U. S. TRADEMARK LAW

1 U. S. TRADEMARK LAW RULES OF PRACTICE & FEDERAL STATUTES U. S. PATENT & TRADEMARK OFFICE February 15, 2020 -3- February 15, 2020 TABLE OF CONTENTS 37 PART 2-RULES OF PRACTICE IN TRADEMARK CASES RULES APPLICABLE TO TRADEMARK CASES [Reserved] Definitions. TRADEMARK fees. Fastener Recordal Fees. REPRESENTATION BY ATTORNEYS OR OTHER AUTHORIZED PERSONS Requirement for representation. Recognition for representation. Correspondence, with whom held. Revocation or withdrawal of attorney. DECLARATIONS Declarations in lieu of oaths. APPLICATION FOR REGISTRATION Requirements for receiving a filing date. Requirements for a TEAS Plus application. Requirement to correspond electronically with the Office and duty to monitor status. Designation and revocation of domestic representative by foreign applicant. Documents not returnable. [Removed] Pending TRADEMARK application index; access to applications.

2 Requirements for a complete TRADEMARK or service mark application. Verified statement for a TRADEMARK or service mark. Bases for filing a TRADEMARK or service mark application. Adding, deleting, or substituting bases. Identification of prior registrations. Description of mark. Use by predecessor or by related companies. Proof of distinctiveness under section 2(f). Concurrent use. Service mark. Requirements for a complete collective mark application. Requirements for a complete certification mark application; restriction on certification mark application. Principal Register. Supplemental Register. Office does not issue duplicate registrations. DRAWING Drawing required. Types of drawings and format for drawings. Requirements for drawings filed through the TEAS. Requirements for drawings submitted on paper. -4- February 15, 2020 SPECIMENS Specimens.

3 Filing substitute specimen(s). EXAMINATION OF APPLICATION AND ACTION BY APPLICANTS Action by examiner. Procedure for submitting response. Action after response. Reinstatement of applications and registrations abandoned, cancelled, or expired due to Office error. Abandonment. Revival of applications abandoned in full or in part due to unintentional delay. Suspension of action by the Patent and TRADEMARK Office. Express abandonment (withdrawal) of application. Compliance with other laws. AMENDMENT OF APPLICATION Amendments to correct informalities. Amendments to description or drawing of the mark. Amendment to recite concurrent use. Form and signature of amendment. Amendment to change application to different register. Amendment to allege use. Amendments between notice of allowance and statement of use. PUBLICATION AND POST PUBLICATION Publication for opposition.

4 Post publication. Marks on Supplemental Register published only upon registration. Conflicting marks. Jurisdiction over published applications. CLASSIFICATION Classification schedules. Multiple-class applications. Dividing an application. POST NOTICE OF ALLOWANCE Statement of use after notice of allowance. Extensions of time for filing a statement of use. CONCURRENT USE PROCEEDINGS [Reserved] [Reserved] [Reserved] [Reserved] [Reserved] Application to register as concurrent user. -5- February 15, 2020 OPPOSITION Filing an opposition. Extension of time for filing an opposition. [Added and Reserved] Contents of opposition. Notification to parties of opposition proceeding(s). Answer. Amendment of pleadings in an opposition proceeding. CANCELLATION Filing petition for cancellation. Contents of petition for cancellation.

5 Notification of cancellation proceeding. Answer. Amendment of pleadings in a cancellation proceeding. PROCEDURE IN INTER PARTES PROCEEDINGS Federal Rules of Civil Procedure. Suspension of proceedings. Undelivered Office notices. Service and signing. Discovery. Assignment of times for taking testimony and presenting evidence. Matters in evidence. Trial testimony in inter partes cases. Depositions upon written questions. Filing and service of testimony. Form of submissions to the TRADEMARK Trial and Appeal Board. Motions. Briefs at final hearing. Oral argument; reconsideration. New matter suggested by the TRADEMARK examining attorney. Remand after decision in inter partes proceeding. Involuntary dismissal for failure to take testimony. Amendment of application or registration during proceedings. Surrender or voluntary cancellation of registration.

