Change Summary
CHANGES: INDEX TO CHANGES IN TMEP OCTOBER 2012
Attention is directed to the following changes in the October 2012 TMEP.
| SECTION | CHANGE |
|---|---|
| TMEP | Changed references and hyperlinks to TARR (Trademark Applications and Registrations Retrieval) and TDR (Trademark Document Retrieval) databases throughout with reference and hyperlink to TSDR (Trademark Status and Document Retrieval) database. Changed "Assignment Services Branch" to "Assignment Recordation Branch" throughout. Changed "Patent and Trademark Depository Libraries" to "Patent and Trademark Resource Centers" throughout. Added cites to Trademark Rules and cross references to TMEP sections throughout, as appropriate. Incorporated precedential case law issued prior to October 1, 2012. |
| 108.01 | Revised to reflect that TSDR is updated shortly after USPTO internal databases are updated. Added cross reference. Revised to reflect that assignment documents can be viewed through Assignments on the Web on USPTO website. |
| 304.03 | Added references to practitioner qualified under37 C.F.R. §11.14. Revised to indicate that up to four secondary e-mail addresses may be included for duplicate courtesy copies of authorized electronic correspondence. |
| 304.06 | Added references to practitioner qualified under37 C.F.R. §11.14. Revised to indicate that up to four secondary e-mail addresses may be included for duplicate courtesy copies of authorized electronic correspondence. |
| 403 | Added references to USPTO "notice" sent to the wrong address. Revised to indicate that duplicate courtesy copies returned as undeliverable will not trigger the USPTO to send a paper copy of the correspondence, as long as the e-mail to the primary address was not returned. |
| 404 | Revised to indicate that applicant should consider options such as redacting confidential portions of documents prior to their submission if, for a valid reason, applicant does not want the information to become part of a public record. Revised to clarify that documents filed under seal pursuant to a protective order are not made part of the record available to the public. |
| 502 | Revised to clarify that assignee must establish ownership in order to take action in an application or registration. |
| 502.02(a) | Added example. Revised to clarify USPTO procedure when Assignment database does not show clear chain of title. |
| 502.02(c) | Added reference to Assignments on the Web. |
| 503.01(a) | Added cross reference. |
| 503.03(e) | Revised to clarify that recordation requests filed electronically should be done through ETAS. |
| 503.04 | Revised to clarify that recordation requests filed electronically should be done through ETAS. |
| 503.05 | Revised to clarify that recordation requests filed electronically should be done through ETAS. Revised to clarify that returned documents will be accompanied by a notice of non-recordation. Changed database link to Assignments on the Web. |
| 503.06(a) | Revised to clarify procedures for correcting typographical errors on previously recorded cover sheet. |
| 503.06(a)(i) | Revised to include recording of "other interest." |
| 503.06(a)(ii) | Revised to include recording of "other interest." |
| 503.06(b) | Revised to clarify procedure for correcting typographical errors in recorded assignment document. |
| 503.06(c) | Revised to include recording of "other interest" and to clarify procedures when owner discovers another party has improperly recorded assignment documents against owner’s application or registration. |
| 503.06(e) | Revised to indicate that section does not apply to errors corrected following the procedures set forth in §503.06(c). |
| 503.08(a) | Changed section title to "Trademark Assignment Abstracts of Title" and section text to refer to "trademark assignment" abstracts. |
| 504 | Revised to indicate procedure when there is no clear chain of title. |
| 504.02 | Changed database link to Assignments on the Web. |
| Chapter 600 | All cited cases reviewed as to relation to section topic and accuracy of parentheticals and quoted material and updated as appropriate. Added new case cites for decisions issued since publication of the 8th edition. Updated cross references to TMEP sections and added cross references to TMEP and Trademark Rules, as appropriate. Rewording for clarity throughout. |
| 601 | Changed section title to "Owner of Mark May Be Represented by a Qualified Practitioner." |
