TMEP Contents

109.02 Access by Public to Files of Pending But Published Applications, Registrations, Abandoned Applications, and Terminated Inter Partes Proceedings

109.03 Making Copies of Material in Files

110 Decisions Available to the Public

111 Requests for Copies of Trademark Documents

112 Patent and Trademark Depository Libraries

Chapter 200 - Application Filing Date

201 What Constitutes Filing Date

201.01 Effective Filing Date Controls for Purposes of Determining Priority for Publication or Issue

201.02 Constructive Use Priority

202 Requirements for Receiving a Filing Date

202.01 Clear Drawing of the Mark

202.02 Listing of Recognizable Goods or Services

202.03 Filing Fee for At Least One Class of Goods or Services

202.03(a) Fee Payment Refused or Charged Back By Financial Institution

202.03(a)(i) Processing Fee for Payment Refused or Charged Back By Financial Institution

203 Review for Compliance With Minimum Requirements

204 Defective or Informal Application Papers

204.01 Filing Date Cancelled if Application Papers are Defective

204.02 Resubmission of Defective Papers

204.03 Examining Attorney's Handling of Application Papers That Are Erroneously Accorded a Filing Date

205 Filing Date Is Not Normally Changed

206 Effective Filing Date

206.01 Amendment of §1(b) Application from Principal Register to Supplemental Register upon Filing of Allegation of Use

206.02 Application Claiming Priority under §44(d)

206.03 Applications Filed Before November 16, 1989, That Are Amended to the Supplemental Register on or After November 16, 1989

Chapter 300 - Filing and Receipt of Documents

301 Trademark Electronic Application System

302 Correspondence with the United States Patent and Trademark Office - In General

302.01 Original Documents Generally Not Required

302.02 Multiple Copies of Papers Should Not Be Filed

302.03 Identifying the Nature of Papers Filed

302.03(a) Correspondence Pertaining to Trademark Applications

302.03(b) Correspondence Pertaining to Trademark Registrations

303 Receipt of Documents by the Office

303.01 Date of Receipt

303.02 Acknowledgment of Receipt

303.02(a) Electronic Mail Confirmation of Receipt of TEAS Document

303.02(b) "Office Date" Label Showing Receipt

303.02(c) Postcard Receipt

303.02(c)(i) Postage on Return Receipt Postcards

304 Electronic Mail

304.01 Communications Acceptable Via Electronic Mail

304.02 Communications Not Acceptable Via Electronic Mail

304.03 Authorization of Electronic Mail Communications

304.04 Filing Date of Electronic Mail

304.05 Certificate of Transmission by Electronic Mail

304.06 Office Procedures for Processing Incoming Electronic Mail

304.07 Outgoing Electronic Mail

304.08 Signature of Electronic Mail

304.09 E-Mail Addresses for Correspondence With the Office

304.10 Paper "Confirmation" Copies of E-Mail Communications Should Not Be Sent to the Office

305 Mailing Documents to the Office

305.01 Mailing Addresses

305.02 Certificate of Mailing Procedure

305.02(a) When Certificate of Mailing Procedure May Be Used

305.02(b) Mailing Requirements

305.02(c) Location and Form of Certificate

305.02(d) Wording of Certificate of Mailing

305.02(e) Effect of Certificate of Mailing

305.02(f) Correspondence Mailed Pursuant to 37 C.F.R. §1.8 But Not Received by Office

305.02(g) Correspondence Deposited as First Class Mail Pursuant to 37 C.F.R. §1.8 and Returned by the U.S. Postal Service

305.02(h) Certificate of Mailing Requirements Strictly Enforced on Petition

305.03 "Express Mail"

306 Facsimile Transmission (Fax)

306.01 Documents That May Be Filed by Facsimile Transmission

306.02 Fax Machines Designated to Accept Relevant Trademark Documents

306.03 Effect of Filing by Fax

306.04 Procedure for Filing by Fax

306.05 Certificate of Transmission Procedure

306.05(a) Location and Form of Certificate of Transmission

306.05(b) Wording of Certificate of Transmission

306.05(c) Effect of Certificate of Transmission

306.05(d) Correspondence Transmitted by Fax Pursuant to 37 C.F.R. §1.8 But Not Received by Office

306.06 Certificate of Transmission Requirements Strictly Enforced on Petition

307 Hand Delivery

308 Period Ending on Saturday, Sunday or Federal Holiday

309 Unscheduled Closings of the United States Patent and Trademark Office

310 Computing Period for Response to Office Action or Notice

Chapter 400 - Processing Documents and Fees

401 Processing New Applications

401.01 Serial Numbers and Series Codes

401.02 Data Entry

401.03 Creation and Distribution of Application Files

401.03(a) Arrangement of Papers

401.03(b) Application File Label

401.03(c) Distribution to Law Offices

401.04 Processing Applications Accompanied by a Petition

402 Filing Receipts

403 Correspondence Returned as Undeliverable

404 Papers Not Returnable

405 Fees

405.01 Credit Cards

405.01(a) Charges Refused or Charged Back By Financial Institution

405.02 Checks

405.02(a) Personal Checks and Checks Returned Unpaid

405.03 Deposit Accounts

405.04 Refunds

405.05 Electronic Funds Transfer

Chapter 500 - Change of Ownership

501 Assignment of Marks

501.01 Assignability of Marks in Applications and Registrations

501.01(a) Assignment of Intent-to-Use Applications

501.02 Assignments Must Be in Writing

501.03 Effect of Failure to Record Assignment

501.04 Foreign Assignee May Designate Domestic Representative

501.05 Assignee Stands in Place of Applicant or Registrant

501.06 Partial Assignments

502 Establishing Ownership of Applications or Registrations

502.01 Pending Applications - Issuance of Registration Certificate in Name of Assignee or in Applicant's New Name

502.01(a) Examining Attorney's Action Regarding Assignment

502.02 Issuance of New Certificate to Assignee of Registrant

503 Recording in Assignment Services Division

503.01 Effect of Recording a Document

503.02 Documents That the Office Will Record

503.03 Requirements for Recording

503.03(a) Formal Requirements for Documents

503.03(b) Supporting Documents

503.03(c) English Language Requirement

503.03(d) Fee for Recording

503.03(e) Cover Sheet

503.04 Address for Submitting Documents for Recording

503.05 Recording Procedure and Recordation Date

503.06 Correction of Errors in Cover Sheet or Recorded Document

503.06(a) Typographical Errors in Cover Sheet

503.06(a)(i) Typographical Errors in Cover Sheet That Do Not Affect Title to Application or Registration

503.06(a)(ii) Typographical Errors in Cover Sheet That Do Affect Title to Application or Registration

503.06(b) Typographical Errors in Recorded Assignment Document

503.06(c) Assignment or Change of Name Improperly Filed and Recorded By Another Person Against Owner's Application or Registration

503.06(d) Owner Must Notify Trademark Operation of Correction

503.06(e) Recorded Documents Not Removed From Assignment Records

503.06(f) Petitions to Correct or "Expunge" Assignment Records

503.07 "Indexing" Against Recorded Document Not Permitted

503.08 Accessibility of Assignment Records

503.08(a) Abstracts of Title

Chapter 600 - Attorney or Representative

601 Applicant May Be Represented by Attorney at Law

601.01 Office Cannot Aid in Selection of Attorney

602 Persons Who May Practice Before Office in Trademark Matters

602.01 Powers of Attorney

602.01(a) Power of Attorney Relating to More Than One Application or Registration

602.01(b) Associate Powers of Attorney

602.01(c) Powers of Attorney Filed After Registration

602.02 Standards of Conduct

602.02(a) Signature and Certificate for Correspondence filed in the United States Patent and Trademark Office

602.03 Papers Filed by Unauthorized Persons

602.04 Revocation or Withdrawal of Authorization

602.04(a) Permissive Withdrawal of Attorney of Record

603 Correspondence, With Whom Held

603.01 Establishing the Correspondence Address

603.02 Changing the Correspondence Address

603.02(a) Changing the Correspondence Address Before Registration

603.02(b) Changing the Correspondence Address in Multiple Applications

603.02(c) Changing the Correspondence Address After Registration

603.03 Applicant Has Duty to Maintain Current and Accurate Correspondence Address

603.04 Processing Correspondence Signed by Someone Other Than the Applicant or the Applicant's Designated Attorney

603.05 Correspondence with Parties Not Domiciled in the United States

604 Designation of Domestic Representative by Parties Not Domiciled in the United States

Chapter 700 - Procedure for Examining Applications

701 Statutory Authority for Examination

702 Order of Work

702.01 Order of Examination

702.02 "Special" Applications

702.03 Related Applications

702.03(a) Companion Applications

702.03(a)(i) Companion Applications for the Same or Similar Marks

702.03(a)(ii) Companion Applications for Different Marks

702.03(a)(iii) Companion Registrations

702.03(a)(iv) Classification and Identification in Companion Applications That Have Registered or Been Published for Opposition

