Examination Guide 1-91
U.S. Patent and Trademark Office
Trademark Examining Operation
Examination Guide No. 1-91
Supplemental Guidelines Concerning the Trademark Law Revision Act of 1988 and Other Areas
Issued March 28, 1991
Contents
A. Intent-to-Use Applications
1. Lost Specimens
2. Approval of the Amendment to Allege Use - the Identification of Goods and
Services
3. Extension Requests Filed With Statements of Use
B. Provisions Affecting All Applications
1. Copies of Application Papers and Responses
2. Filing Dates
a. Use of Class Numbers to Identify Goods and Services
b. Defective Filings under <section> 44
3. Verification of Papers
a. Persons Verifying on Behalf of Foreign Applicants
b. Establishing Color of Authority
4. Identifying Partnerships
5. Inquiries Concerning Compliance with Other Laws
6. Drawings
a. Processing Drawings Including Diacritical Marks
b. Material Alteration
c. Fragrance Marks - Drawing/Description
7. Registration of Fragrance Marks
8. Priority for Publication
9. Classification Policy
10. Requests to Divide
a. Order of Processing Division Requests
b. Form of Request
C. Filing on More Than One Basis and Changing the Basis of the Application
1. Applications Filed under <section> 44(d) and Either <section> 1(a ) or
<section> 1(b)
2. Deletion of Erroneous <section> 1(b) Basis
3. Deletion of <section> 1(b) as a Basis for Registration after Publication or
Issuance of the Notice of Allowance
D. Post Registration
[p.2]Introduction
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 to update or clarify Office policy in other areas.
A. Intent-to-Use Applications
1. Lost Specimens
If the Office determines that an applicant has not submitted at least one specimen
with either an amendment to allege use or a statement of use, the Office will hold
that the applicant has failed to comply with the minimum requirements specified in
Trademark Rules 2.76(e) and 2.88(e), 37 C.F.R. <section><section> 2.76(e) and
2.88(e). The applications examiner or the Intent-To- Use Unit will notify the
applicant of the defect and will advise the applicant that the Office will not
examine the relevant paper on the merits unless the applicant takes appropriate
action to correct this defect within the relevant time period.
If the applicant wishes to establish that papers met the minimum requirements
because the specimen or specimens were submitted with the papers as filed, the
applicant must do so in a formal petition to the Commissioner. The petition should
include an affidavit, copies of the relevant specimens and any relevant evidence
establishing that the specimens were submitted with the papers as filed. The
Commissioner will consider the petition in the same manner as a petition to
establish entitlement to a filing date for the application itself. If the petition
is granted, the papers will be considered received on the date they were originally
submitted.
2. Approval of the Amendment to Allege Use - the Identification of Goods and
Services
As indicated in Examination Guide 3-90, if the amendment to allege use complies
with the requirements specified in Trademark Rule 2.76(b) and (c), 37 C.F.R.
<section><section> 2.76(b) and (c), the examining attorney should approve the
amendment to allege use. Accordingly, the examining attorney should not approve the
amendment to allege use if the applicant has not specified the goods and services as
required by the referenced rule. Under the rule, 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. Therefore, if the goods and services specified in
the amendment to allege use exceed the scope of the goods and services specified in
the application, the examining attorney should not approve the amendment to allege
use.
3. Extension Requests Filed With Statements of Use
An applicant may file a request for an extension of time to file a statement of
use along with a statement of use or after filing the statement of use if within the
time remaining for the filing of the statement of use. Trademark Rule 2.89(e), 37
C.F.R. <section> 2.89(e). If an applicant files an extension request with a
statement of use and the extension request is defective in some respect, the ITU
Unit will denythe request and will advise the applicant of the specific defect.
[p.3]
In such a case, the ITU Unit will forward the file to the examining attorney
provided the statement of use meets the minimum requirements for examination on the
merits. If there is time remaining in the current period within which the applicant
must file a statement of use, the applicant may attempt to perfect the extension
request by filing a substitute request. The examining attorney should retain this
request in the file, but the Office will not examine the request unless the
applicant needs the extension to perfect the statement of use. The fee will not be
refunded.