| 601.02 | Revised to clarify that applicant or registrant may revoke the authority of a qualified practitioner. |
| 602 | Added text of 37 C.F.R. §2.17(a) and related statement regarding qualified practitioners to beginning of section. |
| 602.01 | Revised to clarify circumstances in which a practitioner is recognized as applicant’s representative. |
| 602.03 | Revised to clarify that foreign attorney or agent must apply in writing to the OED Direction for reciprocal recognition. |
| 602.03(a) | Deleted numbered paragraphs regarding separate lists of recognized attorneys and agents. Revised to indicate that OED maintains a combined list available only on the USPTO intranet. |
| 602.03(d) | Revised to clarify that an individual with a non-US address appointed as applicant’s representative for purposes of correspondence is not recognized as applicant’s attorney or qualified practitioner without clarification. |
| 602.03(e) | Revised to clarify that advisory is given in an Office action. |
| 604.01 | Changed section title to "Three Ways To Be Recognized as a Representative." Revised to clarify circumstances in which a practitioner is recognized as applicant’s representative. |
| 604.02 | Revised to add that power of attorney filed after registration ends when ownership changes. . |
| 605.01 | Revised to include examples of someone with legal authority to bind an applicant or registrant. |
| 605.03 | Revised to note that appointment of an associate attorney from a different law firm does not change the correspondence address. |
| 605.04 | Revised to add that power of attorney filed while application is pending ends when the application is abandoned or ownership changes. |
| 608.01 | Revised to add that a non-practitioner employee of a qualified practitioner may work under the supervision of the practitioner to assist the practitioner in trademark matters. |
| 608.02 | Revised to clarify the identity of the Administrator, to indicate that excluded individuals may not authorize examiner’s amendments or priority actions, and to indicate that a notice of incomplete response must be addressed to the applicant or registrant. |
| 609.01 | Revised to indicate that up to four secondary e-mail addresses may be included for duplicate courtesy copies of authorized electronic correspondence. |
| 609.02 | Revised to indicate that up to four secondary e-mail addresses may be included for duplicate courtesy copies of authorized electronic correspondence. |
| 611.03(b) | Revised first sentence to list documents. |
| Chapter 700 | All cited cases reviewed as to relation to section topic and accuracy of parentheticals and quoted material and updated as appropriate. Added new case cites for decisions issued since publication of the 8th edition. Updated cross references to TMEP sections and added cross references to TMEP and Trademark Rules, as appropriate. Rewording for clarity throughout. |
| 703 | Revised to clarify that examples describe circumstances in which applications would result in duplicate registrations. |
| 706 | Revised to clarify procedure for issuing new refusal in §66(a) applications. |
| 706.01 | Revised to clarify time period prior to registration when USPTO may issue new refusal or requirement. |
| 707.02 | Added example of situation in which examiner’s amendment without prior approval may issue. Revised to clarify other examples. |
| 707.03 | Indicated that examiner’s amendment should include examining attorney’s e-mail address. |
| 710.01(b) | Updated requirements for making Internet evidence part of the record. |
| 710.01(c) | Revised to clarify the options regarding evidence submitted after appeal. |
| 712 | Revised to indicate that if applicant is represented, response must be signed by qualified practitioner. |
| 712.01 | Deleted first paragraph. Revised to clarify that record must establish the authority of signatory. |
| 712.02 | Added reference to "SU-Examiner’s Non-Responsive Amendment." Revised to indicate that if applicant is represented, response must be signed, or examiner’s amendment must be authorized, by qualified practitioner. |
| 712.03 | Deleted first sentence. Revised to indicate that if applicant is represented, examiner’s amendment must be authorized by qualified practitioner. Added reference to "Request for Reconsideration after Final Office Action." |
| 713.02 | Section rewritten for clarity. |
