Examination Guide 3-90 (August 28, 1990)
Examination Guide No. 3-90: Supplemental Guidelines Concerning the Trademark Law Revision Act of 1988 and the Revised Rules of Practice in Trademark Cases
MEMORANDUM
DATE: August 28, 1990
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. 3-90: 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 Guides 3-89 and 1-90 and
reflects all policy decisions reached after issuance of those guides. The major
subject divisions correspond to those in Examination Guide 3-89.
A. Intent-to-Use Applications
1. Issuance of Refusals and Requirements in Initial Examination
As stated in Examination Guide 3-89, Office policy governing intent-to-use
applications dictates that examining attorneys issue all possible refusals or
requirements during initial examination. For example, refusals under Trademark Act
<section> 2(a), 15 U.S.C. <section> 1052(a), related to deceptive matter should be
issued in initial examination. On the other hand, refusals specifically tied to use
of the mark, such as ornamentation or functionality, should be addressed after the
submission of an amendment to allege use or statement of use and specimens.
2. Claims of Acquired Distinctiveness under <section> 2(f)
a. Permissible Time for Filing Claim
Office policy regarding the permissible time for filing claims of acquired
distinctiveness in intent-to-use cases, as stated in Examination Guides 3-89 and
1-90, is revised as follows.
Examination Guides 3-89 and 1-90 provide that an intent-to-use applicant may only
file a claim of acquired distinctiveness under Trademark Act <section> 2(f), 15
U.S.C. <section> 1052(f), after filing an [p.2] acceptable amendment to allege use
or statement of use. That policy is revised to permit the filing of such a claim
before filing an amendment to allege use or statement of use, provided the applicant
can establish that, as a result of the applicant's use of the mark on other goods or
services, the mark has become distinctive of those other goods or services and that
this previously created distinctiveness will transfer to the goods and services
listed in the application when the mark is used on them.
In such a case, the applicant must establish acquired distinctiveness as to the
other goods or services by appropriate evidence, such as, (i) ownership of a prior
registration for the same mark for related goods or services, (ii) a prima facie
claim of acquired distinctiveness based on five years use of the same mark with
related goods or services or (iii) actual evidence of acquired distinctiveness for
the same mark with respect to the other goods or services.
The goods and services identified in the application must be sufficiently related
to the goods and services specified in the claim to support a determination that the
previously created distinctiveness will transfer to the goods and services in the
application upon use. See Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d
1475 (TTAB 1988). In the alternative, the applicant may establish that, due to the
fame of the mark, the previously created distinctiveness for otherwise unrelated
goods or services will transfer to the goods and services in the application upon
use.
b. Claims of 2(f) In Part
An intent-to-use applicant may also file a claim of acquired distinctiveness under
Trademark Act <section> 2(f), 15 U.S.C. <section> 1052(f), as to part of a mark
before filing an acceptable amendment to allege use or statement of use. The claim
must indicate that the applicant has already used the relevant part of the mark in
commerce on or in connection with the specified goods or services or other goods or
services as discussed above.
Evidence in support of such a claim may consist of a claim of ownership of a prior
registration covering the relevant part of the mark and the same or other goods or
services, a prima facie claim of five years use as to the relevant part of the mark
or actual evidence of acquired distinctiveness as to the relevant part of the mark.
The examining attorney should consider the claim in the same manner as any other
claim under <section> 2(f).
If the examining attorney determines that the applicant has established acquired
distinctiveness as to the relevant part of the mark, the examining attorney should
withdraw the refusal related to the nondistinctive character of that part of the
mark. [p.3]
3. Amendments to Allege Use
a. Refund of Fees Related to Amendments to Allege Use
As stated in Examination Guide 3-89 at page 16, the review and amendment clerk
will refund any fees submitted in conjunction with a late amendment to allege use.
Also, if the amendment to allege use is timely, but the applicant fails to submit
the required fee and attempts to submit the fee to correct this defect after
approval of the mark for publication or the expiration of the response period
following a final refusal, the review and amendment clerk should refund the fee.