That is, if the examining attorney is to take any action, other than an examiner's
amendment, the application should referred to the ITU Unit for action on the
substitute extension request. Otherwise, the examining attorney should approve the
statement of use, after an examiner's amendment if necessary, without referring the
extension request to the ITU Unit for formal action.
The same procedure would apply to an extension request filed for the first time
during the examination of the statement of use by the examining attorney, but within
the time remaining for filing the statement of use.
B. Provisions Affecting All Applications
1. Copies of Application Papers and Responses
The Office prefers but will no longer generally require the submission of original
documents. This policy applies to all papers except: certificates or certified
copies of foreign registrations required under Trademark Act <section> 44, 15 U.S.C.
<section> 1126; and those types of drawings or specimens of use in cases where
originals had previously been required, for example, special-form drawings and
specimens where color must be shown. If an applicant files a copy of the application
or any other paper related to an application or registration, or a copy of a
response, the Office will not require the submission of the original, provide the
copy is legible and otherwise proper.
Effective February 12, 1991, the Office will also allow certain papers to be filed
by facsimile. See the Trademark Official Gazette of February 12, 1991, 1123 TMOG 18.
Note that numerous types of papers cannot be filed by facsimile, for example, all
specimens and drawings, all papers in TTAB proceedings and certified copies of
foreign registrations.
2. Filing Dates
a. Use of Class Numbers to Identify Goods and Services
If an applicant identifies the goods and services by indicating the class numbers
only, the applicant must be denied a filing date. This applies whether the applicant
indicates the class number by itself, for example, "9," or "Class 9," or the class
number and other wording which does not identify specific types of goods and
services, for example, "All the Goods in Class 9." If an application which
identifies the goods and services by class number only reaches the examining
attorney, the examining attorney should return the application to the application
section with instructions to cancel the filing date and to return the papers to the
applicant. Note that this policy supersedes all previous statements on this issue
including those stated in Examination Guide 3-89. [p.4]
As stated earlier, the class headings for all classes other than Classes 35 and 42
are acceptable for purposes of receiving a filing date. This policy remains in
effect.
b. Defective Filings under <section> 44
If an applicant files under Trademark Act <section> 44, 15 U.S.C. <section> 1126,
and the applicant fails to include either a valid priority claim under <section>
44(d) or a certified copy of a foreign registration under <section> 44(e), the
applicant must be denied a filing date unless the applicant has also asserted either
Trademark Act <section> 1(a) or 1(b) as an additional basis for filing. The
applicant's assertion of the additional basis for registration must be explicit.
If the applicant wishes to assert <section> 1(a) in addition to <section> 44 as
the basis for filing, and the <section> 44 basis for filing is defective, the
application must include a statement of a date of first use in commerce to receive a
filing date.
If the applicant wishes to assert <section> 1(b) in addition to <section> 44 as
the basis for filing, the Office will not presume from the mere inclusion of the
statement of a bona fide intention to use the mark in commerce, which is required of
all <section> 44 applicants, that the application is filed on both bases. The
applicant must supply the averments and submissions related to each basis asserted
stated in Trademark Rule 2.21(a)(5), 37 C.F.R. <section> 2.21(a)(5), and the
applicant must clearly indicate that it is asserting two bases. The applicant may
indicate so either:
i. by referring to the relevant statutory sections, for example <section> 1(b) &
44(d) or 15 U.S.C. <section><section> 1051(b) & 1126(e); or
ii. by repeating the statement of a bona fide intention to use the mark in
commerce; or
iii. by referring to an "additional" basis for filing, a "second" basis for
filing, "two" bases for filing or the equivalent.
For the purpose of determining entitlement to a filing date or whether two bases
have been asserted, the Office will consider the written application only. The
Office will not consider any material in the drawing or a cover letter or any place
else, other than the written application.
If a <section> 44 basis for filing is asserted, and that basis fails under
Trademark Rule 2.21(a)(5), the Office will deny a filing date unless the applicant
has indicated <section> 1(a) or <section> 1(b) as a second basis for filing as
stated above. If an application where the <section> 44 basis for filing is defective
and no additional basis has been asserted reaches the examining attorney, the
examining attorney should return the application to the application section with
instructions to cancel the filing date and to return the papers to the applicant.