| 714.03 | Revised to clarify that examining attorney may not issue a final action prior to submission of foreign registration when applicant has indicated intent to rely on §44(e) as basis. |
| 714.05(a) | Revised to clarify examples of amendments that require a new nonfinal action and those that do not. |
| 714.05(a)(i) | Revised to clarify that withdrawal of amendment to the Supplemental Register or to seek registration under §2(f) may result in final action. Revised to indicate that amendment to the Supplemental Register without concurrent filing of amendment to allege use will result in refusal under §23 of the Trademark Act. |
| 714.05(e) | Deleted statutory cites in first paragraph and substituted wording "for failure to show use of the mark in commerce." |
| 714.05(f) | Deleted statutory cites in first paragraph and substituted wording "for failure to show the mark functioning as a mark." |
| 715.03(a) | Section reorganized and rewritten to separate material into New sections 715.03(a)(1)-715.03(a)(2)(E). |
| 715.03(a)(1) | New section: Request for Reconsideration Resolves All Outstanding Issues |
| 715.03(a)(2) | New section: Request for Reconsideration Does Not Resolve All Outstanding Issues |
| 715.03(a)(2)(A) | New section: Withdrawal of Prior Amendment |
| 715.02(a)(2)(B) | New section: Time Remaining in Response Period. Text moved from prior section 715.03(a). |
| 715.02(a)(2)(C) | New section: No Time Remaining in Response Period – Discretion to Provide Thirty Days to Complete Response. Text moved from prior section 715.03(a). |
| 715.02(a)(2)(D) | New section: No Time Remaining in Response Period – Abandon for Incomplete Response. Text moved from prior section 715.03(a). |
| 715.02(a)(2)(E) | New section: Responses Signed by Unauthorized Persons, Unsigned Responses, TEAS Responses Consisting Only of a Signature, and TEAS Responses Missing Significant Data or Attachments. Text moved from prior section 715.03(a). |
| 715.03(b) | Revised to clarify when withdrawal of a prior amendment does not raise a new issue. |
| 715.04 | Revised to clarify procedure when outstanding refusal or requirement is withdrawn, but unresolved issues remain on appeal. |
| 715.04(a) | Revised to clarify when withdrawal of a prior amendment does not raise a new issue. |
| 715.04(b) | Revised to indicate that Board will take appropriate action regarding additional grounds of refusal. |
| 716.01 | Deleted statement regarding informing applicant of status of application. |
| 716.02(b) | Revised to include procedure regarding TEAS applications that indicate applicant is not relying on §44(e) as additional basis. |
| 716.02(e) | Revised to indicate change in procedure regarding suspension when cited registration is in the grace period for filing a §8 or §71 affidavit and/or a §9 renewal and examining attorney is ready to issue a final action or denial of a request for reconsideration. |
| 716.02(g) | Revised to indicate that §66(a) applicant may request suspension pending disposition of request for correction filed with the IB after issuance of Office action regarding any matter. |
| 716.05 | Revised to indicate that application will be abandoned for failure to respond to suspension inquiry. |
| 718.01 | Revised to indicate that the Board will allow applicant the opportunity to obtain and submit the written consent of every adverse party if express abandonment is filed prior to before receipt of Board’s notice of filing of opposition. |
| 718.03(a) | Incorporated procedure for requesting review of examining attorney action from prior §718.03(c). |
| 718.03(c) | Deleted section. |
| 803.04 | Revised to clarify ambiguity of term "American." |
| 804.02 | Revised to indicate that wording disavowing the substance of a declaration is unacceptable. |
| 806.02(a) | Added examples of proper formatting of identifications for multiple-basis, multiple-class applications. |
| 806.03(c) | Revised to indicate that request to divide must be submitted with petition for multiple-basis application if notice of allowance has issued. |
| 806.03(j)(ii) | Revised to clarify procedure in option 3. |
| 807.04(b) | Revised to clarify when special-form drawing is required. |
| 807.09 | Updated procedure for submitting electronic audio and video files. |
| 807.12(e) | Added example. |
| 807.15 | Added procedures for submitting substitute drawing. |
| 808.01(a) | First two sentences and to §1209.01(a). |
