Change Summary
CHANGES: INDEX TO CHANGES IN TMEP October 2013
Attention is directed to the following changes in the October 2013 TMEP.
| SECTION | CHANGE |
|---|---|
| TMEP | Incorporated precedential case law issued prior to October 1, 2013. |
| 104 | Replaced reference to TRAM with reference to "the internal Trademark database." |
| 108.01 | Deleted reference to TRAM and TSDR. |
| 109.02 | Replaced reference to TRAM with reference to Trademark database. Deleted second reference to TRAM. |
| 201.02 | Added case cite. |
| 205 | Replaced reference to TRAM with reference to Trademark database. |
| 401.01 | Deleted reference to TRAM. |
| 401.02 | Updated to add information regarding "86" series applications. |
| 401.03 | Replaced references to TRAM and TICRS with references to Trademark database. |
| 501.01(a) | Added case cite. |
| 501.07 | Revised to clarify that IB will notify USPTO of changes in owner name. Deleted reference to TRAM and TSDR. |
| 502.01 | Revised to clarify that IB will notify USPTO of changes in owner name. |
| 502.02(a) | Replaced references to TRAM and TSDR with reference to Trademark database. |
| 502.02(b) | Revised to clarify that IB will notify USPTO of changes in owner name. |
| 502.02(c) | Replaced references to TRAM with reference to Trademark database. |
| 502.03 | Revised to clarify that IB will notify USPTO of changes in owner name. Replaced reference to TRAM and TSDR with reference to Trademark database. |
| 503.02 | Revised to clarify that IB will notify USPTO of changes in owner name. |
| 503.03(a) | Revised to clarify that IB will notify USPTO of changes in owner name. |
| 503.05 | Revised to clarify that IB will notify USPTO of changes in owner name. |
| 504 | Replaced reference to TRAM and TSDR with reference to Trademark database. |
| 504.05 | Revised to clarify that IB will notify USPTO of changes in owner name. |
| 505 | Changed section title to "Requesting Update of Ownership Information When the Trademark Database Does Not Automatically Update After a Document is Recorded." Revised to clarify procedure for requesting update. |
| 505.01 | Revised to clarify process for submitting requests to update ownership information in Trademark database in pending applications. |
| 505.02 | Revised to clarify process for submitting requests to update ownership information in Trademark database after registration. |
| 602.03(c) | Revised to clarify that foreign attorneys or agents cannot prepare post-registration maintenance documents. |
| 603 | Revised to add title of 37 C.F.R. §11.15, to delete 37 C.F.R. §10.20, to remove references to Part 10 to Title 37, and to clarify the function of Part 11. |
| 604.02 | Deleted reference to TRAM and TSDR. |
| 607 | Deleted excerpt of 37 C.F.R. §2.19. Added paragraph to provide information regarding where to find the current requirements for withdrawal. Deleted Part 10 rule cites and added appropriate Part 11 cites. |
| 608.01 | Revised to clarify that an individual who does not meet the requirements of 37 C.F.R. §11.14 cannot prepare post-registration maintenance documents. |
| 609.02(d) | Updated number of serial numbers that may be submitted in a single TEAS form. |
| 611.01(a) | Added indication in excerpt of Rule 2.193(f) that cite to Rule 10.23(c) is citing to an old rule. |
| 702.03(a)(ii) | Replaced reference to TRAM with reference to Trademark database. |
| 703 | Replaced reference to TRAM with reference to Trademark database. |
| 707.02 | Revised paragraphs (1) and (8) to clarify that they apply only to applications under §1 or §44. Revised paragraph (5) to clarify that it applies only to applications under §1. Added note that examiner’s amendment may not be issued as first action in application under §66(a). |
| 708.01 | Added note that priority action may be issued as first action in application under §66(a). |
| 710.03 | Replaced reference to X-Search, TESS, TSDR, and TRAM with reference to Trademark database. |
| 711 | Revised to clarify that responses must be sent to the IB. |
| 711.02 | Revised to indicate that supplemental Office action must restate outstanding refusals and/or requirements. |