3. Verification of Papers
a. Persons Verifying on Behalf of Foreign Applicants
Under revised Trademark Rule 2.21(a)(6), "the applicant" must sign the application
to receive a filing date. In the case of a corporation or association, an officer
must sign. The authority to sign [p.5] cannot be delegated to a nonofficer. See TMEP
<section> 803.9. This requirement applies to all applicants, including foreign
applicants.
In the case of foreign entities which are in the nature of corporations, it can
sometimes be difficult to determine whether the person who signed is an officer.
Significant differences exist between the legal systems of the U.S. and other
countries and in the types of legal entities established and recognized under those
systems. In examining applications filed by foreign entities, the examining attorney
must determine whether the person who signed the application held a position
equivalent to that of an officer in a U.S. corporation to confirm that the proper
person signed the application.
Note that the position must be equivalent. That is, the performance of duties
equivalent to those of an officer, by delegation or otherwise, is insufficient, by
itself, to establish authority to sign. Corporate bylaws establish corporate
officers' positions and grant certain powers to persons holding such positions. In
the case of foreign entities, the position the signer holds must possess equivalent
essential characteristics by its very nature.
TMEP <section> 803.11 discusses some titles commonly employed under foreign legal
systems and indicates whether persons holding such titles should be regarded as
proper persons to sign applications. If the applicant has not indicated the title of
the person signing on behalf of a foreign applicant or if the title indicated is not
one generally recognized as acceptable, the examining attorney must inquire whether
the person who signed holds a position equivalent to that of an officer in a U.S.
corporation. If the person does not, the applicant must establish that the person
who signed possessed at least color of authority to sign to maintain a valid
application, and the applicant must submit a new declaration signed by a proper
person. See Trademark Rule 2.71(c), 37 C.F.R. <section> 2.71(c). Please note that
although the title "manager" is generally acceptable, titles such as, "manager of
patents," suggesting narrowly limited duties are not acceptable as such and require
an inquiry by the examining attorney.
If the applicant indicates in the original application or in response to such an
inquiry that the person who signed holds a position equivalent to that of an officer
in a U.S. corporation, the Office will accept this statement as satisfying any
inquiry with respect to the person's authority to sign. Note again that the mere
delegation of officer-like powers is insufficient.
b. Establishing Color of Authority
If the examining attorney must determine whether a person possessed color of
authority under Trademark Rule 2.71(c) to establish the validity of the application
as filed, the applicant must generally provide a factual explanation to establish
that the person had firsthand knowledge of the truth of the statements in the
verification or declaration and actual or implied authority to act on behalf of the
applicant. The statement of mere legal conclusions is not sufficient, particularly
when the person who signed has been identified as the attorney for the applicant and
the person is not an employee of the applicant firm.
Please note that, under Trademark Rule 2.71(c), the applicant must provide a
substitute declaration signed by a proper person to support the application in
addition to establishing that the person who originally signed possessed color of
authority. This declaration should be required in the first office action and must
be submitted prior to publication. [p.6]
Also note that the color-of-authority provision of Trademark Rule 2.71(c) does not
apply to requests for extensions of time to file statements of use. Therefore, an
applicant cannot establish that such a paper is timely filed by showing that the
person who signed had color of authority.
4. Identifying Partnerships
If the applicant is a partnership, current Office policy requires that the
applicant indicate the names and citizenship of each general partner as well as the
state or nation where the partnership is organized. This policy also applies to a
partnership which is a general partner in a larger partnership. These requirements
have been unnecessarily burdensome on partnerships including large numbers of
partners, in particular, professional partnerships.
Therefore, in the case of a partnership consisting of ten or more general
partners, if the partnership agreement provides for the continuing existence of the
partnership in the event of the addition or departure of specific partners, the
Office will require that the applicant provide the names and citizenship of the
principal partners only. If the principal partners exceed ten, the applicant need
list only the first ten principal partners. If there is no class of principal
partners, the applicant may list any ten general partners.
5. Inquiries Concerning Compliance with Other Laws
Trademark Rule 2.69, 37 C.F.R. <section> 2.69, permits the Office to inquire
concerning compliance with other Federal laws to confirm that the applicant's use of
the mark in commerce is lawful. The Office has routinely made inquiries concerning
compliance with certain federal laws, such as laws governing the labeling of foods,
drugs and cosmetics. See TMEP <section> 901 et seq. The Office will discontinue
making such inquiries on a routine basis.
