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EXAM GUIDE NO. 1-03Changes Affecting All Applications and Registrations
Issued October 30, 2003
Effective November 2, 2003
This exam guide discusses changes to the Rules of Trademark Practice, effective November 2, 2003, affecting all applications and registrations. A final rule, published in the Federal Register on September 26, 2003, at 68 FR 55748, is posted at http://www.uspto.gov/web/offices/com/sol/notices/68fr55748.pdf.
These changes are effective November 2, 2003, unless stated otherwise below.
Website addresses cited in this guide were available as of October 28, 2003.
A. Standard Character Drawings
1. Requirements for Standard Character Drawings
2. List of Standard Characters
3. Drawings Containing Both a Standard Character Claim and Designs or Other Elements
5. Standard Character Drawing and Specimen of Use
6. When a Special Form Drawing Is Required
7. Drawings in Typed Format Will Be Processed as Standard Character Drawings
8. Drawings Where The Format Is Unclear
9. Drawings in Applications Filed Before November 2, 2003
B. Color Drawings1. Requirements for Color Drawings
2. Color Drawings Filed Without a Color Claim
3. Color Drawings Filed With an Incorrect Color Claim
4. Black and White Drawings and Color Claims
6. Drawings in Applications Filed and Registrations Issued Before November 2, 2003
7. Lining and Stippling Statements for Drawings
C. Requirements Applying to Electronically Submitted Drawings
1. Standard Character Drawings
3. Requirements for Digitized Images
D. Requirements Applying to Drawings Submitted on Paper
II. SPECIMENS FILED ELECTRONICALLY
V. AUTOMATIC UPDATING OF OWNERSHIP OF TRADEMARK APPLICATIONS AND REGISTRATIONS
B. Change of Practice - Automatically Updating Ownership Records in the Trademark Database
1. Circumstances in Which Trademark Database Will Not be Automatically Updated
2. Processing Time for Automatic Updating
3. Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title
C. Applicability of Change of Practice to Requests for Recordation Filed Before November 2, 2003
VI. POLICY CHANGE - RECLASSIFICATION AFTER PUBLICATION OR REGISTRATION
A. Post-Publication Changes to Classification in Pending Applications
B. Post-Registration Changes to Classification and Requests for Correction
I. DRAWINGS
A. Standard Character Drawings
Trademark Rule 2.52, 37 C.F.R. § 2.52, has been amended to replace "typed" drawings with "standard character" drawings. Applicants who seek to register a mark without any claim as to the manner of display must submit a standard character drawing that complies with the requirements of the amended rule. See Appendix A for the text of the rule as amended.
1. Requirements for Standard Character Drawings
An applicant may submit a standard character drawing if:
a. All letters and words in the mark are depicted in Latin characters;
b. All numerals in the mark are depicted in Roman or Arabic numerals;
c. The mark includes only common punctuation or diacritical marks; and
d. The mark does not include a design element.
37 C.F.R. §2.52(a). In addition, the applicant must submit the following statement:
The mark is presented in standard character format without claim to any particular font style, size or color.
In the drawing of the mark, the applicant will no longer have to display the mark in all uppercase letters. Instead, the applicant may depict the mark in any font style; may use bold or italicized letters; and may use both uppercase and lowercase letters, all uppercase letters or all lowercase letters.
2. List of Standard Characters
The Office has created a standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing. The standard character set is available on the Office's website at http://www.uspto.gov/teas/StandardCharacterSet.html. If the drawing includes elements that are not in the set, then the examining attorney must treat the drawing as a special form drawing and require the applicant to delete the standard character claim.
3. Drawings Containing Both a Standard Character Claim and Designs or Other Elements
If the application contains a standard character claim, but the mark includes a design element; or color; or a claim of a particular style or size of lettering; or other elements so that the mark does not meet the requirements of 37 C.F.R. §2.52(a), then the examining attorney must: (1) treat the drawing as a special form drawing; and (2) require that the applicant delete the standard character claim from the record. 37 C.F.R. §2.52(b). In addition, the examining attorney must either enter the appropriate mark drawing code in the TradeUps database and enter a note to the file, or instruct a Legal Instruments Examiner to update the TradeUps database. See section I.A.10 of this exam guide concerning mark drawing codes.