6 Abandonment of application or mark. Status of application or registration on termination of proceeding. APPEALS Ex parte appeals from action of TRADEMARK examining attorney. Time and manner of ex parte appeals. [Added and Reserved] Reconsideration of decision on ex parte appeal. Appeal to court and civil action. PETITIONS AND ACTION BY THE DIRECTOR Petitions to the Director. Petition to the Director to accept a paper submission. Director may suspend certain rules. -6- February 15, 2020 CERTIFICATE Certificate. PUBLICATION OF MARKS REGISTERED UNDER 1905 ACT Publication requirements. Publication in Official Gazette. Notice of publication. Not subject to opposition; subject to cancellation. REREGISTRATION OF MARKS REGISTERED UNDER PRIOR ACTS Reregistration of marks registered under Acts of 1881, 1905, and 1920. CANCELLATION FOR FAILURE TO FILE AFFIDAVIT OR DECLARATION Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration.

7 Requirements for a complete affidavit or declaration of continued use or excusable nonuse. Notice to registrant. Acknowledgment of receipt of affidavit or declaration. Correcting deficiencies in affidavit or declaration. Petition to Director to review refusal. Affidavit of continued use or excusable nonuse combined with renewal application. AFFIDAVIT OR DECLARATION UNDER SECTION 15 Affidavit or declaration under section 15. Affidavit or declaration under section 15 combined with affidavit or declaration under sections 8 or 71, or with renewal application. CORRECTION, DISCLAIMER, SURRENDER, ETC. New certificate on change of ownership. Surrender for cancellation. Amendment of registration Correction of Office mistake. Correction of mistake by owner. Consideration of above matters. TERM AND RENEWAL Term of original registrations and renewals. Time for filing renewal application.

8 Requirements for a complete renewal application. Refusal of renewal. Correcting deficiencies in renewal application. Petition to Director to review refusal of renewal. GENERAL INFORMATION AND CORRESPONDENCE IN TRADEMARK CASES [Reserved] Requirement to provide domicile address. -7- February 15, 2020 Addresses for TRADEMARK correspondence with the United States Patent and TRADEMARK Office. Action of the Office based on the written record. Business to be conducted with decorum and courtesy. TRADEMARK correspondence and signature requirements. Identification of TRADEMARK application or registration. Filing date of TRADEMARK correspondence. Times for taking action: Expiration on Saturday, Sunday or Federal holiday. Certificate of mailing. Filing of correspondence by Priority Mail Express . [Reserved] TRADEMARK RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE Assignment records open to public inspection.

9 Copies and certified copies. [Reserved] [Reserved] [Reserved] [Reserved] FEES AND PAYMENT OF MONEY IN TRADEMARK CASES TRADEMARK fees payable in advance. Methods of payment. Deposit accounts. Refunds. 37 PART 3 ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE Definitions DOCUMENTS ELIGIBLE FOR RECORDING Documents which will be recorded. Assignability of trademarks prior to filing of an allegation of use statement. REQUIREMENTS FOR RECORDING Recording requirements for TRADEMARK applications and registrations. English language requirement. Mailing address for submitting documents to be recorded. Requests for recording. COVER SHEET REQUIREMENTS Cover sheet content. Correction of cover sheet errors. FEES Recording fees. DATE AND EFFECT OF RECORDING Recording date. -8- February 15, 2020 Effect of recording. Conditional assignments.

10 Governmental registers. DOMESTIC REPRESENTATIVE Domestic representative. ACTION TAKEN BY ASSIGNEE Prosecution by assignee. Establishing right of assignee to take action. ISSUANCE TO ASSIGNEE Issue of registration to assignee. 37 PART 6 CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT International schedule of classes of goods and services. Prior schedule of classes of goods and services. Schedule for certification marks. Schedule for collective membership marks. 37 PART 7 RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS SUBPART A -- GENERAL INFORMATION Definitions of terms as used in this part. [Reserved] Correspondence must be in English. International applications and registrations originating from the USPTO Requirements to electronically file and communicate with the Office.