U. S. TRADEMARK LAW 
 
 
  
 
RULES OF PRACTICE 
& 
FEDERAL STATUTES 
 
  
 
  
 
U. S. PATENT & TRADEMARK OFFICE 
January 6, 2012
IP/N/1/USA/T/4 
Page 3 -3- January 6, 2012 TABLE OF CONTENTS 
37 C.F.R. PART 2-RULES OF PRACTICE IN TRADEMARK CASES  
RULES APPLICABLE TO TRADEMARK CASES  
§ 2.1  [Reserved]  
§ 2.2  Definitions.  
§ 2.6  Trademark fees.  
§ 2.7  Fastener Recordal Fees.  
REPRESENTATION BY ATTORNEYS OR OTHER AUTHORIZED PERSONS  
§ 2.11  Applicants may be represented by an attorney.  
§ 2.17  Recognition for representation.  
§ 2.18 Correspondence, with whom held.  
§ 2.19  Revocation of power of attorney; withdrawal.  
DECLARATIONS  
§ 2.20  Declarations in lieu of oaths.  
APPLICATION FOR REGISTRATION  
§ 2.21  Requirements for receiving a filing date.  
§ 2.22  Filing requirements for a TEAS Plus application.  
§ 2.23  Additional requirements for TEAS Plus application.  
§ 2.24  Designation of domestic representative by foreign applicant.  
§ 2.25  Documents not returnable.  
§ 2.26  [Removed]  
§ 2.27  Pending trademark application index; access to applications.  
§ 2.32  Requirements for a complete application.  
§ 2.33  Verified statement.  
§ 2.34  Bases for filing.  
§ 2.35  Adding, deleting, or substituting bases.  
§ 2.36  Identification of prior registrations.  
§ 2.37  Description of mark.  
§ 2.38  Use by predecessor or by related companies.  
§ 2.41  Proof of distinctiveness under section 2(f).  
§ 2.42  Concurrent use.  
§ 2.43  Service mark.  
§ 2.44  Collective mark.  
§ 2.45  Certification mark.  
§ 2.46  Principal Register.  
§ 2.47  Supplemental Register.  
§ 2.48  Office does not issue duplicate registrations.  
DRAWING  
§ 2.51  Drawing required.  
§ 2.52  Types of drawings and format for drawings.  
§ 2.53  Requirements for drawings filed through the TEAS.  
§ 2.54  Requirements for drawings submitted on paper.  
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Page 5 -4- January 6, 2012 SPECIMENS  
§ 2.56  Specimens.  
§ 2.59  Filing substitute specimen(s).  
EXAMINATION OF APPLICATION AND ACTION BY APPLICANTS  
§ 2.61  Action by examiner.  
§ 2.62  Procedure for filing response.  
§ 2.63  Reexamination.  
§ 2.64  Final action.  
§ 2.65  Abandonment.  
§ 2.66  Revival of abandoned applications.  
§ 2.67  Suspension of action by the Patent and Trademark Office.  
§ 2.68  Express abandonment (withdrawal) of application.  
§ 2.69  Compliance with other laws.  
AMENDMENT OF APPLICATION  
§ 2.71  Amendments to correct informalities.  
§ 2.72  Amendments to description or drawing of the mark.  
§ 2.73  Amendment to recite concurrent use.  
§ 2.74  Form and signature of amendment.  
§ 2.75  Amendment to change application to different register.  
§ 2.76  Amendment to allege use.  
§ 2.77  Amendments between notice of allowance and statement of use.  
PUBLICATION AND POST PUBLICATION  
§ 2.80  Publication for opposition.  
§ 2.81  Post publication.  
§ 2.82  Marks on Supplemental Register published only upon registration.  
§ 2.83  Conflicting marks.  
§ 2.84  Jurisdiction over published applications.  
CLASSIFICATION  
§ 2.85  Classification schedules.  
§ 2.86  Application may include multiple classes.  
§ 2.87  Dividing an application.  
POST NOTICE OF ALLOWANCE  
§ 2.88  Filing statement of use after notice of allowance.  
§ 2.89  Extensions of time for filing a statement of use.  
INTERFERENCES AND CONCURRENT USE PROCEEDINGS  
§ 2.91  Declaration of interference.  
§ 2.92  Preliminary to interference.  
§ 2.93  Institution of interference.  
§ 2.96  Issue; burden of proof.  
§ 2.98  Adding party to interference.  
§ 2.99  Application to register as concurrent user.  
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Page 6 -5- January 6, 2012 OPPOSITION  
§ 2.101  Filing an opposition.  
§ 2.102  Extension of time for filing an opposition.  
§ 2.104  Contents of opposition.  
§ 2.105  Notification to parties of opposition proceeding(s).  
§ 2.106  Answer.  
§ 2.107  Amendment of pleadings in an opposition proceeding.  
CANCELLATION  
§ 2.111  Filing petition for cancellation.  
§ 2.112  Contents of petition for cancellation.  
§ 2.113  Notification of cancellation proceeding.  
§ 2.114  Answer.  
§ 2.115  Amendment of pleadings in a cancellation proceeding.  
PROCEDURE IN INTER PARTES PROCEEDINGS  
§ 2.116  Federal Rules of Civil Procedure.  
§ 2.117  Suspension of proceedings.  
§ 2.118  Undelivered Office notices.  
§ 2.119  Service and signing of papers.  
§ 2.120  Discovery.  
§ 2.121  Assignment of times for taking testimony.  
§ 2.122  Matters in evidence.  
§ 2.123  Trial testimony in inter partes cases.  
§ 2.124  Depositions upon written questions.  
§ 2.125  Filing and service of testimony.  
§ 2.126  Form of submissions to the Trademark Trial and Appeal Board.  
§ 2.127  Motions.  
§ 2.128  Briefs at final hearing.  
§ 2.129  Oral argument; reconsideration.  
§ 2.130  New matter suggested by the trademark examining attorney.  
§ 2.131  Remand after decision in inter partes proceeding.  
§ 2.132  Involuntary dismissal for failure to take testimony.  
§ 2.133  Amendment of application or registration during proceedings.  
§ 2.134  Surrender or voluntary cancellation of registration.  
§ 2.135  Abandonment of application or mark.  
§ 2.136  Status of application on termination of proceeding.  
APPEALS  
§ 2.141  Ex parte appeals from action of trademark examining attorney.  
§ 2.142  Time and manner of ex parte appeals.  
§ 2.144  Reconsideration of decision on ex parte appeal.  
§ 2.145  Appeal to court and civil action.  
PETITIONS AND ACTION BY THE DIRECTOR  
§ 2.146  Petitions to the Director.  
§ 2.148  Director may suspend certain rules.  
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Page 7 -6- January 6, 2012 CERTIFICATE  
§ 2.151  Certificate.  
PUBLICATION OF MARKS REGISTERED UNDER 1905 ACT  
§ 2.153  Publication requirements.  
§ 2.154  Publication in Official Gazette.  
§ 2.155  Notice of publication.  
§ 2.156  Not subject to opposition; subject to cancellation.  
REREGISTRATION OF MARKS REGISTERED UNDER PRIOR ACTS  
§ 2.158  Reregistration of marks registered under Acts of 1881, 1905, and 1920.  
CANCELLATION FOR FAILURE TO FILE AFFIDAVIT OR DECLARATION  
§ 2.160  Affidavit or declaration of conti nued use or excusable nonuse required to avoid 
cancellation of registration.  
§ 2.161  Requirements for a complete affidavit or declaration of continued use or excusable 
nonuse.  
§ 2.162  Notice to registrant.  
§ 2.163  Acknowledgment of receipt of affidavit or declaration.  
§ 2.164  Correcting deficiencies in affidavit or declaration.  
§ 2.165  Petition to Director to review refusal.  
§ 2.166  Affidavit of continued use or excusable nonuse combined with renewal application.  
AFFIDAVIT OR DECLARATION UNDER SECTION 15  
§ 2.167  Affidavit or declaration under section 15.  
§ 2.168  Affidavit or declaration under section 15 combined with affidavit or declaration 
under sections 8 or 71, or with renewal application.  
CORRECTION, DISCLAIMER, SURRENDER, ETC.  
§ 2.171  New certificate on change of ownership.  
§ 2.172  Surrender for cancellation.  
§ 2.173  Amendment of registration  
§ 2.174  Correction of Office mistake.  
§ 2.175  Correction of mistake by owner.  
§ 2.176  Consideration of above matters.  
TERM AND RENEWAL  
§ 2.181  Term of original registrations and renewals.  
§ 2.182  Time for filing renewal application.  
§ 2.183  Requirements for a complete renewal application.  
§ 2.184  Refusal of renewal.  
§ 2.185  Correcting deficiencies in renewal application.  
§ 2.186  Petition to Director to review refusal of renewal.  
GENERAL INFORMATION AND CORRESPONDENCE IN TRADEMARK CASES  
2.188  [Reserved]  
2.189  [Reserved]  
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Page 8 -7- January 6, 2012 § 2.190  Addresses for trademark correspondence with the United States Patent and 
Trademark Office.  
§ 2.191  Business to be transacted in writing.  
§ 2.192  Business to be conducted with decorum and courtesy.  
§ 2.193  Trademark correspondence and signature requirements.  
§ 2.194  Identification of trademark application or registration.  
§ 2.195  Receipt of trademark correspondence.  
§ 2.196  Times for taking action:  Expiration on Saturday, Sunday or Federal holiday.  
§ 2.197  Certificate of mailing or transmission.  
§ 2.198  Filing of correspondence by “Express Mail.”  
§ 2.199  [Reserved]  
TRADEMARK RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE  
§ 2.200  Assignment records open to public inspection.  
§ 2.201  Copies and certified copies.  
§ 2.202  [Reserved]  
§ 2.203  [Reserved]  
§ 2.204  [Reserved]  
§ 2.205  [Reserved]  
FEES AND PAYMENT OF MONEY IN TRADEMARK CASES  
§ 2.206  Trademark fees payable in advance.  
§ 2.207  Methods of payment.  
§ 2.208  Deposit accounts.  
§ 2.209  Refunds.  
37 C.F.R. PART 3—ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE  
§ 3.1  Definitions  
DOCUMENTS ELIGIBLE FOR RECORDING  
§ 3.11  Documents which will be recorded.  
§ 3.16  Assignability of trademarks prior to filing of an allegation of use statement.  
REQUIREMENTS FOR RECORDING  
§ 3.25  Recording requirements for trademark applications and registrations.  
§ 3.26  English language requirement.  
§ 3.27  Mailing address for submitting documents to be recorded.  
§ 3.28  Requests for recording.  
COVER SHEET REQUIREMENTS  
§ 3.31  Cover sheet content.  
§ 3.34  Correction of cover sheet errors.  
FEES  
§ 3.41  Recording fees.  
DATE AND EFFECT OF RECORDING  
§ 3.51  Recording date.  
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Page 9 -8- January 6, 2012 § 3.54  Effect of recording.  
§ 3.56  Conditional assignments.  
§ 3.58  Governmental registers.  
DOMESTIC REPRESENTATIVE  
§ 3.61  Domestic representative.  
ACTION TAKEN BY ASSIGNEE  
§ 3.71  Prosecution by assignee.  
§ 3.73  Establishing right of assignee to take action.  
ISSUANCE TO ASSIGNEE  
§ 3.85  Issue of registration to assignee.  
37 C.F.R. PART 6—CLASSIFICATION OF GOODS AND SERVICES UNDER THE 
TRADEMARK ACT  
CLASSIFICATION OF GOODS AND SER VICES UNDER THE TRADEMARK ACT  
§ 6.1  International schedule of classes of goods and services.  
§ 6.2  Prior U.S. schedule of classes of goods and services.  
§ 6.3  Schedule for certification marks.  
§ 6.4  Schedule for collective membership marks.  
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  
§ 7.1  Definitions of terms as used in this part.  
§ 7.2  [Reserved]  
§ 7.3  Correspondence must be in English.  
§ 7.4  Receipt of correspondence.  
§ 7.5  [Reserved]  
§ 7.6  Schedule of U.S. process fees.  
§ 7.7  Payments of fees to International Bureau.  
SUBPART B -- INTERNATIONAL APPLICATION ORIGINATING FROM THE UNITED STATES  
§ 7.11  Requirements for international application originating from the United States.  
§ 7.12  Claim of color.  
§ 7.13  Certification of international application.  
§ 7.14  Correcting irregularities in international application.  
SUBPART C  -- SUBSEQUENT DESIGNATION SUBMITTED THROUGH THE OFFICE  
§ 7.21  Subsequent designation.  
SUBPART D -- RECORDING CHANGES TO INTERNATIONAL REGISTRATION  
§ 7.22  Recording changes to international registration.  
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Page 10 -9- January 6, 2012 § 7.23  Requests for recording assignments at the International Bureau.  
§ 7.24  Requests to record security interest or other restriction of holder’s rights of disposal 
or release of such restriction submitted through the Office.  
SUBPART E -- EXTENSION OF PROTECTION TO THE UNITED STATES  
§ 7.25  Sections of part 2 applicable to extension of protection.  
§ 7.26  Filing date of extension of protection for purposes of examination in the Office.  
§ 7.27  Priority claim of extension of protection for purposes of examination in the Office.  
§ 7.28  Replacement of U.S. registration by registered extension of protection.  
§ 7.29  Effect of replacement on U.S. registration.  
§ 7.30  Effect of cancellation or expiration of international registration.  
§ 7.31  Requirements for transformation of an extension of protection to the United States 
into a U.S. application.  
SUBPART F -- AFFIDAVIT UNDER SECTION 71 OF THE ACT FOR EXTENSION OF 
PROTECTION TO THE UNITED STATES  
§ 7.36  Affidavit or declaration of use in commerce or excusable nonuse required to avoid 
cancellation of an extension of protection to the United States.  
§ 7.37  Requirements for a complete affidavit or declaration of use in commerce or 
excusable nonuse.  
§ 7.38  Notice to holder of extension of protection.  