The examining attorney should only inquire concerning compliance with other
Federal laws or refuse registration based on the absence of lawful use in commerce
when a court or the responsible Federal agency has issued a finding of noncompliance
under the relevant statute or where there has been a per se violation of the
relevant statute. Cf. Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045 (TTAB
1988); Medtrodonic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984).
For the purpose of determining whether to issue such an inquiry, the Office will
not regard apparent technical violations, such as labeling irregularities on
specimens, as per se violations. For example, if a package fails to show all
required labeling information, the examining attorney should not take any action.
Likewise, the Office will no longer routinely solicit information regarding label
approval under The Federal Alcohol Administration Act or similar acts. Per se
violations necessitating an inquiry or refusal are those where a clear violation of
law, such as the sale or transportation of a controlled substance in violation of
law, is evident in the record.
In pending cases, the examining attorney should not pursue any previous inquiry
further unless the record indicates a per se violation of a substantive nature or a
specific finding of noncompliance as noted above. [p.7]
6. Drawings
a. Processing Drawings Including Diacritical Marks
Examination Guide 2-90 liberalized Office policy to permit applicants to present a
mark in typed form, if it is otherwise proper, even if the drawing includes
diacritical marks. However, for the purpose of Office processing, such drawings must
be processed as special- form drawings. Accordingly, examining attorneys and
applications examiners must ensure that such a drawing has been scanned and
otherwise treated as if it were a special-form drawing. The examining attorney
should verify on T-Search that the proper drawing of the mark has been scanned and
entered. If the drawing has not yet been processed as a special-form drawing, the
applications examiner must submit the drawing for scanning according to the same
procedures which would apply to an amended special-form drawing. These drawings
should be classified in Mark Drawing Code 5.
b. Material Alteration
Examination Guide 2-89 discusses the circumstances under which the Office will
permit amendments to pending or registered marks. Generally the deletion of matter
from a mark is evaluated according to the same standard as a proposed addition to
the mark. That is, the amendment cannot be permitted if the change to the mark would
constitute a material alteration.
However, if an applicant erroneously displays two or more obviously distinct marks
on the same drawing, the applicant may amend to designate one mark. The applicant
may do so provided third parties viewing the drawing would recognize that the
original drawing erroneously displayed two distinct marks. Even in these cases, if
the area where the mark or marks are displayed is larger than 4 inches x 4 inches,
the applicant must be denied a filing date. Also note that, in general, an applicant
may not amend a drawing to overcome an objection related to the agreement between
the mark in the drawing and the mark as shown on the specimens or foreign
certificate, if the amendment would result in a material alteration. This applies in
the case of mutilations or cases where distinct elements do not form a unitary
commercial impression.
Also, under some circumstances the deletion of nondistinctive matter may not
constitute a material alteration of the mark. For example, the deletion of the
generic name of the goods or services would not generally constitute a material
alteration, unless it was so integrated into the mark that the deletion would alter
the commercial impression. In some circumstances, even descriptive or other types of
nondistinctive matter may be deleted, if the overall commercial impression is not
altered.
c. Fragrance Marks - Drawing/Description
The general subject of fragrance marks is discussed below. This section discusses
the proper form of drawings in such cases. In the case of a fragrance mark, the
drawing page should indicate "NO DRAWING" where the mark would otherwise appear. The
drawing and the application papers should also include a concise description of the
mark. If the applicant has not provided a proper drawingor description, the
examining attorney must require appropriate amendment. The mark should be coded
under Mark Drawing Code 6. This code formerly included only sound marks and will now
include all sensory marks. [p.8]
7. Registration of Fragrance Marks
The Board recently permitted publication of a mark consisting of a fragrance
applied to the relevant goods. In re Clarke, 17 USPQ2d 1238 (TTAB 1990).
Specifically, the mark consisted of "a high impact, fresh, floral fragrance
reminiscent of Plumeria blossoms" for "sewing thread and embroidery yarn." The issue
on appeal was whether the subject matter functioned as a mark. The Board held that
the applicant had established that the identified fragrance did function as a mark.