| 809 | Changed foreign terms in examples. |
| 810.02 | Changed examining attorney procedure for requesting refunds of fee to applicant. |
| 813.01(b) | Added example statement. |
| 814 | Revised to indicate that applicant should consider options such as redacting confidential portions of documents prior to their submission if, for a valid reason, applicant does not want the information to become part of a public record. |
| 816.04 | Revised to indicate applicant may not seek registration on Principal and Supplemental Registers in the same application. |
| 819.01(g) | Changed ID examples. |
| 819.01(o) | Revised to clarify that name or portrait in mark must reasonably be perceived as that of living individual. |
| 904.03(f) | Updated procedure for submitting electronic audio and video files. |
| 904.03(l) | Updated procedure for submitting electronic audio and video files. |
| 904.07(a) | Revised to clarify examples. |
| 904.07(b) | Revised to clarify examples. |
| 1002.04 | Revised to clarify requirements for applicant to establish that foreign country is its country of origin as of the filing date of its foreign application or date of issuance of its foreign registration. |
| 1104 | Revised to clarify that amendment to allege use if treated as a non-responsive filing to an outstanding Office action. |
| 1104.03(b) | Revised to clarify when the blackout period is in effect. |
| 1104.09 | Changed section title to "Acceptance of Amendment to Allege Use that Meets Minimum Filing Requirements by Examining Attorney." Incorporated text from previous §1104.11. Previous text revised and incorporated into new §§1104.10-1104.10(b). |
| 1104.09(a) | Renumbered as §1104.10(b)(i). |
| 1104.09(b) | Renumbered as §1104.10(b)(ii). |
| 1104.09(c) | Renumbered as §1104.10(b)(iii). |
| 1104.09(d) | Renumbered as §1104.10(b)(iv). |
| 1104.09(e) | Renumbered as §1104.10(b)(v). |
| 1104.09(f) | Renumbered as §1104.10(b)(vi). |
| 1104.09(g) | Renumbered as §1104.10(b)(vii). |
| 1104.09(h) | Renumbered as §1104.10(a). |
| 1104.10 | Renumbered as §1104.11. Changed section title of §1104.10 to "Examination of Amendment to Allege Use on the Merits for Compliance with Statutory Requirements." |
| 1104.10(a) | Previous §1104.09(h). Revised to clarify procedures. |
| 1104.10(b) | New section: Common Examination Issues Related to Amendments to Allege Use |
| 1104.10(b)(i) | Previous §1104.09(a). Revised to clarify procedures. |
| 1104.10(b)(ii) | Previous §1104.09(b). |
| 1104.10(b)(iii) | Previous §1104.09(c). Revised to clarify procedures. |
| 1104.10(b)(iv) | Previous §1104.09(d). |
| 1104.10(b)(v) | Previous §1104.09(e). |
| 1104.10(b)(vi) | Previous §1104.09(f). |
| 1104.10(b)(vii) | Previous §1104.09(g). |
| 1104.11 | Previous §1104.10. Revised to clarify procedures. Text from previous §1104.11 revised and incorporated into §1104.09. |
| 1109.15 | Revised to clarify the procedures for payment of fees. |
| 1109.15(a) | Revised to clarify procedures regarding deficient fees after Office action has been issued. |
| 1201.01 | Revised to clarify that application for registration of a collective mark must specify the nature of the applicant’s control over use of the mark. |
| 1207.07(b)(i) | Revised to indicate that unity of control applies to a corporation and a subsidiary of a wholly owned subsidiary. |
| 1202.02(a)(iv) | Revised to clarify that applicant must present competent evidence to rebut prima facie case of functionality. |
| 1202.02(c)(ii) | Revised to indicate that description must clearly indicate if mark constitutes trade dress for services. |
| 1202.02(f) | New section: Identification of Goods/Services in Trade Dress Applications |
| 1202.02(f)(i) | New section: Product Design |
| 1202.02(f)(ii) | New section: Product Packaging |
| 1202.03(c) | Revised to indicate that secondary source may be shown by ownership of a §66(a) registration for which a §71 affidavit has been accepted. |
| 1202.04 | Revised to clarify determination of whether a slogan or term functions as a mark and refusal of registration on the basis that mark is merely informational. |
| 1202.08(b) | Deleted "puzzle books" as example of mater not treated as a single creative work. |
| 1202.08(c) | Revised to clarify that It is not necessary to show that the mark was used on the other works in a series prior to the filing date of the application or the allegation of use. |