§ 7.39  Acknowledgment of receipt of and correcti ng deficiencies in affidavit or declaration of 
use in commerce or excusable nonuse.  
§ 7.40  Petition to Director to review refusal.  
SUBPART G--RENEWAL OF INTERNATIONAL REGISTRATION AND EXTENSION OF PROTECTION
 
§ 7.41  Renewal of international registration and extension of protection.  
37 C.F.R. PART 10—REPRESENTATION OF OTHERS BEFORE THE PATENT AND 
TRADEMARK OFFICE  
§ 10.1  Definitions.  
§ 10.2 - 10.3 [Reserved]  
§ 10.4  [Reserved]  
INDIVIDUALS ENTITLED TO PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE  
§ 10.5 -10  [Reserved]  
§ 10.11  Removing names from the register.  
§ 10.14   [Reserved]  
§ 10.15   [Reserved]  
§ 10.18  [Reserved]  
PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL RESPONSIBILITY  
§ 10.20  Canons and Disciplinary Rules.  
§ 10.21  Canon 1.  
§ 10.22  Maintaining integrity and competence of the legal profession.  
§ 10.23  Misconduct.  
§ 10.24  Disclosure of information to authorities.  
§ 10.30  Canon 2.  
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Page 11 -10- January 6, 2012 § 10.31  Communications concerning a practitioner’s services.  
§ 10.32  Advertising.  
§ 10.33  Direct contact with prospective clients.  
§ 10.34  Communications of fields of practice.  
§ 10.35  Firm names and letterheads.  
§ 10.36  Fees for legal services.  
§ 10.37  Division of fees among practitioners.  
§ 10.38  Agreements restricting the practice of a practitioner.  
§ 10.39  Acceptance of employment.  
§ 10.40  Withdrawal from employment.  
§ 10.46 Canon 3.  
§ 10.47  Aiding unauthorized practice of law.  
§ 10.48  Sharing legal fees.  
§ 10.49  Forming a partnership with a non-practitioner.  
§ 10.56  Canon 4.  
§ 10.57  Preservation of confidences and secrets of a client.  
§ 10.61  Canon 5.  
§ 10.62  Refusing employment when the interest of the practitioner may impair the 
practitioner’s independent professional judgment.  
§ 10.63  Withdrawal when the practitioner becomes a witness.  
§ 10.64  Avoiding acquisition of interest in litigation or proceeding before the Office.  
§ 10.65  Limiting business relations with a client.  
§ 10.66  Refusing to accept or continue employment if the interests of another client may 
impair the independent professional judgment of the practitioner.  
§ 10.67  Settling similar claims of clients.  
§ 10.68  Avoiding influence by others than the client.  
§ 10.76  Canon 6.  
§ 10.77  Failing to act competently.  
§ 10.78  Limiting liability to client.  
§ 10.83  Canon 7.  
§ 10.84  Representing a client zealously.  
§ 10.85  Representing a client within the bounds of the law.  
§ 10.87  Communicating with one of adverse interest.  
§ 10.88  Threatening criminal prosecution.  
§ 10.89  Conduct in proceedings.  
§ 10.92  Contact with witnesses.  
§ 10.93  Contact with officials.  
§ 10.100  Canon 8.  
§ 10.101  Action as a public official.  
§ 10.102  Statements concerning officials.  
§ 10.103  Practitioner candidate for judicial office.  
§ 10.110  Canon 9.  
§ 10.111  Avoiding even the appearance of impropriety.  
§ 10.112  Preserving identity of funds and property of client.  
§ 10.130-10.145  [Reserved]  
§ 10.149 -10.161 [Reserved]  
§ 10.170  [Reserved]  
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Page 12 -11- January 6, 2012 PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT AND 
TRADEMARK OFFICE  
Subpart A--General Provisions  
General Information  
§ 11.1  Definitions.  
§ 11.2  Director of the Office of Enrollment and Discipline.  
§ 11.3  Suspension of rules.  
Subpart B--Recognition To Practice Before the USPTO  
Patents, Trademarks, and Other Non-Patent Law  
§ 11.4  [Reserved]  
§ 11.5 Register of attorneys and agents in patent matters; practice before the Office.  
§ 11.6  Registration of attorneys and agents.  
§ 11.7  Requirements for registration.  
§ 11.8  Oath and registration fee.  
§ 11.9  Limited recognition in patent matters.  
§ 11.10  Restrictions on practice in patent matters.  
§ 11.11  Administrative suspension, inactivation, resignation, and readmission.  
§ 11.2 [Reserved]  
§ 11.13 [Reserved]  
§ 11.14 Individuals who may practice before the Office in trademark and other non-patent 
matters.  
§ 11.15 Refusal to recognize a practitioner.  
§ 11.16 - 11.17 [Reserved]  
§ 11.18 Signature and certificate for correspondence filed in the Office.  
Subpart C – Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, Investigations, and Proceedings
 
§ 11.19 Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status.  
§ 11.20 Disciplinary sanctions; Transfer to disability inactive status.  
§ 11.21 Warnings.  
§ 11.22 Investigations.  
§ 11.23 Committee on Discipline.  
§ 11.24 Reciprocal discipline.  
§ 11.25 Interim suspension and discipline based upon conviction of committing a serious 
crime.  
§ 11.26 Settlement.  
§ 11.27 Exclusion on consent.  
§ 11.28 Incapacitated practitioners in a disciplinary proceeding.  
§ 11.29 Reciprocal transfer or initial transfer to disability inactive status.  
§§ 11.30 - 11.31 [Reserved]  
§ 11.32 Instituting a disciplinary proceeding.  
§ 11.33 [Reserved]  
§ 11.34 Complaint.  
§ 11.35 Service of complaint.  
§ 11.36 Answer to complaint.  
§ 11.37 [Reserved]  
§ 11.38 Contested case.  
§ 11.39 Hearing officer; appointment; responsibilities; review of interlocutory orders; stays.  
§ 11.40 Representative for OED Director or respondent.  
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Page 13 -12- January 6, 2012 § 11.41 Filing of papers.  
§ 11.42 Service of papers.  
§ 11.43 Motions.  
§ 11.44 Hearings.  
§ 11.45 Amendment of pleadings.  
§§ 11.46 - 11.48 [Reserved]  
§ 11.49 Burden of proof.  
§ 11.50 Evidence.  
§ 11.51 Depositions.  
§ 11.52 Discovery.  
§ 11.53 Proposed findings and conclusions; post-hearing memorandum.  
§ 11.54 Initial decision of hearing officer.  
§ 11.55 Appeal to the USPTO Director.  
§ 11.56 Decision of the USPTO Director.  
§ 11.57 Review of final decision of the USPTO Director.  
§ 11.58 Duties of disciplined or resigned practitioner, or practitioner on disability inactive 
status.  
§ 11.59 Dissemination of disciplinary and other information.  
§ 11.60 Petition for reinstatement.  
§ 11.61 Savings clause.  
§ 11.62 – 11.99 [Reserved]  
TRADEMARK ACT OF 1946, AS AMENDED  
TITLE I - THE PRINCIPAL REGISTER  
§ 1 (15 U.S.C. § 1051).  Application for registration; verification  
§ 2 (15 U.S.C. § 1052).  Trademarks registrable on the principal register; concurrent 
registration  
§ 3 (15 U.S.C. § 1053).  Service marks registrable  
§ 4 (15 U.S.C. § 1054).  Collective marks and certification marks registrable  
§ 5 (15 U.S.C. § 1055).  Use by related companies  
§ 6 (15 U.S.C. § 1056).  Disclaimers  
§ 7 (15 U.S.C. § 1057).  Certificates of registration  
§ 8 (15 U.S.C. § 1058).  Duration  
§ 9 (15 U.S.C. § 1059).  Renewal of registration  
§ 10 (15 U.S.C. § 1060).  Assignment  
§ 11 (15 U.S.C. § 1061).  Acknowledgments and verifications  
§ 12 (15 U.S.C. § 1062).  Publication  
§ 13 (15 U.S.C. § 1063).  Opposition  
§ 14 (15 U.S.C. § 1064).  Cancellation  
§ 15 (15 U.S.C. § 1065).  Incontestability of right to use mark under certain conditions  
§ 16 (15 U.S.C. § 1066).  Interference  
§ 17 (15 U.S.C. § 1067).  Interference, opposition, and proceedings for concurrent use 
registration or for cancellation; notice; Trademark Trial and Appeal Board  
§ 18 (15 U.S.C. § 1068).  Refusal, cancellation, or restriction of registration; concurrent use  
§ 19 (15 U.S.C. § 1069).  Applicability, in inter partes proceeding, of equitable principles of 
laches, estoppel and acquiescence  
§ 20 (15 U.S.C. § 1070).  Appeal from examiner to Trademark Trial and Appeal Board  
§ 21 (15 U.S.C. § 1071).  Appeal to courts  
§ 22 (15 U.S.C. § 1072).  Registration as notice  
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Page 14 -13- January 6, 2012 TITLE II - THE SUPPLEMENTAL REGISTER  
§ 23 (15 U.S.C. § 1091).  Filing and registration for foreign use  
§ 24 (15 U.S.C. § 1092).  Cancellation  
§ 25 (15 U.S.C. § 1093).  Supplemental registration certificate  
§ 26 (15 U.S.C. § 1094).  General provisions  
§ 27 (15 U.S.C. § 1095).  Principal registration not precluded by supplemental registration  
§ 28 (15 U.S.C. § 1096).  Department of Treasury; supplemental registration not filed  
TITLE III - NOTICE OF REGISTRATION  
§ 29 (15 U.S.C. § 1111).  Notice of registration; display with mark; actual notice  
TITLE IV - CLASSIFICATION  
§ 30 (15 U.S.C. § 1112).  Classification of goods and services; registration in plurality of 
classes  
TITLE V - FEES AND CHARGES  
§ 31 (15 U.S.C. § 1113).  Fees  
TITLE VI - REMEDIES  
§ 32 (15 U.S.C. § 1114).  Remedies; infringement; innocent infringers  
§ 33 (15 U.S.C. § 1115).  Registration as ev idence of right to exclusive use; defenses  
§ 34 (15 U.S.C. § 1116).  Injunctions; enforcement; notice of filing suit given Director  
§ 35 (15 U.S.C. § 1117).  Recovery of profits, damages, and costs  
§ 36 (15 U.S.C. § 1118).  Destruction of infringing articles  
§ 37 (15 U.S.C. § 1119).  Power of court over registration; certification of decrees and 
orders  
§ 38 (15 U.S.C. § 1120).  Fraud; civil liability  
§ 39 (15 U.S.C. § 1121).  Jurisdiction of Federal courts; State, local, and other agency 
requirements  
§ 40 (15 U.S.C. § 1122).  Liability of States, instrumentalities of States and State officials  
§ 41 (15 U.S.C. § 1123).  Rules and regulations  
TITLE VII - IMPORTATION FORBIDDEN OF GOODS BEARING INFRINGING MARKS OR 
NAMES  
§ 42 (15 U.S.C. § 1124).  Importation of goods bearing infringing marks or names forbidden  
TITLE VIII - FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS. AND DILUTION 
FORBIDDEN  
§ 43 (15 U.S.C. § 1125).  False designations of origin; false description or representation  
TITLE IX - INTERNATIONAL CONVENTIONS  
§ 44 (15 U.S.C. § 1126).  International conventions; register of marks  
TITLE X - CONSTRUCTION AND DEFINITIONS  
§ 45 (15 U.S.C. § 1127).  
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Page 15 -14- January 6, 2012 TITLE XI - REPEAL OF PREVIOUS ACTS  
§ 46(a) (15 U.S.C. § 1051 note).  Time of taking effect - Repeal of prior acts  
§ 46(b) (15 U.S.C. § 1051 note).  Existing registrations under prior acts  
§ 47(a) (15 U.S.C. § 1051 note).  Applications pending on effective date of Act  
§ 47(b) (15 U.S.C. § 1051 note).  Appeals pending on effective date of Act  
§ 48 (15 U.S.C. § 1051 note).  Prior acts not repealed  
§ 49 (15 U.S.C. § 1051 note).  Preservation of existing rights  
§ 50 (15 U.S.C. § 1051 note).  Severability  
§ 51 (15 U.S.C. § 1058 note).  Applications pending on effective date of the Trademark Law 
Revision Act of 1988  
TITLE XII—THE MADRID PROTOCOL  
Sec. 60 (15 U.S.C. § 1141).  Definitions  
Sec. 61 (15 U.S.C. § 1141a).  International applications based on United States applications 
or registrations  
Sec. 62 (15 U.S.C. § 1141b).  Certification of the international application  
Sec. 63 (15 U.S.C. § 1141c).  Restriction, abandonment, cancellation, or expiration of a 
basic application or basic registration  
Sec. 64 (15 U.S.C. § 1141d). Request for extension of protection subsequent to 
International registration  
Sec. 65 (15 U.S.C. § 1141e).  Extension of protection of an international registration to the 
United States under the Madrid Protocol  
Sec. 66 (15 U.S.C. § 1141f).  Effect of filing a request for extension of protection of an 
international registration to the United States  
Sec. 67 (15 U.S.C. § 1141g).  Right of priority for request for extension of protection to the 
United States.  
Sec. 68 (15 U.S.C. § 1141h).  Examination of and opposition to request for extension of 
protection; notification of refusal  
Sec. 69 (15 U.S.C. § 1141i).  Effect of extension of protection.  