4. Changing From Special Form Elements to Standard Characters, or the Reverse, is Likely to Be a Material Alteration
A special form drawing containing a design element, color, a claim to a particular style or size of lettering, or other distinctive elements cannot be amended to a standard character drawing unless the amendment is non-material. 37 C.F.R. §2.72.
Conversely, a standard character drawing cannot be amended to a special form drawing containing a design element, color, or a claim to a distinctive style or size of lettering, unless the amendment is non-material. 37 C.F.R. §2.72.
5. Standard Character Drawing and Specimen of Use
If applicant submits a claim of standard character format, the mark shown in the drawing does not have to appear in the same font style, size, or color as the mark shown on the specimen of use. However, the examining attorney must review the mark depicted on the specimen to determine whether a standard character claim is appropriate, or whether a special form drawing is required. TMEP §807.07(b).
6. When a Special Form Drawing Is Required
If the applicant has claimed standard character format and the examining attorney determines that the standard characters are displayed in a distinctive manner that changes the meaning or overall commercial impression of the mark, the examining attorney must process the drawing as a special form drawing, and require the applicant to delete the standard character claim. The examining attorney may delete the standard character claim by examiner's amendment after obtaining approval from the applicant or applicant's attorney.
There is no change to current practice regarding when a special form drawing is required. The examining attorney must require the applicant to submit a special form drawing if the mark is displayed in a distinctive manner that changes the meaning or overall commercial impression of the mark. See Trademark Manual of Examining Procedure (TMEP) §807.07(b).
7. Drawings in Typed Format Will Be Processed as Standard Character Drawings
If the application does not include a standard character claim, but the mark is shown in a format that previously would have been considered "typed" (i.e., the mark is shown in all capital letters, or the mark is specified as "typed" in the body of the application, on a separate drawing page, or on a cover letter filed with the application), then the examining attorney shall treat the drawing of the mark as a standard character drawing.
If the application is ready to be published for opposition, the examining attorney should enter the standard character claim by examiner's amendment. No prior authorization from the applicant is required to add a claim by an examiner's amendment in this situation. See TMEP § 707.02. If an Office action is necessary, it should include a requirement that the applicant submit a standard character claim.
8. Drawings Where The Format Is Unclear
Where it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, then the examining attorney must contact the applicant for clarification. For example, clarification is needed if the font style used in the mark on the drawing does not match the font style used on the specimen and there is no standard character claim in the application file. If the mark is intended to be in standard characters, then the examining attorney must require that the applicant amend the application to include the standard character claim. This may be done by examiner's amendment.
9. Drawings in Applications Filed Before November 2, 2003
For applications filed before November 2, 2003, the applicant has the option of submitting a typed drawing in all uppercase letters under the old rules, or a standard character drawing under the new rules. If the drawing of record does not meet the requirements for a typed drawing under the old rules (e.g., the drawing shows the mark in upper and lower case letters), the examining attorney must require a new drawing. In response, the applicant may submit a claim of standard characters to convert the drawing to a standard character drawing, or submit a new drawing in all uppercase letters to comply with the old rules for typed drawings. The examining attorney may enter the standard character claim by an examiner's amendment, if appropriate.
If the typed drawing in the application is acceptable under the old rules, no action by the examining attorney is required regarding the drawing. However, the applicant may voluntarily amend the typed drawing to a standard character drawing by submitting a claim of standard characters. Voluntary amendments are not permitted in the period between approval for publication and issuance of a registration or Notice of Allowance, or in the period between approval for registration and issuance of a registration.
If the applicant amends to a standard character drawing, either in response to the examining attorney's requirement or voluntarily, the examining attorney must have Office records updated to change the mark drawing code to 4. See section I.A.10 of this exam guide concerning mark drawing codes.
10. Mark Drawing Code
Standard character drawings are coded in the Office's systems as "mark drawing code 4." Typed drawings are coded as "mark drawing code 1." "Mark drawing code 1" will no longer be available for applications filed on or after November 2, 2003. Therefore, standard character drawings must use only "mark drawing code 4." Applications that were filed before November 2, 2003, may be amended to "mark drawing code 1," if appropriate for that drawing.
B. Color Drawings
1. Requirements for Color Drawings
The Office will begin accepting color drawings on November 2, 2003. Starting on that date, the Office will no longer accept black and white drawings with a color claim, or drawings that show color by use of lining patterns. 37 C.F.R. §2.52(b)(1).