| 713.03 | Deleted references to TRAM. Revised to clarify procedure for requesting updates to the Trademark database. |
| 714.05(e) | Revised to clarify when examining attorney must issue nonfinal or final refusal |
| 714.05(f) | Revised to clarify when examining attorney must issue nonfinal or final refusal |
| 715.03(a)(2)(D) | Revised to clarify standard of review. |
| 715.03(c) | Revised to clarify standard of review. |
| 716 | Revised to clarify when applicant must request suspension. |
| 716.01 | Revised to clarify that suspension notice must indicate which refusals and/or requirements have been resolved. |
| 716.02 | Revised to indicate that examining attorney may suspend pending decision on petition upon express permission from Deputy Commissioner. |
| 716.02(a) | Replaced reference to TRAM with reference to Trademark database. |
| 716.02(b) | Replaced reference to TRAM with reference to Trademark database. |
| 716.02(e) | Replaced references to TRAM with references to Trademark database. |
| 716.02(h) | New section: Pending Recordation of an Assignment Document. |
| 716.03 | Changed section title. Revised to clarify standard of review and to indicate procedure when applicant argues preemptively against suspension. |
| 716.04 | Replaced reference to TRAM with reference to Trademark database. |
| 718.01 | Replaced references to TRAM with references to Trademark database. Added case cite. |
| 718.02(a) | Revised to clarify that partial abandonment may occur if applicant fails to respond completely and that a partial abandonment advisory may be given in any Office action. |
| 718.03(b) | Revised to clarify standard of review. |
| 718.06 | Replaced references to TRAM transaction with references to Trademark database transaction. |
| 803.03(a) | Replaced reference to TRAM with reference to Trademark database. |
| 803.03(e) | Revised to indicate that applicant need only list ten trustees. |
| 803.04 | Replaced reference to TRAM with reference to Trademark database. |
| 806.01(e) | Updated cite to the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol |
| 806.02(a) | Replaced reference to TRAM with reference to Trademark database. |
| 806.03(j)(i) | Revised to clarify procedures for adding or substituting a §44(e) basis to a §1(b) application after publication. |
| 806.03(j)(ii) | Revised to clarify procedures for amending the basis of a §1(b) application between notice of allowance and statement of use. |
| 806.03(j)(iii) | Revised to clarify procedures for amending the basis of a §1(b) application after filing of statement of use. |
| 806.04(b) | Replaced references to TRAM with references to Trademark database. |
| 806.05 | Replaced reference to TRAM with reference to Trademark database. Added cross reference to §806.02(a) and deleted paragraph and example regarding different bases within the same class of goods/services. |
| 807.03(b) | Updated cite to the IB’s Guide to International Registration |
| 807.03(c) | Replaced reference to TRAM with reference to Trademark database. |
| 807.03(h) | Updated cite to the IB’s Guide to International Registration |
| 807.09 | Revised to clarify the types of files that may be attached to TEAS applications. |
| 807.12(a)(i) | Add cross reference. |
| 807.13(b) | Updated cite to the IB’s Guide to International Registration |
| 807.15 | Replaced reference to TRAM with reference to Trademark database. |
| 807.16 | Replaced references to TRAM with references to Trademark database. |
| 808.01(a) | Replaced references to TRAM with references to Trademark database. |
| 808.03 | Replaced references to TRAM with references to Trademark database. |
| 808.03(a) | Replaced reference to TRAM with reference to Trademark database. |
| 808.03(b) | Replaced references to TRAM with references to Trademark database. |
| 808.03(c)(ii) | Replaced reference to TRAM with reference to Trademark database. |
| 808.03(f) | Replaced reference to TRAM with reference to Trademark database. |
| 809.01 | Revised to clarify when inquiry is not necessary. |
| 809.01(a) | Revised to clarify when it is necessary to provide format for translation/transliteration statement. Replaced references to TRAM with references to Trademark database. |