The Board's decision is limited in scope. For instance, the Board states, "[i]t
should be noted that we are not here talking about the registrability of scents or
fragrances of products which are noted for those features, such as perfumes,
colognes or scented household products." Id. at 1239 n.4. Examining attorneys should
note these limitations in examining applications for fragrance marks. Furthermore,
examining attorneys should note that the amount of evidence required to establish
that the subject matter functions as a mark is substantial. Cf. In re Owens-Corning
Fiberglass Corp., 774 F.2d 526, 227 USPQ 417 (Fed. Cir. 1985).
Fragrance marks will be coded in Mark Drawing Code 6 in T- Search. The former
designation of this code for "Sound Marks" only will be revised to designate the
code for "Sensory Marks." The mark drawing code can be searched as a separate field.
Likewise, in the Trademark Search Library, fragrance marks will be filed in the
drawer formerly designated for "Sound Marks" which will be redesignated for "Sensory
Marks."
Any examining attorney assigned to an application for a fragrance mark should
advise the Director's Office of the existence of the application by referring a copy
of the drawing in the case to the attention of the Administrator for Trademark
Policy and Procedure. This will allow us to keep track of the activity in this area.
8. Priority for Publication
Trademark Rule 2.83, 37 C.F.R. <section> 2.83, specifies that, among pending
applications, the application with the earliest effective filing date has priority
for publication. This policy applies even if the applicant in the later-filed
application owns a registration for a mark which would be considered a bar to
registration of the earlier-filed application. Therefore, the examining attorney
must suspend action in such a later-filed case, if otherwise proper, until final
disposition of the earlier-filed application.
9. Classification Policy
In the last meeting of the Committee of Experts for the International (Nice)
Agreement, a significant inconsistency in the classification of custom manufacturing
services was identified. Due to a difficulty in translation, the English-speaking
countries misconstrued International Class 37 (Construction and Repair) as including
all "construction" activities including the construction of goods. That activity has
come to be identified as "manufacture of [indicate specific items] to the order
and/or specification of others."
However, the term "construction" in French refers only to the construction of
buildings or other edifices. This would include the construction of roads and ship
building as well. Since most of the other countries in the world that do not have
French or English as their primary language translate [p.9] the WIPO Manual from the
original French text, rather than the original English text, the "French"
interpretation of the term "construction" is worldwide except for a few countries,
such as the U.S., the U.K. and Australia.
Consequently, customized manufacturing activity is consistently classified in
International Class 40 (Material Treatment) in the non- English-speaking countries.
The terminology "material treatment" refers to the treatment or processing of
materials. It is not limited to a treatment that alters the very nature of the item,
such as the chemical alteration of the item treated. Thus, for example, the
"manufacture of furniture to the order and/or specification of others" is considered
a treatment of materials and should be classified in International Class 40, rather
than in International Class 37 as has been done by this Office in the past. (The
U.S. classes for this type of service are 103 & 106.)
This change will be incorporated into the new Acceptable Identification of Goods
and Services Manual. It will also be clarified in the new WIPO Manual that will be
issued in January of 1992. Also, at that time, the class heading for International
Class 40 will be changed to read "Treatment of Materials." The Office will begin to
classify the relevant services in accordance with this clarification with respect to
applications filed after the issuance of the new Acceptable Identification of Goods
and Services Manual.
10. Requests to Divide
a. Order of Processing Division Requests
Examination Guide 3-89 indicates at page 58 that division requests "will be given
priority in processing over any other paper in the case." There is one exception to
this general rule. If, after issuance of the notice of allowance, the applicant
submits a request for an extension of time at the same time as or before the
division request, and the extension request applies to both resulting applications,
the extension request will be processed first. In those instances where the division
request is seeking to divide out goods or services within a class, this order of
processing will provide the applicant with an extension that applies to both
resulting applications without paying two fees for extension requests.
b. Form of Request
Trademark Rule 2.87(c), 37 C.F.R. <section> 2.87(c), provides that requests to
divide "should be made in a separate paper...." This language is not intended to
prohibit division requests by examiner's amendments in appropriate circumstances.