| 1202.17-1202.17(e)(vi) | Incorporated Exam Guide 3-12 (Universal Symbols in Marks) |
| 1202.17 | New section: Universal Symbols in Marks |
| 1202.17(a) | New section: Relevance of Universal Symbols to Examination |
| 1202.17(b) | New section: Reviewing Marks Containing Symbols |
| 1202.17(b)(i) | New section: Identifying Universal Symbols in Marks |
| 1202.17(b)(ii) | New section: Marks Displaying an Unusual Depiction of a Universal Symbol |
| 1202.17(b)(iii) | New section: Marks Displaying an Accurate Depiction of a Universal Symbol |
| 1202.17(c) | New section: Failure to Function |
| 1202.17(c)(i) | New section: Determining Whether a Universal Symbol Functions as a Source Indicator |
| 1202.17(c)(i)(A) | New section: Informational Universal Symbols |
| 1202.17(c)(i)(B) | New section: Ornamental Universal Symbols |
| 1202.17(c)(ii) | New section: Mark Consists Entirely of a Universal Symbol that Fails to Function |
| 1202.17(c)(ii)(A) | New section: Applications Based on Sections 1(b), 44, or 66(a) |
| 1202.17(c)(ii)(B) | New section: Applicant’s Response to Refusal |
| 1202.17(c)(iii) | New section: Mark Includes a Universal Symbol that Fails to Function |
| 1202.17(d) | New section: Other Relevant Refusals |
| 1202.17(d)(i) | New section: Merely Descriptive |
| 1202.17(d)(ii) | New section: Deceptive or Deceptively Misdescriptive |
| 1202.17(e) | New section: Universal Symbols Commonly Appearing in Marks |
| 1202.17(e)(i) | New section: Awareness Ribbon Symbols |
| 1202.17(e)(ii) | New section: Recycling Symbol |
| 1202.17(e)(iii) | New section: Caduceus, Rod of Asclepius, and Prescription Symbol |
| 1202.17(e)(iv) | New section: Religious Symbols |
| 1202.17(e)(v) | New section: Currency Symbols |
| 1202.17(e)(vi) | New section: Universal Prohibition Symbol |
| 1205.01 | Revised to clarify example (2) regarding Red Cross emblem. Added example (7) regarding Swiss Confederation Coat of Arms. |
| 1205.01(a)(iii) | Revised to indicate that it is appropriate to issue a refusal under §§1 and 45 for applications based on §1(b), §44, or §66(a) if the facts and available evidence support the conclusion that the mark contains the prohibited symbols or wording. |
| 1205.01(a)(iv) | Changed section title to "Applicable Refusals." Revised to clarify when registration should be refused under §§1 and 45 and under §2(a). |
| 1205.01(c) | New section: Examination Procedures for Marks Containing Greek Red Cross or the Phrases "Red Cross" or "Geneva Cross" |
| 1205.01(c)(i) | New section: Date of First Use is Before or After June 25, 1948 |
| 1205.01(c)(ii) | New section: Date of First Use is Not Specified |
| 1205.01(c)(iii) | New section: Applicable Refusals |
| 1205.01(c)(iv) | New section: Amendments to Disclaim, Delete, or Amend the Unregistrable Symbol or Designation |
| 1205.01(d)-1205.01(d)(iii) | Incorporated Exam Guide 2-12 (Swiss Confederation Coat of Arms & Swiss Flag) |
| 1205.01(d) | New section: Examination Procedures for Marks Containing the Swiss Confederation Coat of Arms or Flag |
| 1205.01(d)(i) | New section: Refusal Under Sections 1 and 45: Swiss Coat of Arms Not in Lawful Use |
| 1205.01(d)(i)(A) | New section: When a Refusal Under Sections 1 and 45 Must Be Issued |
| 1205.01(d)(i)(B) | New section: When an Advisory Should Be Provided |
| 1205.01(d)(i)(C) | New section: When a Refusal Under Sections 1 and 45 Should Not Be Issued |
| 1205.01(d)(i)(D) | New section: Applicant’s Response to Refusal |
| 1205.01(d)(i)(E) | New section: Refusals Based on Extrinsic Evidence |
| 1205.01(d)(ii) | New section: Refusal Under Section 2(b): Swiss Flag or Swiss Coat of Arms |
| 1205.01(d)(ii)(A) | New section: When a Refusal Under Section 2(b) Must Be Issued |
| 1205.01(d)(ii)(B) | New section: When an Advisory Should Be Provided |
| 1205.01(d)(ii)(C) | New section: When a Refusal Under Section 2(b) Should Not Be Issued |
| 1205.01(d)(ii)(D) | New section: Applicant’s Response to Refusal |
| 1205.01(d)(iii) | New section: Other Refusals |
| 1207.01 | Revised to clarify application of other factors in analysis of likelihood of confusion when marks are similar and goods/services are related. |
| 1209.01(a) | Incorporated text moved from §808.01(a). |
| 1209.01(b) | Revised to clarify that mark is also considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. |
| 1209.03(h) | Revised to clarify when a mark consisting of an abbreviation, initialism, or acronym is substantially synonymous with descriptive wording. |
