §3.51-§3.58 - DATE AND EFFECT OF RECORDING §3.51 - Recording date. §3.54 - Effect of recording. §3.56 - Conditional assignments. §3.58 - Governmental registers. §3.61 - DOMESTIC REPRESENTATIVE §3.61 - Domestic representative. §3.71-§3.73 - ACTION TAKEN BY ASSIGNEE §3.71 - Prosecution by assignee. §3.73 - Establishing right of assignee to take action. §3.85 - ISSUANCE TO ASSIGNEE §3.85 - Issue of registration to assignee. PART 6 - CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT §6.1-§6.4 - CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT §6.1 - International schedule of classes of goods and services. §6.2 - Prior U.S. schedule of classes of goods and services. §6.3 - Schedule for certification marks. §6.4 - Schedule for collective membership marks. PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS SUBPART A - GENERAL INFORMATION §7.1 - Definitions of terms as used in this part. §7.2 - [Reserved] §7.3 - Correspondence must be in English. §7.4 - Receipt of correspondence. §7.5 - [Reserved] §7.6 - Schedule of U.S. process fees. §7.7 - Payments of fees to International Bureau. SUBPART B - INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES §7.11 - Requirements for international application originating from the United States. §7.12 - Claim of color. §7.13 - Certification of international application. §7.14 - Correcting irregularities in international application. SUBPART C - SUBSEQUENT DESIGNATION SUBMITTED THROUGH THE OFFICE §7.21 - Subsequent designation. SUBPART D - RECORDING CHANGES TO INTERNATIONAL REGISTRATION §7.22 - Recording changes to international registration. §7.23 - Requests for recording assignments at the International Bureau. §7.24 - Requests to record security interest or other restriction of holder’s rights of disposal or release of such restriction submitted through the Office. SUBPART E - EXTENSION OF PROTECTION TO THE UNITED STATES §7.25 - Sections of part 2 applicable to extension of protection. §7.26 - Filing date of extension of protection for purposes of examination in the Office. §7.27 - Priority claim of extension of protection for purposes of examination in the Office. §7.28 - Replacement of U.S. registration by registered extension of protection. §7.29 - Effect of replacement on U.S. registration. §7.30 - Effect of cancellation or expiration of international registration. §7.31 - Requirements for transformation of an extension of protection to the United States into a U.S. application. SUBPART F - AFFIDAVIT UNDER SECTION 71 OF THE ACT FOR EXTENSION OF PROTECTION TO THE UNITED STATES §7.36 - Affidavit or declaration of use in commerce or excusable nonuse required to avoid cancellation of an extension of protection to the United States. §7.37 - Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse. §7.38 - Notice to holder of extension of protection. §7.39 - Acknowledgment of receipt of and correcting deficiencies in affidavit or declaration of use in commerce or excusable nonuse. §7.40 - Petition to Director to review refusal. SUBPART G - RENEWAL OF INTERNATIONAL REGISTRATION AND EXTENSION OF PROTECTION §7.41 - Renewal of international registration and extension of protection. PART 10 - [Removed and reserved] PART 11 - REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE SUBPART A - General Provisions §11.1-§11.3 - General Information §11.1 - Definitions. §11.2 - Director of the Office of Enrollment and Discipline. §11.3 - Suspension of rules. SUBPART B - Recognition To Practice Before the USPTO §11.4-§11.18 - Patents, Trademarks, and Other Non-Patent Law §11.4 - [Reserved] §11.5 - Register of attorneys and agents in patent matters; practice before the Office. §11.6 - Registration of attorneys and agents. §11.7 - Requirements for registration. §11.8 - Oath and registration fee. §11.9 - Limited recognition in patent matters. §11.10 - Restrictions on practice in patent matters. §11.11 - Administrative suspension, inactivation, resignation, and readmission. §11.12-11.13 - [Reserved] §11.14 - Individuals who may practice before the Office in trademark and other non-patent matters. §11.15 - Refusal to recognize a practitioner. §11.16 - Requirements for admission to the USPTO Law School Clinic Certification Program. §11.17 - Requirements for participation in the USPTO Law School Clinic Certification Program. §11.18 - Signature and certificate for correspondence filed in the Office. SUBPART C - Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, Investigations, and Proceedings §11.19 - Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status. §11.20 - Disciplinary sanctions; Transfer to disability inactive status. §11.21 - Warnings. §11.22 - Disciplinary investigations. §11.23 - Committee on Discipline. §11.24 - Reciprocal discipline. §11.25 - Interim suspension and discipline based upon conviction of committing a serious crime. §11.26 - Settlement. §11.27 - Exclusion on consent. §11.28 - Incapacitated practitioners in a disciplinary proceeding. §11.29 - Reciprocal transfer or initial transfer to disability inactive status. §§11.30-11.31 - [Reserved] §11.32 - Instituting a disciplinary proceeding. §11.33 - [Reserved] §11.34 - Complaint. §11.35 - Service of complaint. §11.36 - Answer to complaint. §11.37 - [Reserved] §11.38 - Contested case. §11.39 - Hearing officer; appointment; responsibilities; review of interlocutory orders; stays. §11.40 - Representative for OED Director or respondent. §11.41 - Filing of papers. §11.42 - Service of papers. §11.43 - Motions. §11.44 - Hearings. §11.45 - Amendment of pleadings. §§11.46-11.48 - [Reserved] §11.49 - Burden of proof. §11.50 - Evidence. §11.51 - Depositions. §11.52 - Discovery. §11.53 - Proposed findings and conclusions; post-hearing memorandum. §11.54 - Initial decision of hearing officer. §11.55 - Appeal to the USPTO Director. §11.56 - Decision of the USPTO Director. §11.57 - Review of final decision of the USPTO Director. §11.58 - Duties of disciplined or resigned practitioner, or practitioner on disability inactive status. §11.59 - Dissemination of disciplinary and other information. §11.60 - Petition for reinstatement. §11.61 - [Removed and reserved] §§11.62–11.99 - [Reserved] SUBPART D - USPTO Rules of Professional Conduct §11.100 - [Reserved] §11.101-§11.119 - Client-Practitioner Relationship §11.101 - Competence. §11.102 - Scope of representation and allocation of authority between client and practitioner. §11.103 - Diligence. §11.104 - Communication. §11.105 - Fees. §11.106 - Confidentiality of information. §11.107 - Conflict of interest: Current clients. §11.108 - Conflict of interest: Current clients: Specific rules. §11.109 - Duties to former clients. §11.110 - Imputation of conflicts of interest: General rule. §11.111 - Former or current Federal Government employees. §11.112 - Former judge, arbitrator, mediator or other third-party neutral. §11.113 - Organization as client. §11.114 - Client with diminished capacity. §11.115 - Safekeeping property. §11.116 - Declining or terminating representation. §11.117 - Sale of law practice. §11.118 - Duties to prospective client. §§11.119-11.200 - [Reserved] §11.201-§11.205 - Counselor §11.201 - Advisor. §11.202 - [Reserved] §11.203 - Evaluation for use by third persons. §11.204 - Practitioner serving as third-party neutral. §§11.205-11.300 - [Reserved] §11.301-§11.310 - Advocate §11.301 - Meritorious claims and contentions. §11.302 - Expediting proceedings. §11.303 - Candor toward the tribunal. §11.304 - Fairness to opposing party and counsel. §11.305 - Impartiality and decorum of the tribunal. §11.306 - Trial Publicity. §11.307 - Practitioner as witness. §11.308 - [Reserved] §11.309 - Advocate in nonadjudicative proceedings. §11.310-11.400 - [Reserved] §11.401-§11.405 - Transactions with Persons Other than Clients §11.401 - Truthfulness in statements to others. §11.402 - Communication with person represented by a practitioner. §11.403 - Dealing with unrepresented person. §11.404 - Respect for rights of third persons. §11.405-11.500 - [Reserved] §11.501-§11.508 - Law Firms and Associations §11.501 - Responsibilities of partners, managers, and supervisory practitioners. §11.502 - Responsibilities of a subordinate practitioner. §11.503 - Responsibilities regarding non-practitioner assistance. §11.504 - Professional independence of a practitioner. §11.505 - Unauthorized practice of law. §11.506 - Restrictions on right to practice. §11.507 - Responsibilities regarding law-related services. §11.508-11.700 - [Reserved] §11.701-§11.706 - Information About Legal Services §11.701 - Communications concerning a practitioner’s services. §11.702 - Advertising. §11.703 - Direct contact with prospective clients. §11.704 - Communication of fields of practice and specialization. §11.705 - Firm names and letterheads. §11.706 - - 11.800 [Reserved] §11.801-§11.901 - Maintaining the Integrity of the Profession §11.801 - Registration, recognition and disciplinary matters. §11.802 - Judicial and legal officials. §11.803 - Reporting professional misconduct. §11.804 - Misconduct. §§11.805-11.900 - [Reserved] §11.901 - Savings clause. 15 - Trademark Act of 1946, as Amended TITLE I - THE PRINCIPAL REGISTER §1 - (15 U.S.C. §1051) Application for registration; verification §2 - (15 U.S.C. §1052) Trademarks registrable on the principal register; concurrent registration §3 - (15 U.S.C. §1053) Service marks registrable §4 - (15 U.S.C. §1054) Collective marks and certification marks registrable §5 - (15 U.S.C. §1055) Use by related companies §6 - (15 U.S.C. §1056) Disclaimers §7 - (15 U.S.C. §1057) Certificates of registration §8 - (15 U.S.C. §1058) Duration, affidavits and fees §9 - (15 U.S.C. §1059) Renewal of registration §10 - (15 U.S.C. §1060) Assignment §11 - (15 U.S.C. §1061) Acknowledgments and verifications §12 - (15 U.S.C. §1062) Publication §13 - (15 U.S.C. §1063) Opposition §14 - (15 U.S.C. §1064) Cancellation §15 - (15 U.S.C. §1065) Incontestability of right to use mark under certain conditions §16 - (15 U.S.C. §1066) Interference §17 - (15 U.S.C. §1067) Interference, opposition, and proceedings for concurrent use registration or for cancellation; notice; Trademark Trial and Appeal Board §18 - (15 U.S.C. §1068) Refusal, cancellation, or restriction of registration; concurrent use §19 - (15 U.S.C. §1069) Applicability, in inter partes proceeding, of equitable principles of laches, estoppel and acquiescence §20 - (15 U.S.C. §1070) Appeal from examiner to Trademark Trial and Appeal Board §21 - (15 U.S.C. §1071) Appeal to courts §22 - (15 U.S.C. §1072) Registration as notice TITLE II - THE SUPPLEMENTAL REGISTER §23 - (15 U.S.C. §1091) Filing and registration for foreign use §24 - (15 U.S.C. §1092) Cancellation §25 - (15 U.S.C. §1093) Supplemental registration certificate §26 - (15 U.S.C. §1094) General provisions §27 - (15 U.S.C. §1095) Principal registration not precluded by supplemental registration §28 - (15 U.S.C. §1096) Department of Treasury; supplemental registration not filed TITLE III - NOTICE OF REGISTRATION §29 - (15 U.S.C. §1111) Notice of registration; display with mark; recovery of profits and damages in infringement suit TITLE IV - CLASSIFICATION §30 - (15 U.S.C. §1112) Classification of goods and services; registration in plurality of classes TITLE V - FEES AND CHARGES §31 - (15 U.S.C. §1113) Fees TITLE VI - REMEDIES §32 - (15 U.S.C. §1114) Remedies; infringement; innocent infringers §33 - (15 U.S.C. §1115) Registration as evidence of right to exclusive use; defenses §34 - (15 U.S.C. §1116) Injunctions; enforcement; notice of filing suit given Director §35 - (15 U.S.C. §1117) Recovery of profits, damages, and costs §36 - (15 U.S.C. §1118) Destruction of infringing articles §37 - (15 U.S.C. §1119) Power of court over registration; certification of decrees and orders §38 - (15 U.S.C. §1120) Fraud; civil liability §39 - (15 U.S.C. §1121) Jurisdiction of Federal courts; State, local, and other agency requirements §40 - (15 U.S.C. §1122) Liability of States, instrumentalities of States and State officials §41 - (15 U.S.C. §1123) Rules and regulations TITLE VII - IMPORTATION FORBIDDEN OF GOODS BEARING INFRINGING MARKS OR NAMES §42 - (15 U.S.C. §1124) Importation of goods bearing infringing marks or names forbidden TITLE VIII - FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS. AND