Color drawings must be accompanied by the following: (1) a color claim naming the colors that are a feature of the mark; and (2) a separate statement describing where the color(s) appear on the mark. A color drawing will not publish without both of these statements.
A properly worded color claim would read as follows:
The color(s) <name the color(s)> are claimed as a distinctive feature of the mark.
A properly worded description would read as follows:
The color(s) <name the color(s)> appear in <specify portion of mark on which color(s) appear>.
If the color claim or description is unclear or ambiguous, the examining attorney must require clarification. The applicant may supplement the required written description of the color contained in a mark with a reference to a commercial color identification system. The Office does not endorse or recommend any one commercial color identification system. The written description of the mark must include a generic description of the color, in addition to the reference to the commercial color identification system.
2. Color Drawings Filed Without a Color Claim
If the applicant submits a color drawing but does not include a color claim in the written application, and if the color is a material element of the mark, the examining attorney must require the applicant to submit a color claim naming the color(s) that appear in the mark, and a separate statement describing where the color appears on the mark. If the examining attorney determines that the color is a non-material element of the drawing, the applicant may instead elect to submit a black and white drawing.
3. Color Drawings Filed With an Incorrect Color Claim
Where the color shown in the drawing is inconsistent with the color claimed in the written application, e.g., the mark is shown in blue in the drawing, but the color claimed is orange, then the drawing controls. The color claim may be corrected to conform to the drawing, unless amending the drawing to conform to the color claim materially alters the mark shown in the drawing.
4. Black and White Drawings and Color Claims
If an applicant submits a black and white drawing that is lined for color, or if the application includes a color claim in the written application, the examining attorney must require that applicant submit a color drawing, a color claim naming the color(s), and a separate statement describing where the color appears on the mark. If, however, the examining attorney determines that the color is a non-material element of the drawing, the applicant may instead elect to submit a black and white drawing that is not lined for color, or delete the color claim in the written application, whichever is applicable.
If an applicant submits a black and white drawing that is not lined for color, and there is no color claim in the written application, generally the applicant cannot substitute a color drawing and claim color, unless the color is a non-material element of the drawing.
5. Gray Tones in Drawings
The Office now accepts drawings that contain the color gray, or stippling that produces gray tones. The drawing is processed as a color drawing. Drawings with gray tones are processed like any other color drawing. See section I.B.1 of this exam guide. If the drawing contains the color gray, or stippling that produces gray tones, and the record is unclear as to whether applicant is claiming color, applicant must clarify the ambiguity.
6. Drawings in Applications Filed and Registrations Issued Before November 2, 2003
In applications filed before November 2, 2003, if the drawing of record does not meet the requirements for claiming color under the old rules, the examining attorney must require a new drawing. In response, the applicant may submit either (1) a black and white drawing that meets the requirements for claiming color under the old rules, or (2) a color drawing with the required statements for claiming color under the new rules.
If the drawing in the application is acceptable to claim color under the old rules, no action by the examining attorney is required. However, the applicant may voluntarily submit a color drawing under the new rules with the requisite color claim and a separate description of the color(s) in the mark. Voluntary amendments are not permitted in the period between approval for publication and issuance of a registration or Notice of Allowance, or in the period between approval for registration and issuance of registration.
Similarly, a registrant may substitute a color drawing for a black and white drawing in a registration where color is claimed, by filing a §7 request to amend the registration certificate. The request must include a color drawing, a color claim, a description of where the color appears in the mark, and a $100 fee.
7. Lining and Stippling Statements for Drawings
Black and white drawings lined for color will not be accepted after November 2, 2003. See section I.B.1 of this exam guide. Thus, the examining attorney will no longer be required to enter a statement that the lining or stippling represents shading or a feature of the mark unless he/she believes such a statement is necessary to accurately describe the mark.
C. Requirements Applying to Electronically Submitted Drawings
The drawing must meet the requirements of both 37 C.F.R. §2.52 and 37 C.F.R. §2.53. See Appendix A.
1. Standard Character Drawings
If an applicant is filing a standard character drawing, the applicant must enter the mark in the appropriate field or attach a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c). The applicant must also submit a standard character claim. See section I.A.1 of this exam guide.
If a standard character drawing is filed through the Trademark Electronic Application System (TEAS), the characters entered in the appropriate field in the TEAS application or response form are automatically checked against the standard character set.