Sec. 70 (15 U.S.C. § 1141j).  Dependence of extension of protection to the United States on 
the underlying international registration  
Sec. 71 (15 U.S.C. § 1141k).  Affidavits and fees  
Sec. 72 (15 U.S.C. § 1141 l).  Assignment of an extension of protection  
Sec. 73 (15 U.S.C. § 1141m).  Incontestability  
Sec. 74 (15 U.S.C. § 1141n).  Rights of extension of protection  
Sec. 13403 (15 U.S.C. § 1141 note).  Effective date  
UNITED STATES CODE, TITLE 35, PATENTS  
PART 1-UNITED STATES PATENT AND TRADEMARK OFFICE  
CHAPTER 1-ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS  
35 U.S.C. § 1.  Establishment.  
35 U.S.C. § 2.  Powers and duties.  
35 U.S.C. § 3. Officers and employees.  
35 U.S.C. § 4.  Restrictions on officers and employees as to interest in patents  
35 U.S.C. § 5.  Patent and Trademark Office Public Advisory Committees.  
35 U.S.C. § 6.  Patent Trial and Appeal Board.  (35 U.S.C. § 6 pertains to patents.)  
35 U.S.C. § 7.  Library.  
35 U.S.C. § 8.  Classification of patents.  (35 U.S.C. § 8 pertains to patents.)  
IP/N/1/USA/T/4 
Page 16 -15- January 6, 2012 35 U.S.C. § 9.  Certified copies of records.  
35 U.S.C. § 10.  Publications.  
35 U.S.C. § 11.  Exchange of copies of patents.  (35 U.S.C. § 11 pertains to patents.)  
35 U.S.C. § 12.  Copies of patents and applications for public libraries.  (35 U.S.C. § 12 
pertains to patents.)  
35 U.S.C. § 13.  Annual report to Congress.  
CHAPTER 2—PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE  
35 U.S.C. § 21.  Filing date and day for taking action.  
5 U.S.C. § 6103.  Holidays.  
District of Columbia Code—Section 28-2701.  
35 U.S.C. § 22.  Printing of papers filed.  
35 U.S.C. § 23.  Testimony in Patent and Trademark Office cases.  
35 U.S.C. § 24.  Subpoenas, witnesses.  
35 U.S.C. § 25.  Declaration in lieu of oath.  
35 U.S.C. § 26.  Effect of defective execution.  
CHAPTER 3—PRACTICE BEFORE PATENT AND TRADEMARK OFFICE  
35 U.S.C. § 31.  [Repealed]  
35 U.S.C. § 32.  Suspension or exclusion from practice.  
35 U.S.C. § 33.  Unauthorized representation as practitioner.  
CHAPTER 4—PATENT FEES, FUNDING, SEARCH SYSTEMS  
35 U.S.C. § 41(i).  Patent and trademark search systems.  
35 U.S.C. § 41 note.  Adjustment of trademark fees.  
35 U.S.C. § 42.  Patent and Trademark Office funding.  
NOTES OF OTHER STATUTES  
IP/N/1/USA/T/4 
Page 17 -16- January 6, 2012 37 C.F.R. PART 2-RULES OF PRACTICE IN TRADEMARK CASES 
AUTHORITY:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted. 
SOURCE:  30 FR 13193, Oct. 16, 1965, unless otherwise noted. 
RULES APPLICABLE TO TRADEMARK CASES 
§ 2.1  [Reserved] 
§ 2.2  Definitions. 
(a) The Act as used in this part means the Trademark Act of 1946, 60 Stat. 427, as amended, 
codified in 15 U.S.C. 1051 et. seq.  
(b) Enti
ty as used in this part includes both na tural and juristic persons. 
(c) Director as used in this chapter, except for part 10 and part  11, means t he Unde r Secreta ry 
of Commerce for Intellectual Property and Director of the United States Patent and Trademark 
Office. 
(d) Federal holiday within the District of Columbia  means any day, ex cept Saturdays and 
Sundays, when the United States Patent and Trademark Office is officially closed for business for 
the entire day. 
(e) The term Office mean s the Uni ted States Pate nt and Trademark Office.   
(f) The acronym TEAS means the  Trademark Electronic Application Syst em, available online 
at http://www.uspto.gov .   
(g) The acronym ESTTA  means the Electronic System for Trad emark Trials and Appeals, 
available at http://www.uspto.gov/ .  
(h) The term international application  means an application for international registration  that is 
filed under the Protocol Relating to the Madrid Agreement Concerning the International 
Registration of Marks. 
[54 FR 37588, Sept. 11, 1989; 68 FR 48286, Aug. 13,  2003, effective Sept. 12, 2003; 68 FR 55748, Sept. 
26, 2003, effective Nov. 2, 2003; 73 FR 47650,  Aug 14. 2008, effective Sept. 15, 2008]  
§ 2.6  Trademark fees. 
The Patent and Trademark Office requires following fees and charges:  
(a)  Trademark process fees. 
(1)  Application filing fees. 
(i) For filing an application on paper, per class—$375.00 
(ii) For filing an application through TEAS, per class—$325.00 
(iii) For filing a TEAS Plus application under § 2.22, per class—$275.00 (iv) Additional processing fee under §§ 2.22(b) and 2.23(b), per class—$50.00 
(2)  For filing an amendment to allege us e under secti on 1(c) of the Act, per  
class—$100.00 
(3)  For  filing  a sta tement o f
 use under section 1(d)(1) of the Act, per class—
$100.00 
(4)  For filing a request under section 1(d)(2) of the Act for a six-month extension of 
time for filing a statement of use under s ection 1(d)(1) 
of the Act, per class—
$150.00 
(5)  For filing an application for renewal of a registration, per class—$400.00 (6)  Additional fee for filing a renewal application during the grace period, per 
class—$100.00 
IP/N/1/USA/T/4 
Page 18 -17- January 6, 2012 (7)  For filing to publish a mark under section 12(c), per class—$100.00 
(8)  For issuing a new certificate of registration upon request of registrant—$100.00 
(9)  For a certificate of correct ion o f registrant’s error—$100.00 
(10)  For filing a d i
sclaimer to a registration—$100.00 
(11)  For filing an amendment to a registration—$100.00 (12)  For filing an affidavit under section 8 of the Act, per class—$100.00 
(13)  For filing an affidavit under section 15 of the Act, per class—$200.00 (14)  Additional fee for filing a secti on 8 affidavit dur ing the grace period, per  
class—$100.00 
(15)  For
 petitions to the Director—$100.00 
(16)  For filing a peti tion
 to cancel, per class—$300.00 
(17)  For filing a notice of opposition, per class—$300.00 (18)  For ex parte appeal to the Trademark Trial and Appeal Board, per class—
$100.00 
(19)  Dividing an application, per new application created—$100.00 (20)  For correcting a deficienc y in a section 8 affidavit—$100.00 
(21)  For correcting a de ficiency in
 a renewal application—$100.00 
 
(b)  Trademark service fees. 
(1)  For printed copy of registered mark, copy only. Service includes preparation of 
copies by the Office within two to three business days and delivery by United States Postal Service; and preparation of copies by the Office within one 
business day of receipt and delivery to an Office Box or by electronic means (e.g., facsimile, electronic mail)—$3.00 
(2) Certified or uncertified copy of tradem ark applicatio n as filed proc essed within  
seven calend ar days—$15 .00 
(3)  Certifie
d or uncertified copy of a trademark-related official record—$50.00 
(4)  Certified c opy o
f a registered mark, showing title and/or status: 
(i)  Regular service—$15.00 (ii)  Expedited local service—$30.00 (5)  Certified or uncertified copy of tr ademark records, per document except as 
otherwise provided  in
 this section—$25.00 
(6)  For recording each trademark assignment, agreement or other document 
relating to the property in a registration or
 application 
(i)  First property in a document—$40.00 (ii)  For each additional property in the same document—$25.00 
(7)  For assignment records, abstract of title and certification, per registration—
$25.00 
(8)  Marginal cost, pa id 
in advance, for each hour of terminal session time, 
including print time, using X-Search capabilities, prorated for the actual time 
used.  The Dir
ector may waive the payment by an individual for access to X-
Search upon a showing of need or hardship, and if such waiver is in the public 
interest—$40.00 
(9)  Self-service copy charge, per page—$0.25 
(10)  Labor charges for services, per  hour or fraction thereof—$40.00 
(11)  For  items and services tha
t the Director finds may be supplied, for which fees 
are not specified by statute or by this part, such charge s as may be
 determined 
by the Director with respect to each such item or service—Actual Cost 
(12) For processing each payment refused (including a check returned “unpaid”) or 
charged back by a financial institution—$50.00 
(13)  Deposit accounts: 
(i)  For estab l
ishing a deposit account—$10.00 
(ii)  Service charge for each month when the balance at the end of the mo nth is 
below $1,000—$25.00 
[56 FR 65155, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991, as amended at 57 FR 38196, Aug. 21, 1992; 59 FR 256, Jan. 4, 1994;60 FR 41018, Aug. 11, 1995; 62 FR 40450, July 29, 1997; 64 FR 48900, Sept. 8,  
1999, effective Oct. 30
, 1999; 64 FR 67486, Dec. 2, 1999; 64 FR 67774, Dec. 10, 1999; 67 FR 79520, Dec. 
IP/N/1/USA/T/4 
Page 19 -18- January 6, 2012 30, 2002; 67 FR 70847, November 27, 2002, effect ive January 1, 2003; 68 FR 14332, March 25, 2003, 
effec tive May 1, 2003; 68 FR 48286, Aug. 13, 2003, effective Sep t. 12,  2003 ; 70 FR 2952, Jan. 19, 2005,  
effec tive Jan. 31, 2005; 70 FR 38768, July 6, 2005 , effec
tive July 18, 2005; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.7  Fastener Recordal Fees. 
(a)  Application fee for recordal of insignia—$20.00 
(b)  Renewal of insignia recordal—$20.00 
(c)  Surcharge for late renewal of insignia recordal—$20.00 
[61 FR 55223, Oct. 25, 1996] 
REPRESENTATION BY ATTORNEYS OR OTHER AUTHORIZED PERSONS 
§ 2.11  Applicants may be represented by an attorney. 
Representation before the Office is governed by § 11.14 of this chapter.  The Office cannot aid 
in the  selec tion of  an attorney. 
[50 FR 5171, Feb. 6, 1985; 68 FR 55748, Sept. 26, 2 003, effective Nov. 2, 200 3; 73 FR 47650, Aug 14. 
2008, effective Sept. 15, 2008] 
§ 2.17  Recognition for representation. 
(a) Authority to practice in trademark cases .  Only an individual qualified to practice under 
§ 11. 14 
of this chapter may represent an applicant, registrant, or party to a proceeding before the 
Office in a trademark case.   
(b)(1) Recog nition of p ractitioner as repres entative.  To be rec ognized as a representative in a 
trademark case, a practitioner qualified under § 11.14 of this chapter may: 
(i) File a power of attorney that meets the requirements of paragraph (c) of this section; 
(ii) Sign a document on behalf of an applicant, registrant, or party to a proceeding who is not 
already represented by a practitioner qualifie
d under  § 11.14 of this chapter from a different firm; 
or 
(iii) Appear in person on behalf of an applicant, r egistrant, o r party to a proceedi ng wh o is no t 
alrea dy represente d by
 a practitioner qualified under  § 11.14 of this chapter from a different firm. 
(2) Signature as certificate of authorization to represent .  When a practitioner qualified und er 
§ 11.14 of this chapter appears in person or signs a document pursuant to paragraph (b) of this 
section, his or her personal appearance or signature shall constitute a representation to the Office 
that he or she is authorized to represent the person or entity on whose behalf he or she acts.  The Office may require further proof of authorit y to act in a representative capacity. 
(c) Requirements for power of attorney .  A power of a ttorney must: 
(1) Desig
nate by name at least one practitioner meeting the requirements of § 11.14 of this 
chapter; and 
(2) Be signed by the indi
vidual applicant, registrant, or party to a proceeding pending before 
the Office, or by someone wit h leg a
l authority to bind the applicant, registrant, or party ( e.g., a 
corporate officer or general partner of a partnership).  In the case of joint applicants or joint registrants, all must sign.  Once the applicant, registrant, or party has designated a practitioner(s) qualified to practice under § 11.14 of this chapter, that practitioner may sign an associate power of 
attorney appointing another qualified practitioner(s) as an additional person(s) authorized to 
represent the applicant, registrant, or party.  If the applicant, registrant, or party revokes the original power of attorney (§ 2.19(a)), the revocation discharges any associate power signed by 
IP/N/1/USA/T/4 
Page 20 -19- January 6, 2012 the practitioner whose power has been revoked.  If the practitioner who signed an associate 
power withdraws (§ 2.19(b)), the withdrawal discharges any associate power signed by the withdrawing practitioner upon acceptance of the request for withdrawal by the Office. 
(d) Power of attorney relating to mult
 iple applications or registrations .  (1) The owner of an 
application or registration may appoint a practitioner(s) qualified to practice under § 11.14 of this chapter for up to twenty applications or registrations that have the identical owner name and attorney through TEAS.     
(2) The owner of an application or registration may file a power of attorney that relates to more 
than one  trademark ap
plication or registration, or to all existing and future applications and 
registrations of that owner, on paper.  A person relying on such a power of attorney must: 
(i) Include a copy of the previously filed power of attorney; or  (ii) Refer to the power of attorney, specifying the filing date of the previously filed power of 
attorne y; the applicati on serial nu mb 
er (if known), registration number, or inter partes proceeding 
number for which the original power of attorney was filed; and the name of the person who signed the power of attorney; or, if the application serial number is not known, submit a copy of the 
application or a copy of the mark , and specify the filing date.   
(e) Cana dian attorneys and agents .  (1) A Can adian pa tent agent who is registe
 red and in 
good standing as a patent agent under § 11.6(c) may represent parties located in Canada before 
the Office in trademark matters.   
(2) A Canadian attorney or agent who is registered or in good standing with the Canadian 
Intellectual Property Office, but n
ot registered as a patent agent under § 11.6(c), may represent 
parties located in Canada if he or she has been authorized to do so by the Director of the Office of Enrollment and Discipline, pursuant to § 11.14(f) of this chapter.   
(f) Non-lawyers .  A non-la wyer may 
 not act as a representative except in the limited 
circumstances set forth in § 11.14(b) of this chapter.  Before any non-lawyer who meets the requirements of § 11.14(b) of this chapter may take action of any kind with respect to an 
application, registration or proceeding, a written authorization must be filed, signed by the 
applicant, registrant, or party to the proceeding, or by someone with legal authority to bind the applicant, registrant, or party ( e.g., a corporate officer or general partner of a partnership).     
