Change Summary
CHANGES: INDEX TO CHANGES IN TMEP OCTOBER 2014
Attention is directed to the following changes in the October 2014 TMEP.
SECTION | CHANGE |
---|---|
TMEP | Incorporated precedential case law issued prior to October 1, 2014. |
301 | Deleted out-of-date information regarding TEAS Global Forms. |
401.02 | Added cross reference. |
501.01(a) | Clarified conditions required for examining attorney to issue an inquiry concerning the compliance of an assignment with the cited provisions of §10 of Trademark Act. |
604.01 | Clarified that an e-mail does not satisfy the appearance requirements, but that submission of a signed document after issuance of an Office action and prior to response, stating that the practitioner represents the applicant and requesting that the Office records be updated is an appearance. |
611.04 | Added example of potentially unauthorized party. |
708.04 | Added example of when it is appropriate to issue a priority action. |
710.03 | Added statement regarding probative value of third-party applications and supporting case cites. |
713.03 | Changed section title to "Response to Applicant’s Arguments in Nonfinal Actions" and added cross references. |
714.05(a)(i) | Added cross references. |
715.02 | Clarified that in rare circumstance, examining attorney must attempt to promptly notify applicant if final requirement or refusal is withdrawn to prevent filing of unnecessary appeal. |
715.03 | Reworded for clarity. Added cross reference. |
715.03(a) | Changed section title to "Examining Attorney’s Action When No New Issue or No Significantly Different Evidence Is Presented in Request for Reconsideration and No Notice of Appeal Has Been Filed." Reworded for clarity. Added cross reference. |
715.03(a)(i) | Corrected section number and changed section title to "Request for Reconsideration Resolves All Outstanding Issues and No Notice of Appeal Has Been Filed." |
715.03(a)(ii) | Corrected section number and changed section title to "Request for Reconsideration Does Not Resolve All Outstanding Issues and No Notice of Appeal Has Been Filed." |
715.03(a)(ii)(A) | Corrected section number and changed section title to "Prior Amendment Withdrawn." |
715.03(a)(ii)(B) | Corrected section number and changed section title to "Outstanding Refusals and/or Requirements Must Be Continued, Time Remaining in Response Period for Applicant to Appeal, and No Notice of Appeal Has Been Filed." Reworded to clarify procedure and proper abandonment action. Added cross reference. |
715.03(a)(ii)(C) | Corrected section number and changed section title to "Outstanding Refusals and/or Requirements May Be Resolved if Applicant Is Given 30 Days or Time Remaining in Response Period to Comply with Issues." Reworded to clarify procedure and proper abandonment action. Added case cite and cross references. |
715.03(a)(ii)(D) | Corrected section number and changed section title to "Outstanding Refusals and/or Requirements Must Be Continued, Time for Appeal Has Expired, and No Notice of Appeal Has Been Filed – Abandon for Incomplete Response." Reworded to clarify procedure. Added case cite and cross reference. |
715.03(a)(ii)(E) | Corrected section number and changed section title to "Responses After Final Signed by Unauthorized Persons, Unsigned Responses, TEAS Responses Consisting Only of a Signature, and TEAS Responses Missing Significant Data or Attachments" Reworded to clarify procedure and proper abandonment action. |
715.04 | Reworded to clarify procedure. |
715.04(a) | Clarified that action must issue if request for reconsideration does not include new evidence significantly different from that previously submitted. |
715.04(b) | Updated to clarify procedure. |
718.02 | Corrected cross reference. Added cross references. |
718.03 | Added cross references. Reworded to clarify proper abandonment action. |
718.03(a) | Reworded to clarify procedure. Added cross references. |
718.03(b) | Rewritten, in part, to clarify procedures after response to nonfinal and final actions and when response is unsigned or signed by an unauthorized person. |
Chapter 800 | 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. |
801.02(a) | Clarified that presumption is to exclusive right to use in commerce. Deleted sentence regarding requesting registration on Principal Register. |
803.03(c) | Clarified when "association/associazione" is acceptable for foreign associations without further explanation. |
803.03(e)(i) | Clarified that foreign country of incorporation or organization should be indicated if foreign entity is a trustee. |
803.04 | Clarified requirements regarding §66(a) applications. |
804.01(a)(i) | Deleted list of countries and updated link to information about the Hague Convention Abolishing the Requirement of Legalisation for Foreign Public Documents |
804.01(b) | Clarified electronic signature requirements for TEAS submissions. |
804.03 | Revised to include circumstance in which date of signature may be entered by examiner’s amendment. |
804.04 | Deleted paragraph regarding applications under §66(a). |