The standard character set includes two lists: supported characters and unsupported characters. If any of the characters in the mark are not in the "supported character" list, then the applicant must attach a digitized image that meets the requirements of 37 C.F.R. §2.53(c). If all the characters in the mark are in the "supported character" list, then the Office will create a .jpg image. The application record will indicate that standard characters have been claimed and that the Office has created the image. If the Office created the digitized image, the examining attorneys need not check the standard character drawing against the standard character set during examination.
If the Office did not create the digitized image, then the examining attorney must check the standard characters in the drawing against the standard character set. If the characters are not in the set, then the examining attorney must process the drawing as a special form drawing, and require the applicant to delete the standard character claim. See section I.A.1 of this exam guide.
2. Special Form Drawings
If an applicant is filing a special form drawing, the applicant must attach to the electronic submission a digitized image of the mark that meets the requirements of 37 C.F.R. §2.53(c). The same issues and requirements discussed in section I.A.6 of this exam guide apply to special form drawings submitted electronically.
3. Requirements for Digitized Images
The image must be in .jpg format; scanned at no less than 300 dots per inch and no more than 350 dots per inch, with a length of no less than 250 pixels and no more than 944 pixels, and a width of no less than 250 pixels and no more than 944 pixels. All lines must be clean, sharp and solid, must not be fine or crowded, and must produce a high quality image when copied. 37 C.F.R §2.53(c)
Digitized images that are outside the stated pixel count will be accepted for filing, but must be corrected by the applicant prior to approval for publication. Examining attorneys must review the pixel count as shown on the input field of the application data sheet. If the pixel count is less than 250 pixels or more than 944 pixels in either direction, then the examining attorney must require that the applicant submit a new digitized image that complies with the pixel requirement. This is also necessary for substitute drawings submitted via the TEAS response form.
D. Requirements Applying to Drawings Submitted on Paper
The drawing must meet the requirements of both 37 C.F.R. §2.52 and 37 C.F.R. §2.54. See Appendix A.
The Office will create a digitized image of any drawing submitted on paper. These images will have an acceptable pixel count. However, the examining attorney is responsible for determining whether the image submitted on paper meets the size requirements of 37 C.F.R. § 2.54. Specifically, the image in the drawing cannot be larger than 3.15 inches high by 3.15 inches wide (8 cm high by 8 cm wide). If the image does not meet this requirement, then the examining attorney must require a new drawing.
II. SPECIMENS FILED ELECTRONICALLY
Trademark Rule 2.56(d)(4), 37 C.F.R. §2.56(d)(4), has been amended to require that a specimen transmitted through TEAS be a digitized image in .jpg format. The Office will not accept or open attachments in any other format. Attachments in .gif format are no longer acceptable.
III. PARTIAL ABANDONMENT
37 C.F.R. §2.65(a). If an applicant fails to respond, or to respond completely, within six months after the date an action is mailed, the application shall be deemed abandoned unless the refusal or requirement is expressly limited to only certain goods and/or services. If the refusal or requirement is expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services. A timely petition to the Director pursuant to §§ 2.63(b) and 2.146, if appropriate, is a response that avoids abandonment of an application.
General Rule. Trademark Rule 2.65(a), 37 C.F.R. §2.65(a), has been amended to provide that if a refusal or requirement is expressly limited to only certain goods/services, and the applicant fails to file a response to the refusal or requirement, the application shall be abandoned only as to those particular goods/services.
Partial abandonment applies only where the Office action expressly states that a refusal or requirement is limited to only certain goods/services or certain class(es). If the Office action contains any requirement or refusal that applies to all the goods/services, and the applicant fails to respond, the entire application will be abandoned.
Effective Date. The rule applies to all Office actions issued on or after November 2, 2003, regardless of the filing date of the application. It does not apply to Office actions issued before November 2, 2003.
Incomplete Response to Partial Refusal. Partial abandonment may also occur when an applicant fails to file a complete response to a final refusal or final requirement that is limited to only certain goods/services or certain class(es). If an applicant files an incomplete response to a nonfinal action that is limited to only certain goods/services or certain class(es), the examining attorney should issue a final action, making all outstanding requirements and refusals final. See TMEP §718.03 et seq. regarding incomplete responses.