On the other hand, if the applicant files an intent-to-use application and, at the
same time, an amendment to allege use asserting dates of use before the filing date
of the application, the applicant will be required to comply with all requirements
related to the amendment to allege use, including the payment of the requisite fees.
b. Processing of Amendments to Allege Use Located After Publication
If the Office associates an amendment to allege use with the application after
publication of the mark and the amendment to allege use is timely and satisfies the
minimum requirements for examination on the merits, the Office will process the
paper as follows.
The examining attorney will contact the applicant to offer the applicant the
opportunity to withdraw the amendment to allege use. If the applicant withdraws the
amendment to allege use, the Office will refund any fees paid in conjunction with
the amendment to allege use.
If the amendment to allege use is not withdrawn, the examining attorney will
examine the amendment to allege use. If the amendment to allege use can be approved,
and the amendment to allege use does not raise any issues which would otherwise
necessitate the issuance of requirements or refusals, the examining attorney should
approve the amendment to allege use and return the case to pre- publication
processing. The mark must be republished.
If the examination of the amendment to allege use discloses issues which would
require issuance of requirements or refusals, in a form other than an examiner's
amendment, the examining attorney should request the restoration of jurisdiction
from the Commissioner for the purpose of issuing the relevant requirements or
refusals. The proposed Office action setting forth the relevant requirements or
refusals should accompany the request. Here also, if the applicant ultimately
complies with all requirements and overcomes all refusals, the case should be [p.4]
returned to pre-publication processing. The mark must be republished.
If the application is under an extension of time to file an opposition when the
amendment to allege use is associated with the application, the Board will suspend
the running of any granted extension and will return the application to the
examining attorney for processing in accordance with the procedures set out above.
If the amendment to allege use is ultimately approved or withdrawn, the application
should be returned to the Board for appropriate handling.
If an opposition proceeding has been filed when the amendment to allege use is
associated with the application, the Board will usually suspend the opposition
proceeding and remand the application to the examining attorney for examination of
the amendment to allege use. The examining attorney should proceed as indicated
above, except that no request for jurisdiction is required to take any necessary
action. If the amendment to allege use is ultimately approved or withdrawn, the
application should be returned to the Board for appropriate action. If the
application is abandoned in the course of examination of the amendment to allege
use, the Board should be notified.
c. Approval of the Amendment to Allege Use
If the amendment to allege use complies with the requirements specified in
Trademark Rule 2.76(b) and (c), 37 C.F.R. <section> 2.76(b) and (c), the examining
attorney should approve the amendment to allege use. The examining attorney should
approve the amendment to allege use even if the examining attorney must issue
requirements or refusals unrelated to Rule 2.76(b) and (c) as a result of the
examination of the amendment to allege use. Approval of the amendment to allege use
does not signify that the application is in condition for approval for publication.
The examining attorney should not approve the amendment to allege use if the
averments or the statement of dates of use are not in compliance with Rule 2.76(b).
Likewise, the examining attorney should not approve the amendment to allege use if
the applicant has not specified the goods and services or the method of use, or if
the applicant has not provided the required number of specimens of use. The goods
and services must conform to the goods and services then specified in the
application as discussed in Examination Guide 3-89 at page 20. Also, the examining
attorney should not approve the amendment to allege use unless the applicant has
paid all relevant fees. The payment of the fee for at least one class is sufficient
to meet the minimum requirements for the amendment to allege use to be examined on
the merits under Rule 2.76(e), but not sufficient for approval of the amendment to
allege use.
On the other hand, if the amendment to allege use conforms to Rule 2.76(b) and
(c), but requirements or refusals related to the [p.5] ownership of the mark, use of
the mark or other matters require action, the examining attorney should approve the
amendment to allege use and take action on those other issues, as appropriate.