702.03(b) Conflicting Applications

703 Office Does Not Issue Duplicate Registrations

704 Initial Examination

704.01 Initial Examination Should be Complete

704.02 Examining Attorney's Search

704.03 Supervisory Examining Attorney May Indicate Action for Non-Signatory Examining Attorney

705 The Examining Attorney's Letter or Action

705.01 Language in Examining Attorney's Letter

705.02 Examining Attorneys Should Not Volunteer Statements

705.03 Citation of Reference Marks

705.04 Reference to Matter in Printed Publications

705.05 Citation of Decisions and Office Publications

705.06 Reviewing, Initialing and Signing of Letters

705.07 Mailing and Processing Letters

705.08 Six-Month Response Clause

706 New Matter Raised by Examining Attorney After First Action

707 Examiner's Amendment

707.01 Approval of Examiner's Amendment by Applicant or Applicant's Attorney

707.02 Examiner's Amendment Without Prior Authorization by Applicant or Applicant's Attorney

707.03 Form of the Examiner's Amendment

708 Priority Action

708.01 Priority Action Defined

708.02 Discussion of Issues and Agreements

708.03 Form of the Priority Action

708.04 Refusal of Registration in Priority Action

708.05 Combined Examiner's Amendment/Priority Action

709 Interviews

709.01 How Interviews are Conducted

709.02 Persons Who May Represent Applicant in an Interview

709.03 Making Substance of Interview of Record

709.04 Telephone Communications

709.05 Informal Submissions

709.06 Interviews Prior to Filing Application

710 Evidence

710.01 Evidence Supporting Refusal or Requirement

710.01(a) Evidence From Research Database

710.01(b) Internet Evidence

710.01(c) Record Must Be Complete Prior to Appeal

710.02 Evidence Indicating No Refusal or Requirement Necessary

710.03 Evidence of Third-Party Registrations

711 Deadline for Response to Office Action

711.01 Time May Run from Previous Action

711.02 Supplemental Office Action Resetting Response Period

712 Signature of Response to Office Action

712.01 Persons Who Can Sign Response

712.01(a) Guidelines on Who Should Sign Response to Office Action

712.01(a)(i) Signature By Joint Applicants

712.01(a)(ii) Signature By Partnership

712.01(a)(iii) Signature By Joint Venture

712.01(a)(iv) Signature By Corporation

712.01(a)(v) Signature By Foreign Companies and Corporations

712.01(a)(vi) Signature By Unincorporated Association

712.01(a)(vii) Signature By Limited Liability Company

712.02 Unsigned Response

713 Examination of Amendments and Responses to Office Actions

713.01 Previous Action by Different Examining Attorney

713.02 Noting All Outstanding Requirements

713.03 Response to Applicant's Arguments

714 Final Action

714.01 Not Permissible on First Action

714.02 Not Permissible on Suspension

714.03 When Final Action is Appropriate

714.04 Form of the Final Action

714.05 Delineating New Issues Requiring Issuance of Nonfinal Action

714.05(a) Unacceptable Amendment Proposed By Applicant

714.05(a)(i) Amendment to Supplemental Register or Submission of Claim of Acquired Distinctiveness

714.05(a)(ii) Amendment of Identification of Goods and Services

714.05(b) Section 2(d) Refusal Based on Prior-Filed Application That Has Matured Into Registration

714.05(c) Advisory Statement Cannot Serve as Foundation for Final Refusal or Requirement

714.06 Applicant's Recourse When Final Action is Premature

715 Action After Issuance of Final Action

715.01 Proper Response to Final Action

715.02 Action After Final Action

715.03 Request for Reconsideration After Final Action

715.03(a) Examining Attorney's Action After Request for Reconsideration

715.03(b) Examining Attorney Must Issue New Action If New Issue Presented in Request for Reconsideration

715.03(c) Time for Appeal Runs from Mailing Date of Final Action if No New Issue Is Presented and Requirement(s) or Refusal(s) Is Not Withdrawn

715.04 Request for Reconsideration Filed In Conjunction With Notice of Appeal

716 Suspension of Action by Office

716.01 Form of Suspension Notice

716.02 Circumstances Under Which Action May Be Suspended

716.02(a) Applicant's Petition to Cancel Cited Registration

716.02(b) Submission of Copy of Foreign Registration in §44(d) Application

716.02(c) Conflicting Marks in Pending Applications

716.02(d) Inter Partes or Court Proceeding

716.02(e) Suspension Pending Cancellation or Expiration of Cited Registration

716.03 Applicant's Request to Remove Application from Suspension

716.04 Suspended Docket Checked by Examining Attorney

716.05 Inquiry by Examining Attorney Regarding Suspended Application

716.06 Suspension After Final Action

717 Remailing of Office Action

717.01 Returned Office Action

717.02 Non-Receipt of Office Action

718 Abandonment

718.01 Express Abandonment by Applicant or Applicant's Attorney

718.02 Failure by Applicant to Take Required Action During Statutory Period

718.03 Incomplete Response

718.03(a) Holding of Abandonment for Failure to Respond Completely

718.03(b) Granting Additional Time to Perfect Response

718.03(c) Reconsideration of Holding of Abandonment

718.04 Failure to File Statement of Use

718.05 Failure to Perfect Appeal

718.06 Notice by Office of Abandonment for Failure to Receive a Response

718.07 Ordering Abandoned Application Files

718.08 Revival of Abandoned Application - New Search Required

719 Fraud Upon the Office

Chapter 800 - Application Requirements

801 Types of Applications

801.01 Single or Combined Application

801.01(a) Single (Single-Class) Application

801.01(b) Combined (Multiple-Class) Application

801.02 Principal Register or Supplemental Register

801.02(a) Act of 1946, Principal Register

801.02(b) Act of 1946, Supplemental Register

802 Application Form

803 Applicant

803.01 Who May Apply

803.02 Name of Applicant

803.02(a) Individual

803.02(b) Partnership, Joint Venture or Other "Firm"

803.02(c) Corporation and Association

803.03 Legal Entity of Applicant

803.03(a) Individual or Sole Proprietorship

803.03(b) Partnership, Joint Venture or Other "Firm"

803.03(c) Corporation and Association

803.03(d) Joint Applicants

803.03(e) Trusts, Conservatorships and Estates

803.03(f) Governmental Bodies and Universities

803.03(g) Banking Institutions

803.03(h) Limited Liability Companies

803.03(i) Common Terms Designating Entity of Foreign Applicants

803.04 Citizenship of Applicant

803.05 Address of Applicant

803.06 Applicant May Not Be Changed

804 Verification and Signature

804.01 Form and Wording of Verification

804.01(a) Verification, with Oath

804.01(a)(i) Verification Made in Foreign Country

804.01(b) Declaration in Lieu of Oath

804.02 Averments Required in Verification of Application for Registration

804.03 Time Between Execution and Filing of Papers

804.04 Persons Authorized to Sign Verification or Declaration

804.05 Signature of Electronically Transmitted Applications

805 Identification and Classification of Goods and Services

806 Filing Basis

806.01 Requirements for Establishing a Basis

806.01(a) Use in Commerce - §1(a)

806.01(b) Intent to Use - §1(b)

806.01(c) Foreign Priority - §44(d)

806.01(d) Foreign Registration - §44(e)

806.02 Multiple Bases

806.02(a) Procedure for Asserting More Than One Basis

806.02(b) Applicant May File Under Both §1(a) and §1(b) in a Single Application

806.02(c) Examination of Specimens of Use in a Multi-Basis Application

806.02(d) Abandonment of Multi-Basis Applications

806.02(e) Allegation of Bona Fide Intention to Use Mark in Commerce Even if Application is Based on Both §44 and §1

806.02(f) Section 44(d) Combined With Other Bases

806.03 Amendments to Add or Substitute a Basis

806.03(a) When Basis Can be Changed

806.03(b) Applicant May Add or Substitute a §44(d) Basis Only Within Six-Month Priority Period

806.03(c) Amendment From §1(a) to §1(b) Permitted

806.03(d) Amendment From §44 to §1(b) Permitted

806.03(e) Allegation of Use Required to Amend From §1(b) to §1(a)

806.03(f) Use in Commerce as of Application Filing Date Required to Add or Substitute §1(a) as a Basis in §44 Application

806.03(g) Effect of Substitution of Basis on Application Filing Date

806.03(h) Verification of Amendment Required

806.04 Deleting a Basis

806.04(a) Deletion of §1(b) Basis After Publication or Issuance of the Notice of Allowance

806.04(b) Retention of §44(d) Priority Filing Date Without Perfecting §44(e) Basis

806.05 Review of Basis Prior to Publication or Issue

807 Drawing

807.01 Recommended Format

807.01(a) Separate Drawing Page Preferred

807.01(b) Type of Paper and Size of Drawing

807.01(c) Heading

807.01(d) Single Page Drawing Preferred

807.02 Transmission of Drawings

807.03 Drawing Must Show Only One Mark

807.04 Drawing Must Be Limited to Mark

807.05 Drawing No Longer Considered Separate Element

807.06 Typed Drawings

807.06(a) Characters, Symbols, and Punctuation Marks That May Be Used in Typed Drawings

