Examination Guide 1-90
MEMORANDUM
DATE: March 21, 1990
Examination Guide No. 1-90: Supplemental Guidelines Concerning the Trademark Law Revision Act of 1988 and the Revised Rules of Practice in Trademark
TO: All Trademark Personnel
VIA: David E. Bucher, Director
Trademark Examining Operation
FROM: James T. Walsh
Administrator for Trademark Policy and Procedure
SUBJECT: Examination Guide No. 1-90: Supplemental Guidelines Concerning the Trademark Law Revision Act of 1988 and the Revised Rules of Practice in Trademark Cases
The purpose of this examination guide is to provide additional information
concerning policies related to the implementation of the Trademark Law Revision Act
of 1988, Public Law 100-667, and the Revised Rules of Practice in Trademark Cases,
37 C.F.R. Part 2. This guide supplements Examination Guide 3-89 and reflects all
policy decisions reached after issuance of that guide. The major subject divisions
correspond to those in Examination Guide 3-89.
A. Intent-to-Use Applications
1. Filing-Date Requirements
The Trademark Rules specify that intent-to-use applications under Trademark Act
Section 1(b), 15 U.S.C. Section 1051(b), must include "a claim of a bona fide
intention to use the mark in commerce" to receive a filing date. Trademark Rule
2.21(a)(5)(iv), 37 C.F.R. Section 2.21(a)(5)(iv). This requirement also applies to
all applications under Trademark Act Section 44, 15 U.S.C. Section 1126.
Reasonable variations in the wording of the statement may be acceptable. The
wording "in commerce" is essential to receive a filing date. However, the applicant
may state that it has "a bona fide intention to use in commerce the mark on or in
connection with...." The applicant may use the words "good faith" instead of "bona
fide."
This statement may appear anywhere in the written application. However, applicants
are encouraged to insert the statement prominently in the opening of the application
to ensure that Office personnel responsible for determining entitlement to a filing
date can locate the statement. If it only appears somewhere other than in the
written application, such as in the [p.2] drawing heading, the application will be
denied a filing date. If the necessary statement does not appear in the written
application, and the file reaches the examining attorney in this condition, the
examining attorney should return the application papers to the application section
in the Trademark Examining Operation with instructions to cancel the filing date and
to return the papers to the applicant for failure to comply with the requirements of
Trademark Rule 2.21, 37 C.F.R. Section 2.21.
2. Statutory Averments
The Trademark Act requires that an intent-to-use applicant provide a verification
with an averment that it is "...entitled to use the mark in commerce...." Trademark
Act Section 1(b), 15 U.S.C. Section 1051(b). The Trademark Rules erroneously require
an averment that the intent-to-use applicant is "owner" of the mark. Trademark Rule
2.33(b)(2), 37 C.F.R. Section 2.33(b)(2). The rule is being amended to insert the
correct statutory language, "entitled to use." However, for the purpose of examining
intent-to- use applications, examining attorneys should accept a verification
including either averment at least until the rule is amended.
3. Identifications of Goods and Services
Applications for House Marks
Under certain limited circumstances, an applicant, including an intent-to-use
applicant, may apply to register a mark as a house mark. In the case of applications
for house marks, the Office has permitted and will permit the use of somewhat
broader terms than might otherwise be accepted in an identification of goods. In
such a case, the identification of goods may include wording such as "a house mark
for..." or "a full line of...." All such applications must define the type of goods
with sufficient particularity to permit proper classification and to enable the
Office to make necessary determinations under Trademark Act Section 2(d), 15 U.S.C.
Section 1052(d).
In an application to register a mark as a house mark based on use, over the years
the Office has required that the applicant demonstrate that the mark is, in fact,
used as a house mark, in addition to requiring the usual specimens of use. The
applicant has been required to provide catalogues showing broad use of the mark or
similar evidence to substantiate this claim.
Likewise, an intent-to-use applicant who wishes to register a mark as a house mark
must clearly indicate its intention to register the mark as a house mark during
initial examination, and the circumstances must establish that the applicant's
proposed use of the mark as a house mark is credible. The nature of the mark and the
capacity of the applicant to use the mark as asserted should be considered in
determining whether the claim that the mark is to be used as a house mark is
credible. If the applicant [p.3]indicates such an intention, the examining attorney
should also advise the applicant that, upon filing of the amendment to allege use or
the statement of use, the applicant will be required to provide appropriate evidence
to substantiate use as a house mark. If the applicant cannot do so, the applicant
will be required to amend the identification of goods to conform to the usual
standards for specificity.