| 1213.01(c) | Revised to clarify procedures regarding unnecessary voluntary disclaimers. |
| 1213.05-1213.05(b)(iv) | Incorporated text from Exam Guide 1-12 (Additional Considerations for Determining Whether Wording in a Mark Comprises a Unitary Phrase or Slogan for Purposes of Disclaimer). |
| 1213.05 | Moved cases citations for marks found to be unitary and not unitary to new section 1213.05(h). |
| 1213.05(b) | Renumbered as §1213.05(b)(i). Changed title to "Unitary Phrases." |
| 1213.05(b)(i) | Previous section 1213.05(b). |
| 1213.05(b)(ii) | New section: Grammar and Punctuation |
| 1213.05(b)(ii)(A) | New section: Verbs |
| 1213.05(b)(ii)(B) | New section: Prepositional Phrases |
| 1213.05(b)(ii)(C) | New section: Punctuation |
| 1213.05(b)(ii)(D) | New section: Possessives |
| 1213.05(b)(iii) | New section: Other Considerations |
| 1213.05(b)(iv) | New section: Unregistrable Unitary Phrases or Slogans |
| 1213.05(e) | Revised to indicate additional evidence that may contribute to finding a mark unitary. |
| 1213.05(g)(iii) | Deleted example. |
| 1213.05(h) | New section: Unitary Marks: Case References |
| 1306.06 | Revised to clarify the likelihood-of-confusion analysis for certification marks. |
| 1401.02 | Revised to clarify that the international classification is the controlling classification used by the United States. |
| 1401.02(a) | Updated to refer to 10th edition of Nice Agreement and to include changes in General Remarks, Class Headings, and Explanatory Notes implemented in the 10th edition. |
| 1401.02(c) | Updated to refer to 10th edition of Nice Agreement and to correct WIPO address. |
| 1401.03(d) | Revised to clarify IB’s procedure for classifying goods/services in the international application and resulting registration. |
| 1401.04(a) | Revised to clarify that the international classification is the controlling classification used by the United States. |
| 1401.05 | Deleted examples of general criteria for placing goods/services in international classes. |
| 1401.05(a) | Changed section title to "Identification and Classification of Kits, Gift Baskets, and Items Sold as a Unit." Revised to clarify requirements for identifying kits and added requirements for identifying items sold as a unit. |
| 1401.05(c) | Previous §1401.07. |
| 1401.05(d) | New section: Identification and Classification of "Systems" |
| 1401.05(e) | New section: Identification and Classification of "Food Additives" |
| 1401.06(a) | Renumbered as §1401.07. |
| 1401.07 | Renumbered as 1401.05(c). |
| 1401.10 | Updated to indicate that changes in practice brought about by the 10th edition of the Nice Agreement supersede the 9th edition to the extent any inconsistency exists. |
| 1401.11 | New section title and text: General Summary of Major Changes in Practice Based on the 10th Edition of the Nice Agreement. Previous section renumbered as §1401.12. |
| 1401.11(a) | New section: Electric/Electrothermic Goods |
| 1401.11(b) | New section: Amusement and Game-Playing Apparatus |
| 1401.11(c) | New section: Food Additives |
| 1401.11(d) | New section: Dietetic Substances and Meal Replacements |
| 1401.11(e) | New section: Marketing Services |
| 1401.12 | Renumbered as §1401.13. Previous §1401.11 is now §1401.12. |
| 1401.13 | Previous §1401.12. |
| 1402.01 | Revised to clarify requirement for specificity in identifications. |
| 1402.01(a) | Revised to clarify use of commas and semicolons in identifying components of kits. |
| 1402.01(c) | Revised to clarify rationale requirements for specificity in identifications in §66(a) applications. |
| 1402.01(d) | Added explanation of "limitations" to identifications in §66(a) applications. |
| 1402.01(e) | Revised to clarify procedure for determining proper classification and acceptability of identification of goods/services. |
| 1402.02 | Added explanation of effective filing dates in §66(a) applications. |
| 1402.03 | Revised to clarify that bona fide intent statement in §66(a) applications is on file at the IB and to clarify the factors the examining attorney should consider when assessing use in connection with broad identifications. |
| 1402.03(d) | Revised to clarify acceptable wording for various types of software. |
| 1402.03(f) | Previous §1402.11(i) renumbered as 1402.03(f). |
| 1402.04 | Added reference to Korean Intellectual Property Office. |
| 1402.05(a) | Added example regarding components of finished products. |