806.01(d) | Clarified that applicant must provide a translation of foreign registrations or certifications that are not in English. |
806.01(e) | Clarified that §66(a) applicant cannot change the basis or claim more than one basis unless the applicant meets the requirements for transformation under §70(c). |
806.02(b) | Clarified that applicant must notify examining attorney if request to divide has been filed. |
806.03(c) | Clarified that presumption of continuing valid basis applies unless there is contradictory evidence in the record and that amendment of an application that is the subject of an inter partes proceeding before the TTAB is governed by 37 C.F.R. §2.133(a). |
806.03(d) | Clarified that presumption of continuing valid basis applies unless there is contradictory evidence in the record. |
806.03(j)(ii) | Rewritten to include proper petition form, to clarify procedures, and to include requirement for proof of renewal if foreign registration has expired or will expire within six months. |
807 | Added information regarding acceptability of photograph as special-form drawing. |
807.03(a) | Clarified that USPTO will convert standard character marks in paper applications to standardized typeface. |
807.07(a)(i) | Clarified that color claim must be corrected if incorrect, incomplete, or inconsistent with drawing and that examining attorney has discretion to require applicant to indicate shades of a color if necessary for accuracy. |
807.07(a)(ii) | Clarified that color claim must be corrected if incorrect, incomplete, or inconsistent with drawing. |
807.14(c) | Clarified that addition of exclamation point to wording MOVE IT transforms wording to exclamatory statement with more than one meaning. |
809.01 | Clarified that Note to the File is required if no inquiry is made. |
809.01(a) | Clarified procedures for translation statements submitted by applicants in improper formats. |
816.04 | Updated to include procedure when applicant requests registration on the Supplemental Register in the alternative. |
903.04 | Clarified that applicant may amend to date earlier than the date originally stated. |
904 | Added guidance clarifying that registration must be refused if specimen indicates that goods have not been sold or transported in commerce. |
904.04(a) | Revised section title to "Drawing or ‘Picture’ of the Mark; Digitally Created Specimen". Updated section to indicate that an image of the goods that has been digitally created or altered to include the mark is not a proper specimen. Added case cite. |
904.07(a) | Added example of specimen that is a digitally created or altered image of the goods to list. |
1003.04(b) | Clarified procedures following applicant’s response to Office action. |
1108.02(f) | Added example of effort to use the mark in commerce and examples of unacceptable explanations for failure to use the mark in commerce. |
1110.10 | Updated to clarify that in certain situation applicant request to divide out the goods/services under the §44(e) basis and also request that the same goods/services remain in the parent application under §1(b). |
1201.02(b) | Added case cite; deleted older case cite. |
1202.05(d)(ii) | Clarified procedures related to drawings to register a single color as a service mark used on a variety of items not viewed simultaneously. |
1202.12 | Clarified search procedures for application to register a mark containing wording for live plants, agricultural seeds, fresh fruits, or fresh vegetables. |
1203.01 | Added case cites. |
1203.03(b)(i) | Updated and clarified tests used in determining whether a proposed mark is disparaging. Added case cites. |
1203.03(c)(i) | Updated to include procedure when examining attorney independently confirms that the person or institution is connected with the goods sold or services performed by the applicant. |
1204 | Clarified that §2(b) applies to any state or municipality of the United States. Added case cite. |
1204.05 | Revised to clarify nature of "89" series code. |
1205.01 | Clarified that designations protected by federal statutes or regulations may be entered into the USPTO search records. |
1205.03 | New section: "Native American Tribal Insignia" |
1206.02 | Clarified meaning of "publicly connected." Added case cite. Updated case cite. |
1206.03 | Clarified procedure regarding marks comprised of a first name, pseudonym, stage name, surname, nickname, or title. Added case cites. |
1207.01(a)(vi) | Added case cite. |
1207.04(d) | Updated to include services. |
1209.01(c)(i) | Added case cite. Added parenthetical to existing case cite. |
1209.01(c)(iii) | Added case cite. |
1209.03(f) | Added case cites. |
1210.02(b)(i) | Added case cite. |
1301.01(a)(ii) | Added cross reference. |
1301.01(a)(iii) | Clarified procedure for determining whether the activity identified in the application is a separately registrable service. Added guidance regarding clinical trials. |
1301.01(b)(vi) | New section: "Clinical Trials" |
1301.03(a) | Added examples of specimens indicating that services have not been rendered. |
1301.04─1301.04(ii) | Incorporated Exam Guide 3-14 (Service-Mark Specimens). |