4. Assertion of Dates of First Use Before the Filing Date
Although an applicant may not file an application under both Trademark Act Section
1(a), 15 U.S.C. Section 1051(a), based on use in commerce, and Trademark Act Section
1(b), 15 U.S.C. Section 1051(b), based on a bona fide intention to use the mark in
commerce, an applicant may assert dates of use which are earlier than the filing
date of the application in an amendment to allege use or a statement of use.
5. Related Company Use
If an intent-to-use applicant asserts a bona fide intention to use the mark in
commerce through a related company, or otherwise refers to proposed use by a
licensee or other party, the examining attorney should not require explanation or
evidence as to the status of the other party and control of the nature and quality
of the goods or services until the applicant files either an amendment to allege use
or a statement of use. If the applicant refers to a related company at filing, and
the examining attorney must take action in the case with respect to another issue,
the examining attorney should advise the applicant that appropriate explanation or
evidence as to the use by another party will be required in conjunction with the
examination of the amendment to allege use or the statement of use.
6. Claims of Acquired Distinctiveness
Examination Guide 3-89 states that an intent-to-use applicant may not assert that
a nondistinctive designation has acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. Section 1052(f), until the applicant has filed an amendment
to allege use or a statement of use. This policy applies even if the applicant
wishes to rely on a prior registration as proof of acquired distinctiveness.
B. Provisions Affecting All Applications
1. Filing-Date Requirements
In the written application, the applicant must state the basis for the
application, among other things, to receive a filing date. Trademark Rule 2.21, 37
C.F.R. Section 2.21. The Office will disregard any statements in the drawing heading
or elsewhere for purposes of determining entitlement to a filing date. If the
[p.4]application does not include one of the elements required to receive a filing
date, and the application reaches the examining attorney, the examining attorney
should return the file to the application section in the Trademark Examining
Operation with instructions to cancel the filing date and to return the papers to
the applicant for failure to comply with Trademark Rule 2.21, 37 C.F.R. Section 2.21
If the applicant is not entitled to a filing date, and the examining attorney
issues an action in the case and later determines that the applicant was not
entitled to a filing date, the examining attorney must issue a new action in the
case stating that the applicant was not entitled to a filing date. If the applicant
establishes entitlement to a filing date within the six- month response period, the
examining attorney should change the filing date to that date and proceed with
examination of the application.
2. Identifications of Goods and Services
a. Disposition of Amendments Filed Before November 16, 1989
If an applicant filed an amendment to the identification of goods and services
before November 16, 1989, and the amendment conforms to the pre- November 16 rules
and policies governing acceptance of amendments, the examining attorney should
accept the amendment. If the examining attorney must issue any further requirements
related to the identification of goods and services, all amendments filed after
November 16 are subject to Trademark Rule 2.71(b), 37 C.F.R. Section 2.71(b), as
revised effective November 16, 1989.
b. Determining the Scope of the Identification of Goods and Services
Examining attorneys should note the following specific guidance related to the
acceptability of amendments to the identification of goods and services, in addition
to the guidance provided in Examination Guide 3-89. These guidelines attempt to
strike a balance between the interests of applicants and the interests of third
parties who may be relying on the identification of goods and services.
i. Indefinite Identifications
An applicant may amend an indefinite identification of goods or services, which
fails to indicate a type of goods or services, to specify definite goods or services
within the scope of the indefinite terminology.
Example - If the applicant specifies "Computer Systems," the applicant may amend
to specify either goods or services within the scope of that term, such as, custom
design of [p.5]computer programs, computers, or computer programs related to a
specific field.
Likewise, if the applicant includes wording in an indefinite identification of
goods or services which, in context, is obviously surplus, the applicant may amend
the identification to specify goods or services within the scope of the indefinite
terminology.
Example - If the applicant begins an indefinite identification of goods with
surplus wording such as "sale of...," "publishing of...," "advertising of...,"
"manufacture of..." or similar wording, the applicant may amend to specify either
goods or services within the scope of the existing identification. The specific
terms used to preface the goods establish some limitation as to scope. "Sale of" may
justify an amendment to retail or mail order services for specific goods, but not to
custom manufacture of or advertising agency services related to those goods.