807.06(b) Typed Drawings that Include Diacritical Marks Permitted

807.06(c) Distinguishing Typed From Special Form Drawings

807.07 Special Form Drawings

807.07(a) Characteristics of Special Form Drawings

807.07(b) When Special Form Drawing is Required

807.07(c) Special Form and Typing Cannot Be Combined

807.08 Compound Word Marks and Telescoped Marks

807.09 Color in the Mark

807.09(a) Black and White Drawing Required

807.09(b) Use of Color Lining No Longer Required

807.09(c) Description of Color Required

807.09(d) Color a Feature of the Mark

807.09(e) Markings That Do Not Indicate Color

807.10 Broken Lines to Show Placement

807.11 "Drawing" of Sound, Scent, or Non-Visual Mark

807.12 Three Dimensional Marks

807.13 Marks With Motion

807.14 Mark on Drawing Must Agree with Mark on Specimens or Foreign Registration

807.14(a) Material Alteration of the Mark

807.14(a)(i) Material Alteration Determined by Comparing Proposed Amendment to Original Drawing or Description

807.14(b) Mutilation or Incomplete Representation of Mark

807.15 Removal or Deletion of Matter from Drawing

807.16 Substitute Drawings

807.17 Amendment of Drawings by the Office

807.18 Procedures for Processing Unacceptable Amendments to Drawings

807.19 Use of Old Drawing in New Application

808 Description of Mark

808.01 Guidelines for Requiring Description

808.01(a) Letters and Numerals

808.01(b) Designs or Figurative Elements

808.01(c) Meaning of Term in Mark

808.02 Description Must Be Accurate and Concise

808.03 Printing Description of Mark

809 Translation and Transliteration of Non-English Wording in Mark

809.01 Equivalency in Translation

809.02 Printing of Translations and Transliterations

810 Filing Fee

810.01 Collection of Fees for Multiple Classes

810.02 Refunds

811 Designation of Domestic Representative

812 Identification of Prior Registrations of Applicant

812.01 Proving Ownership of Prior Registrations

813 Consent to Register by Living Individual Depicted in Mark

814 Requesting Additional Information

815 Supplemental Register, Application Filed on

815.01 Marks Eligible for Principal Register Not Registrable on Supplemental Register

815.02 Elements Required

815.03 Examining Attorney Signs File for Issue

815.04 Filing on Supplemental Register is Not an Admission That the Mark Has Not Acquired Distinctiveness

815.05 Basis for Refusal of Registration of Matter That is Incapable

816 Supplemental Register, Amending Application to

816.01 How to Amend

816.02 Effective Filing Date

816.03 Amendment to Different Register

816.04 Amendment After Refusal

816.05 Amendment After Decision on Appeal

817 Preparation of Case for Publication or Registration

818 Application Checklist

Chapter 900 - Use in Commerce

901 Use in Commerce

901.01 Definitions

901.02 Bona Fide Use in the Ordinary Course of Trade

901.03 Commerce That May Be Lawfully Regulated By Congress

901.04 Inquiry Regarding Use in Commerce

901.05 Use Only by Related Company

902 Allegations of Use for §1(b) Applications

903 Dates of Use

903.01 Date of First Use Anywhere

903.02 Date of First Use in Commerce

903.03 Type of Commerce

903.04 Relation between the Two Dates of Use

903.05 Amending Dates of Use

903.06 First Use by Predecessor or Related Company

903.07 Indefinite Dates of Use

903.07(a) Apparent Discrepancies Between Dates of Use and Date of Execution

903.08 Dates of Use in Another Form

903.09 More than One Item of Goods or Services

904 Specimens

904.01 Number of Specimens

904.01(a) More than One Item Specified in a Class

904.01(b) In Combined or Multiple-Class Applications

904.02 Physical Form of Specimens

904.02(a) Specimens for Marks Comprising Color

904.02(b) Marks Used on Publications

904.03 Bulky Specimens

904.04 Material Appropriate as Specimens for Trademarks

904.04(a) Labels and Tags

904.04(b) Stampings

904.04(c) Commercial Packaging

904.04(d) Specimens for Trademarks Identifying Computer Programs, Movies or Video Tapes

904.05 Material Not Appropriate as Specimens for Trademarks

904.06 Displays as Specimens for Trademarks

904.06(a) Catalogs as Specimens for Trademarks

904.07 Package Inserts as Specimens for Trademarks

904.08 Facsimiles as Specimens

904.09 Affidavit Supporting Substitute Specimens

904.10 Translation of Matter on Specimens

904.11 Requirements for Substitute Specimens and Statutory Refusals

905 Method of Use

906 Federal Registration Notice

906.01 Foreign Countries That Use Registration Symbol ®

906.02 Improper Use of Registration Symbol

906.03 Informing Applicant of Apparent Improper Use

906.04 Fraud

907 Compliance with Other Statutes

Chapter 1000 - Applications Under International Agreements

1001 Section 44 Applications - General

1002 Eligible Applicants Under §44

1002.01 Eligible Applicants Under §44(e)

1002.02 Eligible Applicants Under §44(d)

1002.03 Establishing Entitlement Under a Treaty

1002.04 Establishing Country of Origin

1002.05 United States Applicants

1003 Section 44(d) - Priority Filing Date Based on a Foreign Application

1003.01 The "First-Filed" Requirement

1003.02 Priority Claim Must Be Filed Within Six Months of Foreign Filing

1003.03 Basis for Registration Required

1003.04 Suspension Awaiting a Foreign Registration

1003.05 Section 44(d) and Priority for Publication

1003.06 Applicants May File Under Both §44(d) and §44(e)

1003.07 Application May be Based on More Than One Foreign Application

1003.08 Abandonment of the Foreign Application

1004 Applications Based on Foreign Registrations under §44(e)

1004.01 Copy of Foreign Registration Required

1004.01(a) Status of the Foreign Registration

1004.01(b) Translation of the Foreign Registration

1004.02 Application May be Based on More Than One Foreign Registration

1005 Ownership of the Foreign Application or Registration

1006 Assignment of §44 Applications

1007 Standards for Registration Under Section 44

1008 Bona Fide Intention to Use the Mark in Commerce

1009 Allegation of Use and Specimen of Use Not Required Prior to Registration

1010 Proof of Acquired Distinctiveness in §44 Applications

1011 Drawings

1011.01 Substantially Exact Representation of Mark in Foreign Registration

1011.02 One Mark Per Application

1011.03 Amendment of Drawing

1012 Identification of Goods and Services

1013 Designation of Domestic Representative by Applicants Not Domiciled in the United States

1014 Section 44 Applications for the Supplemental Register

1015 Section 44 Registration Independent of Underlying Foreign Registration

Chapter 1100 - Intent-to-Use Applications and Related Documents

1101 Bona Fide Intention To Use the Mark In Commerce

1102 Initial Examination of Intent-to-Use Applications

1102.01 Substantive Refusals

1102.02 Drawings

1102.03 Intent-to-Use Applications and the Supplemental Register

1102.04 Claims of Acquired Distinctiveness under §2(f)

1103 Allegations of Use

1104 Amendment to Allege Use Under §1(c) of the Act

1104.01 Minimum Requirements for Filing an Amendment to Allege Use

1104.01(a) Review by Legal Instruments Examiner for Compliance with Minimum Filing Requirements

1104.01(b) Processing an Amendment to Allege Use That Does Not Meet Minimum Filing Requirements

1104.01(c) Processing Defective Amendment to Allege Use Filed With Other Amendments

1104.02 Form of Amendment to Allege Use

1104.03 Time for Filing Amendment to Allege Use

1104.03(a) Use on All Goods Required Before Filing

1104.03(b) The "Blackout Period"

1104.03(c) Processing Amendments to Allege Use Filed During the Blackout Period

1104.04 Processing Timely Amendments to Allege Use Located After Publication

1104.05 Amendments to Allege Use Filed in Conjunction With Application

1104.06 Processing Amendments to Allege Use Received Before Application is Assigned to an Examining Attorney

1104.07 Amendments to Allege Use and Ex Parte Appeals

1104.08 Necessary Elements in a Complete Amendment to Allege Use

1104.09 Examination of Amendment to Allege Use by Examining Attorney

1104.09(a) Ownership

1104.09(b) Verification and Date of Execution

1104.09(c) Identification of Goods or Services

1104.09(d) Use in Commerce and Dates of Use

1104.09(e) Specimen

1104.09(f) Drawing

1104.09(g) Fees

1104.09(h) Issuance of Actions by Examining Attorney Related to the Amendment to Allege Use

1104.10 Amendment and Withdrawal of Amendment to Allege Use

1104.11 Approval of Amendment to Allege Use After Examination

1105 Publication of Intent-to-Use Applications for Opposition

1106 Notice of Allowance

1106.01 Issuance of the Notice of Allowance

1106.02 Action by Examining Attorney After Issuance of the Notice of Allowance

1106.03 Cancellation of Notice of Allowance

1106.04 Correction of Errors in Notice of Allowance

1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use

1107.01 Examination of Amendment Filed After the Notice of Allowance Issues But Before a Statement of Use is Filed

1108 Requests for Extensions of Time to File the Statement of Use

1108.01 Time for Filing Requests for Extensions of Time to File the Statement of Use

1108.02 Requirements for Request For An Extension of Time to File a Statement of Use

1108.02(a) Ownership

1108.02(b) Verification

1108.02(c) Filing Fee

1108.02(d) Identification of Goods or Services

1108.02(e) Bona Fide Intention to Use the Mark in Commerce

1108.02(f) Good Cause Required for Extensions Beyond the First Six-Month Extension