(g) Duration of power of attorney .  (1) Fo r purposes of recogniti
 on as a representative, the 
Office considers a power of attorney filed while an application is pending to end when the mark 
registers, when ownership changes, or when the application is abandoned.   
(2) The Office considers a power of attorney filed after registration to end when the mark is 
cancelle d or expi red, o r whe n own ership chang e
s.  If the power was filed in connection with an 
affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, renewal application under section 
9 of the Act, or request for amendment or correction under section 7 of the Act, the power is deemed to end upon acceptance or final rejection of the filing.  
[30 FR 13193, Oct. 16, 1965, as amended at 50 FR 5171, Feb. 6, 1985; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.18 Correspondence, with whom held. 
(a) Establishing the correspondence address .  (1) If a written power of attorney  t hat meets the 
requirements of § 2.17 is filed, the Office w ill send correspondence to the practitioner designated 
in the power.   
(2) If a practitioner qualified under § 11.14 of this chapter transmits a document(s) on behalf of 
an applicant, registrant, or party t
o a proceeding who is not already represented by another 
qualified practitioner from a different firm, the Office will send correspondence to the practitioner 
transmitting the documents.   
(3) If an application, registration or proceeding is not being prosecuted by a practitioner 
qualifi ed under §  11.14 of this c
hapter and the applicant, registrant, or party to the proceeding 
IP/N/1/USA/T/4 
Page 21 -20- January 6, 2012 designates a correspondence address in writing, the Office will send correspondence to the 
designated address if appropriate. 
(4) If an application, registration or proceeding is not being prosecuted by a practitioner 
qualified under § 11.14 of this chapter and the applicant, registrant, or part
y to the proceeding has 
not designated a correspondence address in writing, but a domestic representative has been appointed, the Office will send correspondence to the domestic representative if appropriate.   
(5) If the application, registration or procee ding is n ot being p rosecu ted b
 y a practitioner 
qualified under § 11.14 of this chapter, the applicant, registrant, or party to the proceeding has not designated a correspondence address, and no domestic representative has been appointed, the Office will send correspondence directly to the app licant, registrant, or part y to the proceeding.   
(6) The Office will send correspondence to only one address in an ex parte matter.   (7) Once the Office has recognized a practitioner qualified under § 11.14 of this chapter as the 
representati ve of an ap plicant o r registra nt, th e
 Office will communicate and conduct business 
only with that practitioner, or with another qualified practitioner from the same firm.  The Office will not conduct business directly with the applicant or registrant, or with another practitioner from a 
different firm, unless the applicant or registrant files a revocation of the power of attorney under 
§ 2.19(a), and/or a new power of attorney that meets the requirements of § 2.17(c).  A written request to change the correspondence address does not revoke a power of attorney. 
(b) Changing the correspondence address .  (1) If a physical or e-mail correspondence 
address cha nges, 
the applicant, registrant, or party to a proceeding must file a written request to 
change the correspondence address.  The request should be promptly filed.   
(2) A request to change the correspondence address must be made in writing, signed by the 
applicant, registrant, or party to a proceedin g, so
meone with legal authority to bind the applicant, 
registrant, or party ( e.g., a corporate officer or general partner of a partnership), or a practitioner 
qualified to practice under § 11.14 of this chapter, in accordance with  § 2.193(e)(9).   
(3) If an applicant or registrant files a new power of attorney that meets the requirements of 
§ 2.17(c), the Office will change the correspondence address to that of the practiti
oner named in 
the power.   
(4) If a practitioner qualified under § 11.14 of this chapter transmits a document(s) on behalf of 
an applicant, registrant, or party to a proc eedi
ng who is not already represented by another 
qualified practitioner, the Office will construe this as including a request to change the 
correspondence address to that of the practitioner, and will send correspondence to the 
practitioner.   
(c) Post regi strati on filing s under sections 7, 8, 9, 12(c), 15, a nd 71 .  (1) Even if the re is no 
new power 
of attorney or written request to change the correspondence address, the Office will 
change the correspondence address upon the examination of an affidavit under section 8, 12(c), 15 or 71 of the Trademark Act, renewal application under section 9 of the Act, or request for 
amendment or correction under section 7 of the Act.  If a practitioner qualified under § 11.14 of 
this chapter transmits the affida vit, renewal application, or section 7 request, the Office will send 
correspondence to the practitioner.  If the owner of the registration is not represented by a qualified practitioner, the Office will send correspondence directly to the owner, or to the domestic representative if appropriate, in accordance with paragraph (a). 
(2) Once the Office establishes a correspondence address upon examination of an affidavit, 
renewal application, or section 7 request, a writ
ten request to change the address in accordance 
with the requirements of paragraph (b)(2) of this section is required to change the address during the pendency of that filing. 
[41 FR 758, Jan. 5 1976, as amended at 54 FR 37588, Sept. 11, 1989; 67 FR 79520, Dec. 30, 2002; 68 FR 
55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008; 74 FR 
54898, Oct. 26, 2009, effective Dec. 28, 2009] 
IP/N/1/USA/T/4 
Page 22 -21- January 6, 2012 § 2.19  Revocation or withdrawal of attorney. 
(a) Revocation .  (1) Authority to repr esen t an applicant, registrant or party to a proceeding 
before the Office may be revok ed at any stage in the proceedings of a trademark case, upon 
written notification signed by the applicant, registrant, or party to the proceeding, or by someone 
with legal authority to bind the applicant, registrant, or party ( e.g., a corporate officer or general 
partner of a partnership).  In the case of joint applicants or joint registrants, all must sign.   
(2) When a power of attorney is revoked, the Office will communicate directly with the 
applica nt, registrant,  or party 
to the proceeding, or with the new attorney or domestic 
representative if appropriate.   
(3) A request to change the correspondence address does not revoke a power of attorney. (4) A new power of attorney that meets the requirements of § 2.17(c) will be treated as a 
revocation 
 of the previous power.   
(b) Withdrawal of attorney .  If the requirements of § 10.40 of this chapte r are met, a 
practitioner authorized to represent an applicant, registrant, or party to a proceeding in a trademark case may withdraw upon application to and approval by the Director or, when applicable, upon motion granted by the Trademark Trial and Appeal Board.  The practitioner should file the request to withdraw soon after the practitioner notifies the client of his/her intent to withdraw.  The request must include the following: 
(1) The application serial number, registration number, or proceeding number; 
(2) A statement of the reason(s) for the request to withdraw; and 
(3) Either  (i) A statement that the practitioner has given notice to the client that the practitioner is 
withdrawing from employment and  will be filing the necessary docum ents with the Office; that the
 
client was given notice of the withdrawal at least two months before the expiration of the response 
period, if applicable; that the practitioner has delivered to the client all documents and property in 
the practitioner’s file concerning the application, registration or proceeding to which the client is entitled; and that the practitioner has notified the client of any responses that may be due, and of the deadline for response; or 
(ii) If more than one qualified practitioner is of record, a statement that representation by 
co-cou nsel i s ongoi ng. 
[50 FR 5171, Feb. 6, 1985; 68 FR 14332, March 25, 2003, effective May 1, 2003; 68 FR 55748, Sept. 26, 
2003, effective Nov. 2, 2003; 73 FR 47650, Aug 14. 2 008, effective Sept. 15, 2008; 74 FR 54898, Oct. 26, 
2009, effective Dec. 28, 2009] 
DECLARATIONS 
§ 2.20  Declarations in lieu of oaths. 
Instead of an oath, affidavit, verification, or sworn statement, the language of 28 U.S.C. 1746, 
or the following lan guage
, may be used: 
The undersigned being warned that willful false statements and the like are punishable by fine 
or imprisonment, or bo
th, under 18 U.S.C. 1001, and that such willful false statements and the like 
may jeopardize the validity of the application or document or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true. 
[31 FR 5261, Apr. 1, 1966; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
IP/N/1/USA/T/4 
Page 23 -22- January 6, 2012 APPLICATION FOR REGISTRATION 
§ 2.21  Requirements for receiving a filing date. 
(a) The Office will grant a filing date to an applic ation under section 1 or section 44 of the Ac t 
that is  in the Englis h lan guage and co
ntains all of the following: 
(1) The name of the applicant; 
(2) A name and address for correspondence; (3) A clear drawing of the mark; (4) A listing of the goods or services; and 
(5) The filing fee for at least one class of goods or services, required by § 2.6.   
(b) If the applicant does not submit all the elements required in paragraph (a) of this section, 
the Office will deny a fil ing date and i ssue a notice explaining why the filing date was denied. 
[47 FR 38695, Sept. 2, 1982, as amended at 51 FR 29921, Aug. 21 1986; 54 FR 37588, Sept. 11, 1989; 64 
FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 
FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.22  Filing requirements for a TEAS Plus application.  
(a) A trademark/service mark application for registration on the Principal Register under 
section 1 and/or section 44 of the Act will  be 
entitled to a reduced filing fee under § 2.6(a)(1)(iii) if it 
is filed through TEAS and includes: 
(1) The applicant’s name and address; 
(2) The applicant’s legal entity; (3) The citizenship of an individual applicant, or  the s tate or coun try of incorporation o r 
organizatio n of a juris 
tic applicant; 
(4) If the applicant is a partnership, the names and citizenship of the applicant’s general 
partners; 
(5) A name and a ddress  for c orrespo ndence
; 
(6) An e-mail address for corr espondence, and an authorizat ion for the Office to send 
correspondence concerning the a
pplication to the applicant or applicant’s attorney by e-mail; 
(7) One or more bases for filing that satisfy all the requirements of § 2.34.  If more than one 
basis is s et forth, the applicant  must  co
mply with the requirements of § 2.34 for each asserted 
basis; 
(8) Correctly classified goods and/or services, with an identification of goods and/or services 
from the Office’s Acceptable Identi
fication of Goods and Services Manual,  available through the 
TEAS Plus form and at http://www.uspto.gov .  In an application based on section 44 of the Act, 
the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration; 
(9) If the application contains goods and/or services in more than one class, compliance with 
§ 2.86; 
(10) A filing fee for each cla ss of goods and/or services, as required by § 2.6(a)(1)(iii); 
(11) A 
verified statem
ent that meets the requirements of § 2.33, dated and signed by a person 
properly authorize d to sign on  behalf
 of the owner pursuant to § 2.193(e)(1); 
(12) A clear drawing of the mark.  If the applicant does not claim standard characters, the 
applicant must attach a digitized image of th
e mark in .jpg format.  If the mark includes color, the 
drawing must show the mark in color; 
(13) If the mark is in standard characters, a mark comprised of only characters in the Office’s 
standard character set, currently available at htt
p://www.uspto.gov , typed in the appropriate field 
of the TEAS Plus form;  
(14) If the mark includes color, a statement naming the color(s) and describing where the 
color(s) appears on the mark, and a claim th
at the color(s) is a feature of the mark; 
IP/N/1/USA/T/4 
Page 24 -23- January 6, 2012 (15) If the mark is not in standard characters, a description of the mark;   
(16) If the mark includes non-English wording, an English translation of that wording; (17) If the mark includes non-Latin characters, a transliteration of those characters; (18) If the mark includes an individual’s name or portrait, either (i) a statement that identifies 
the living individual whose name or likeness 
the mark comprises and written consent of the 
individual, or (ii) a statement that the name or portrait does not identify a living individual ( see 
section 2(c) of the Act); 
(19) If the applicant owns one or more registrations for the same mark, a claim of ownership of 
the regist ration(s) ide ntified by the
 registration number(s), pursuant to § 2.36; and  
(20) If the application is a concurrent use application, compliance with § 2.42. 
(b) If an application does not meet the requirements of paragraph (a) of this section at the time 
of filin g, the applica nt must pa y the fee requi
red by  § 2.6(a)(1)(iv).  The application will retain its 
original filing date, provided that when filed, the application met the filing date requirements of 
§ 2.21. 
(c) The following types of applications cannot be filed as TEAS Plus applications under 
paragraph (a) of this section:  
(1) Ap
plications for certification marks ( see § 2.45); 
(2) Applicati
ons for collective marks ( see § 2.44); 
(3) Applications for collective membership marks ( see § 2.
44); and 
(4) Applications for registrati
on on the Supplemental Register ( see § 2.47). 
[Added 70 FR 38768, July 6, 2005, effe ctive July 18, 2005; amended 74 FR  54898, Oct. 26, 2009, effective 
Dec. 28, 2009] 
§ 2.23  Additional requirements for TEAS Plus application. 
(a) In addition to the filing requirements under § 2.22(a), the applicant must: 
(1) File the following communications through TEAS: 
(i) Responses to Office actions (except notices of appeal under section 20 of the Trademark 
Act); 
(ii) Requests to change the correspondence address and owner’s address;  (iii) Appointment and/or revocation of power of attorney; 
(iv) Appointment and/or revocation of domestic representative;   
(v) Preliminary amendments;  (vi) Amendments to allege use under section 1(c) of the Act or statements of use under 
section 1(d ) of the Act; 
(vii) Re quest 
(s) for extensions of time to file a statement of use under section 1(d) of the Act; 
and 
(viii) Request(s) to delete a section 1(b) basis. (2) Maintain a valid e-mail correspondence address, and continue to receive communications 
from the Office by el 
ectronic mail. 
(b) If an application does not meet the requirements of paragraph (a) of this section, the 
applicant must pay the fee required 
by § 2.6(a)(1)(iv).   
[Added 70 FR 38768, July 6, 2005, effe ctive July 18, 2005; amended 73 FR  67759, Nov. 17, 2008, effective 
Jan. 16, 2009] 
§ 2.24  Designation and revocation of domestic representative by foreign applicant. 