The policy permitting applicants to amend to specify either goods or services
discussed here should be construed narrowly. The applicant should only be permitted
to amend from goods to services or vice versa when the identification of goods and
services fails to specify a type of goods or services and when the existing
identification provides reasonable notice to third parties that the applicant may be
providing either goods or services within the scope of the existing identification.
ii. Definite Identifications
An applicant may amend a definite identification of goods, which indicates a
specific type of goods, to specify definite and acceptable identifications of goods
within the scope of the existing definite terminology.
An applicant may amend a definite identification of services, which indicates a
specific type of service, to specify definite and acceptable identifications of
services within the scope of the existing definite terminology.
An applicant may not amend a definite identification of goods to specify services
or vice versa.
Example - If the applicant specifies "Computer Programs in the Field of
Accounting," the applicant may only amend to specify computer programs within the
scope specified, those concerning accounting. The applicant may not amend to any
service, nor to any goods outside the scope of the goods already identified.
Example - Likewise, if the applicant identifies the goods as "computer programs"
without specifying the field, the applicant would be limited to specific types of
computer [p.6]programs for the purposes of amendments. The applicant has identified
a definite type of goods although Office policy requires further specificity as to
field. An applicant which had identified its goods as "clothing" would likewise be
limited to goods within the scope of the term "clothing."
Example - If the applicant specified "Retail Store Services," the applicant
would be limited to amendments within the scope of this service. Although Office
policy requires further specificity as to the field, the applicant has identified a
definite type of service.
Example - If the applicant identifies its goods as "Stationery" or "Wine Labels"
or "Menus," the applicant would be restricted in any amendments to goods within the
scope of the type indicated. The applicant could not amend to specify other types of
goods or services, such as wine or restaurant services.
iii. The "Ordinary-Meaning" Test
For the purpose of determining the scope of an indefinite identification, the
examining attorney should consider the ordinary meaning of the wording apart from
any specific meaning the Office might ascribe to the wording within the
classification system. The class designation, whether inserted by the applicant or
the Office, does not limit the scope of permissible amendments. If the applicant
designates the class, this information may be weighed with other factors for the
benefit of the applicant in determining the scope of permissible amendments.
However, if the applicant does not merely designate the class but expressly limits
the application to the goods or services within one or more classes, the applicant
may not amend to specify goods or services not in those classes. For example, if the
applicant specifies "All of the goods in Class 9," the applicant may only amend to
specify goods in Class 9.
If the applicant uses the entire class heading for International Classes 36, 37,
38, 39, 40 or 41, the applicant may amend to any service within the class or to any
service within the ordinary meaning of the terms in the class heading. The treatment
of the class headings for International Classes 35 and 42 is discussed below (
B.2.d.iii.).
c. Effect of Unacceptable Amendment on Scope of Identification of Goods and
Services
If the applicant files an amendment to the identification of goods and services,
and the examining attorney determines that the amendment is unacceptable, the
examining attorney should refer to the identification of goods before the
unacceptable amendment to determine whether any later amendment is within the scope
of the identification. [p.7]
d. Specification of Goods and Services - Entitlement to Filing Date
i. Recognizable Goods or Services Identified
If the applicant has provided an identification in the written application which
specifies any recognizable goods or services, the Office will accord the application
a filing date, provided the applicant is otherwise entitled to a filing date. The
applicant may then only amend to specify goods or services within the scope of that
identification, as discussed in A. above.
ii. Recognizable Goods or Services not Identified
If the applicant has provided no identification or one which could not be
construed to identify any recognizable goods or services in the written application,
the examining attorney should return the application to the application section in
the Trademark Examining Operation with instructions to cancel the filing date and to
return the papers to the applicant for failure to specify goods or services under
Trademark Rule 2.21(a)(4), 37 C.F.R. Section 2.21(a)(4). For example, if the
identification is blank or specifies the mark itself or wording such as "company
name," "corporate name" or "company logo," and nothing else, the application should
be denied a filing date.
iii. Goods and Services Identified Without Even Minimal Scope Limitation
If the applicant identifies the goods and services as "Advertising and Business"
(heading for International Class 35) or "Miscellaneous" or "Miscellaneous Services"
(headings for International Class 42) or "Miscellaneous Goods," the application
should be returned to the application section in the Trademark Examining Operation
with instructions to cancel the filing date and to return the papers to the
applicant for failure to specify goods or services under Trademark Rule 2.21(a)(4),
37 C.F.R. Section 2.21(a)(4). In general, the Office will not deny a filing date
unless an applicant fails to identify any recognizable goods or services. However,
the four formulations specified here refer to the goods or services without any
limitation as to scope whatsoever and, therefore, fail to meet even the minimal
requirements necessary to receive a filing date under the rule.