DILUTION FORBIDDEN §43 - (15 U.S.C. §1125) False designations of origin; false description or representation TITLE IX - INTERNATIONAL CONVENTIONS §44 - (15 U.S.C. §1126) International conventions; register of marks TITLE X - CONSTRUCTION AND DEFINITIONS §45 - (15 U.S.C. §1127) TITLE XI - REPEAL OF PREVIOUS ACTS §46(a) - (15 U.S.C. §1051) Time of taking effect - Repeal of prior acts §46(b) - (15 U.S.C. §1051 note) Existing registrations under prior acts §47(a) - (15 U.S.C. §1051 note) Applications pending on effective date of Act §47(b) - (15 U.S.C. §1051 note) Appeals pending on effective date of Act §48 - (15 U.S.C. §1051 note) Prior acts not repealed §49 - (15 U.S.C. §1051 note) Preservation of existing rights §50 - (15 U.S.C. §1051 note) Severability §51 - (15 U.S.C. §1058 note) Applications pending on effective date of the Trademark Law Revision Act of 1988 TITLE XII - THE MADRID PROTOCOL Sec. 60 - (15 U.S.C. §1141) Definitions Sec. 61 - (15 U.S.C. §1141a) International applications based on United States applications or registrations Sec. 62 - (15 U.S.C. §1141b) Certification of the international application Sec. 63 - (15 U.S.C. §1141c) Restriction, abandonment, cancellation, or expiration of a basic application or basic registration Sec. 64 - (15 U.S.C. §1141d) Request for extension of protection subsequent to International registration Sec. 65 - (15 U.S.C. §1141e) Extension of protection of an international registration to the United States under the Madrid Protocol Sec. 66 - (15 U.S.C. §1141f) Effect of filing a request for extension of protection of an international registration to the United States Sec. 67 - (15 U.S.C. §1141g) Right of priority for request for extension of protection to the United States. Sec. 68 - (15 U.S.C. §1141h) Examination of and opposition to request for extension of protection; notification of refusal Sec. 69 - (15 U.S.C. §1141i) Effect of extension of protection. Sec. 70 - (15 U.S.C. §1141j) Dependence of extension of protection to the United States on the underlying international registration Sec. 71 - (15 U.S.C. §1141k) Duration, affidavits and fees Sec. 72 - (15 U.S.C. §1141l) Assignment of an extension of protection Sec. 73 - (15 U.S.C. §1141m) Incontestability Sec. 74 - (15 U.S.C. §1141n) Rights of extension of protection Sec. 13403 - (15 U.S.C. §1141 note) Effective date 35 - UNITED STATES CODE, TITLE 35, PATENTS - PART 1 UNITED STATES PATENT AND TRADEMARK OFFICE CHAPTER 1 - ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS 35 U.S.C. §1 - Establishment. 35 U.S.C. §2 - Powers and duties. 35 U.S.C. §3 - Officers and employees. 35 U.S.C. §4 - Restrictions on officers and employees as to interest in patents 35 U.S.C. §5 - Patent and Trademark Office Public Advisory Committees. 35 U.S.C. §6 - Patent Trial and Appeal Board. (35 U.S.C. §6 pertains to patents.) 35 U.S.C. §7 - Library. 35 U.S.C. §8 - Classification of patents. (35 U.S.C. §8 pertains to patents.) 35 U.S.C. §9 - Certified copies of records. 35 U.S.C. §10 - Publications. 35 U.S.C. §11 - Exchange of copies of patents. (35 U.S.C. §11 pertains to patents.) 35 U.S.C. §12 - Copies of patents and applications for public libraries. (35 U.S.C. §12 pertains to patents.) 35 U.S.C. §13 - Annual report to Congress. CHAPTER 2 - PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE 35 U.S.C. §21 - Filing date and day for taking action. 5 U.S.C. §6103 - Holidays. District of Columbia Code—Section 28 - 2701. 35 U.S.C. §22 - Printing of papers filed. 35 U.S.C. §23 - Testimony in Patent and Trademark Office cases. 35 U.S.C. §24 - Subpoenas, witnesses. 35 U.S.C. §25 - Declaration in lieu of oath. 35 U.S.C. §26 - Effect of defective execution. CHAPTER 3 - PRACTICE BEFORE PATENT AND TRADEMARK OFFICE 35 U.S.C. §31 - [Repealed] 35 U.S.C. §32 - Suspension or exclusion from practice. 35 U.S.C. §33 - Unauthorized representation as practitioner. CHAPTER 4 - PATENT FEES, FUNDING, SEARCH SYSTEMS 35 U.S.C. §41(i) - Patent and trademark search systems. 35 U.S.C. §41 note - Adjustment of trademark fees. 35 U.S.C. §42 - Patent and Trademark Office funding.