(a)(1) If an applicant is not domiciled in the United States, the applicant may designate a 
domestic representative ( i.e., a pe
rson residing in the United States on whom notices or process 
in proceedings affecting the mark may be served) by either:   
IP/N/1/USA/T/4 
Page 25 -24- January 6, 2012 (i) Setting forth the name and address of the domestic representative in the initial application; 
or  
(ii) Filing a separate designation setting forth the name and address of the domestic 
representative, signed by the applicant, someo
ne with legal authority to bind the applicant ( e.g., a 
corporate officer or general partner of a partnership ), or a practitioner qualified to practice under 
§ 11.14 of this chapter.   
(2) If the applicant does not file a document designating the name and address of a person 
residin g in the United States o n whom
 notices or process in proceedings affecting the mark may 
be served, or if the last person designated cannot be found at the address given in the 
designation, then notices or process in proceedings affecting the mark may be served on the 
Director.  
(3) The mere designation of a domestic representative does not authorize the person 
design ated to represe nt the ap plican t unless q
ualified under § 11.14 of this chapter. 
(b) A request to change or revoke a designation of domestic representative must be signed by 
the applicant, someone with legal authorit
y to bind the applicant ( e.g., a corporate officer or 
general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this 
chapter. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37588 Sept. 11, 1989; 67 FR 79520, Dec. 30, 2002; 73 
FR 47650, Aug 14. 2008, effective Sept. 15, 2008; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.25  Documents not returnable. 
Except as provided in § 2.27(e), documents filed in the Office by the applicant or registrant 
become part of the official record and will not be 
returned or removed. 
[Amended 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.26  [Removed] 
[Removed 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.27  Pending trademark application index; access to applications. 
(a) An index of pending applications including the name and address of the applicant, a 
reproduction or description of the mark, the goods or services with whic h the mark i
s used, the 
class number, the dates of use, and the serial number and filing date of the application will be 
available for public inspection as soon as practicable after filing. 
(b) Except as provided in paragraph (e) of this section, access to the file of a particular 
pendi ng application  will be permitte d prior to publi
cation under § 2.80 upon written request. 
(c) Decisions of the Director and the Trademark Trial and Appeal Board in applications and 
proceedings relating thereto are publis
hed or available for inspection or publication. 
(d) Except as provided in paragraph (e) of this section, the official records of applications and 
all proc eedings rel ating thereto a re availabl e for public ins
pection and copies of the documents 
may be furnished upon payment of the fee required by § 2.6. 
(e) Anything ordered to be filed under seal pursuant to a protective order issued or made by 
any court or by the Trademark Tr
ial and Appeal Board in any proceeding involving an application 
or registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto.  When possible, only confidential portions of filings with the Board shall be filed under seal. 
IP/N/1/USA/T/4 
Page 26 -25- January 6, 2012 [36 FR 25406, Dec. 31, 1971, as amended at 48 FR  23134, Ma y 23, 1983; 48 FR 27225, June 14, 1983 ; 68 
FR 14332, March 25, 2003, effective May 1, 2003; 73  FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.32  Requirements for a complete application. 
(a) The application must be in English and include the following: 
(1) A request for registration; 
(2) The name of the applicant(s); (3)(i) The citizenship of the applicant(s); or  (ii) If the applicant is a corporation, association, partnership or other juristic person, the 
jurisdicti on (usually state  or n
ation) under the laws of which the applicant is organized; and 
(iii) If the applicant is a domestic partnership, the names and citizenship of the general 
partners; 
(iv) If the applicant is a do
mestic joint venture, the names and citizenship of the active 
members  of the jo int venture; 
(4) The add ress 
of the applicant; 
(5) One or more bases, as required by § 2.34(a);  
(6) A list of the particular goods or services on or in connection with which the applicant uses 
or inte nds to  use the ma rk.  In a Uni ted St ates a pplicati on fil
ed under section 44 of the Act, the 
scope of the goods and/or services covered by the section 44 basis may not exceed the scope of 
the goods and/or services in the foreign application or registration;   
(7) The international class of goods or services, if known.  See § 6.1 of this chapter for a list of 
the international classes of goods and servic
es;  
(8) If the mark is not in standard characters, a description of the mark; (9) If the mark includes non-English wording, an English translation of that wording; and (10) If the mark includes non-Latin characters, a transliteration of those characters, and either 
a translation of the transliterated te rm in English
, or a statement that the transliterated term has no 
meaning in English. 
(b) The application must include a verified statement that meets the requirements of § 2.33. (c) The application must include a drawing that meets the requirements of §§ 2.51 and 2.52.  (d) The application must include fee required by § 2.6 for each class of goods or services. (e) For the requirements for a multiple class application, see § 2.86. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; amended 73 FR 13780, March 14, 2008, effective 
May 13, 2008; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.33  Verified statement. 
(a) The application must include a statement that is signed in accordance with the 
requirements of § 2.193  and 
verified (sworn to) or supported by a declaration under § 2.20 by a 
person properly authorized to sign on behalf of the applicant under § 2.193(e)(1). 
(b)(1) In an application under section 1(a) of the Act, the verified statement must allege: 
That the applicant believes it is the owner of the mark; that the mark is in use in commerce; 
that t o the best of th e declara nt’s kn owle
dge and belief, no other person has the right to use the 
mark in commerce, either in the identical form or in such near resemblance as to be likely, when 
applied to the goods or services of the other person, to cause confusion or mistake, or to deceive; 
that the specimen shows the mark as used on or in connection with the goods or services; and that the facts set forth in the application are true. 
(2) In an application under section 1(b) or section 44 of the Act, the verified statement must 
allege : 
That the applicant has a bon a fi
de intention to use the mark shown in the accompanying 
drawing in commerce on or in connec
tion with the specified goods or services; that the applicant 
IP/N/1/USA/T/4 
Page 27 -26- January 6, 2012 believes it is entitled to use the mark in commerce; that to the best of the declarant’s knowledge 
and belief, no other person has the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when applied to the goods or services of the other person, to cause confusion or mistake, or to deceive; and that the facts set forth in the application 
are true.  
(c) If the verified statement is not filed within a reasonable time after it is signed, the Office 
may requi re the applica nt to sub mit a substitut e verificatio
n or declaration under § 2.20 of the 
applicant’s continued use or bona fide intention to use the mark in commerce.   
(d) [Reserved] 
(e) In an application under section 66(a) of the Act, the verified statement is part of the 
international registration on file at the In
ternational Bureau.  The verified statement must allege 
that: 
(1) the applicant/holder has a bona fide intention to use the mark in commerce that the United 
States Co ngress can regulat e on or in conne ction wi th the goods /services ide
ntified in the 
international application/subsequent designation; 
(2) the signatory is properly authorized to execute this declaration on behalf of the 
applica nt/holder; 
(3) the sig natory b elieves the a
pplicant/holder to be entitled to use the mark in commerce that 
the United States Congress can regulate on or i
n connection with the goods/services identified in 
the international application/registration; and 
(4) to the best of his/her knowledge and belief, no other person, firm, corporation, association, 
or other legal en tity has the
 right to use the mark in commerce that the United States Congress 
can regulate, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, firm, corporation, association, or other legal entity, to cause confusion, or to cause mistake, or to deceive. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37589, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 67 FR 79520, Dec. 30, 2002; 68 FR 14332, March 25, 2003, effective May 1, 2003; 
68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008; 
73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.34  Bases for filing. 
(a) The application must include one or more of the following five filing bases: 
(1) Use in commerce under section 1(a) of the Act .  The requirements for an application base d  
on section 1(a) of the Act are: 
(i) The trademark owner’s verified statement that the mark is in use in commerce on or in 
connecti on with the goods or se rvices listed i n the app licatio
n.  If the verification is not filed with 
the initial application, the verified statement must also allege that the mark was in use in commerce on or in connection with the goods or services listed in the application as of the 
application filing date; 
(ii) The date of the applicant’s first use of the mark anywhere on or in connection with the 
goods or services ;  
(iii) The d ate of the app licant’s firs t use of the mark in co mme r
ce as a trademark or service 
mark; and 
(iv) One specimen showing how the
 applicant actually uses the mark in commerce. 
(v) If more than one item of goods or services is specified in the application, the dates of use 
requi red in paragraphs (ii) an d (iii) of this sec t
ion need be for only one of the items specified in 
each class, provided that the particular item to which the dates apply is designated. 
(2) Intent-to-use under section 1(b) of the Act.   In an application under section 1(b) of the Act, 
the a
pplicant must verify that it has a bona fide intention to use the mark in commerce on or in 
connection with the goods or services listed in the application.  If the verification is not filed with 
IP/N/1/USA/T/4 
Page 28 -27- January 6, 2012 the initial application, the verified statement must also allege that the applicant had a bona fide 
intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.  
(3) Registration of a mark in a foreign applicant’s country of origin under section 44(e) of the 
Act.  The requirements for an ap
plication under section 44(e) of the Act are: 
(i) The applicant’s verified statement that it has a bona fide intention to use the mark in 
commerce on or in co nnectio n with the go ods or servic
es listed in the application.  If the 
verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.   
(ii) A true copy, a photocopy, a certification, or a certified copy of a registration in the 
applica nt’s c ountry of origin sh
owing that the mark has been registered in that country, and that 
the registration is in full force and effect.  The certification or copy of the foreign registration must show the name of the owner, the mark, and the goods or services for which the mark is registered.  If the foreign registration is not in the English language, the applicant must submit a 
translation.  
(iii) If the record indicates that the foreign regi stration will expi re before the Uni ted States  
registrati
on will issue, the applicant must submit a true copy, a photocopy, a certification, or a 
certified copy from the country of origin to establish that the foreign registration has been renewed 
and will be in force at the time the United States r egistration will issue.  If the foreign registration is 
not in the English language, the applicant must submit a translation.  
(4) Claim of priority, based upon an earlier-filed foreign application, under section 44(d) of the 
Act.  The require ments for an ap
plication under section 44(d) of the Act are: 
(i) A claim of priority, filed within six months of the filing date of the foreign application.  Before 
publication or registration
 on the Supplemental Register, the applicant must either:  
(A) Specify the filing date, serial number and country of the first regular ly filed foreign 
application; or  
(B) State that the application is based upon a subsequent regularly filed application in the 
same forei gn country, and that an y prior-filed a pplicati on h as been wi t
hdrawn, abandoned or 
otherwise disposed of, without having been laid open to public inspection and without having any rights outstanding, and has not served as a basis for claiming a right of priority.   
(ii) Include the applicant’s verified statement that it has a bona fide intention to use the mark in 
commerce on or in co nnectio n with the go ods or servic 
es listed in the application.  If the 
verification is not filed with the initial application, the verified statement must also allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.   
(iii) Before the application can be approved for publication, or for registration on the 
Supplemental Register, the applican
t must establish a basis under section 1(a), section 1(b) or 
section 44(e) of the Act.   
(5) Extensi on of protection of an international registration under section 66(a) of the Act .  In an  
applica tion under sectio n
 66(a) of the Act, the international application or subsequent designation 
requesting an extension of protection to the United States must contain a signed declaration that 
meets the requirements of § 2.33.   
(b)(1) In an application under section 1 or section 44 of the Act, an applicant may claim more 
than one b
asis, provided the applicant satisfies all requirements for the bases claimed.  However, 
the applicant may not claim both sections 1(a) and 1(b) for the identical goods or services in the 
same application. 
(2) In an application under section 1 or section 44 of the Act, if an applicant claims more than 
one b asis, the app licant  must
 list each basis, followed by the goods or services to which that basis 
applies.  If some or all of the goods or services are covered by more than one basis, this must be stated.     
(3) A basis under section 66(a) of the Act cannot be combined with any other basis. 
IP/N/1/USA/T/4 
Page 29 -28- January 6, 2012 [64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 67 FR 79520 , Dec. 30 , 200 2; 68  FR 557 48, Sept. 26 , 
2003, e ffective Nov. 2 ,
 2003; 73 FR 67759,  Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.35  Adding, deleting, or substituting bases. 
(a) In an application under section 66(a) of the Act, an applicant may not add, substitute or 
delete a basis, unless the applicant meets the require m
ents for transformation under section 70(c) 
of the Act and § 7.31 of this chapter. 
(b) In an application under section 1 or section 44 of the Act: 
(1) Before publication for opposition, an applicant may add or substitute a basis, if the 
applica nt meets all req uirements for the ne w basi s
, as stated in § 2.34.  The applicant may delete 
a basis at any time. 
(2) After publication, an applicant may add or substitute a basis in an application that is not the 
subject of an inter partes proce eding before the
 Trademark Trial and Appeal Board, but only with 
the express permission of the Director, after consideration on petition.  Republication will be required.  The amendment of an application that is the subject of an inter partes  proceeding 
before the Board is governed by § 2.133(a).  
(3) When an applicant substitutes one basis for another, the Office will presume that there was 
a contin uing valid basis,  unless the re is contra dictory e vid 
ence in the record, and the application 
will retain the original filing date, including a priority filing date under section 44(d), if appropriate.   
(4) If an applicant properly claims a section 44(d) basis in addition to another basis, the 
applicant will retain the priority filing date under se
ction 44(d) no matter which basis the applicant 
perfects.   
(5) The applicant may add or substitute a section 44(d) basis only within the six-month priority 
period following the filing date of t he 
foreign application. 
(6) When the applicant adds or substitutes a basis, the applicant must list each basis, followed 
by the goods or services to which that basis 
applies.   
(7) When the applicant deletes a basis, the applicant must also delete any goods or services 
covered solely by the deleted basis.  
 
(8) Once an applicant claims a section 1(b) basis as to any or all of the goods or services, the 
applica nt may n ot amend the ap plication to se ek regist
ration under section 1(a) of the Act for 
those goods or services unless the applicant files an allegation of use under section 1(c) or section 1(d) of the Act.   
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999;  68 FR 14332, March 25, 2003, effective May 1, 2003; 
68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 2.36  Identification of prior registrations. 
Prior registrations of the same or similar marks owned by the applicant should be identified in 
the application. 
§ 2.37  Descripti on o
f mark. 
A description of the mark must be included if the mark is not in standard characters.  In an 
application where the mark is in standard cha
racters, a description may be included and must be 
included if required by the trademark examining attorney. 