If the applicant includes one or more of these formulations and other wording
which, by itself, would be sufficiently specific to receive a filing date, the
Office will accord the application a filing date and will disregard the wording
which fails to include any scope limitations for the purpose of determining the
scope of permissible amendments. If excess fees have been paid as a consequence of
including the surplus wording which is to be disregarded, the fee should be
refunded. [p.8]
iv. Location of the Identification of Goods and Services
The examining attorney should consider only the identification of goods and
services stated in the proper place for the identification in the written
application to determine entitlement to a filing date or the scope of permissible
amendments. The examining attorney should not look at the drawing, the specimens,
the method-of-use clause, the dates-of-use clause or anywhere else in the
application to determine the applicant's entitlement to a filing date with respect
to the specification of goods and services or the scope of the identification of
goods and services for purposes of permissible amendments.
3. Claims of Ownership of Prior Registration in Application at Filing
If an applicant includes a claim of ownership of a prior registration in the
application as filed, the examining attorney should accept the claim without further
proof of ownership. This policy supersedes policies set forth in TMEP section 903.01
or elsewhere to the extent that there is disagreement.
4. Assignments
As noted in Examination Guide 3-89, under the revised rules an applicant must make
a written request in the application record that a registration issue in the name of
an assignee or in a new name of applicant before preparation of the registration
certificate. The request must indicate either that an appropriate document has been
recorded or that the document has been submitted for recordation. Otherwise, the
registration will issue in the current owner's name. Trademark Rule 2.187, 37 C.F.R.
Section 2.187.
The applicant's request should expressly state that the applicant wishes the
registration to issue in the name of the assignee or the new name of the applicant.
If the applicant indicates in the application record merely that a document has been
recorded or that it has been submitted for recordation, the examining attorney
should contact the applicant to determine whether the applicant wishes the
registration to issue in the name of the assignee or in the new name of the
applicant.
During initial examination, the examining attorney should not suspend action or
reserve issuance of a final action, when it is otherwise appropriate, to await
recordation of a document. If the applicant submits a request indicating that the
relevant document has been submitted for recordation and the application is in
condition to be approved for publication, the examining attorney should withhold
approval for publication until the document has been recorded and the applicant's
name has been amended accordingly. During examination of the statement of use, the
examining attorney likewise should withhold final approval for [p.9]registration
until the relevant document has been recorded and the applicant's name has been
amended accordingly.
When the applicant has submitted a proper request and the document has been
recorded, the examining attorney will ensure that the change has been entered in the
application record, provided the mark has not been approved for publication, as
discussed immediately above. If the mark has been approved for publication, the
review and amendment clerk or the quality review clerk will ensure that the change
has been entered in the application record.
In general, the examining attorney should only issue an action regarding an
assignment if the assignee attempts to take substantive action in the case and,
therefore, must establish entitlement to take the action, and the applicant has not
yet done so. Trademark Rule 2.186, 37 C.F.R. Section 2.186. Recordation of an
assignment, or submission of proof of the assignment, establishes the assignee's
entitlement to take action under the cited rule.
C. Provisions Affecting Applications under Section 44 of the Act
1. Filing-Date Requirements
As noted above ( A.1.), the Trademark Rules require that all applications filed
under Trademark Act Section 44, 15 U.S.C. Section 1126, include a statement that the
applicant has "a bona fide intention to use the mark in commerce...." Trademark Rule
2.21(a)(5)(iv), 37 C.F.R. Section 2.21(a)(5)(iv). The policies concerning the form
and the placement of the statement in the written application set forth with respect
to intent-to-use applications apply equally to applications under Section 44.
2. Prompt Filing of Applications
All applications, including applications under Trademark Act Section 44, 15
U.S.C. Section 1126, must be filed within a reasonable time after execution of the
application. See TMEP section 803.04. The requirement for a statement of a bona fide
intention to use the mark in commerce in conjunction with applications under Section
44 reinforces the need for timely filing to ensure that the statement is valid at
the time of filing.