| 809.03 | Replaced references to TRAM with references to Trademark database. Added additional examples of acceptable translation statement formats. |
| 812 | Replaced references to TRAM with references to Trademark database. |
| 812.01 | Revised to clarify when proof of ownership of prior registration, or verified statement, is required. |
| 813.01(a) | Replaced reference to TRAM with reference to Trademark database. |
| 813.01(b) | Replaced reference to TRAM with reference to Trademark database. |
| 813.01(c) | Changed section title and text to replace references to TRAM with references to Trademark database. |
| 814 | Added case cite and updated information regarding presumption that may result from failure to comply with an information request. |
| 817 | Replaced references to TRAM with references to Trademark database. |
| 819.04 | Replaced reference to TRAM with reference to Trademark database. |
| 901.02 | Added case cite. |
| 904.03(e) | Revised to clarify when refusal must be made for "beta" specimens. |
| 904.03(h) | Revised to clarify when phone number, Internet address, and/or mailing address is not sufficient to meet the criteria for a display associated with the goods. Revised case parenthetical. |
| 904.03(i)(D) | Revised to clarify when refusal must be made for "beta" specimens. |
| 904.04(a) | Revised to indicate that a computer graphic may not be a proper specimen. |
| 904.05 | Revised to clarify that applicant must submit the substitute specimen. |
| 904.06 | Revised to clarify when non-English matter on a specimen must be translated. |
| 904.07(a) | Revised to clarify that applicant must submit substitute specimen. Deleted language regarding conditional nature of refusal. Added option for applicant to submit a copy of the originally submitted mutilated or illegible specimen that is clear and readable. Moved last two paragraphs to new section 904.07(a)(i). |
| 904.07(a)(i) | New section heading: Action After Submission of Substitute Specimen. Revised to clarify when examining attorney must issue nonfinal or final refusal. |
| 904.07(b) | Revised to clarify that applicant must submit substitute specimen. Moved last three paragraphs to new section 904.07(b)(1). |
| 904.07(b)(i) | New section heading: Action After Submission of Substitute Specimen. Revised to clarify when examining attorney must issue nonfinal or final refusal. |
| 1002.02 | Replaced reference to TRAM with reference to Trademark database. |
| 1002.04 | Revised to clarify procedures for establishing applicant’s country of origin. Added cross reference. |
| 1002.05 | Added cross reference. |
| 1003 | Replaced reference to TRAM with reference to Trademark database. |
| 1003.01 | Revised to clarify what is a "first-filed application," what is meant by "same goods or services," and the procedures to follow when an application relied on was not the first filed and the applicant is not entitled to priority as to some or all of the goods/services. |
| 1003.02 | Replaced reference to TRAM with reference to Trademark database. |
| 1003.04(b) | Replaced reference to TRAM with reference to Trademark database. |
| 1004.01(a) | Revised to clarify the requirements regarding submission of proof of renewal of foreign registration. |
| 1005 | Revised to add procedures when evidence in the record calls into question the applicant’s ownership of the foreign application on the filing date of the United States application, to clarify what may be submitted as proof of ownership, and to clarify procedures when the applicant was not the owner of the foreign application or registration on the United State filing date or the date of an amendment adding or substituting §44. |
| 1006 | Replaced reference to TRAM with reference to Trademark database. |
| 1011.01 | Added example of evidence that may be required when foreign registration is not issued in color. |
| Chapter 1100 | All cited cases reviewed as to relation to section topic and accuracy of parentheticals and quoted material and updated as appropriate. Updated cross references to TMEP sections and added cross references to TMEP and Trademark Rules, as appropriate. Rewording for clarity throughout. |