1301.04 | Moved current content regarding acceptable specimens to new section 1301.04(a). Incorporated content from Exam Guide 3-14. |
1301.04(a) | Changed section title to "Whether the Specimen Shows the Mark as Actually Used by the Applicant in Commerce in the Sale or Advertising of the Services." Deleted current content. Incorporated content from Exam Guide 3-14. |
1301.04(b) | Changed section title to "Whether the Identified Services Are Registrable Services." Deleted current content. Incorporated content from Exam Guide 3-14. |
1301.04(c) | Changed section title to "Whether the Specimen Shows Use in Connection with All Classes in a Multiple-Class Application." Moved current content to new section 1301.04(h)(i). Incorporated content from Exam Guide 3-14. |
1301.04(d) | Changed section title to "Whether the Mark Is Used in Connection With the Identified Services." Moved current content to new section 1301.04(h)(ii). Incorporated content from Exam Guide 3-14. |
1301.04(e) | New section: "Whether the Mark Functions as a Service Mark." Incorporated content from Exam Guide 3-14. |
1301.04(f) | New section: "Elements of an Acceptable Service-Mark Specimen." Incorporated content from Exam Guide 3-14. |
1301.04(f)(i) | New section: "Show the Mark." Incorporated content from Exam Guide 3-14. |
1301.04(f)(ii) | New section: "Associate the Mark with the Identified Services." Incorporated content from Exam Guide 3-14. |
1301.04(g) | New section title: "Grounds for Refusal." |
1301.04(g)(i) | New section: "Failure to Show the Mark Used in Commerce." Incorporated content from Exam Guide 3-14. |
1301.04(g)(ii) | New section: "Failure to Show the Mark Functioning as a Service Mark." Incorporated content from Exam Guide 3-14. |
1301.04(h) | New section title: "Considerations and Common Issues when Examining Certain Specimens" |
1301.04(h)(i) | New section number. Incorporated content from previous section 1301.04(c). |
1301.04(h)(ii) | New section number. Incorporated content from previous section 1301.04(d). |
1301.04(h)(iii) | New section: "Specimens for Technology-Related Services." Incorporated content from Exam Guide 3-14. |
1301.04(h)(iv) | New section: "Common Forms of Specimens for Modern Technology-Related Services." Incorporated content from Exam Guide 3-14. |
1301.04(h)(iv)(A) | New section: "Sign-In Screens." Incorporated content from Exam Guide 3-14. |
1301.04(h)(iv)(B) | New section: "Title or Launch Screens." Incorporated content from Exam Guide 3-14. |
1301.04(h)(iv)(C) | New section: "Webpages." Incorporated content from Exam Guide 3-14. |
1301.04(h)(iv)(D) | New section: "Software Applications (‘Apps’)." Incorporated content from Exam Guide 3-14. |
1301.04(i) | New section: "Examples of Acceptable Service-Mark Specimens." Incorporated content from Exam Guide 3-14. |
1301.04(j) | New section: "Examples of Unacceptable Service-Mark Specimens." Incorporated content from Exam Guide 3-14. |
1306.02─ 1306.2(k) | Incorporated Exam Guide 2-14 (Geographic Certification Marks) |
1306.02 | Revised section title to "Geographic Certification Marks that Are Indications of Regional Origin." Incorporated content from Exam Guide 2-14. Deleted two existing paragraphs. |
1306.02(a) | Revised section title to "Identifying Geographic Certification Mark Applications" and incorporated content from Exam Guide 2-14. Deleted existing content. |
1306.02(b) | New section title: "Elements of Geographic Certification Mark Applications" |
1306.02(b)(i) | New section: "Certification Statement." Incorporated content from Exam Guide 2-14. |
1306.02(b)(ii) | New section: "Certification Standards." Incorporated content from Exam Guide 2-14. |
1306.02(b)(iii) | New section: "Identification of Goods and Services." Incorporated content from Exam Guide 2-14. |
1306.02(b)(iv) | New section: "Classification of Goods and Services." Incorporated content from Exam Guide 2-14. |
1306.02(b)(v) | New section: "Authority to Control a Geographic Certification Mark." Incorporated content from Exam Guide 2-14 with existing content. |
1306.02(b)(vi) | New section: "Specimens of Use." Incorporated content from Exam Guide 2-14. |
1306.02(c) | Revised section title to "Mark Must Serve to Certify Geographic Origin" and incorporated content from Exam Guide 2-14. Deleted existing content. |
1306.02(d) | New section: "Section 2(e)(2) Does Not Apply to Geographic Certification Marks." Incorporated content from Exam Guide 2-14. |
1306.02(e) | New section: "Geographically Deceptive Marks Not Registrable as Geographic Certification Marks." Incorporated content from Exam Guide 2-14. |
1306.02(f) | New section: "Geographic Designations that Do Not Certify Regional Origin." Incorporated content from Exam Guide 2-14. |
1306.02(g) | New section: "Likelihood-of-Confusion Search and Analysis." Incorporated content from Exam Guide 2-14. |
1306.02(g)(i) | New section: "Mark Is a Geographic Certification Mark." Incorporated content from Exam Guide 2-14. |
1306.02(g)(ii) | New section: "Mark Contains a Geographic Designation but Is Not a Geographic Certification Mark." Incorporated content from Exam Guide 2-14. |