Use of Headings in Office Actions. When issuing a partial refusal or requirement, the examining attorney is encouraged to use the heading "Partial Refusal" or "Partial Requirement," so it is clear in the record that the refusal or requirement applies only to certain goods/services or certain class(es).
Requirements for Amendment of Identification of Goods/Services. When the identification of goods/services includes some terminology that is indefinite and some terminology that is acceptable, the examining attorney should specify which terminology is indefinite, suggest amended language if possible, and indicate that the rest of the identification is acceptable.
When an applicant fails to respond to a requirement to amend some terminology in an otherwise acceptable identification of goods/services, the examining attorney, in his or her discretion, should (1) delete the indefinite goods/services from the identification, (2) instruct the Legal Instruments Examiner to delete the indefinite goods/services from the identification, or (3) issue an examiner's amendment deleting the unacceptable terminology from the identification. No prior authorization from the applicant or the applicant's attorney is needed to issue an examiner's amendment in this situation.
IV. CHANGES TO THE REQUIREMENTS FOR A SHOWING OF DUE DILIGENCE IN PETITIONS UNDER 37 C.F.R. §§2.66 AND 2.146
Effective May 2, 2004, the standard for a showing of due diligence in petitions to revive abandoned trademark applications under 37 C.F.R. §2.66 and petitions to the Director under 37 C.F.R. §2.146 will change from one year to six months. See notice at 68 FR 55748 (Sept. 26, 2003).
Applicants and registrants are responsible for tracking the status of matters pending before the Office. When a petitioner seeks to reactivate an application or registration that was abandoned, cancelled, or expired due to the loss or mishandling of documents sent to or from the Office, the Office will deny the petition if the petitioner was not diligent in checking the status of the application or registration, even if the petitioner can show that the Office actually received documents, or can swear that a notice from the Office was never received by the petitioner. TMEP §1705.05.
In petitions filed prior to May 2, 2004, a petitioner will be considered diligent if the party inquired as to the status of a pending matter within one year of the filing or receipt of a document for which further action by the Office is expected. In petitions filed on or after May 2, 2004, to be considered diligent, a petitioner must:
- Check the status of a pending application every six months between the filing date of the application and issuance of a registration;
- Check the status of a registration every six months after filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Trademark Act, until the petitioner receives notice that the affidavit or renewal application has been accepted; and
- Promptly request corrective action where necessary.
37 C.F.R. §§2.66(a)(2) and 2.146(i). The required showing of diligence is necessary to protect third parties who may be harmed by the removal and later reinsertion of an application or registration in the Office's database. Moreover, in view of the strict time limits for issuing refusals in §66(a) applications (see Guide To Implementation of Madrid Protocol in the United States, Exam Guide No. 2-03, section IV.B.4), the accuracy and integrity of the Office's database is more important than ever.
The Office's electronic systems are readily available over the Internet 24 hours a day, seven days a week. Applicants and registrants have immediate and free access to information concerning their applications and registrations. An applicant or registrant can easily check the status of a pending application or registration using the Trademark Applications and Registrations Retrieval ("TARR") database, available at http://tarr.uspto.gov/.
Delay in filing a Petition May Result in Cancellation of International Registration. If a petition to revive is filed more than two months after the mailing date of the notice of abandonment, and the subject application forms the basis of an international registration under the Madrid Protocol, it is likely that the international registration will be cancelled regardless of whether the basic application is revived. See Guide To Implementation of Madrid Protocol in the United States, Exam Guide No. 2-03, section II.I regarding the dependence of an international registration on the basic application or registration during the first five years after issuance of the international registration.
Similarly, a delay in filing a petition to reinstate a cancelled or expired registration that forms the basis of an international registration may result in cancellation of the international registration regardless of whether the basic registration is revived.
V. AUTOMATIC UPDATING OF OWNERSHIP OF TRADEMARK APPLICATIONS AND REGISTRATIONS
Effective November 2, 2003, except in certain limited circumstances, the Office will automatically update the ownership information in the Trademark database of registrations and pending applications when one of the following documents is recorded with the Assignment Services Division of the Office:
- Assignment of entire interest and goodwill
- Nunc Pro Tunc Assignment of entire interest and goodwill
- Merger
- Name Change
The Office has created an interface between the Assignment Services Division's database and the Trademark database that will enable the Office to automatically update ownership information in the Trademark database when the appropriate documents have been recorded in the Assignment Services Division. The Trademark database includes the TRAM (Trademark Reporting and Monitoring) System and the TARR database.