| 1402.06(a) | Changed example regarding "prepaid medical services" to "charitable" services. Clarified that applicant may not amend to add exclusionary language that falls outside the scope of the original identification. |
| 1402.07(b) | Revised to clarify example regarding superfluous wording. |
| 1402.07(c) | Added example. |
| 1402.07(e) | Revised to clarify that amendments included in amendment to allege use, a statement of use, or a request for an extension of time to file a statement of use may not expand the scope of previous acceptable identification. Revised to clarify when applicant may reinsert goods/services previously omitted or deleted. |
| 1402.08 | Revised to clarify procedure for requesting to move goods/services between applications. |
| 1402.11 | Revised to clarify requirements for acceptable identification of services. |
| 1402.11(a) | Revised to clarify examples of acceptable identifications for computer services. |
| 1402.11(i) | Previous section renumbered as 1402.03(f). New section: Marketing Services and Advertising Services |
| 1403.02(b) | Revised to clarify that correction of classification after publication does not require republication. |
| 1403.03 | Added example. |
| 1504.03 | Revised to clarify procedure when it is necessary to issue an Office action after publication in a §1(a) application. |
| 1504.05 | Revised to clarify procedures when Board initiates remand or examining attorney requests remand. Incorporated text from prior §1504.05(a). |
| 1504.05(a) | Revised to clarify procedures when refusal or requirement must be made during and inter partes proceeding. Transferred text to §1504.05. |
| Chapter 1600 | Changed "§8 affidavit" to "§8 affidavit or declaration" throughout. Changed "§71 affidavit" to "§71 affidavit or declaration" throughout. |
| 1604.05 | Changed section title to "Requirements for §8 Affidavit or Declaration." Updated text of 37 C.F.R. §2.161. |
| 1604.06 | Changed section title to "Fees for §8 Affidavit or Declaration" |
| 1604.07 | Changed section title to "Ownership and Who May File §8 Affidavit or Declaration" |
| 1604.11 | Revised to clarify requirements for claiming excusable nonuse for §44(e) registrants. |
| 1604.12(b) | Changed section title to "Specimens in Electronically Filed Affidavits or Declarations" |
| 1604.15 | Changed section title to "Office Actions and Notices Regarding Affidavit or Declaration." Updated to indicate that USPTO may request additional information, specimens, exhibits, and affidavits or declarations, if necessary. |
| 1604.17 | Changed section title to "Correction of Deficiencies in §8 Affidavit or Declaration" |
| 1604.17(a) | Revised to clarify procedure when time remains in the grace period. |
| 1605 | Changed section title to "Affidavit or Declaration of Incontestability Under §15 of the Trademark Act." Revised to include procedure for requesting abandonment of §15 affidavit. |
| 1605.01 | Changed section title to "Registrations to Which §15 Affidavit or Declaration Pertains" |
| 1605.02 | Changed section title to "Form for Filing Affidavit or Declaration of Incontestability" |
| 1605.03 | Changed section title to "Time for Filing Affidavit or Declaration of Incontestability." Revised to include procedure for requesting abandonment of §15 affidavit. |
| 1605.05 | Changed section title to "Combining §15 Affidavit or Declaration with §8 Affidavit or Declaration" |
| 1605.06 | Changed section title to "Section 14 Limitation is Independent of §15 Affidavit or Declaration" |
| 1606 | Changed section title to "Renewal of Registration Under §9 of the Trademark Act" |
| 1609.02(c) | Updated to indicate that additional specimens may be requested, if necessary, and to indicate that the requirement for one specimen per class showing use of the amended mark applies to §66(a) registrations. |
| 1609.10(a) | Revised to clarify procedures for correction of USPTO error. |
| 1612 | Revised to clarify when power of attorney filed after registration ends. |
| 1613 | Changed section title to "Affidavit or Declaration of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act" |
| 1613.01 | Changed section title to "Registrations to Which §71 Affidavit or Declaration Pertains" |
| 1613.02 | Changed section title to "Notice of When Affidavit or Declaration Is Due" |
| 1613.03 | Changed section title to "Form for Filing §71 Affidavit or Declaration" |