| 1102.03 | Deleted reference to TRAM and TSDR. |
| 1104.01 | Revised to clarify that verification or declaration must be signed by authorized signatory if applicant is represented. |
| 1104.01(a) | Revised to clarify that verification or declaration must be signed by authorized signatory if applicant is represented. |
| 1106.01 | Revised to update time frame for issuance of notice of allowance. |
| 1107.01 | Revised to clarify procedures when petition to permit examining attorney to examine an amendment is granted. |
| 1108.01 | Revised to clarify the timelines for filing extension requests and the periods covered by each extension. |
| 1108.02(a) | Replaced references to TRAM and TSDR with references to Trademark database. |
| 1108.02(f) | Revised to clarify assertions applicant may make to satisfy the requirement for a showing of good cause. |
| 1108.03 | Added example. |
| 1108.03(a) | Revised to clarify that extension request may be filed if no extension request was filed with the statement of use. |
| 1109.01 | Deleted wording "or facsimile." |
| 1109.02(a) | Revised to clarify that petitions or reinstatement requests must be filed within two months of issuance date of notice of abandonment. |
| 1109.05 | Deleted duplicative statement regarding timing of filing. |
| 1109.06 | Revised to clarify that statement in paragraph (1) must aver that mark is in use on or in connection with the goods or services. Deleted wording "or facsimile" in paragraph (2). |
| 1109.08 | Deleted example. |
| 1109.18 | Replaced references to TRAM with references to Trademark database. |
| 1110.04 | Revised to clarify method for filing request to divide via TEAS. |
| 1110.08 | Deleted paragraph stating that request to divide may be made by examiner’s amendment. |
| 1110.11(a) | Updated cite to the IB’s Guide to International Registration. |
| 1202.02(a)(v) | Added case cite. |
| 1202.02(a)(v)(B) | Added case cite. |
| 1202.02(a)(vi) | Updated case cite. |
| 1202.02(a)(viii) | Updated case cite. |
| 1202.02(b)(i) | Added case cite. |
| 1202.02(c)(ii) | Deleted reference to TRAM. |
| 1202.03(a) | Added case cite. |
| 1202.03(f)(i) | Added case cite. |
| 1202.04 | Added case cite. |
| 1202.05(b) | Updated case cites. |
| 1202.08 | Revised to clarify rationale for refusal as title of single work. |
| 1202.08(c) | Added case cite regarding theatrical performances. |
| 1202.08(d)(iii) | Added case cite. |
| 1202.09(a)(i) | Added case cite. |
| 1202.12 | Revised to clarify that the varietal or cultivar name is known to the U.S. consumer. |
| 1202.18 | New section: Hashtag Marks |
| 1203.01 | Added case cite. |
| 1203.02(e)(ii) | Added case cite. |
| 1203.02(f)(ii) | Added case cite. |
| 1203.02(g) | Added case cite. |
| 1203.03-1203.03(f) | Revised to rearrange and renumber existing sections, to update case citations, and to add additional clarification. |
| 1203.03(a) | Changed section title to "Definitions." |
| 1203.03(a)(i) | New section number and title ("Persons"). |
| 1203.03(a)(ii) | New section number and title ("Institutions") |
| 1203.03(a)(iii) | Renumbered previous section 1203.03(b) and changed title to "National Symbols." |
| 1203.03(b) | Renumbered previous section 1203.03(c). |
| 1203.03(b)(i) | New section number and title inserted in current text: "Elements of a §2(a) Disparagement Refusal." |
| 1203.03(b)(ii) | Renumbered previous section 1203.03(d). Rearranged case references into those that were affirmed and those that were reversed. |
| 1203.03(c) | Renumbered previous section 1203.03(e). |
| 1203.03(c)(i) | New section number and title inserted in current text: "Elements of a §2(a) False Suggestion of a Connection Refusal." Added case cite. |
| 1203.03(c)(ii) | New section: "Government Agencies and Instrumentalities." |
| 1203.03(c)(iii) | Renumbered previous section 1203.03(f). Rearranged case references into those that were affirmed and those that were reversed. |
| 1205.01 | Revised to clarify the nature of prohibited designations. |
| 1205.01(b)(vii) | New section: Date of First Use Not Specified |