1306.02(h) | New section: "Same Mark Not Registrable as a Certification Mark and Another Type of Mark." Incorporated content from Exam Guide 2-14. |
1306.02(i) | New section: "American Viticultural Areas." Incorporated content from Exam Guide 2-14. |
1306.02(j) | New section: "Certification Marks Containing §2(b) Matter." Incorporated content from Exam Guide 2-14. |
1306.02(k) | New section: "Examples of Geographic Certification Marks." Incorporated content from Exam Guide 2-14. |
1402.09 | Revised section title to "Use of Marks, or Terms ‘Applicant’ and ‘Registrant,’ Inappropriate in Identifications." |
1501.03 | Clarified that examining attorney must attempt to promptly notify applicant if final requirement or refusal is withdrawn after consideration of applicant’s appeal brief. |
1604.10 | Clarified that use in commerce requirement may be satisfied if the mark has not been abandoned and the use meets the statutory definition. |
1604.11 | Revised to change "Substitute Affidavit or Declaration Claiming Use" to "New Affidavit or Declaration Claiming Use" and to clarify that it may be submitted if there is time remaining in the statutory filing period. |
1604.16 | Added cross reference. |
1604.18 | Revised cross reference. |
1604.18(a) | Added cross reference. |
1605 | Revised cross reference. |
1605.06 | Revised cross reference. |
1606.12 | Added cross reference. |
1606.14 | Revised cross reference. |
1606.14(a) | Revised cross reference. |
1613.10 | Clarified that use in commerce requirement may be satisfied if the mark has not been abandoned and the use meets the statutory definition |
1613.11 | Revised to change "Substitute Affidavit or Declaration Claiming Use" to "New Affidavit or Declaration Claiming Use" and to clarify that it may be submitted if there is time remaining in the statutory filing period. |
1613.16 | Added cross reference. |
1613.18 | Revised cross reference. |
1613.18(a) | Added cross reference. |
1703 | Two additional types of petitions added to list of common issues. Added cross reference. |
1704 | Added cross references. Clarified that petitions to accept a late-filed §8 or §71 affidavit, or a §9 renewal application, will be dismissed. |
1705.01 | Clarified that petitions by third parties in ex parte matters are dismissed. |
1705.04 | Added deadlines for petition to reinstate a registration for failure to perfect a timely filed maintenance filing under §§8, 9, or 71 and petition to reverse holding of abandonment for failure to file a complete response to an Office action. Added cross references. Clarified that petitions filed after the expiration of the deadlines are denied dismissed. |
1705.05 | Deleted statement that USPTO will deny request for reinstatement as untimely if it was not filed: (1) within two months of the issuance date of the cancellation notice; or (2) within two months of actual notice of cancellation. |
1708 | Clarified that a petition that requests a waiver of a statutory requirement will be dismissed. |
1711 | Clarified that request to restore the filing date must be filed within two months of the issuance date of notice denying the filing date or it will be denied dismissed as untimely. |
1712.02 | Changed section title to "Reinstatement of Registrations Cancelled or Expired" |
1712.02(a) | Changed section title to "Request for Reinstatement Due to Office Error." Revised procedure and identity of electronic form for requesting reinstatement. Deleted statement that USPTO will deny request for reinstatement as untimely if it was not filed: (1) within two months of the issuance date of the cancellation notice; or (2) within two months of actual notice of cancellation. Clarified that petitions to reinstate after failure to file a §8 or §71 affidavit, or a §9 renewal application, will be dismissed. |
1712.02(b) | Clarified time for filing petition and statements required in petition. Clarified that petitions to extend or waive the deadline for filing a §8 or §71 affidavit, or a §9 renewal application, will be dismissed.. |
1713.01 | Added case cite. |
1714.01(b) | Clarified that petition to revive that would extend statement of use filing period beyond 36 months will be dismissed. |
1904.01(e) | Added procedure when it is not necessary to issue an Office action. |
1904.02(c) | Added procedures for handling parenthetical language within identifications of goods/services. |
1904.02(k) | Added requirement to correct incorrect, incomplete, or inconsistent color claims and/or location statements. |
1904.07 | Revised to clarify concept of "invalidation" of registered extension of protection. |
1904.07(a) | New section: "Invalidation Resulting From Cancellation Due to Third-Party Challenge." |
1904.07(b) | New section: "Invalidation Resulting From Cancellation for Failure to File §71 Affidavit or Declaration." |
1904.07(c) | New section: "Invalidation Resulting From Voluntary Surrender of Registered Extension of Protection." |
1904.07(d) | New section: "Issuance of Notice of Invalidation to the International Bureau." |
Appendix D | Added two foreign designations and their abbreviations. |