| 1613.04 | Changed section title to "Time for Filing §71 Affidavit or Declaration" |
| 1613.05 | Updated text of 37 C.F.R. §7.37. |
| 1613.06 | Changed section title to "Fees for §71 Affidavit or Declaration" |
| 1613.07 | Changed section title to "Ownership and Who May File §71 Affidavit or Declaration" |
| 1613.11 | Revised to clarify requirements for claiming excusable nonuse for §66(a) registrants. |
| 1613.12(b) | Changed section title to Specimens in Electronically Filed Affidavits or Declarations" |
| 1613.15 | Updated to indicate that additional specimens may be requested, if necessary. |
| 1613.17 | Changed section title to "Correction of Deficiencies in §71 Affidavit or Declaration" |
| 1613.17(a) | Revised to clarify procedure when time remains in the grace period. |
| 1613.19 | Changed section title to "Section 71 Affidavit or Declaration Combined with Section 15 Affidavit or Declaration" |
| 1704 | Revised to include procedure for requesting abandonment of §15 affidavit and to clarify that cancellation for failure to file a §8 or §71 affidavit is not petitionable under Trademark Rule 2.66 and will not be granted under Trademark Rule 2.146. |
| 1708 | Revised to clarify that the Director has no authority to waive or suspend the requirement of a rule that is also a requirement of the Trademark Act. |
| 1712.01 | Deleted last sentence of first paragraph. |
| 1712.02(a) | Revised to clarify preference that request for reinstatement be filed electronically. |
| 1713.02 | Revised to indicate that response signed by proper party must be submitted with petition to reverse holding of abandonment. |
| 1715-1715.06 | Revised to change "grant" to "accept" and "granted" to "accepted" regarding letters of protest. |
| 1715.01(a) | Added example of appropriate subject for letter of protest. |
| 1715.03 | Changed section title to "Letters of Protest Filed on the Date of Publication or After Publication" |
| 1715.03(a) | Changed section title to "Standard of Review for Letters of Protest Filed on the Date of Publication or After Publication." Revised to clarify that standard of review applies to letters of protest filed on the date of publication or within 30 days after the date of publication. |
| 1715.03(c) | Changed section title to "Jurisdiction of Application when a Letter of Protest Is Accepted After Publication" |
| 1715.04(a) | Changed section title to "Submitting a Letter of Protest." Revised to clarify that letters of protest are not made part of the official application record and to indicate that they may not be submitted by e-mail. |
| 1902 | Revised to clarify that section applies to international registrations based on a US application for registration on the Principal and Supplemental Registers. |
| 1902.01 | Revised to clarify that section applies to international registrations based on a US application for registration on the Principal and Supplemental Registers. |
| 1902.02(f) | Revised to clarify that goods/services in the international application cannot be broader in scope that those in the basic application or registration. Added guidance regarding the use of semicolons, commas, colons, and periods in identifications and reference to IB database of properly classified terms. |
| 1902.02(f)(i) | New section: House Marks and "Full Line of…" |
| 1902.02(f)(ii) | New section: Providing a Website/Online Portal |
| 1902.02(g)(i) | Added reference to IB database of properly classified terms. |
| 1902.07(c)(ii) | Changed section title to "Identification (Indication) of Goods/Services." Revised to indicate that the IB refers to the identification as the "indication of goods/services" and to clarify that procedure for responding to IB notice. |
| 1904.02(c)(ii) | Revised Class 28 examples. |
| 1904.02(c)(v) | Revised to clarify how goods/services are classified, pursuant to the Madrid Protocol. |
| 1904.04 | Revised to clarify that the scope of the opposition is limited to grounds and goods/services listed on ESTTA opposition form. |
| 1904.12 | Revised to clarify procedure for noting replacement of a US registration. |
| Appendix B | Corrected term of registration for New Zealand. |
| Appendix D | Added entries for Liechtenstein; corrected description of AD; corrected country of AVV to Aruba; added description of GesmbH for Austria; corrected abbreviations of Gomei Kaisha for Japan; corrected abbreviation of Sociedad en Nombre Colectivo for Mexico. |