A. Previous Practice.
Prior to November 2, 2003, recording a document with the Assignment Services Division of the Office did not automatically change the ownership record in the Trademark database. To change the ownership record in the Trademark database, a new owner had to notify the Trademark Operation that ownership had changed. The procedures for notifying the Trademark Operation of ownership changes both prior to registration and after registration are set forth in TMEP §§502.02 and 502.03.
The Office does not update the Trademark database unless the records of the Assignment Services Division show a clear chain of title.
B. Change of Practice - Automatically Updating Ownership Records in the Trademark Database
If an assignment, merger, or change of name is recorded in the Assignment Services Division on or after November 2, 2003, the Office will automatically update the ownership of the application or registration in the Trademark database, except in the limited circumstances discussed in section V.B.1 below. In these situations, it is unnecessary for the new owner to notify the Trademark Operation of the change of ownership, or to file a request in a pending application that the certificate of registration issue in the name of the new owner.
The Trademark database will show only the last recorded owner, not the complete chain of title. The complete chain of title can be obtained from the Assignment database. The ownership field in the Trademark database will be automatically updated regardless of whether the records of the Assignment Services Division show a clear chain of title transferring ownership to the last recorded owner. The Trademark database will include the reel and frame number and execution date of the recorded document, as well as a notation to "Check Assignments." Both examining attorneys and trademark owners should check assignment records to ensure that the owner of record in the Trademark database has a clear chain of title.
1. Circumstances in Which Trademark Database Will Not be Automatically Updated
In the circumstances discussed below, the Office will not automatically update the Trademark database to show the change in ownership, even if the appropriate document is recorded in the Assignment Services Division on or after November 2, 2003. In these situations, the applicant must notify the Trademark Operation that the assignment or other title document has been recorded and request that the Trademark database be updated to show title in the new owner. 37 C.F.R. §3.85; TMEP §§502.01 and 502.02.
a. Execution Date Conflicts With Previously Recorded Document
If a previously recorded assignment, merger or change of name document for the same application or registration has an execution date that is the same as or later than the execution date of the subsequently recorded document, the Trademark database will not be automatically updated. Office personnel will have to review the assignment records and update the database manually.
b. Blackout Period: Ownership of Pending Applications Cannot be Updated During Certain Time Periods
The Trademark database will not be automatically updated to show a change of ownership during the following stages of the registration process:
For §1(a) and §44 applications:
- Between approval for publication and issuance of registration
For §1(b) applications:
- Between approval for publication and issuance of Notice of Allowance; and
- Between approval for registration and issuance of registration
c. Maximum Number of Ownership Changes
The Trademark database will not be automatically updated if the maximum number of ownership changes permitted for the following time periods has been reached:
- Prior to publication - up to nine changes of ownership
- Between publication and registration - up to nine additional changes of ownership
2. Processing Time for Automatic Updating
The process for automatically updating the Trademark database requires that the Assignment Services Division: (1) record the document transferring title in the Assignment database; and (2) extract the trademark assignment information from the Assignment database and send it electronically to the Trademark Operation for automatic updating. The Assignment Services Division will extract trademark assignment information from the Assignment database and transmit it to the Trademark Operation once a week.
To expedite recordation, new owners are encouraged to file requests for recordation through the Office's website, at http://etas.uspto.gov.
If a trademark owner wants the Trademark database updated within a certain timeframe, and there is insufficient time for the Assignment Services Division to process a recently recorded title document for automatic updating, the owner should notify the Trademark Operation of the change of ownership. 37 C.F.R. §3.85; TMEP §§502.02 and 502.03.
3. Correction to Automatic Update - Last Recorded Owner Does Not Have Clear Chain of Title
The Trademark database will be automatically updated to show the last recorded owner regardless of whether the Assignment database shows that the last recorded owner has a clear chain of title. See section V.B above. If the Trademark database is automatically updated to show ownership of an application or registration in a party who does not have a clear chain of title as evidenced by the Assignment database, the true owner of the application or registration may file a written request to have the ownership field in the Trademark database corrected. The Office will grant a request for correction of the ownership field if: (1) the Trademark database was automatically updated to show ownership in a party who does not have a clear chain of title according to the Assignment database; and (2) the Assignment database shows a clear chain of title transferring ownership to the party requesting correction of the ownership field in the Trademark database.