1108.03 Only One Extension Request May Be Filed With or After a Statement of Use

1108.03(a) Processing Extension Request Filed After Statement of Use Has Been Referred to Examining Attorney

1108.04 Recourse After Denial of Extension Request

1108.05 Petitions From Denial of Request For An Extension of Time to File Statement of Use

1109 Statement of Use Under §1(d) of the Trademark Act

1109.01 Minimum Filing Requirements for a Statement of Use

1109.02 Review for Compliance with Minimum Filing Requirements

1109.02(a) Petition to Review Refusal Based on Noncompliance with Minimum Filing Requirements of 37 C.F.R. §2.88(e)

1109.03 Use on All Goods or Services Required Before Filing

1109.04 Time for Filing Statement of Use

1109.05 Form of Statement of Use

1109.05(a) Papers Prepared for Filing as an Amendment to Allege Use May Be Filed as a Statement of Use

1109.06 Necessary Elements in a Complete Statement of Use

1109.07 Examination of the Statement of Use - In General

1109.08 The "Clear-Error" Standard in Examination of the Statement of Use

1109.09 Use in Commerce

1109.09(a) Dates of Use

1109.09(b) Specimens

1109.10 Ownership

1109.11 Verification and Execution

1109.11(a) Authority of Signatory

1109.11(b) Verification of Essential Elements

1109.11(c) Date of Execution

1109.11(d) Signature of Electronically Transmitted Statement of Use

1109.12 Drawing

1109.13 Identification of Goods and Services in Statement of Use

1109.14 Classification

1109.15 Filing Fees

1109.15(a) Processing Deficient Fees

1109.16 Correcting Defects in Statement of Use

1109.16(a) Statutory Requirements That Must Be Met Within Statutory Filing Period

1109.16(b) Issuance of Examining Attorney's Office Action Holding that a Statement of Use Does Not Meet the Minimum Filing Requirements

1109.16(c) Requesting an Extension of Time to File a Statement of Use for the Purpose of Compliance with Minimum Filing Requirements

1109.16(d) Response to Office Action Required Within Six Months of Mailing Date Regardless of Expiration Date of Period for Filing the Statement of Use

1109.16(e) Applicant's Recourse After Refusal of Registration

1109.17 Withdrawal of the Statement of Use Prohibited

1109.18 Approval of the Statement of Use

1110 Request to Divide an Application

1110.01 Time for Filing Request to Divide

1110.02 Fee for Filing Request to Divide

1110.03 Processing Request to Divide

1110.04 Dividing an Application When Statement of Use is Due

1110.05 Dividing an Application When Response to Office Action is Due

1110.06 Dividing an Application Subject to a Proceeding at Trademark Trial and Appeal Board

1110.07 Dividing a §44 Application

1110.08 Division of Registration Not Permitted

Chapter 1200 - Substantive Examination of Applications

1201 Ownership of Mark

1201.01 Claim of Ownership May Be Based on Use By Related Companies

1201.02 Identifying the Applicant in the Application

1201.02(a) Identifying the Applicant Properly

1201.02(b) Application Void if Wrong Party Identified as the Applicant

1201.02(c) Correcting Errors in How the Applicant Is Identified

1201.02(d) Operating Divisions

1201.02(e) Changes in Ownership After Application Is Filed

1201.03 Use by Related Companies

1201.03(a) Use Solely by Related Company Must be Disclosed

1201.03(b) No Explanation of Applicant's Control Over Use of Mark by Related Companies Required

1201.03(c) Wholly Owned Related Companies

1201.03(d) Common Stockholders, Directors or Officers

1201.03(e) Sister Corporations

1201.03(f) License and Franchise Situations

1201.04 Inquiry Regarding Parties Named on Specimens or Elsewhere in Record

1201.05 Acceptable Claim of Ownership Based on Applicant's Own Use

1201.06 Special Situations Pertaining to Ownership

1201.06(a) Applicant Is Merely Distributor or Importer

1201.06(b) Goods Manufactured in a Country Other than Where Applicant Is Located

1201.07 Related Companies and Likelihood of Confusion

1201.07(a) "Single Source" -- "Unity of Control"

1201.07(b) Appropriate Action with Respect to Assertion of Unity of Control

1201.07(b)(i) When Either Applicant or Registrant Owns All of the Other Entity

1201.07(b)(ii) When Either Applicant or Registrant Owns Substantially All of the Other Entity

1201.07(b)(iii) When the Record Does Not Support a Presumption of Unity of Control

1201.07(b)(iv) When the Record Contradicts an Assertion of Unity of Control

1202 Use of Subject Matter as Trademark

1202.01 Refusal of Matter Used Solely as a Trade Name

1202.02 Registration of Trade Dress

1202.02(a) Functionality

1202.02(a)(i) Statutory Basis for Functionality Refusal

1202.02(a)(ii) Purpose of Functionality Doctrine

1202.02(a)(iii) Definitions

1202.02(a)(iii)(A) Functionality

1202.02(a)(iii)(B) "De Jure" and "De Facto" Functionality

1202.02(a)(iii)(C) Aesthetic Functionality

1202.02(a)(iv) Burden of Proof in Functionality Determinations

1202.02(a)(v) Evidence and Considerations Regarding Functionality Determinations

1202.02(a)(v)(A) Advertising, Promotional or Explanatory Material in Functionality Determinations

1202.02(a)(v)(B) Availability of Alternative Designs in Functionality Determinations

1202.02(a)(v)(C) Ease or Economy of Manufacture in Functionality Determinations

1202.02(b) Distinctiveness of Trade Dress

1202.02(b)(i) Distinctiveness and Product Design Trade Dress

1202.02(b)(ii) Distinctiveness and Product Packaging Trade Dress for Goods or Services

1202.02(c) Distinctiveness and Functionality are Separate Issues

1202.02(d) Drawing and Description of Mark in Trade Dress Applications

1202.02(e) Trade Dress in Intent-to-Use Applications

1202.03 Refusal on Basis of Ornamentation

1202.03(a) Commercial Impression

1202.03(b) Practices of the Trade

1202.03(c) "Secondary Source"

1202.03(d) Evidence of Distinctiveness

1202.03(e) Ornamentation with Respect to Intent-to-Use Applications

1202.03(f) Ornamentation: Case References

1202.03(f)(i) Slogans or Words Used on the Goods

1202.03(f)(ii) Designs Used on the Goods

1202.03(f)(iii) Trade Dress on the Containers for the Goods

1202.03(g) Ornamentation Cases and Acquired Distinctiveness

1202.04 Informational Matter

1202.05 Color as a Mark

1202.05(a) Color Marks Never Inherently Distinctive

1202.05(b) Functional Color Marks Not Registrable

1202.05(c) Color as a Separable Element

1202.05(d) Drawings of Color Marks Required

1202.05(d)(i) Drawings of Color Marks in Trademark Applications

1202.05(d)(ii) Drawings of Color Marks in Service Mark Applications

1202.05(d)(iii) Drawings for Marks Including Both Color and Words or Design

1202.05(e) Written Explanation of a Color Mark

1202.05(f) Specimens for Color Marks

1202.05(g) Special Considerations for Service Mark Applications

1202.05(h) Applications for Color Marks Based on Intent-to-Use

1202.06 Goods in Trade

1202.06(a) Goods Must Have Utility to Others

1202.06(b) Registration Must Be Refused if Mark Not Used on Goods in Trade

1202.06(c) "Goods in Trade" in Intent-to-Use Applications

1202.07 Marks That Identify Columns or Sections of Publications

1202.07(a) Marks That Identify Columns or Sections of Printed Publications

1202.07(a)(i) Syndicated Columns and Sections

1202.07(a)(ii) Non-Syndicated Columns and Sections

1202.07(a)(iii) Marks That Identify Columns and Sections of Printed Publications in Intent-to-Use Applications

1202.07(b) Marks That Identify Columns and Sections of On-Line Publications

1202.08 Title of a Single Creative Work

1202.09 Names of Artists and Authors

1202.09(a) Names of Performing Artists Used on Sound Recordings

1202.10 Model or Grade Designations

1202.11 Background Designs and Shapes

1202.12 Varietal and Cultivar Names (Examination of Applications for Seeds and Plants)

1202.13 Scent or Fragrance

1202.14 Holograms

1202.15 Sound Marks

1203 Refusal on Basis of Immoral or Scandalous Matter; Deceptive Matter; Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute

1203.01 Immoral or Scandalous Matter

1203.02 Deceptive Matter

1203.02(a) Distinction between Marks Comprising Deceptive Matter (§2(a)) and Deceptively Misdescriptive Marks (§2(e)(1)) or Geographically Deceptively Misdescriptive Marks (§2(e)(3))

1203.02(b) Deceptive Matter: Case References

1203.03 Matter which May Disparage, Falsely Suggest a Connection, or Bring into Contempt or Disrepute

1203.03(a) "Persons" Defined

1203.03(b) "National Symbols" Defined

1203.03(c) Disparagement, Bringing into Contempt and Bringing into Disrepute

1203.03(d) Disparagement, Bringing into Contempt and Bringing into Disrepute: Case References