§11.301-§11.310 Advocate

§11.301 Meritorious claims and contentions.

A practitioner shall not bring or defend a proceeding, or assert or controvert an issue therein, unless there is a basis in law and fact for doing so that is not frivolous, which includes a good-faith argument for an extension, modification or reversal of existing law.

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.302 Expediting proceedings.

A practitioner shall make reasonable efforts to expedite proceedings before a tribunal consistent with the interests of the client.

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.303 Candor toward the tribunal.

(a) A practitioner shall not knowingly:
- (1) Make a false statement of fact or law to a tribunal or fail to correct a false statement of material fact or law previously made to the tribunal by the practitioner;
- (2) Fail to disclose to the tribunal legal authority in the controlling jurisdiction known to the practitioner to be directly adverse to the position of the client and not disclosed by opposing counsel in an inter partes proceeding, or fail to disclose such authority in an ex parte proceeding before the Office if such authority is not otherwise disclosed; or
- (3) Offer evidence that the practitioner knows to be false. If a practitioner, the practitioner’s client, or a witness called by the practitioner, has offered material evidence and the practitioner comes to know of its falsity, the practitioner shall take reasonable remedial measures, including, if necessary, disclosure to the tribunal. A practitioner may refuse to offer evidence that the practitioner reasonably believes is false.
(b) A practitioner who represents a client in a proceeding before a tribunal and who knows that a person intends to engage, is engaging or has engaged in criminal or fraudulent conduct related to the proceeding shall take reasonable remedial measures, including, if necessary, disclosure to the tribunal.
(c) The duties stated in paragraphs (a) and (b) of this section continue to the conclusion of the proceeding, and apply even if compliance requires disclosure of information otherwise protected by § 11.106.
(d) In an ex parte proceeding, a practitioner shall inform the tribunal of all material facts known to the practitioner that will enable the tribunal to make an informed decision, whether or not the facts are adverse.
(e) In a proceeding before the Office, a practitioner shall disclose to the Office information necessary to comply with applicable duty of disclosure provisions.

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.304 Fairness to opposing party and counsel.