C. Filing on More Than One Basis and Changing the Basis of the Application
1. Applications Filed under <section> 44(d) and Either <section> 1(a) or
<section> 1(b)
If an applicant files under both Trademark Act <section> 44(d), 15 U.S.C.
<section> 1126(d) and either Trademark Act <section> 1(a) or <section> 1(b), 15
U.S.C. <section> 1051(a) or (b), the examining attorney must determine whether the
applicant wishes to assert <section> 44(e) as a second basis for registration. If
the applicant wishes to do so, the mark cannot be approved for publication until the
applicant files the foreign certificate. [p.10]
If the applicant files under <section> 44(d), either alone or in combination with
<section> 1(a) or <section> 1(b), the Office presumes that <section> 44(e) is also a
basis for registration. In such a case, the applicant may elect not to complete the
<section> 44(e) basis for registration. If the applicant elects to proceed without
completing the <section> 44(e) basis for registration, the applicant may retain the
priority claim under <section> 44(d). The mark will publish as a <section> 1(a) or
<section> 1(b) case, as appropriate. The applicant cannot reinsert the <section>
44(e) basis for registration after publication. Cf. Goodway Corp. v. Intl.
Marketing Group, Inc., 15 USPQ2d 1749 (TTAB 1990); Societe Des Produits Marnier
Lapostolle v. Distillerie Moccia S.R.L., 10 USPQ2d 1241 (TTAB 1989).
Thus, in any such case, the examining attorney should inquire as to the
applicant's wishes with respect to the possible <section> 44(e) basis for
registration before suspending to await receipt of the foreign registration. Such an
inquiry should be made in the first action in the case.
See B.2.b. above for a discussion of the proper assertion of two bases and
determinations concerning filing dates in such cases.
2. Deletion of Erroneous <section> 1(b) Basis
We have noted that some cases incorrectly include a <section> 1(b) basis for
registration in the TRAM system. This error apparently occurs most often in the
initial coding of the data and most often in cases filed under <section> 44 only. In
such cases, box 17 on the front of the file will usually indicate "Section 1(b)."
When approving a mark for publication, the examining attorney should check this box.
If it indicates "Section 1(b)," and <section> 1(b) is not the correct basis,
instruct the applications examiner to correct TRAM. The case must be brought to the
TRAM Unit to do this correction. If it is not corrected, a notice of allowance will
be issued instead of a registration.
If the Office erroneously coded an application as a <section> 1(b) case when, in
fact, it was not, and a notice of allowance issued in error as a result, the
applicant may call the ITU Unit to remedy this error.
3. Deletion of <section> 1(b) as a Basis for Registration after Publication or
Issuance of the Notice of Allowance
If an applicant asserts both Trademark Act <section> 1(b) and <section> 44(e), 15
U.S.C. <section> 1051(b) and <section> 1126(e), as bases for registration, the
Office will publish the mark for opposition and will issue a notice of allowance
provided there is no successful opposition. The applicant may delete the <section>
1(b) basis at any point. If the applicant wishes to do so after publication, the
applicant may do so by submitting an amendment requesting the deletion in writing or
by telephoning the examining attorney to do so by an examiner's amendment.
If the applicant submits such an amendment in writing, the examining attorney
should initial approval of the amendment and forward the amendment to the ITU Unit
for processing. If the applicant telephones to enter such an amendment, the
examining attorney should prepare, but not mail, an examiner's amendment to that
effect. The examining attorney does not need the case file to prepare or approve the
amendment. The amendment should then be brought to the ITU Unit which will mail the
amendment. In either case, the ITU Unit will then take the necessary steps to delete
the <section> 1(b) basis and effect the issuance of the registration, if
appropriate. [p.11]
D. Post Registration
Affidavits under <section> 8
Trademark Act <section> 8, 15 U.S.C. <section> 1058, as amended, requires, among
other things, that the registrant specify the goods and services in the affidavit of
continued use. If a registrant wishes to incorporate the goods and services
specified in the registration by reference in an affidavit of use under <section> 8,
the registrant must so specify clearly in the body of the affidavit. Reference to
the specimen, or any similar reference which does not explicitly refer to the goods
and services identified in the registration, is insufficient. Registrants should
also note that the Act, as amended, also requires the submission of a specimen for
each class of goods and services in conjunction with an affidavit under <section> 8.
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