| 1205.01(b)(viii) | Old section 1205.01(b)(vii) renumbered as 1205.01(b)(viii). |
| 1205.01(d)(i)(B) | Revised to clarify that submission of a color version of the specimen showing a red cross on a white ground may result in a refusal. |
| 1206.04(b) | Replaced references to TRAM with references to Trademark database. |
| 1206.04(c) | Replaced reference to TRAM with reference to Trademark database. |
| 1207.01(a)(i) | Added case cite. |
| 1207.01(a)(iii) | Added case cite. |
| 1207.04(c) | Updated case cite. |
| 1207.04(e) | Updated case cite. |
| 1209.01(b) | Added case cite. |
| 1209.01(c)(i) | Revised to clarify that genus is often defined by applicant’s identification and that procedures also apply to telescoped words. Added case cites. |
| 1209.01(c)(ii) | Added case cite. |
| 1209.01(c)(iii) | Added case cites. |
| 1209.02 | Added case cite. |
| 1209.03(d) | Added case cite. |
| 1209.03(k) | Added case cite. |
| 1209.04 | Added case cite. |
| 1210.05(b) | Revised to clarify that the primary significance is geographic if the mark consists of or incorporates a term that denotes a geographical location which is neither obscure nor remote. Added case cite. |
| 1210.06(b) | Revised to clarify that a refusal is appropriate if some portion of the applied-for mark is geographically deceptive or primarily geographically deceptively misdescriptive. |
| 1211.01(b)(iii) | Replaced reference to TRAM with reference to Trademark database. |
| 1212.01 | Added case cite. |
| 1212.02(b) | Added case cite. |
| 1212.02(d) | Replaced reference to TRAM with reference to Trademark database. |
| 1212.02(j) | Replaced reference to TRAM with reference to Trademark database. |
| 1212.05(a) | Added case cite. |
| 1212.05(d) | Added examples of claims for certification and collective marks. |
| 1212.06(d) | Revised to clarify the relevance of surveys in establishing acquired distinctiveness. |
| 1212.10 | Replaced references to TRAM with references to Trademark database. Added examples of §2(f) claims for non-English wording and transliterated non-Latin characters. |
| 1213.03(a) | Added cross references to additional TMEP sections. |
| 1213.05(b)(ii)(B) | Added two examples of unitary phrases. |
| 1213.06 | Updated case cite. |
| 1215.02(c) | Revised to include procedures for applications for domain name registration or registry services. |
| 1215.08(c) | New section: Adding or Deleting "." in Marks for Domain Name Registry or Registration Services |
| 1216.02 | Revised to clarify that disclaimer would not be required only if the identical part of the applied-for mark would not be generic. |
| 1217 | Added case cite. |
| 1301.01(a)(ii) | Added case cite. |
| 1301.03(a) | Revised to clarify when refusal must be made for "beta" specimens. |
| 1306.06(e) | Revised to clarify requirements for sufficient information in identification of goods/services. |
| 1402.05 | Added case cites. |
| 1402.08 | Revised to clarify that goods/services cannot be moved if either application has been approved for publication. |
| 1402.11(a) | Revised to clarify the nature of the Class 38 service of providing telecommunications connections to the internet. Deleted example of "technical support services" in Class 39. Deleted "Miscellaneous Computer Services." |
| 1403.05 | Replaced reference to TRAM with reference to database. |
| 1604.07(b) | Revised to remove references to TRAM and TSDR. |
| 1604.07(c) | Replaced references to TRAM and TSDR with references to Trademark database. |
| 1604.15 | Replaced reference to TRAM and TSDR with reference to Trademark database. |
| 1604.16 | Revised TMEP cross reference. |
| 1606.06 | Replaced references to TRAM and TSDR with references to Trademark database. |
| 1606.11 | Replaced reference to TRAM and TSDR with reference to Trademark database. |
| 1606.12 | Revised TMEP cross reference. |
| 1608 | Added case cite. Replaced reference to TRAM and TSDR with reference to Trademark database. |
| 1609.02 | Updated cite to the IB’s Guide to International Registration. |
| 1611 | Replaced references to TRAM and TSDR with references to Trademark database. Revised to clarify procedures for requesting that Trademark database be updated. |