[30 FR 13193, Oct. 16, 1965; Redesignated at 64 FR 48920, Sept. 8, 1999; 68 FR 55748, Sept. 26, 2003, 
effective Nov. 2, 2003; 73 FR 13780, March 14, 2008, effective May 13, 2008] 
IP/N/1/USA/T/4 
Page 30 -29- January 6, 2012 § 2.38  Use by predecessor or by related companies. 
(a) If the first use of the mark was by a predecessor in title or by a related company (sections 5 
and 45 of the Act), and the  use
 inures to the benefit of the applicant, the dates of first use 
(§§ 2.34(a)(1)(ii) and (iii)) may be asserted with a statement that first use was by the predecessor 
in title or by the related company, as appropriate. 
(b) If the mark is not in fact being used by the applicant but is being used by one or more 
related co mpanies whose use inu res to th
e benefit of the applicant under section 5 of the Act, 
such facts must be indicated in the application. 
(c) The Office may require such details concerning the nature of the relationship and such 
proofs as may b e nec essary and approp
riate for the purpose of showing that the use by related 
companies inures to the benefit of the applicant and does not affect the validity of the mark. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37589, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999] 
§ 2.41  Proof of distinctiveness under section 2(f). 
(a) When registration is sought of a mark which would be unregistrable by reason of section 
2(e) of the Act but which is said b y
 applicant to have become distinctive in commerce of the goods 
or services set forth in the application, applicant may, in support of registrability, submit with the 
application, or in response to a request for evidence or to a refusal to register, affidavits, or 
declarations in accordance with § 2.20, depositions, or other appropriate evidence showing duration, extent and nature of use in commerce and advertising expenditures in connection therewith (identifying types of media and attaching typical advertisements), and affidavits, or declarations in accordance with § 2.20, letters or statements from the trade or public, or both, or 
other appropriate evidence tending to show that the mark distinguishes such goods or services. 
(b) In appropriate cases, ownership of one or more prior registrations on the Principal Register 
or under the Act of 1905 of the same 
mark may be accepted as prima facie evidence of 
distinctiveness.  Also, if the mark is said to have become distinctive of applicant’s goods by 
reason of substantially exclusive and continuous use in commerce thereof by applicant for the five years before the date on which the claim of distinctiveness is made, a showing by way of 
statements which are verified or which include declarations in accordance with § 2.20, in the 
application may, in appropriate cases, be accepted as prima facie evidence of distinctiveness.  In each of these situations, however, further evidence may be required. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37590, Sept. 11, 1989; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.42  Concurrent use. 
An application for registration as a lawful concurrent user shall specify and contain all the 
elements required by  t
he preceding sections.  The applicant in addition shall state in the 
application the area, the goods, and the mode of use for which applicant seeks registration; and 
also shall state, to the extent of the applicant’s knowledge, the concurrent lawful use of the mark 
by others, setting forth their names and addresses; registrations issued to or applications filed by 
such others, if any; the areas of such use; the goods on or in connection with which such use is made; the mode of such use; and the periods of such use. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 34897, Aug. 22, 1989] 
IP/N/1/USA/T/4 
Page 31 -30- January 6, 2012 § 2.43  Service mark. 
In an application to register a service mark, the application shall specify and contain all the 
elements required by the preceding  sections fo
r trademarks, but shall be modified to relate to 
services instead of to goods wherever necessary. 
§ 2.44  Collective mark. 
(a) In an application to register a collective mark under section 1(a) of the Act, the application 
shall specify and contain all applicable elem
ents required by the preceding sections for 
trademarks, but shall, in addition, specify the class of persons entitled to use the mark, indicating 
their relationship to the applicant, and the nature of the applicant’s control over the use of the mark. 
(b) In an application to register a collective mark under section 1(b), section 44 or section 
66(a) of the Act, th e app lication sha ll specify a nd contain all applica 
ble elements required by the 
preceding sections for trademarks, but shall also specify the class of persons intended to be entitled to use the mark, indicating what their relationship to the applicant w ill be, and the nature of 
the control applicant intends to exercise over the use of the mark.  
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37590, Sept. 11, 1989; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.45  Certification mark. 
(a) In an application to register a certification mark under section 1(a) of the Act, the 
application shall include all applicable elem ents re
quired by the preceding sections for 
trademarks.  In addition, the application must:  specify the conditions under which the certification mark is used; allege that the applicant exercises legitimate control over the use of the mark; allege that the applicant is not engaged in the production or marketing of the goods or services to which the mark is applied; and include a copy of the standards that determine whether others may use the certification mark on their goods and/or in connection with their services. 
(b) In an application to register a certification mark under section 1(b), section 44 or section 
66(a) of the  Act, the a pplicatio n sha ll include all  applicabl e ele m
ents required by the preceding 
sections for trademarks.  In addition, the application must:  specify the conditions under which the certification mark is intended to be used; allege that the applicant intends to exercise legitimate control over the use of the mark; and allege that  the applicant will not engage in the production or 
marketing of the goods or services to which the mark is applied.  When the applicant files an 
allegation of use under § 2.76 or § 2.88, the applicant must submit a copy of the standards that 
determine whether others may use the certification mark on their goods and/or in connection with their services.   
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37590, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.46  Principal Register. 
All applications will be treated as seeking registration on the Principal Register unless 
otherwise stated in the application.  Servic
e marks, collective marks, and certification marks, 
registrable in accordance with the applicable provisions of section 2 of the Act, are registered on 
the Principal Register. 
IP/N/1/USA/T/4 
Page 32 -31- January 6, 2012 § 2.47  Supplemental Register. 
(a) In an application to register on the Supplemental Register under section 23 of the Act, the 
application shall so indicate and s hall
 specify that the mark has been in use in commerce.   
(b) In an application to register on the Supplemental Register under section 44 of the Act, the 
applica tion shall so  indic ate.  The sta
tement of lawful use in commerce may be omitted.  
(c) An application under section 66(a) of the Act is not eligible for registration on the 
Supplemental Register. 
(d) A mark in an applic
ation to register on the Principal Register under section 1(b) of the Act 
is eligible for registration on the Supple
mental Register only after an acceptable amendment to 
allege use under § 2.76 or statement of use under § 2.88 has been timely filed.  
(e) An application for registration on the Supplemental Register must conform to the 
requirements for registration on th e
 Principal Register under section 1(a) of the Act, so far as 
applicable.  
[38 FR 18876, July 16, 1973, as amended at 54 FR 37590, Sept. 11, 1989; 68 FR 55748, Sept. 26, 2003, 
effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.48  Office does not issue duplicate registrations. 
If two applications on the same register would result in registrations that are exact duplicates, 
the Office will permit only one application to mat
ure into registration, and will refuse registration in 
the other application.   
 [Added 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
DRAWING 
§ 2.51  Drawing required. 
(a) In an application under section 1(a) of the Act, the drawing of the mark must be a 
substan tially exac t representati on of 
the mark as used on or in connection with the goods and/or 
services. 
(b) In an application under section 1(b) of the Act, the drawing of the mark must be a 
substantially exact representation of the mark as 
intended to be used on or in connection with the 
goods and/or services specified in the application, and once an amendment to allege use under 
§ 2.76 or a statement of use under § 2.88 has been filed, the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services.  
(c) In an application under section 44 of the Act, the drawing of the mark must be a 
substan tially exact repres
entation of the mark as it appears in the drawing in the registration 
certificate of a mark duly registered in the applicant’s country of origin.  
(d) In an application under section 66(a) of the Act, the drawing of the mark must be a 
substan tially exact repre
sentation of the mark as it appears in the international registration. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37590, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
IP/N/1/USA/T/4 
Page 33 -32- January 6, 2012 § 2.52  Types of drawings and format for drawings. 
A drawing depicts the mark sought to be registered.  The drawing must show only one mark.  
The applicant must include a clear drawing of the mark wh en the appli
cation is filed.  There are 
two types of drawings: 
(a) Stand ard character (typed) drawing .  Appli cants wh o seek to reg ister words , letters,  
numbe
rs, or any combination thereof without claim to any particular font style, size, or color must 
submit a standard character drawing that shows the mark in black on a white background.  An 
applicant may submit a standard character drawing if: 
(1) The application includes a statement that the mark is in standard characters and no claim 
is made to any pa rticula r font style, si
ze, or color; 
(2) The mark does not include a design element; (3) All letters and words in the mark are depicted in Latin characters;  (4) All numerals in the mark are depicted in Roman or Arabic numerals; and 
(5) The mark includes only common punctuation or diacritical marks.  
(b) Special form  drawing .  Applican ts who seek to  registe r a mark that incl udes a two o r
  three-
dimensional design; color; and/or words, letters, or numbers or the combination thereof in a particular font style or size must submit a special form drawing.  The drawing should show the mark in black on a white background, unless the mark includes color. 
(1) Marks that include color .  If the mark includes color, the drawing 
 must show the mark in 
color, and the applicant must name the color(s), describe where the color(s) appear on the mark, and submit a claim that the color(s) is a feature of the mark.   
 (2) Three dimensional marks .  If the mark  has three-dimensional feat
 ures, the drawing must 
depict a single rendition of the mark, and the applicant must indicate that the mark is three-dimensional.  
(3) Motion marks.   If the mark has motion, the drawing ma y de
 pict a single point in the 
movement, or the drawing may depict up to five freeze frames showing various points in the movement, whichever best depicts the commercial impression of the mark.  The applicant must also describe the mark.  
(4) Broken lines to show placement .  If necessary to adequately depi
 ct the commercial 
impression of the mark, the applicant may be required to submit a drawing that shows the placement of the mark by surrounding the mark with a proportionately accurate broken-line representation of the particular goods, packaging, or advertising on which the mark appears.  The applicant must also use broken lines to show any other matter not claimed as part of the mark.  For any drawing using broken lines to indicate placement of the mark, or matter not claimed as part of the mark, the applicant must describe the mark and explain the purpose of the broken 
lines. 
(5) Description of mark.  A description of the mark must be included.  
(c) 
TEAS drawings.  A drawing filed th rough TEAS must meet the requirements of § 2.53. 
(d) Paper drawings.   A paper drawing must meet  the requirements of § 2.54.  
(e) Sound, scent, and non-visual marks .  An applicant is not required to submit a drawing if the 
ma
rk consists only of a sound, a scent, or other completely non-visual matter.  For these types of 
marks, the applicant must submit a detailed description of the mark. 
[51 FR 29921, Aug. 21, 1986, as amended at 54 FR  37591, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, e ffective Nov. 2, 2003; 73 FR 13780, March 14, 2008, 
effective May 13, 2008; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.53  Requirements for drawings filed through the TEAS. 
The drawing must meet the requirements of § 2.52.  In addition, in a TEAS submission, the 
drawing must meet the followin g requi
rements: 
IP/N/1/USA/T/4 
Page 34 -33- January 6, 2012 (a) Standard character drawings .  If an applicant seeks registration of a standard character 
mark, the applicant must enter the mark in the appropriate field on the TEAS form, and check the 
box to claim that the mark consists of standard characters. 
(b) Special form drawings :  If an applicant is filing a special form drawin g, the applicant must 
attach a digitized image of the mark to the TEAS submission that meets the requirements of paragraph (c) of this section.   
(c) Requirements for digitized image:   The image must be in .jpg format and scan ned at no
  
less than 300 dots per inch and no more than 350 dots per inch with a length and width of no less than 250 pixels and no more than 944 pixels.  All lines must be clean, sharp and solid, not fine or crowded, and produce a high quality image when copied.   
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 70 FR 38768, July 6, 2005, effective 
July 18, 2005; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.54  Requirements for drawings submitted on paper. 
The drawing must meet the requirements of § 2.52.  In addition, in a paper submission, the 
drawing should :
  
(a) Be on non-shiny white paper that is separate from the application; 
(b) Be on paper that is 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches (27.9 to 
29.7 cm.) long.  One of 
the shorter sides of the sheet should be regarded as its top edge.  The 
image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8 cm) wide; 
(c) Include the caption “DRAWING PAGE” at the top of the drawing beginning one inch (2.5 
cm.) from t h
e top edge; and 
(d) Depict the mark in black ink, or in color if color is claimed as a feature of the mark.   (e) Drawings must be typed or made with a pen or by a process that will provide high definition 
when copied.  A photolithographic, printer’s pro
of copy, or other high quality reproduction of the 
mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
SPECIMENS 
§ 2.56  Specimens. 
(a) An application under section 1(a) of the Act, an amendment to allege use under § 2.76, 
and a statement of use under § 
2.88 must each include one specimen showing the mark as used 
on or in connection with the goods, or in the sale or advertising of the services in commerce.   
(b)(1) A trademark specimen is a label, tag, or container for the goods, or a display associated 
with t he go ods.  The Office ma y acc
ept another document related to the goods or the sale of the 
goods when it is impracticable to place t he mark on the goods, packaging for the goods, or 
displays associated with the goods. 
(2) A service mark specimen must show the mark as actually used in the sale or advertising of 
the se rvices.    
(3) A coll ective tra
demark or collective service mark specimen must show how a member 
uses the mark on the memb
er’s goods or in the sale or advertising of the member’s services. 
(4) A collective membership mark specimen must show use by members to indicate 
membership in the collective o r
ganization.   
(5) A certification mark specimen must show how a person other than the owner uses the 
mark to certify regional or
 other origin, material, mode of manufacture, quality, accuracy, or other 
characteristics of that person’s goods or services; or that members of a union or other organization performed the work or labor on the goods or services.   
IP/N/1/USA/T/4 
Page 35 -34- January 6, 2012 (c) A photocopy or other reproduction of a specimen of the mark as actually used on or in 
connection with the goods, or in the sale or advertising of the services, is acceptable.  However, a 
photocopy of the drawing required by § 2.51 is not a proper specimen. 
(d)(1) The specimen should be flat, and not larger than 8½ inches (21.6 cm.) wide by 11.69 
inches (29.7 cm.) long.  If a specimen of this siz
e is not available, the applicant may substitute a 
suitable photograph or other facsimile. 