D. Provisions Affecting Applications Based on Use in Commerce Only
1. Filing-Date Requirements
In an application under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a),
based on use of the mark in commerce, the written application must include a date of
first use of the mark in commerce to receive a filing date. Trademark Rule
2.21(a)(5)(i), [p.10] 37 C.F.R. Section 2.21(a)(5)(i). If the date appears only in
the drawing, or anywhere else other than in the written application, the applicant
should be denied a filing date. If the date of first use in commerce does not appear
in the application statement, and the application reaches the examining attorney,
the examining attorney should return the file to the application section in the
Trademark Examining Operation with instructions to cancel the filing date and to
return the papers to the applicant for failure to comply with Trademark Rule 2.21,
37 C.F.R. Section 2.21.
2. Allegation as to Current Use
The revised application form begins the allegation of dates of use in an
application under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), with the
following language, "Applicant is using the mark in commerce on or in connection
with the above identified goods/services." The allegation that "applicant is using
the mark in commerce" satisfies the requirement that the applicant allege that it is
now using the mark in commerce. If an applicant provides such an allegation of
current use in the Office form or in any other form, the examining attorney should
not require an additional statement that the mark is now in use in commerce.
E. Filing on More Than One Basis and Changing the Basis of the Application
1. The Intent-to-Use-in-Commerce Statement
Any application filed under both Trademark Act Sections 1(a) and 44, 15 U.S.C.
Sections 1051(a) and 1126, must include a statement of a bona fide intention to use
the mark in commerce in spite of the fact that actual use is asserted in the
application.
2. Change in Basis - Retention of Filing Date
If the applicant files an application under Trademark Act Section 1(a), 15 U.S.C.
Section 1051(a), only, and later amends to rely on Trademark Act Section 44(e), 15
U.S.C. Section 1126(e), as the sole basis for registration, the application will
retain its original filing date. The Office will presume that a continuous valid
basis for registration is present.
If the applicant files an application relying on Trademark Act Section 1(b), 15
U.S.C. Section 1051(b), only, and later amends to rely on Trademark Act Section
44(e), 15 U.S.C. Section 1126(e), as the sole basis for registration, the
application will retain its original filing date. Here also, the Office will presume
that a continuous valid basis for registration is present. [p.11]
3. Time Periods During Which Basis May be Changed
Any amendment to assert a second basis for registration or to substitute one basis
for registration for another must be filed before publication of the mark. Cf.
Goodway Corp. v. Intl. Marketing Group, Inc., Opposition No. 078455 (TTAB February
6, 1990); Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10
USPQ2d 1241 (TTAB 1989). Such an amendment may be filed during an ex parte appeal
along with a request for a remand to the examining attorney to consider the
amendment.
In an application under both Trademark Act Section 1(b), 15 U.S.C. Section 1051(b)
, and Trademark Act Section 44(e), 15 U.S.C. Section 1126(e), the applicant may
delete either of the bases for registration after issuance of the notice of
allowance. If the applicant deletes the intent-to-use basis under Section 1(b), the
application will proceed to registration.
4. Effective Date of Amendment to Change Basis
If an amendment to change the basis of an application requires a statement of
dates of use or a statement of a bona fide intention to use the mark in commerce,
the amendment to change the basis will be considered effective on the date the
applicant files a verified statement of dates of use in commerce or a verified
statement of a bona fide intention to use the mark in commerce, as appropriate. If
the record already includes such a verified statement, the amendment will be
considered effective on the date the amendment is filed. The applicant need not
verify again a statement which has already been verified.
If an applicant wishes to add Trademark Act Section 44(e), 15 U.S.C. Section
1126(e), as a basis for registration, without asserting a claim of priority based on
the same application/ registration, the amendment is effective on the date of filing
of the certificate or certified copy of the foreign registration, and the verified
statement of a bona fide intention to use the mark in commerce, if necessary.
5. Priority Claims Based on Later-Filed Foreign Applications
If an applicant files an application in the United States under Trademark Act
Section 1(b), 15 U.S.C. Section 1051(b), the applicant may not amend to assert a
claim of priority under Trademark Act Section 44(d), 15 U.S.C. Section 1126(d),
based on a foreign application filed after the filing date of the United States
application. A claim of priority must be asserted within six months of the foreign
application on which the claim is based and the relevant foreign application must be
the first filed in the world for the mark and goods and services specified.
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