The correction of the Trademark database will not be automatically reflected in the Assignment database. To correct the assignment records, a party must follow the procedures set forth in TMEP §§503.06 et seq. for correcting errors in the Assignment database.
Example: ABC Corporation owns Application No. 1. An assignment of the entire interest and goodwill is filed transferring ownership of Application 1 from ZED Corporation to XYZ Corporation. The Assignment Services Division records the assignment and transmits the trademark assignment information to the Trademark Operation. The Trademark database is automatically updated to show XYZ Corporation as the new owner of Application 1. The Trademark Operation will correct its databases, upon ABC Corporation's request, because the Assignment database does not show a clear chain of title to XYZ Corporation.
In all other situations, a party requesting correction of the ownership records of the Trademark Operation must follow the procedures for correcting errors in recorded documents or cover sheets, as set forth in TMEP §§503.06 et seq. That is, the party must file corrective documents with the Assignment Services Division and pay the recordal fees necessary to correct the error, then notify the Trademark Operation that the corrective documents have been recorded.
Prior to registration, a request for correction of the ownership field in the Trademark database should be made in an amendment directed to the examining attorney. If such a request is filed after publication, it will be handled in accordance with standard procedures for processing amendments after publication, as set forth in TMEP §§1505.02 et seq. In a §1(b) application, if a request for correction of the ownership field is filed between the issuance of the notice of allowance and the submission of a statement of use, the Office will place the request in the file for consideration at the time of examination of the statement of use. 37 C.F.R. §2.77; TMEP §1107.
After registration, a request for correction of the ownership field should be made in the form of a request for correction under §7(g) of the Trademark Act and 37 C.F.R. §2.174.
C. Applicability of Change of Practice to Requests for Recordation Filed Before November 2, 2003
This change of practice applies to all assignments, mergers, and name changes recorded in the Assignment Services Division on or after November 2, 2003, even if the request for recordation was filed before November 2, 2003.
This change of practice does not apply to assignments, mergers, or name changes that were recorded in the Assignment Services Division prior to November 2, 2003. For documents recorded prior to November 2, 2003, the new owner must notify the Trademark Operation of the change of ownership, and request that the Trademark database be updated.
D. Applicability of Change of Practice to International Applications and Registrations Under the Madrid Protocol
The procedures discussed above do not apply to §66(a) applications and registrations. Changes of ownership of international registrations and requests for extensions of protection of international registrations to the United States must be recorded with the International Bureau of the World Intellectual Property Organization (IB). The Office will record only those assignments (or other documents of title) that have been recorded in the International Register. The Trademark databases will be automatically updated to reflect any change of ownership that is recorded in the International Register. See Guide To Implementation of Madrid Protocol in the United States, Exam Guide No. 2-03, sections IV.F and VI.A.1.
VI. POLICY CHANGE - RECLASSIFICATION AFTER PUBLICATION OR REGISTRATION
A. Post-Publication Changes to Classification in Pending Applications
The Office has generally required republication of a mark when classification changes after publication. As of November 2, 2003, however, republication of a mark after a post-publication classification change will no longer be required. This new policy applies to all amendments to classification after publication, including those that occur during examination of Statements of Use.
B. Post-Registration Changes to Classification and Requests for Correction
Historically, if a United States registrant requested correction of classification under 15 U.S.C. §1057(g), due to a clerical error made by the Office, the Office would cancel the registration, restore the application to pendency, and republish the mark in the correct class. If the registrant requested amendment of classification pursuant to 15 U.S.C. §1057(e), the Office would deny the request, because the change would require republication.
As of November 2, 2003, requests to correct or amend the International Classification of a registration filed pursuant to Section 7 may be granted without canceling the registration and republishing. Such a request will be granted only if the requested International Classification for those goods and/or services listed in the registration is consistent with the current version of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. In such a case, the Office will accept the request to correct or amend the International Classification of goods/services and issue an Updated Registration Certificate (URC) with the new classification noted. Registrants will also be able to reclassify registrations from multiple U.S. classes into a single International Classification. For example, goods in U.S. classes 21 and 26 often fall into only International Class 9. Hence, a registrant can request an amendment from U.S. classes 21 and 26 into International Class 9.