(2) If the applicant files a specimen exceeding these size requirements (a “bulky specimen”), 
the Office will create a digital fa csimile of the specimen  that meets the requi rements of the rule 
(i.e., is flat a
nd no larger than 8½ inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and put 
it in the record.  The Office may destroy the original bulky specimen. 
(3) In the absence of non-bulky alternatives, the Office may accept an audio or video cassette 
tape recording, CD-ROM, or other appropriat e mediu
m.   
(4) For a TEAS submission, the specimen must be a digitized image in .jpg or .pdf format. 
[39 FR 12248, Apr. 4, 1974, as amended at 54 FR 37591, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, e ffective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.59  Filing substitute specimen(s). 
(a) In an application under section 1(a) of the Act, the applicant may submit substitute 
specimens of the mark as used on or in connection with t he g
oods, or in the sale or advertising of 
the services.  The applicant must verify by an affidavit or declaration under § 2.20 that the 
substitute specimens were in use in commerce at least as early as the filing date of the application.  Verification is not required if the specimen is a duplicate or facsimile of a specimen already of record in the application.  
(b) In an application under section 1(b) of the Act, after filing either an amendment to allege 
use under § 2.76 or a statement of use u
nder § 2.88, the applicant may submit substitute 
specimens of the mark as used on or in connection with the goods, or in the sale or advertising of the services.  If the applicant submits substitute specimen(s), the applicant must:   
(1) For an amendment to allege use under § 2.76, verify by affidavit or declaration under 
§ 2.20 that the applicant used the substitut
e specimen(s) in commerce prior to filing the 
amendment to allege use.  
(2) For a statement of use under § 2.88, verify by affidavit or declaration under § 2.20 that the 
applicant us ed the substi tute speci men(s) in commerce  either prior to filing the statement of us e or 
prior to the ex
piration of the deadline for filing the statement of use.  
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37591, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999] 
EXAMINATION OF APPLICATION AND ACTION BY APPLICANTS 
§ 2.61  Action by examiner. 
(a) Applications for registration, including amendments to allege use under section 1(c) of the 
Act, and statements of use under section 1(d) 
of the Act, will be examined and, if the applicant is 
found not entitled to registration for any reason, applicant will be notified and advised of the reasons therefor and of any formal requirements or objections. 
(b) The examiner may require the applicant to furnish such information and exhibits as may be 
reaso nably necessa ry to the proper e xam 
ination of the application. 
(c) Whenever it shall be found that two or more parties whose interests are in conflict are 
represented by the same attorney, each pa rt
y and also the attorney shall be notified of this fact. 
IP/N/1/USA/T/4 
Page 36 -35- January 6, 2012 [30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb . 9, 19 72; 54  FR 37 592, Sept. 11, 1989] 
§ 2.62  Procedure for filing response. 
(a) Deadline .  The applicant’s respons e to an Office action must be received within six months 
from the date of issuance.   
(b) Signature.  The response must be signed by the applicant, someone with legal authority to 
bind the applicant ( e.g., a corporat
e officer or general partner of a partnership), or a practitioner 
qualified to practice under § 11.14 of this chapter, in accordance with the requirements of 
§ 2.193(e)(2).     
[Amended 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 
28, 2009] 
§ 2.63  Reexamination. 
(a) After response by the applicant, the application will be reexamined or reconsidered.  If 
registration is again refused or an y f
ormal requirement[s] is repeated, but the examiner’s action is 
not stated to be final, the applicant may respond again. 
(b) After reexamination the applicant may respond by filing a timely petition to the Director for 
relief  from a formal require
ment if:  (1) The requirement is repeated, but the examiner’s action is 
not made final, and the subject matter of the requirement is appropriate for petition to the Director 
(see § 2.146(b)); or (2) the examiner’s action is made final and such action is limited to subject matter appropriate for petition to the Director.  If the petition is denied, the applicant shall have 
until six months from the date of the Office action which repeated the requirement or made it final 
or thirty days from the date of the decision on the petition, whichever date is later, to comply with the requirement.  A formal requirement which is the subject of a petition decided by the Director may not subsequently be the subject of an appeal to the Trademark Trial and Appeal Board. 
[48 FR 23214, May 23, 1983; 68 FR 14332, March 25, 2003, effective May 1, 2003] 
§ 2.64  Final action. 
(a) On the first or any subsequent reexamination or reconsideration the refusal of the 
registration or the insistence u pon 
a requirement may be stated to be final, whereupon applicant’s 
response is limited to an appeal, or to a compliance with any requirement, or to a petition to the Director if permitted by § 2.63(b). 
(b) During the period between a final action and expiration of the time for filing an appeal, the 
applica nt may requ est th e exa 
miner to reconsider the final action.  The request must be signed by 
the applicant, someone with legal authority to bind the applicant ( e.g., a corporate officer or 
general partner of a partnership), or a practitioner qualified to practice under § 11.14, in accordance with the requirements of § 2.193(e)(2).  The filing of a request for reconsideration will not extend the time for filing an appeal or petitioning the Director, but normally the examiner will 
reply to a request for reconsideration before the end of the six-month period if the request is filed 
within three months after the date of the fi nal action.  The Office will enter amendments 
accompanying requests for reconsideration after final action if the amendments comply with the rules of practice in trademark cases and the Act. 
(c)(1) If an applicant in an application under section 1(b) of the Act files an amendment to 
allege  use under § 2.76 
during the six-month response period after issuance of a final action, the 
examiner shall examine the amendment.  The filing of such an amendment will not extend the time for filing an appeal or petitioning the Director. 
IP/N/1/USA/T/4 
Page 37 -36- January 6, 2012 (2) If the amendment to allege use under § 2.76 is acceptable in all respects, the applicant will 
be notified of its acceptance.  
(3) If, as a result of the examination of the amendment to allege use under § 2.76, the 
applicant is found not entitled to registration for an
y reason not previously stated, applicant will be 
notified and advised of the reasons and of any formal requirements or refusals.  The Trademark 
Examining Attorney shall withdraw the final action previously issued and shall incorporate all unresolved refusals or requirements previously stated in the new non-final action.  
[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989; 68 FR 14332, March 25, 2003, 
effective May 1, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, 
effective Dec. 28, 2009] 
§ 2.65  Abandonment. 
(a) If an applicant fails to respond, or to respond completely, within six months after the date 
an action is issued, the application shall be  de
emed abandoned unless the refusal or requirement 
is expressly limited to only certain goods and/or services.  If the refusal or requirement is 
expressly limited to only certain goods and/or services, the application will be abandoned only as to those particular goods and/or services.  A timely petition to the Director pursuant to §§ 2.63(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board pursuant to § 2.142, if appropriate, is a response that avoids abandonment of an application. 
(b) When action by the applicant filed within the six-month response period is a bona fide 
attempt to advance the examination of the appli
cation and is substantially a complete response to 
the examiner’s action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, opportunity to explain and supply the omission may be given before the question of abandonment is considered. 
(c) If an applicant in an application under section 1(b) of the Act fails to timely file a statement 
of use  under § 2. 88, the applica tion shall b e de
emed to be abandoned.  
[48 FR 23134, May 23, 1983, as amended at 54 FR 37592, Sept. 11, 1989; 68 FR 14332, March 25, 2003, 
effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.66  Revival of abandoned applications. 
(a) The applicant may file a petition to revive an application abandoned because the applicant 
did not timely respond to an Office action or not ice of allo
wance, if the delay was unintentional.  
The applicant must file the petition: 
(1) Within two months of the date of issuance of the notice of abandonment; or  
(2) Within two months of actual knowledge of the abandonment, if the applicant did not receive 
the notic e of abando nment, and the a pplican t was  diligent in c hecking th e status of the
 application 
every six months in accordance with § 2.146(i).  
(b) The requirements for filing a petition to revive an application abandoned because the 
applicant did not timely respond to a
n Office action are:  
(1) The petition fee required by § 2.6; (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in 
filing the res ponse on or befo re the due date was  uninte 
ntional; and  
(3) Unless the applicant alleges that it did not receive the Office action, the proposed 
response. 
(c) The requirements for filing a petition to revive an application abandoned because the 
applica nt did not ti mely respond  to
 a notice of allowance are:  
(1) The petition fee required by § 2.6; 
IP/N/1/USA/T/4 
Page 38 -37- January 6, 2012 (2) A statement, signed by someone with firsthand knowledge of the facts, that the delay in 
filing the statement of use (or request for extension of time to file a statement of use) on or before 
the due date was unintentional; 
(3) Unless the applicant alleges that it did not receive the notice of allowance and requests 
cancellation of the notice of allowance, the required fees f
or the number of requests for extensions 
of time to file a statement of use that the applicant should have filed under § 2.89 if the application had never been abandoned;  
(4) Unless the applicant alleges that it did not receive the notice of allowance and requests 
cancella tion of the n otice of allo wanc e, eith er a st 
atement of use under § 2.88 or a request for an 
extension of time to file a statement of use under § 2.89; and 
(5) Unless a statement of use is filed with or before the petition, or the applicant alleges that it 
did not recei ve the notic e of allo wance and re
quests cancellation of the notice of allowance, the 
applicant must file any further requests for extensions of time to file a statement of use under § 2.89 that become due while the petition is pending, or file a statement of use under § 2.88. 
(d) In an application under section 1(b) of the Act, the Director will not gr ant the petition if this 
woul
d permit the filing of a statement of use more than 36 months after the date of issuance of the 
notice of allowance under section 13(b)(2) of the Act. 
(e) The Director will grant the petition to revive  if the applicant complie s with the requirements  
listed above 
and establishes that the delay in responding was unintentional. 
(f) If the Director denies a petition, the applicant may request reconsideration, if the applicant: 
(1) Files the request within two months of the date of issuance of the decision denying the 
petition; and  
(2) Pays a second peti
tion fee under § 2.6.  
[31 FR 5261, Apr. 1, 1966, as amended at 54 FR 37592, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 68 FR 14332,  March 25, 2003, effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, 
effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.67  Suspension of action by the Patent and Trademark Office. 
Action by the Patent and Trademark Office may be suspended for a reasonable time for good 
and sufficient cause.  The fact that a proceedin g is pendin
g before the Patent and Trademark 
Office or a court which is relevant to the issue of  registrability of the applicant’s mark, or the fact 
that the basis for registration is, under the provisions  of section 44(e) of the Act, registration of the 
mark in a foreign country and the foreign application is still pending, will be considered prima facie 
good and sufficient cause.  An applicant’s request for a suspension of action under this section filed within the 6-month response period (see § 2.62) may be considered responsive to the 
previous Office action.  The first suspension is within the discretion of the Examiner of 
Trademarks and any subsequent suspension must be approved by the Director. 
[37 FR 3998, Feb. 24, 1972; 68 FR 14332, March 25, 2003, effective May 1, 2003] 
§ 2.68  Express abandonment (withdrawal) of application. 
(a) Written document required .  An applicant may expressl y a bandon an application by filing a 
written request for abandonment or withdrawal of the application, signed by the applicant, someone with legal authority to bind the applicant ( e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2). 
(b) Rights in the mark not affected .  Except as provided i
 n § 2.135, the fact that an application 
has been expressly abandoned shall not, in any proceeding in the Office, affect any rights that the applicant may have in the mark in the abandoned application. 
IP/N/1/USA/T/4 
Page 39 -38- January 6, 2012 [38 FR 7958, Mar. 27, 1973, as amended at 54 FR 34897, Aug. 22, 1989; 74 FR 54898, Oct. 26, 2009, 
effec tive Dec. 28, 2009 ] 
§ 2.69  Compliance with other laws. 
When the sale or transportation of any product for which registration of a trademark is sought 
is regulated under an Act of Congress, the  Pa
tent and Trademark Office may make appropriate 
inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the 
commerce recited in the application. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37592, Sept. 11, 1989] 
AMENDMENT OF APPLICATION 
§ 2.71  Amendments to correct informalities.   
The applicant may amend the application during the course of examination, when required by 
the Of fice or for oth er reasons. 
(a) Th e ap plicant ma
y amend the application to clarify or limit, but not to broaden, the 
identification of goods and/or services. 
(b)(1) If the declaration 
or verification of an application under § 2.33 is unsigned or signed by 
the wrong p arty, the  applicant ma y submit a 
substitute verification or declaration under § 2.20. 
(2) If the declaration or verification of a statement of use under § 2.88, or a request for 
extension of time to file a statement of use under § 2.89, is unsi
gned or signed by the wrong party, 
the applicant must submit a substitute verification before the expiration of the statutory deadline 
for filing the statement of use.   
(c) The applicant may amend the dates of use, provided that the applicant supports the 
amend ment with an affid avit or decla ration under § 
2.20, except that the following amendments 
are not permitted: 
(1) In an application under section 1(a) of the Act, the applicant may not amend the application 
to specify a date of use that is subsequent to the
 filing date of the application;  
(2) In an application under section 1(b) of the Act, after filing a statement of use under § 2.88, 
the a pplica nt may not amend the st
atement of use to specify a date of use that is subsequent to 
the expiration of the deadline for filing the statement of use.  
(d) The applicant may amend the application to correct the name of the applicant, if there is a 
mistake in the manner in which the name 
of the applicant is set out in the application.  The 
amendment must be supported by an affidavit or declaration under § 2.20, signed by the 
applicant.  However, the application cannot be amended to set forth a different entity as the applicant.  An application filed in the name of an entity that did not own the mark as of the filing date of the application is void. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37592, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999] 
§ 2.72  Amendments to description or drawing of the mark. 
(a) In an application based on use in commerce under section 1(a) of the Act, the applicant 
may amend the description or  drawin
g of the mark only if: 
(1) The specimens originally filed, or substitute specimens filed under § 2.59(a), support the 
proposed a mendment; and 
IP/N/1/USA/T/4 
Page 40 -39- January 6, 2012 (2) The proposed amendment does not materially alter the mark.  The Office will determine 
whether a proposed amendment materially alters a mark by comparing the proposed amendment 
with the description or drawing of the mark filed with the original application.   