1203.03(e) False Suggestion of a Connection

1203.03(f) False Suggestion of a Connection: Case References

1204 Refusal on Basis of Flag, Coat of Arms or Other Insignia of United States, State or Municipality, or Foreign Nation

1205 Refusal on Basis of Matter Protected by Statute or Convention

1205.01 Statutory Protection

1205.02 Article 6ter of the Paris Convention

1206 Refusal on Basis of Name, Portrait or Signature of Particular Living Individual or Deceased U.S. President Without Consent

1206.01 Name, Portrait or Signature

1206.02 Particular Living Individual or Deceased U.S. President

1206.03 Consent of Individual or President's Widow Required

1206.03(a) Consent Must Be Written Consent to Registration

1206.03(b) Implicit Consent

1207 Refusal on Basis of Likelihood of Confusion, Mistake or Deception

1207.01 Likelihood of Confusion

1207.01(a) Relatedness of the Goods or Services

1207.01(a)(i) Goods or Services Need Not Be Identical

1207.01(a)(ii) Goods May Be Related to Services

1207.01(a)(iii) Reliance on Identification of Goods/Services in Registration and Application

1207.01(a)(iv) No "Per Se" Rule

1207.01(a)(v) Expansion of Trade Doctrine

1207.01(a)(vi) Evidence Showing Relatedness of Goods or Services

1207.01(b) Similarity of the Marks

1207.01(b)(i) Word Marks

1207.01(b)(ii) Similarity In Appearance

1207.01(b)(iii) Comparing Marks That Contain Additional Matter

1207.01(b)(iv) Similarity in Sound - Phonetic Equivalents

1207.01(b)(v) Similarity in Meaning

1207.01(b)(vi) Doctrine of Foreign Equivalents

1207.01(b)(vii) Transposition of Terms

1207.01(b)(viii) Marks Consisting of Multiple Words

1207.01(b)(ix) Weak or Descriptive Marks

1207.01(b)(x) Parody Marks

1207.01(c) Design Marks

1207.01(c)(i) Legal Equivalents - Comparison of Words and Their Equivalent Designs

1207.01(c)(ii) Composite Marks Consisting of Both Words and Designs

1207.01(c)(iii) Comparison of Typed Marks and Special Form Marks

1207.01(d) Miscellaneous Considerations

1207.01(d)(i) Doubt Resolved in Favor of Registrant

1207.01(d)(ii) Absence of Actual Confusion

1207.01(d)(iii) Third-Party Registrations

1207.01(d)(iv) Collateral Attack on Registration Improper in Ex Parte Proceeding

1207.01(d)(v) Classification of Goods/Services

1207.01(d)(vi) Prior Decisions of Examining Attorneys

1207.01(d)(vii) Sophisticated Purchasers

1207.01(d)(viii) Consent Agreements

1207.01(d)(ix) Fame of Mark

1207.01(d)(x) Conflicting Marks Owned by Different Parties

1207.02 Marks That Are Likely to Deceive

1207.03 Marks Previously Used in United States but Not Registered

1207.04 Concurrent Use Registration

1207.04(a) Concurrent Use - In General

1207.04(b) Filing Basis of Application Seeking Concurrent Use

1207.04(c) Basis for Concurrent Use Registration

1207.04(d) Determining Eligibility for Concurrent Use

1207.04(d)(i) Requirements for All Concurrent Use Applications

1207.04(e) Applications Subject to Concurrent Use Proceeding Before the Trademark Trial and Appeal Board

1207.04(e)(i) Preparing the File for Publication

1207.04(f) Application for Concurrent Use Registration Pursuant to Court Decree

1207.04(f)(i) Preparing the File for Publication

1208 Conflicting Marks in Pending Applications

1208.01 Priority for Publication or Issue Based on Effective Filing Date

1208.01(a) What Constitutes Conflict Between Pending Applications

1208.01(b) What Constitutes Effective Filing Date

1208.01(c) Change in Effective Filing Date During Examination

1208.01(d) Examination of Conflicting Marks After Reinstatement or Revival

1208.02 Conflicting Applications Examination Procedure

1208.02(a) Examination of Application with Earliest Effective Filing Date

1208.02(b) Action on Later-Filed Application: Giving Notice of the Earlier Application or Applications

1208.02(c) Suspension of Later-Filed Application

1208.02(d) Action on Later-Filed Application upon Disposition of the Earlier Application or Applications

1208.02(e) Applicant's Argument on Issues of Conflict

1208.02(f) Conflicting Mark Mistakenly Published or Approved for Issuance on the Supplemental Register

1208.03 Procedure Relating to Possibility of Interference

1208.03(a) Procedures on Request for Interference

1208.03(b) Decision on Request for Interference

1208.03(c) Procedure When Interference Is to be Declared

1209 Refusal on Basis of Descriptiveness

1209.01 Distinctiveness/Descriptiveness Continuum

1209.01(a) Fanciful, Arbitrary and Suggestive Marks

1209.01(b) Merely Descriptive Marks

1209.01(c) Generic Terms

1209.01(c)(i) Test

1209.01(c)(ii) Terminology

1209.01(c)(iii) Generic Matter: Case References

1209.02 Procedure for Descriptiveness and/or Genericness Refusal

1209.03 Considerations Relevant to Determination of Descriptiveness

1209.03(a) Third-Party Registrations

1209.03(b) No Dictionary Listing

1209.03(c) First or Only User

1209.03(d) Combined Terms

1209.03(e) More Than One Meaning

1209.03(f) Picture or Illustration

1209.03(g) Foreign Equivalents/Dead or Obscure Languages

1209.03(h) Incongruity

1209.03(i) Intended Users

1209.03(j) Phonetic Equivalent

1209.03(k) Laudatory Terms

1209.03(l) Telephone Numbers

1209.03(m) Domain Names

1209.03(n) "America" or "American"

1209.03(o) "National" or "International"

1209.03(p) Function or Purpose

1209.03(q) Source or Provider of Goods or Services

1209.03(r) Retail Store and Distributorship Services

1209.03(s) Slogans

1209.04 Deceptively Misdescriptive Marks

1210 Refusal on Basis of Geographic Significance

1210.01 Elements

1210.01(a) Geographically Descriptive Marks - Test

1210.01(b) Geographically Deceptively Misdescriptive Marks - Test

1210.01(c) Geographically Deceptive Marks - Test

1210.02 Primarily Geographic Significance

1210.02(a) Geographic Locations

1210.02(b) Primary Significance

1210.02(c) "America" or "American" and Similar Terms in Marks

1210.02(d) Non-Geographic Characteristics of Goods or Services Conveyed by Geographic Terms

1210.03 Geographic Origin of the Goods or Services

1210.04 Goods/Place or Services/Place Association

1210.04(a) Place Does Not Have to be Well Known for the Goods or Services

1210.04(b) Geographically Descriptive Marks - Association Presumed Unless Applicant Raises Genuine Issue as to Whether Primary Significance of Term is Geographic or Place is Obscure or Remote

1210.04(c) Establishing Goods/Place or Services/Place Association

1210.04(d) Obscure or Remote Geographic Marks

1210.04(e) Arbitrary Use of Geographic Terms

1210.05 Geographically Deceptive Marks

1210.05(a) Deceptive Geographical Marks - in General

1210.05(b) Wines and Spirits

1210.06 Supplemental Register and Section 2(f)

1210.06(a) Registrability of Geographic Terms on the Supplemental Register

1210.06(b) Registrability of Geographic Terms Under Section 2(f)

1210.07 Geographic Terms Combined With Additional Matter

1210.07(a) Geographic Terms Combined With Descriptive Matter

1210.07(b) Marks That Include Primarily Geographically Descriptive Terms Combined With Additional Matter

1210.07(c) Marks That Include Primarily Geographically Deceptively Misdescriptive Terms Combined With Additional Matter

1210.07(d) Marks That Include Geographically Deceptive Terms Combined With Additional Matter

1210.07(e) Arbitrary, Fanciful or Suggestive Composite Marks

1210.08 Disclaimer of Geographic Terms in Composite Marks

1210.09 Geographic Certification Marks

1211 Refusal on Basis of Surname

1211.01 "Primarily Merely a Surname"

1211.01(a) Non-Surname Significance

1211.01(a)(i) Ordinary Language Meaning

1211.01(a)(ii) Phonetic Equivalent of Term With Ordinary Language Meaning

1211.01(a)(iii) Geographical Significance

1211.01(a)(iv) Historical Place or Person

1211.01(a)(v) Rare Surnames

1211.01(a)(vi) "Look And Feel" of a Surname

1211.01(b) Surname Combined with Additional Matter

1211.01(b)(i) Double Surnames

1211.01(b)(ii) Stylization or Design Element

1211.01(b)(iii) Surname Combined with Initials

1211.01(b)(iv) Surname Combined with Title

1211.01(b)(v) Surname in Plural or Possessive Form

1211.01(b)(vi) Surname Combined with Wording

1211.01(b)(vii) Surname Combined With Domain Name

1211.02 Evidence Relating to Surname Refusal

1211.02(a) Evidentiary Burden - Generally

1211.02(b) Evidentiary Considerations

1211.02(b)(i) Telephone Directory Listings

1211.02(b)(ii) LEXIS/NEXIS Research Database Evidence

1211.02(b)(iii) Surname of Person Associated with Applicant

1211.02(b)(iv) Specimens Confirming Surname Significance of Term

1211.02(b)(v) Negative Dictionary Evidence

1211.02(b)(vi) Evidence of Fame of a Mark

1212 Acquired Distinctiveness or Secondary Meaning

1212.01 General Evidentiary Matters

1212.02 General Procedural Matters

1212.02(a) Situations in which a Claim of Distinctiveness under §2(f) is Appropriate