Accordingly, if the amendment to allege use conforms to Rule 2.76(b) and (c),
including the requirement for three specimens per class, the amendment to allege use
should be approved even though issues raised in the examination of the specimens may
require action. Such issues may include inconsistencies between the mark in the
drawing and the mark as used on the specimens.
For example, if the amendment to allege use conforms to Rule 2.76(b) and (c), but
the specimens of use show ornamental use of the proposed mark, the examining
attorney should approve the amendment to allege use and issue a refusal based on
ornamental use of the proposed mark. Thereafter, the applicant may amend to the
Supplemental Register, provided the designation is capable of functioning as a mark
and otherwise eligible for registration on the Supplemental Register. An amendment
to the Supplemental Register is permitted after filing an acceptable amendment to
allege use or statement of use. Trademark Rule 2.47(c), 37 C.F.R. <section> 2.47(c).
d. Filing of Amendments to Allege Use on Statement of Use Form
If the applicant files an amendment to allege use on a statement of use form, or
vice versa, the Office will accept the form. The applicant can amend the form, as
necessary, to eliminate inappropriate language in referring to the goods or
services. For example, the applicant can amend an identification referring to "the
goods and services as identified in the notice of allowance" to "the goods and
services identified in the application."
4. Approval of the Statement of Use
Trademark Act <section> 1(d)(1), 15 U.S.C. <section> 1051(d)(1), provides, in
part, "Subject to examination and acceptance of the statement of use, the mark
shall be registered in the Patent and Trademark Office...." Thus, approval of the
statement of use signifies that the mark is eligible for registration. Therefore,
the statement of use cannot be approved unless and until the applicant has satisfied
all requirements and overcome all refusals and thereby established its entitlement
to registration.
If, concurrent with or after filing a statement of use, the applicant submits an
amendment to the Supplemental Register, and the application is otherwise in
condition to be approved for registration, then the examining attorney should
approve the statement of use and approve the application for registration on the
Supplemental Register. In such a case, the amendment to the Supplemental Register
renders the statement of use acceptable. This may occur, for example, when the
examining attorney [p.6] determines that the specimens show ornamental use of the
mark and the applicant attempts to amend to the Supplemental Register.
5. Concurrent Use
If an applicant files an intent-to-use application asserting concurrent use, the
application is void as filed. Trademark Rule 2.99(g), 37 C.F.R. <section> 2.99(g).
The examining attorney should return the papers to the Application Section with
instructions to cancel the filing date and to return the papers to the applicant.
6. Execution Date of Intent-To-Use Papers
The time lapse the Office regards as reasonable between the execution and filing
of an application is 8 weeks for domestic applicants and 12 weeks for foreign
applicants. TMEP <section> 803.04. The examining attorney has the discretion to
accept an application executed earlier if circumstances warrant. The same guidelines
apply with respect to the time lapse between execution and filing of an amendment to
allege use, a statement of use or a request for an extension of time to file a
statement of use.
For example, if a domestic applicant executed an amendment to allege use more than
8 weeks before filing the paper, the examining attorney should generally require
that the applicant reexecute the declaration in support of the amendment to allege
use. However, if the applicant indicates that the delay in filing was due to the
Office's recommendation that the applicant wait until it has received a filing
receipt with a serial number, then the examining attorney should not require
reexecution. The examining attorney should be flexible when the applicant provides a
reasonable explanation as to the delay.
The same policy applies to the execution of the statement of use and to requests
for extensions of time to file the statement of use. In the case of the request for
an extension of time, however, the applicant must provide any explanation as to a
delay at the time of filing the request. If an extension request is denied, the
applicant may only seek reconsideration in the form of a formal petition to the
Commissioner. While providing information or explanation as to any delay between
execution and filing at the time of filing a paper is most critical in the case of
requests for extensions of time, this practice is advisable in filing all papers. It
will permit the Office to determine whether the papers were filed within a
reasonable time without issuing any requirements. [p.7]
B. Provisions Affecting All Applications
1. Lost Originals of Application Papers
If an applicant submits copies of the application papers for purposes of receiving
a filing date and is unable to submit the original later because it has been lost,
the applicant may submit a ratification of the statements made in the application in
lieu of the original. The applicant must sign the ratification, and it must be
verified.