A practitioner shall not:

(a) Unlawfully obstruct another party’s access to evidence or unlawfully alter, destroy or conceal a document or other material having potential evidentiary value. A practitioner shall not counsel or assist another person to do any such act;
(b) Falsify evidence, counsel or assist a witness to testify falsely, or offer an inducement to a witness that is prohibited by law;
(c) Knowingly disobey an obligation under the rules of a tribunal except for an open refusal based on an assertion that no valid obligation exists;
(d) Make a frivolous discovery request or fail to make a reasonably diligent effort to comply with a legally proper discovery request by an opposing party;
(e) In a proceeding before a tribunal, allude to any matter that the practitioner does not reasonably believe is relevant or that will not be supported by admissible evidence, assert personal knowledge of facts in issue except when testifying as a witness, or state a personal opinion as to the justness of a cause, the credibility of a witness, the culpability of a civil litigant or the guilt or innocence of an accused; or
(f) Request a person other than a client to refrain from voluntarily giving relevant information to another party unless:
- (1) The person is a relative or an employee or other agent of a client; and
- (2) The practitioner reasonably believes that the person’s interests will not be adversely affected by refraining from giving such information.

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.305 Impartiality and decorum of the tribunal.

A practitioner shall not:

(a) Seek to influence a judge, hearing officer, administrative law judge, administrative patent judge, administrative trademark judge, juror, prospective juror, employee or officer of the Office, or other official by means prohibited by law;
(b) Communicate ex parte with such a person during the proceeding unless authorized to do so by law, rule or court order; or
(c) [Reserved]
(d) Engage in conduct intended to disrupt any proceeding before a tribunal.

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.306 Trial Publicity.

(a) A practitioner who is participating or has participated in the investigation or litigation of a matter shall not make an extrajudicial statement that the practitioner knows or reasonably should know will be disseminated by means of public communication and will have a substantial likelihood of materially prejudicing an adjudicative proceeding in the matter.
(b) Notwithstanding paragraph (a), a practitioner may state:
- (1) the claim, offense or defense involved and, except when prohibited by law, the identity of the persons involved;
- (2) information contained in a public record;
- (3) that an investigation of a matter is in progress;
- (4) the scheduling or result of any step in litigation;
- (5) a request for assistance in obtaining evidence and information necessary thereto; and
- (6) a warning of danger concerning the behavior of a person involved, when there is reason to believe that there exists the likelihood of substantial harm to an individual or to the public interest.
(c) Notwithstanding paragraph (a), a practitioner may make a statement that a reasonable practitioner would believe is required to protect a client from the substantial undue prejudicial effect of recent publicity not initiated by the practitioner or the practitioner’s client. A statement made pursuant to this paragraph shall be limited to such information as is necessary to mitigate the recent adverse publicity.
(d) No practitioner associated in a firm or government agency with a practitioner subject to paragraph (a) shall make a statement prohibited by paragraph (a).

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.307 Practitioner as witness.

(a) A practitioner shall not act as advocate at a proceeding before a tribunal in which the practitioner is likely to be a necessary witness unless:
- (1) The testimony relates to an uncontested issue;
- (2) The testimony relates to the nature and value of legal services rendered in the case; or
- (3) Disqualification of the practitioner would work substantial hardship on the client.
(b) A practitioner may act as advocate in a proceeding before a tribunal in which another practitioner in the practitioner’s firm is likely to be called as a witness unless precluded from doing so by §§ 11.107 or 11.109.

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.308 [Reserved]

§11.309 Advocate in nonadjudicative proceedings.

A practitioner representing a client before a legislative body or administrative agency in a nonadjudicative proceeding shall disclose that the appearance is in a representative capacity and shall conform to the provisions of §§ 11.303(a) through (c), 11.304(a) through (c), and 11.305.

[Added 78 FR 20180, April 3, 2013, effective May 3, 2013]

§11.310-11.400 [Reserved]