1212.02(b) Section 2(f) Claim Is, for Procedural Purposes, a Concession that Matter Is Not Inherently Distinctive

1212.02(c) Claiming §2(f) Distinctiveness in the Alternative

1212.02(d) Unnecessary §2(f) Claims

1212.02(e) Disclaimers in Applications Claiming Distinctiveness under §2(f)

1212.02(f) Section 2(f) Claim in Part (as to a Portion of the Mark)

1212.02(g) Examining Attorney's Role in Suggesting §2(f) or Appropriate Kind/Amount of Evidence

1212.02(h) Non-Final and Final Refusals

1212.02(i) Section 2(f) Claim with Respect to Incapable Matter

1212.03 Evidence of Distinctiveness Under §2(f)

1212.04 Prior Registrations as Proof of Distinctiveness

1212.04(a) Sufficiency of Claim Vis-à-Vis Nature of the Mark

1212.04(b) "Same Mark"

1212.04(c) Relatedness of Goods or Services

1212.04(d) Registration Must Be in Full Force and Effect and on Principal Register or under Act of 1905

1212.04(e) Form of §2(f) Claim Based on Ownership of Prior Registrations

1212.05 Five Years of Use as Proof of Distinctiveness

1212.05(a) Sufficiency of Claim vis-à-vis Nature of the Mark

1212.05(b) "Substantially Exclusive and Continuous"

1212.05(c) Use "as a Mark"

1212.05(d) Form of the Proof of Five Years' Use

1212.06 Establishing Distinctiveness by Actual Evidence

1212.06(a) Long Use of the Mark

1212.06(b) Advertising Expenditures

1212.06(c) Affidavits or Declarations Asserting Recognition of Mark as Source Indicator

1212.06(d) Survey Evidence, Market Research and Consumer Reaction Studies

1212.06(e) Miscellaneous Considerations Regarding Evidence Submitted to Establish Distinctiveness

1212.06(e)(i) First or Only User

1212.06(e)(ii) State Trademark Registrations

1212.06(e)(iii) Design Patent

1212.06(e)(iv) Acquiescence to Demands of Competitors

1212.07 Form of Application Asserting Distinctiveness

1212.08 Section 44 Applications and Distinctiveness

1212.09 Intent-to-Use Applications and Distinctiveness

1212.09(a) Section 2(f) Claim Requires Prior Use

1212.09(b) Claim of §2(f) "in Part" in §1(b) Application

1212.10 Printing "§2(f)" Notations

1213 Disclaimer of Elements in Marks

1213.01 History of Disclaimer Practice

1213.01(a) Discretion in Requiring Disclaimer

1213.01(b) Refusal to Register Because of Failure to Disclaim

1213.01(c) Voluntary Disclaimer of Registrable or Unregistrable Matter

1213.02 "Composite" Marks

1213.03 Disclaimer of Unregistrable Components of Marks

1213.03(a) "Unregistrable Components" in General

1213.03(b) Generic Matter and Matter Which Does Not Function as a Mark

1213.03(c) Pictorial Representations of Descriptive Matter

1213.03(d) Entity Designations

1213.04 Trade Names

1213.05 "Unitary" Marks

1213.05(a) Compound Word Marks

1213.05(a)(i) Telescoped Words

1213.05(a)(ii) Compound Words Formed with Hyphen or Other Punctuation

1213.05(b) Slogans

1213.05(c) "Double Entendre"

1213.05(d) Incongruity

1213.05(e) Sound Patterns

1213.05(f) Display of Mark

1213.06 Entire Mark May Not Be Disclaimed

1213.07 Removal Rather than Disclaimer

1213.08 Form of Disclaimers

1213.08(a) Wording of Disclaimer

1213.08(a)(i) Standardized Printing Format for Disclaimer

1213.08(a)(ii) Unacceptable Wording for Disclaimer

1213.08(b) Disclaimer of Unregistrable Matter in Its Entirety

1213.08(c) Disclaimer of Misspelled Words

1213.08(d) Disclaimer of Non-English Words

1213.09 Mark of Another May Not Be Registered with Disclaimer

1213.10 Disclaimer in Relation to Likelihood of Confusion

1213.11 Acquiring Rights in Disclaimed Matter

1214 "Phantom" Elements in Marks

1214.01 Single Application May Seek Registration of Only One Mark

1214.02 Agreement of Mark on Drawing With Mark on Specimens or Foreign Registration

1214.03 "Phantom Marks" in Intent-to-Use Applications

1215 Marks Composed, in Whole or in Part, of Domain Names

1215.01 Background

1215.02 Use as a Mark

1215.02(a) Use Applications

1215.02(b) Advertising One's Own Products or Services on the Internet is not a Service

1215.02(c) Agreement of Mark on Drawing with Mark on Specimens of Use

1215.02(d) Marks Comprised Solely of TLDs for Domain Name Registry Services

1215.02(e) Intent-to-Use Applications

1215.03 Surnames

1215.04 Descriptiveness

1215.05 Generic Refusals

1215.06 Marks Containing Geographical Matter

1215.07 Disclaimers

1215.08 Material Alteration

1215.08(a) Adding or Deleting TLDs in Domain Name Marks

1215.08(b) Adding or Deleting TLDs in Other Marks

1215.09 Likelihood of Confusion

1215.10 Marks Containing the Phonetic Equivalent of a Top-Level Domain

1216 Effect of Applicant's Prior Registrations

1216.01 Decisions Involving Prior Registrations Not Controlling

1216.02 Effect of "Incontestability" in Ex Parte Examination

1217 Res Judicata

Chapter 1300 - Examination of Different Types of Marks

1301 Service Marks

1301.01 What Is a Service

1301.01(a) Criteria for Determining What Constitutes a Service

1301.01(a)(i) Performance of a Real Activity

1301.01(a)(ii) For the Benefit of Others

1301.01(a)(iii) Sufficiently Distinct from Activities Involved in Sale of Goods or Performance of Other Services

1301.01(b) Whether Particular Activities Constitute "Services"

1301.01(b)(i) Contests and Promotional Activities

1301.01(b)(ii) Warranty or Guarantee of Repair

1301.01(b)(iii) Publishing One's Own Periodical

1301.01(b)(iv) Soliciting Investors

1301.01(b)(v) Informational Services Ancillary to the Sale of Goods

1301.02 What Is a Service Mark

1301.02(a) Matter That Does Not Function as a Service Mark

1301.02(b) Names of Characters or Personal Names as Service Marks

1301.02(c) Three-Dimensional Service Marks

1301.02(d) Titles of Radio and Television Programs

1301.02(e) Process, System or Method

1301.03 Use of Service Mark in Commerce

1301.03(a) Use of Service Mark in Advertising to Identify Services

1301.03(b) Rendering of Service in Commerce Regulable by Congress

1301.04 Specimens of Use for Service Marks

1301.04(a) Specimens Must Show Use as a Service Mark

1301.04(b) Association Between Mark and Services

1301.04(c) Letterhead

1301.04(d) Specimens for Entertainment Services

1301.05 Identification and Classification of Services

1302 Collective Marks Generally

1302.01 History of Collective Marks

1303 Collective Trademarks and Collective Service Marks

1303.01 Use of Collective Trademark and Collective Service Mark Is by Members

1303.02 Examination of Collective Trademark and Collective Service Mark Applications

1303.02(a) Classification of Goods and Services in Collective Trademark and Collective Service Mark Applications

1303.02(b) Specimens of Use for Collective Trademark and Collective Service Mark Applications

1303.02(c) Special Elements of Collective Trademark and Collective Service Mark Applications

1303.02(c)(i) Manner of Control

1303.02(c)(ii) Use by Members Indicated in Dates-of-Use Clause

1304 Collective Membership Marks

1304.01 History of Membership Marks

1304.02 Purpose of Membership Mark

1304.03 Use of Membership Mark Is By Members

1304.04 Who May Apply to Register Membership Mark

1304.05 Who May Own Membership Mark

1304.06 Nature of the Collective Group

1304.07 Character of the Mark

1304.08 Refusal to Register Membership Mark

1304.08(a) Matter That Does Not Function as a Membership Mark

1304.08(b) Likelihood of Confusion

1304.08(c) Degree or Title Designations Contrasted to Membership Marks

1304.09 Examination of Collective Membership Mark Applications

1304.09(a) Classification in Membership Mark Applications

1304.09(b) Identifications in Membership Mark Applications

1304.09(c) Specimens of Use for Membership Marks

1304.09(d) Special Elements of Applications for Collective Membership Marks

1304.09(d)(i) Exercise of Control

1304.09(d)(ii) Manner of Control

1304.09(d)(iii) Use by Members Indicated in Dates-of-Use Clause

1305 Trademarks and Service Marks Used by Collective Organizations

1306 Certification Marks

1306.01 Definition of Certification Mark

1306.01(a) Use Is by Person Other than Owner

1306.01(b) Purpose Is to Certify, Not to Indicate Source

1306.02 Certification Marks That Are Indications of Regional Origin

1306.02(a) Indicating the Region

1306.02(b) Authority to Control a Geographical Term

1306.02(c) The Government as Applicant for a Geographical Certification Mark

1306.03 Certification Marks Certifying that Labor Was Performed by Specific Group or Individual

1306.04 Ownership of Certification Marks

1306.05 Characteristics of Certification Marks

1306.05(a) Same Mark Not Registrable as Certification Mark and as Any Other Type of Mark