Registrants requesting an amendment to the International Classification must pay the $100.00 filing fee required for Section 7 amendments. If the request for correction is due to a clear Office error, no filing fee will be charged to handle the request.
This applies only to registrations that issued from applications under §1 or §44 of the Trademark Act. The classification of goods/services in a §66(a) application cannot be changed from the classification assigned by the IB, even if the IB's classification of goods/services is different from the classification set forth in the Office's Manual of Acceptable Identification of Goods and Services. See Guide To Implementation of Madrid Protocol in the United States, Exam Guide No. 2-03, section IV.B.2.
APPENDIX A
37 C.F.R. §2.52 Types of drawings and format for drawings.
A drawing depicts the mark sought to be registered. The drawing must show only one mark. The applicant must include a clear drawing of the mark when the application is filed. There are two types of drawings:
(a) Standard character (typed) drawing. Applicants who seek to register words, letters, numbers, or any combination thereof without claim to any particular font style, size, or color must submit a standard character drawing that shows the mark in black on a white background. An applicant may submit a standard character drawing if:
(1) The application includes a statement that the mark is in standard characters and no claim is made to any particular font style, size, or color;
(2) The mark does not include a design element;
(3) All letters and words in the mark are depicted in Latin characters;
(4) All numerals in the mark are depicted in Roman or Arabic numerals; and
(5) The mark includes only common punctuation or diacritical marks.
(b) Special form drawing. Applicants who seek to register a mark that includes a two or three-dimensional design; color; and/or words, letters, or numbers or the combination thereof in a particular font style or size must submit a special form drawing. The drawing must show the mark in black on a white background, unless the mark includes color.
(1) Color marks. If the mark includes color, the drawing must show the mark in color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.
(2) Three dimensional marks. If the mark has three-dimensional features, the drawing must depict a single rendition of the mark, and the applicant must indicate that the mark is three-dimensional.
(3) Motion marks. If the mark has motion, the drawing may depict a single point in the movement, or the drawing may depict up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark. The applicant must also describe the mark.
(4) Broken lines to show placement. If necessary to adequately depict the commercial impression of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears. The applicant must also use broken lines to show any other matter not claimed as part of the mark. For any drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must describe the mark and explain the purpose of the broken lines.
(5) Description of mark. If a drawing cannot adequately depict all significant features of the mark, the applicant must also describe the mark.
(c) TEAS drawings. A drawing filed through TEAS must meet the requirements of §2.53.
(d) Paper drawings. A paper drawing must meet the requirements of §2.54.
(e) Sound, scent, and non-visual marks. An applicant is not required to submit a drawing if the mark consists only of a sound, a scent, or other completely non-visual matter. For these types of marks, the applicant must submit a detailed description of the mark.
§2.53 Requirements for drawings filed through the TEAS.
The drawing must meet the requirements of §2.52. In addition, in a TEAS submission, the drawing must meet the following requirements:
(a) Standard character drawings: If an applicant is filing a standard character drawing, the applicant must enter the mark in the appropriate field or attach a digitized image of the mark to the TEAS submission that meets the requirements of paragraph (c) of this section.
(b) Special form drawings: If an applicant is filing a special form drawing, the applicant must attach a digitized image of the mark to the TEAS submission that meets the requirements of paragraph (c) of this section.
(c) Requirements for digitized image: The image must be in .jpg format and scanned at no less than 300 dots per inch and no more than 350 dots per inch with a length and width of no less than 250 pixels and no more than 944 pixels. All lines must be clean, sharp and solid, not fine or crowded, and produce a high quality image when copied.
§2.54 Requirements for drawings submitted on paper.
The drawing must meet the requirements of §2.52. In addition, in a paper submission, the drawing should:
(a) Be on non-shiny white paper that is separate from the application;
(b) Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long. One of the shorter sides of the sheet should be regarded as its top edge. The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide;
(c) Include the caption "DRAWING PAGE" at the top of the drawing beginning one inch (2.5 cm.) from the top edge; and
(d) Depict the mark in black ink, or in color if color is claimed as a feature of the mark.
(e) Drawings must be typed or made with a pen or by a process that will provide high definition when copied. A photolithographic, printer's proof copy, or other high quality reproduction of the mark may be used. All lines must be clean, sharp and solid, and must not be fine or crowded.
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