| 1612 | Replaced references to TRAM and TSDR with references to Trademark database. |
| 1613.15 | Replaced reference to TRAM and TSDR with reference to Trademark database. |
| 1613.16 | Revised TMEP cross reference. |
| 1615.02 | Updated cite to the IB’s Guide to International Registration. Replaced reference to TRAM and TSDR with reference to Trademark database. |
| Chapter 1700 | All cited cases reviewed as to relation to section topic and accuracy of parentheticals and quoted material and updated as appropriate. Updated cross references to TMEP sections and added cross references to TMEP and Trademark Rules, as appropriate. Rewording for clarity throughout. |
| 1705.04 | Revised to clarify petition deadlines for §8 and §9 rejections and petitions to revive. |
| 1705.06 | Revised to clarify that examining attorney must not suspend unless stay is specifically requested and granted. |
| 1706 | Revised to clarify standard of review of examining attorney’s action. |
| 1707 | Revised to clarify standard of review of examining attorney’s action. |
| 1712.02(a) | Deleted paragraph (10) regarding e-mailed response to Post Registration Office action. |
| 1713.01 | Revised to clarify standard of review of examining attorney’s action and deleted cross reference. |
| 1714.01(f)(ii)(A) | Changed italicized heading to numbered section. Revised text to clarify when unintentional delay standard does not apply and procedures regarding request for reconsideration. |
| 1714.01(f)(ii)(B) | Changed italicized heading to numbered section. |
| 1714.01(f)(ii)(C) | Changed italicized heading to numbered section. |
| 1714.01(f)(ii)(D) | Changed italicized heading to numbered section. Added statement regarding failure to receive Office action. |
| 1714.01(f)(ii)(E) | Changed italicized heading to numbered section. |
| 1715.01(a) | Added example regarding foreign applications. |
| 1715.02(b) | Revised to clarify procedure when examining attorney does not issue refusal or requirement. |
| 1802 | Revised to clarify procedures for congressional and other official inquiries. |
| 1900 | Updated cites to the IB’s Guide to International Registration. |
| 1902.02(a) | Updated cite to the IB’s Guide to International Registration. |
| 1902.02(c) | Replaced references to TRAM and TSDR with references to Trademark database. |
| 1902.02(d) | Updated cite to the IB’s Guide to International Registration. Replaced reference to TRAM with reference to Trademark database. |
| 1902.02(k) | Updated cite to the IB’s Guide to International Registration. |
| 1902.07(a) | Updated cite to the IB’s Guide to International Registration. |
| 1902.07(d) | Updated cite to the IB’s Guide to International Registration. |
| 1902.08(b) | Updated cite to the IB’s Guide to International Registration. |
| 1904.02(c) | Updated cite to the IB’s Guide to International Registration. |
| 1904.02(g) | Replaced reference to TRAM with reference to Trademark database. |
| 1904.02(h) | Revised to clarify requirements for responding to Office action and what may be issued as a first Office action. Replaced reference to TRAM with reference to Trademark database. |
| 1904.02(j) | Updated cite to the IB’s Guide to International Registration. |
| 1904.03(f) | Replaced reference to TRAM with reference to Trademark database. |
| 1904.09 | Revised to clarify deadline and procedures for transformation requests. |
| 1904.09(b) | Replaced references to TRAM with references to Trademark database. |
| 1906.01(a)(iv) | Updated cite to the IB’s Guide to International Registration. |
| 1906.01(i) | Updated cites to the IB’s Guide to International Registration. |
| App. C | Updated to rearrange existing list of statutes and to add additional statutes. |
| App. D | Corrected description for Danish entity "A/S"; deleted Swiss entity "KAG"; added Swiss entity "KommAG"; corrected description for "Ltd."; corrected description for Swiss entity "SA"; corrected description for "SApA" entity; corrected description for French entity "Sarl"; added Swiss entity "Sarl or SARL"; corrected entity "SCOP"; added Swiss entity "SC par action"; added Swiss entity "Scoop". |