1306.05(b) Cancellation of Applicant's Prior Registration Required by Change from Certification Mark Use to Trademark or Service Mark Use, or Vice Versa

1306.06 Examination of Certification Mark Applications

1306.06(a) Refusal to Register Certification Mark

1306.06(b) The Mark on the Drawing

1306.06(c) Specimens of Use for Certification Marks

1306.06(d) Relation Between Certification Mark and Trademark or Service Mark on Specimens

1306.06(e) Classification of Goods and Services in Certification Mark Applications

1306.06(f) Identification of Goods and Services in Certification Mark Applications

1306.06(g) Special Elements of Certification Mark Applications

1306.06(g)(i) Statement of What the Mark Certifies

1306.06(g)(ii) Standards

1306.06(g)(iii) Exercise of Control

1306.06(g)(iv) Use by Others Indicated in Dates-of-Use Clause

1306.06(g)(v) Statement That Mark is Not Used by Applicant

1306.06(g)(vi) Amendment to Different Type of Mark

1306.07 Relationship of §14 (Cancellation) to Examination of Certification Mark Applications

1306.08 Registration of Certification Mark on Basis of Foreign Registration

1306.09 Uncertainty Regarding Type of Mark

1306.09(a) Distinction Between Certification Mark and Collective Mark

1306.09(b) Distinguishing Certification Mark Use from Related-Company Use of Trademark or Service Mark

1306.09(c) Patent Licenses

1307 Registration as Correct Type of Mark

Chapter 1400 - Classification and Identification of Goods and Services

1401 Classification

1401.01 Statutory Authority

1401.02 International Trademark Classification Adopted

1401.02(a) Headings of International Trademark Classes

1401.02(b) Short Titles for International Trademark Classes

1401.02(c) International Alphabetical List

1401.03 Designation of Class

1401.03(a) Designation of Class by Applicant Normally Accepted

1401.03(b) Designation of Class by Office When Class Number Is Not Designated or Is Inaccurate

1401.03(c) Failure to Classify May Delay Action

1401.04 Classification Determines Number of Fees

1401.04(a) Prior U.S. Classification System

1401.04(b) Limiting Goods and Services to the Number of Classes for Which Filing Fees Are Paid

1401.05 Criteria on Which International Classification Is Based

1401.06 Specimens as Related to Classification

1401.06(a) Specimen Discloses Special Characteristics

1401.07 Classification and Plurality of Uses

1401.08 Classification and the Identification of Goods and Services, In General

1401.09 Changes in Practice Based on the Restructuring of International Class 42 in the 8th Edition of the Nice Agreement

1401.09(a) Elimination of "Miscellaneous Class Designation"

1401.09(b) Implementation of the Changes

1402 Identification of Goods and Services

1402.01 Specifying the Goods and/or Services - in General

1402.01(a) General Guidelines for Acceptable Identifications of Goods or Services

1402.01(b) The Identification of Goods and Services in a §44 Application

1402.01(c) Location of "Identification of Goods and Services"

1402.01(d) Responsibilities of Examining Attorney as to Identification

1402.02 Entitlement to Filing Date With Respect to Specification of Goods and Services

1402.03 Specificity of Terms Used in Identifying Goods and Services

1402.03(a) Inclusive Terminology

1402.03(b) House Marks

1402.03(c) Marks for a "Full Line of …"

1402.03(d) Identifying Computer Programs with Specificity

1402.03(e) Identifying Publications with Specificity

1402.04 Acceptable Identification of Goods and Services Manual

1402.05 Accuracy of Identification

1402.05(a) Goods That Are Components or Ingredients

1402.05(b) Material Composition

1402.06 Amendments Permitted to Clarify or Limit Identification

1402.06(a) Limiting the Identification of Goods and Services

1402.06(b) Clarifying the Identification of Goods and Services

1402.07 Scope of Identification of Goods and Services for Purposes of Amendment

1402.07(a) The "Ordinary-Meaning" Test

1402.07(b) Ambiguous Identifications

1402.07(c) Unambiguous Identifications

1402.07(d) Permissible Scope of Identification Not Affected by Proposed Amendment That Is Unacceptable

1402.07(e) Permissible Scope of Identification Affected by Proposed Amendment That Is Accepted

1402.08 Moving Goods and Services Between Companion Applications

1402.09 Use of Marks Inappropriate in Identifications

1402.10 Identification of Goods and Services in Documents Filed in Connection with §1(b) Applications

1402.11 Identification of Services

1402.11(a) Computer Services

1402.11(b) Information Services

1402.11(c) Association Services and "Promoting the Interest of" Services

1402.11(d) Charitable Services, Other than Monetary

1402.11(e) Consulting Services

1402.12 Parentheses and Brackets Should Not be Used in Identifications of Goods and Services

1403 Combined or Multiple-Class Application

1403.01 Requirements for Combined or Multiple-Class Application

1403.02 Amendment of Combined or Multiple-Class Application

1403.02(a) Deletion of Classes

1403.02(b) Correction of Classification

1403.02(c) Addition of Classes

1403.03 Dividing of Combined or Multiple-Class Application

1403.04 Combined or Multiple-Class Marks in Official Gazette

1403.05 Action After Filing, Multiple Classes

1403.05(a) Fees for Action After Filing, Multiple Classes

1403.05(b) Surrender or Amendment in Multiple-Class Registrations

Chapter 1500 - Post-Examination Procedures

1501 Appeal to Trademark Trial and Appeal Board

1501.01 Appealable Matter

1501.02 Examining Attorney's Appeal Brief

1501.02(a) Reply Briefs in Ex Parte Appeals

1501.03 Withdrawal of Refusal or Requirement After Appeal

1501.04 Fee for Appeal

1501.05 Amendment During Appeal

1501.06 Amendment After Decision on Appeal

1501.07 Examining Attorney's Request for Reconsideration

1502 Publication in Trademark Official Gazette

1502.01 Notification of Errors in Trademark Official Gazette

1503 Opposition

1503.01 Filing a Notice of Opposition

1503.02 Joining Persons in an Opposition

1503.03 Time for Opposing

1503.04 Extension of Time to Oppose

1503.05 Opposition Fee

1504 Jurisdiction Over Application

1504.01 Jurisdiction of Examining Attorney

1504.02 Jurisdiction of Trademark Trial and Appeal Board

1504.03 Action By Examining Attorney After Publication

1504.04 Restoration of Jurisdiction to Examining Attorney by Director

1504.04(a) Request for Jurisdiction

1504.05 Remand to Examining Attorney by Trademark Trial and Appeal Board

1504.05(a) Request for Remand

1505 Amendments Filed by Applicants After Publication

1505.01 Approval of Amendments After Publication

1505.01(a) Amendments to the Identification of Goods or Services

1505.01(b) Amendments to Classification

1505.01(c) Amendments to Drawings

1505.01(d) Amendments to the Dates of Use

1505.01(e) Amendments Adding or Deleting Disclaimers

1505.01(f) Amendment of the Basis

1505.02 Procedures for Processing Amendments Filed by the Applicant After Publication

1505.02(a) Form and Timing of Amendments

1505.02(b) Processing Amendments in Cases Where No Opposition Has Been Filed and No Request for an Extension of Time to File an Opposition Has Been Granted

1505.02(c) Processing Amendments in Cases Where an Extension of Time for Filing an Opposition Has Been Granted