2. Identifications of Goods and Services
a. Moving Goods and Services Between Companion Applications
If an applicant has filed separate applications to register the same mark for
goods and services in the same class or different classes, the applicant may amend
to move items of goods or services from one application to another, provided the
application from which the item is to be moved was filed at least as early as the
application to which it is to be moved. Thus, applicants should not be penalized for
filing several applications as opposed to a combined application.
b. Applicants' Objections to Examiner's Amendments
The Examiner's Amendment form states, "No response is necessary unless there is an
objection to the amendment." Therefore, if the applicant objects to an amendment to
the identification of goods and services on the grounds that the examiner's
amendment does not reflect the agreement between the applicant and the examining
attorney, the applicant may amend the identification to goods and services within
the scope of the identification which was operative prior to the issuance of the
relevant examiner's amendment. The applicant must raise such an objection before
publication or within six months of the mailing of the examiner's amendment,
whichever is earlier.
3. Duplicate Registrations
The Office will not issue duplicate registrations. Under this policy, the Office
will not issue identical registrations even though the relevant applications for
registration differ in that one is based on use in commerce and the other is based
on intent to use in commerce. The Office will also construe applications filed on or
after November 16, 1989, as duplicates of identical applications filed before that
date. [p.8]
C. Provisions Affecting Applications under <section> 44 of the Act
Dividing Applications
If an applicant requests division of an application under Trademark Rule 2.87, 37
C.F.R. <section> 2.87, and the application includes a certified copy of a foreign
registration, the applicant need not provide an additional certified copy of the
foreign registration. A note indicating the serial number of the application where
the original appears should be placed in the Notes-to-the- File section of each case
which includes a photocopy of the foreign registration.
* * *
E. Filing on More Than One Basis and Changing the Basis of the Application
Policies governing assertion of more than one basis for registration and changes
in the basis for registration during prosecution apparently have caused some
confusion within the Office and among applicants. This section does not set forth
any new policies, but merely reviews relevant policies which have generated
confusion.
If the applicant files an application under <section> 44, the Office will not
presume from the mere inclusion of the intent-to-use statement required of all
<section> 44 applicants that the applicant is asserting Trademark Act <section>
1(b), 15, U.S.C. <section> 1051(b), intent to use, as an additional basis for
registration. The applicant must indicate explicitly that it is asserting <section>
1(b) as an additional basis for registration.
An applicant may amend the application to add or substitute a basis for
registration before publication. Apart from applications filed under <section>
44(d), the applicant will retain its original filing date after such an amendment,
provided the applicant has a continuous valid basis for registration. If the
applicant amends the basis for registration from <section> 1(a) or <section> 1(b) to
<section> 44(e), the Office will presume that the original basis for registration is
valid, and the applicant will retain the original filing date. Likewise, if the
applicant amends the basis for registration from <section> 44(e) to either <section>
1(a) or <section> 1(b), the Office will presume that the original basis for
registration is valid, and the applicant will retain the original filing date.
In the case of applications filed under <section> 44(d), unless the applicant
indicates otherwise, the Office will presume that the applicant's only basis for
registration is a <section> 44(e) basis premised on the registration to issue from
the foreign application relied on for priority. If the applicant amends to assert a
different basis for registration after the expiration of the six-month priority
period, the effective filing date of the application becomes the date the applicant
perfects the amendment to [p.9]substitute the new basis. In re Daiwa Seiko, Inc.,
230 USPQ 794 (Comm'r Pats. 1983). Reliance on a different foreign registration
constitutes a change in basis.
Please review Sections D. and E. of Examination Guides 3-89 and 1-90 for a
comprehensive statement of policies governing <section> 44 applications, assertion
of more than one basis and changes in the basis of the application.
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