1505.02(d) Processing Amendments in Cases Where an Opposition Has Been Filed

1506 Concurrent Use Registration Proceeding

1507 Interference

Chapter 1600 - Registration and Post Registration Procedures

1601 Types of Registrations

1601.01 Registrations Now Being Issued

1601.01(a) Certificate of Registration

1601.01(b) Duplicate Certificate of Registration

1601.02 Repeal of Prior Acts

1601.03 Additional Registration under Act of 1946

1601.04 1881 and 1905 Act Registrations

1601.05 1920 Act Registrations

1601.06 Registrations Issued Under Prior Classification Systems

1601.07 Form of Copies of Registrations

1602 Duration and Maintenance of Registrations

1602.01 Act of 1946

1602.02 Acts of 1881 and 1905

1602.03 Act of 1920

1602.04 Trademark Law Treaty Implementation Act Changes

1603 Bringing Prior Act Registrations Under 1946 Act, §12(c)

1603.01 Notification and Printing of Mark in Official Gazette

1603.02 Cancellation and Incontestability

1603.03 Affidavits of Use in Commerce Required

1604 Affidavit of Continued Use or Excusable Nonuse of Mark in Commerce under §8

1604.01 Registrations to Which §8 Affidavit Pertains

1604.02 Notice of When Affidavit Is Due

1604.03 Form for Filing Affidavit

1604.04 Time for Filing Affidavit

1604.04(a) Premature Filing of Affidavit

1604.04(b) Registrations in Twenty-Year Terms

1604.05 Requirements for Affidavit or Declaration of Continued Use or Excusable Nonuse

1604.06 Fees

1604.06(a) Filing Fee for Affidavit or Declaration

1604.06(b) Grace Period Surcharge and Deficiency Surcharge

1604.06(c) Processing Affidavit or Declaration Filed With Insufficient Fees

1604.07 Ownership, and Who May File Affidavit

1604.07(a) Affidavit or Declaration Must be Filed by Owner

1604.07(b) Establishing Ownership

1604.07(c) Acceptance Notice Issued in Name of Owner of Record

1604.07(d) Changes of Legal Entity

1604.07(e) Changes of Name

1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner

1604.08 Execution of Affidavit or Declaration

1604.08(a) Persons Who May Sign Affidavit or Declaration

1604.08(b) Date of Execution of Affidavit or Declaration

1604.08(c) Signature of Electronically Transmitted Affidavit or Declaration

1604.08(d) Form and Wording of Verification

1604.09 Goods and/or Services Set Forth in Affidavit or Declaration

1604.09(a) Goods and/or Services Must be Specified or Expressly Incorporated by Reference

1604.09(b) Deletion of Goods and/or Services

1604.09(c) Failure to List All Goods and/or Services Recited in Registration

1604.09(d) New Goods and/or Services Cannot be Added

1604.10 Use in Commerce

1604.11 "Excusable Nonuse" of Mark

1604.12 Specimen Showing Current Use of Mark in Commerce

1604.12(a) Specimen for Each Class Required

1604.12(b) Specimens in Electronically Filed Affidavits

1604.12(c) Substitute Specimens

1604.13 Differences in the Mark As Used on the Specimen and the Mark as Registered

1604.13(a) Possible Amendment of Mark in Registration

1604.14 Designation of Domestic Representative by Foreign Owner

1604.15 Office Actions and Notices Regarding Affidavit

1604.16 Response to Office Action

1604.17 Correction of Deficiencies

1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act

1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period

1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period

1604.18 Petition Under 37 C.F.R. §2.146

1604.18(a) Response to Examiner's Refusal Required Before Petition

1604.18(b) Decision on Petition is Final Action of the Office

1604.18(c) Request for Reconsideration of Denial of Petition

1604.18(d) Appeal to Federal Court

1604.19 Affidavit or Declaration of Continued Use or Excusable Nonuse Combined with Renewal Application

1605 Affidavit of Incontestability Under §15

1605.01 Registrations to Which §15 Affidavit Pertains

1605.02 Form for Filing Affidavit of Incontestability

1605.03 Time for Filing Affidavit of Incontestability

1605.04 Requirements for Affidavit or Declaration of Incontestability

1605.05 Combining §15 Affidavit With §8 Affidavit

1605.06 Section 14 Limitation is Independent of §15 Affidavit

1606 Renewal of Registration

1606.01 Renewal of Registrations Issued Under Prior Acts

1606.02 Form for Filing Application for Renewal

1606.03 Time for Filing Application for Renewal

1606.03(a) Premature Filing of Application for Renewal

1606.04 Requirements for Renewal

1606.05 Fees

1606.05(a) Fee for Filing Application for Renewal

1606.05(b) Grace Period Surcharge and Deficiency Surcharge

1606.05(c) Processing Renewal Application Filed With Insufficient Fees

1606.06 Ownership, and Who May File Application for Renewal

1606.07 Execution of Renewal Application

1606.08 Goods and/or Services Set Forth in Application for Renewal

1606.08(a) Listing of Goods and/or Services Required Only for Partial Renewal

1606.08(b) No Goods or Services Listed

1606.08(c) Some Goods and/or Services Listed

1606.08(d) Goods and/or Services Not Listed in Registration May Not Be Listed in Renewal Application

1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required

1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal

1606.11 Office Actions and Notices Regarding Application for Renewal

1606.12 Response to Office Action

1606.13 Correction of Deficiencies

1606.13(a) Correcting Deficiencies in Renewal Applications Filed Within the Year Before the Expiration Date of the Registration

1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period

1606.13(c) Late Filing Cannot be Cured

1606.14 Petition Under 37 C.F.R. §2.146

1606.14(a) Response to Examiner's Refusal Required Before Petition

1606.14(b) Decision on Petition is Final Action of the Office

1606.14(c) Request for Reconsideration of Denial of Petition

1606.14(d) Appeal to Federal Court

1606.15 Renewal Application Combined with Affidavit or Declaration of Continued Use or Excusable Nonuse

1607 Cancellation of Registrations Under §§14 and 37 of the Trademark Act

1608 Surrender of Registration for Cancellation

1609 Amendment and Correction of Registrations

1609.01 Amendment of Registration - In General

1609.02 Amendment of Mark

1609.02(a) Determining What Constitutes Material Alteration of Mark

1609.02(b) New Drawing Required

1609.02(c) Supporting Specimen and Declaration

1609.03 Amendment of Identification of Goods or Services

1609.04 Disclaimer of Mark

1609.05 Territorial Restrictions

1609.06 Dates of Use

1609.07 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration

1609.08 Amendment From Supplemental to Principal Register Not Permitted

1609.09 Correction of Mistake in Registration

1610 Court Orders Concerning Registrations

1611 Updating Automated Records to Show the Status of Registrations

1612 Powers of Attorney, Changes of Address, and Designations of Domestic Representative Filed After Registration

Chapter 1700 - Matters Submitted to Director

1701 Statutory Authority of Director

1702 Petitions to the Director Under 37 C.F.R. §2.146 - In General

1703 Specific Types of Petitions

1704 Petitionable Matter

1705 Petition Procedure

1705.01 Standing

1705.02 Petition Fee

1705.03 Evidence and Proof of Facts

1705.04 Timeliness

1705.05 Due Diligence

1705.06 Stay

1705.07 Processing Petition Papers

1705.08 Request for Reconsideration of Denial of Petition

1705.09 Appeal to Federal Court

1706 Standard of Review on Petition

1707 Director's Supervisory Authority Under 37 C.F.R. §2.146(a)(3)

1708 Waiver of Rules

1709 Matters Delegated by Director

1710 Petition to Make Special

1710.01 Basis for Granting or Denying Petition

1710.02 Processing Petition Papers

1711 Review of Denial of Filing Dates

1712 Reinstatement of Applications and Registrations

1712.01 Reinstatement of Applications Abandoned Due to Office Error

1712.02 Reinstatement of Registrations Cancelled or Expired Due to Office Error

1713 Petition to Reverse Holding of Abandonment for Failure to Respond Completely

1714 Petition to Revive Abandoned Application

1714.01 Procedural Requirements for Filing Petition to Revive

1714.01(a) Failure to Timely Respond to Examining Attorney's Office Action

1714.01(b) Failure to File Statement of Use or Extension Request - Notice of Allowance Received

1714.01(b)(i) Applicant Must File Statement of Use or Further Extension Requests During Pendency of a Petition

1714.01(c) Notice of Allowance Not Received

1714.01(d) Timeliness and Diligence

1714.01(e) Signed Statement That Delay Was Unintentional

1714.01(f) Applicability of Unintentional Delay Standard

1714.01(f)(i) Where the Unintentional Delay Standard Applies

1714.01(f)(ii) Where the Unintentional Delay Standard Does Not Apply

1714.01(g) Request for Reconsideration of Denial of Petition to Revive

1715 Letters of Protest in Pending Applications

1715.01 Appropriate Subjects to be Raised in Letter of Protest

1715.01(a) Issues Appropriate as Subject of Letter of Protest

1715.01(b) Issues Inappropriate as Subject of Letter of Protest

1715.02 Letters of Protest Filed Before Publication

1715.03 Letters of Protest Filed After Publication

1715.03(a) Timely Filing of Letter of Protest

1715.03(b) Letter of Protest Does Not Extend Opposition Period

1715.04 Tracking of Letters of Protest by the Protestor

1715.05 Approval of Applications for Publication or Issue After Grant of a Letter of Protest

1715.06 Recourse After Denial of Letter of Protest

1715.07 Requests for Copies of Letters of Protest

Chapter 1800 - Public Inquiries About Applications and Registrations

1801 Office Personnel May Not Express Opinion on Validity of Registered Trademark

1801.01 Office Personnel Cannot Testify

1802 Congressional Inquiries

1803 Freedom of Information Act Requests

1804 Inquiries from Members of the Press

1805 General Inquiries from the Public

1806 Contacts With Third Parties Regarding Ex Parte Matters

1807 United States Patent and Trademark Office World Wide Web Page

Appendix A Examining Attorneys' Appeal Briefs

Appendix B List of Members of International Trademark Agreements

Appendix C Notes of Other Statutes

List of Decisions Cited

Index