(b) In an application based on a bona fide intention to use a mark in commerce under section 
1(b) of the Act, the applicant may a
mend the description or drawing of the mark only if: 
(1) The specimens filed with an amendment to allege use or statement of use, or substitute 
speci mens filed un der § 2.59(b),
 support the proposed amendment; and 
(2) The proposed amendment does not materially alter the mark.  The Office will determine 
whether a proposed ame
ndment materially alters a mark by comparing the proposed amendment 
with the description or drawing of the mark filed with the original application.    
(c) In an application based on a claim of priority under section 44(d) of the Act, or on a mark 
duly regis tered in the co untry of o rigin of the fore
ign applicant under section 44(e) of the Act, the 
applicant may amend the description or drawing of the mark only if: 
(1) The description or drawing of the mark in the foreign registration certificate supports the 
amendment; and 
(2) The proposed a
mendment does not materially alter the mark.  The Office will determine 
whether a proposed  ame
ndment materially alters a mark by comparing the proposed amendment 
with the description or drawing of the mark filed with the original application.   
[48 FR 23134, May 23, 1983, as amended at 54 FR 37593, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999] 
§ 2.73  Amendment to recite concurrent use. 
An application that includes section 1(a) of t he Trademark Act as a filing basis, or for which an 
acceptable allega
tion of use under § 2.76 or § 2.88 has been filed, may be amended to an 
application for concurrent use registration, provided that the application as amended meets the 
requirements of § 2.42.  The trademark examining attorney will determine whether the application, 
as amended, is acceptable. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37593, Sept. 11, 1989; 68 FR 55748, Sept. 26, 2003, 
effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.74  Form and signature of amendment. 
(a) Form of Amendment .  Amendm e nts should be set forth clearly and completely.  Applicant 
should either set forth the entire wording, including the proposed changes, or, if it would be more 
efficient, indicate which words should be added and which words should be deleted.  The examining attorney may require the applicant to rewrite the entire amendment, if necessary for 
clarification of the record. 
(b) Signature .  A request for a
 mendment of an application must be signed by the applicant, 
someone with legal authority to bind the applicant ( e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance 
with the requirements of § 2.193(e)(2).  If the amendment requires verification, the verification 
must be sworn to or supported by a declaration under § 2.20 by a person properly authorized to 
sign on behalf of the applicant under § 2.193(e)(1). 
[Amended 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 
28, 2009] 
IP/N/1/USA/T/4 
Page 41 -40- January 6, 2012 § 2.75  Amendment to change application to different register. 
(a) An application for registration on the Principal Register under section 1(a) or 44 of the Act 
may be changed to an application for registration on the Supplementa l
 Register and vice versa by 
amending the application to comply with the rules relating to the appropriate register, as the case 
may be.   
(b) An application under section 1(b) of the Act may be amended to change the application to 
a diff erent register only after s ubmission of 
an acceptable amendment to allege use under § 2.76 
or statement of use under § 2.88.  When such an application is changed from the Principal 
Register to the Supplemental Register, the effective filing date of the application is the date of the 
filing of the allegation of use under section 1(c) or 1(d) of the Act.  
(c) In an application under section 66(a) of the Act, the applicant may not amend the 
applica tion to the  Supple mental Regi ster. 
[41 FR 758, Jan. 5, 1976, as amended at 54 FR 37593, Sept. 11, 1989; 68 FR 55748, Sept. 26, 2003, 
effective Nov. 2, 2003] 
§ 2.76  Amendment to allege use. 
(a) An application under section 1(b) of the Act may be amended to allege use of the mark in 
commerce under section 1(c) of the Act at an y 
time between the filing of the application and the 
date the examiner approves the mark for publication.  Thereafter, an allegation of use may be submitted only as a statement of use under § 2.88 after the issuance of a notice of allowance under section 13(b)(2) of the Act.  If an amendment to allege use is filed outside the time period specified in this paragraph, it will be returned to the applicant.  
(b) A complete amendment to allege use must include: 
(1) A statement that is signed and verified (sworn to) or supported by a declaration under 
§ 2.2 0 by a person properly author
ized to sign on behalf of the applicant ( see § 2.193(e)(1)) that: 
(i) The applicant believes it is the owner of the mark; and 
(ii) The mark is in use in commerce, specifying the date of the applicant’s first use of the mark 
and first use of the mark in commerce, and those goods or se
rvices specified in the application on 
or in connection with which the applicant uses the mark in commerce.   
(2) One specimen of the mark as actually used in commerce.  See § 2.56 for the requirements 
for sp ecimens; an d 
(3) The fee  per class require
d by § 2.6. 
(c) An amendment to allege use may be filed only when the applicant has made use of the 
mark in commerce on or in connection wi
th all of the goods or services, as specified in the 
application, for which applicant will seek registrati on in that application unless the amendment to 
allege use is accompanied by a request in accordance with § 2.87 to divide out from the application the goods or services to which the amendment pertains.  If more than one item of goods or services is specified in the amendment to allege use, the dates of use required in paragraph (b)(1) of this section need be for only one of the items specified in each class, provided 
the particular item to which the dates apply is designated. 
(d) The title “Allegation of Use” should appear at the top of the document. 
(e) The Office will review a timely filed amendment to allege use to determine whether it meets 
the following minimum requirements:
 
(1) The fee prescribed in § 2.6; (2) One specimen or facsimile of the mark as used in commerce; and 
(3) A statement that is signed and verified (sworn to) or supported by a declaration under 
§ 2.20 by a person prop erl 
y authorized to sign on behalf of the applicant that the mark is in use in 
commerce. 
(f) A timely filed amendment to allege use which meets the minimum requirements specified in 
paragraph (e) of this section will be 
examined in accordance with §§ 2.61 through 2.69.  If, as a 
IP/N/1/USA/T/4 
Page 42 -41- January 6, 2012 result of the examination of the amendment to allege use, applicant is found not entitled to 
registration for any reason not previously stated, applicant will be so notified and advised of the 
reasons and of any formal requirements or refusals.  The notification shall restate or incorporate by reference all unresolved refusals or requirements previously stated.  The amendment to allege 
use may be amended in accordance with §§ 2.59 and 2.71 through 2.75.  If the amendment to 
allege use is acceptable in all respects, the applicant will be notified of its acceptance.  The filing of such an amendment shall not constitute a response to any outstanding action by the Trademark Examining Attorney.   
(g) If the amendment to allege use is filed within the permitted time period but does not meet 
the minimum requi rements spec ifie
d in paragraph (e) of this section, applicant will be notified of 
the deficiency.  The deficiency may be corrected provided the mark has not been approved for publication.  If an acceptable amendment to correct the deficiency is not filed prior to approval of the mark for publication, the amendment will not be examined. 
(h) An amendment to allege use may be withdrawn for any reason prior to approval of a mark 
for publication. 
(i) If the applicant does not file the amendment to allege use within a reasonable time after it is 
signed,  the Office may require a s
ubstitute verification or declaration under § 2.20 stating that the 
mark is still in use in commerce.   
(j) For the requirements for a multiple class application, see § 2.86. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37593, Sept. 11, 1989; 63 FR 48081, Sept. 9, 1998, 
effective Oct. 9, 1998; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 64 FR 51244, Sept. 22, 1999; 
73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.77  Amendments between notice of allowance and statement of use. 
(a) The only amendments that can be entered in an application between the issuance of the 
notice of allowance and the sub m
ission of a statement of use are:   
(1) The deletion of specified goods or services from the identification of goods/services;  (2) The deletion of a basis in a multiple-basis application; and  (3) A change of attorney or change of address. (b) Other amendments filed during this period will be placed in the application file and 
considered when the stat
ement of use is examined.   
[54 FR 37594, Sept. 11, 1989; as amended 73 FR 677 59, Nov. 17, 2008, effective Jan. 16, 2009] 
PUBLICATION AND POST PUBLICATION  
§ 2.80  Publication for opposition. 
If, on examination or reexamination of an application for registration on the Principal Register, 
it appears  that the applicant is  enti
tled to have his mark registered, the mark will be published in 
the Official Gazette  for opposition.  The mark will also be published in the case of an application to 
be placed in interference or concurrent us e proceedings, if otherwise registrable. 
[41 FR 758, Jan. 5, 1976] 
§ 2.81  Post publication.  
(a) Except in an application under section 1(b) of the Act for which no amendment to allege 
use under § 2.76 has been s ub
mitted and accepted, if no opposition is filed within the time 
permitted or all oppositions filed are dismissed, and if no interference is declared and no 
IP/N/1/USA/T/4 
Page 43 -42- January 6, 2012 concurrent use proceeding is instituted, the application will be prepared for issuance of the 
certificate of registration as provided in § 2.151. 
(b) In an application under section 1(b) of the Act for which no amendment to allege use under 
§ 2.76 has been submitted and 
accepted, if no opposition is filed within the time permitted or all 
oppositions filed are dismissed, and if no interference is declared, a notice of allowance will issue.  
The notice of allowance will state the serial number of the application, the name of the applicant, the correspondence address, the mark, the identification of goods and/or services, and the issue date of the notice of allowance.  Thereafter, the applicant must submit a statement of use as provided in § 2.88.  
[48 FR 23135, May 23, 1983, as amended at 54 FR 37594, Sept. 11, 1989; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.82  Marks on Supplemental Register published only upon registration. 
In the case of an application for registration on the Supplemental Register the mark will not be 
published for opposition but if it appears, after ex ami
nation or reexamination, that the applicant is 
entitled to have the mark registered, a  certificate of registration will issue as provided in § 2.151.  The mark will be published in the  Official Gazette  when registered. 
[30 FR 13193, Oct. 16, 1965.  Redesignated at 37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, 
Sept. 11, 1989] 
§ 2.83  Conflicting marks. 
(a) Whenever an application is made for registration of a mark which so resembles another 
mark or marks pending registration as to be
 likely to cause confusion or mistake or to deceive, the 
mark with the earliest effective filing date will be published in the  Official Gazette  for opposition if 
eligible for the Principal Register, or issued a certificate of registration if eligible for the 
Supplemental Register.   
(b) In situations in which conflicting applications have the same ef fective filing date, the  
applica tion with the e
arliest date of execution will be published in the  Official Gazette for 
opposition or issued on the Supplemental Register.   
(c) Action on the conflicting application which is not published in the  Official Gazette  for 
opposition or not issued on th
e Supplemental Register will be suspended by the Examiner of 
Trademarks until the published or issued application is registered or abandoned. 
[37 FR 2880, Feb. 9, 1972, as amended at 54 FR 37594, Sept. 11, 1989] 
§ 2.84  Jurisdiction over published applications. 
(a) The trademark examining attorney may exercise jurisdiction over an application up to the 
date the mark is published in the  Official Gazette.   Afte r public
ation of an application under section 
1(a), 44 or 66(a) of the Act, the trademark examining attorney may, with the permission of the Director, exercise jurisdiction over the applicat ion.  After publication of an application under 
section 1(b) of the Act, the trademark examining attorney may exercise jurisdiction over the application after the issuance of the notice of allowance under section 13(b)(2) of the Act.  After 
publication, and prior to issuance of a notice of allowance in an application under section 1(b), the 
trademark examining attorney may, with the permission of the Director, exercise jurisdiction over the application.  
(b) After publication, but before the certificate of registration is issued in an application under 
section 1 (a), 44, or 66 (a) of the Act , or bef ore th e notice of a llowa nce is i
ssued in an application 
IP/N/1/USA/T/4 
Page 44 -43- January 6, 2012 under section 1(b) of the Act, an application that is not the subject of an  inter partes proceeding 
before the Trademark Trial and Appeal Board may be amended if the amendment does not 
necessitate republication of the mark or issuance of an Office action.  Otherwise, an amendment to such an application may be submitted only upon petition to the Director to restore jurisdiction 
over the application to the trademark examining attorney for consideration of the amendment and 
further examination.  The amendment of an application that is the subject of an inter partes proceeding before the Trademark Trial and Appeal Board is governed by § 2.133. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37595, Sept. 11, 1989; 68 FR 14332, March 25, 2003, 
effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
CLASSIFICATION 
§ 2.85  Classification schedules. 
(a) Internati onal classifi cation system .  Sec tion 6.1 of this c hapte r sets f orth the international 
system of classification for goods and services, which applies for all statutory purposes to:   
(1) Applications filed in the Office on or after September 1, 1973, and resulting registrations; 
and  
(2) Registrations resulting from applications filed on or before August 31, 1973, that have been 
amended to adopt international class
ification pursuant to § 2.85(e)(3).   
(b) Prior United States c lassification system .  Se ction 6. 2 of this chap ter sets forth the prior 
United States system of classification for goods and services, which applies for all statutory 
purposes to registrations resulting from applications filed on or before August 31, 1973, unless:   
(1) The registration has been amended to adopt international classification pursuant to 
§ 2.85(e)(3); or  
(2) The regis
tration was issued under a classification system prior to that set forth in § 6.2.   
(c) Certification marks and collective membership marks .  Sections 6. 3 and 6.4 s pecify the  
system of classification which applies to certification marks and collective membership marks in applications based on sections 1 and 44 of the Act, and to registrations resulting from applications based on sections 1 and 44.  These sections do not apply to applications under section 66(a) or to registered extensions of protection.   
(d) Sectio n 66(a) applications and registered extensions of protection .  In an applica tion und er 
section 66 (a
) of the Act or registered extension of protection, the classification cannot be changed 
from the classification assigned by the International Bureau of the World Intellectual Property Organization, unless the International Bureau corrects the classification.  Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class 
application. 
(e) Changes to Nice Agreement .  The inte rnational classifica tion s
 ystem changes periodically, 
pursuant to the Nice Agreement Concerning the In ternational Classifi cation of Goods and 
Services for the Purposes of the Registration of Marks.  These changes are listed in the 
International Classification of Goods and Services for the Purposes of the Registration of Marks , 
which is published by the World Intellectual Property Organization.   
(1) If international classification changes pursuant to the Nice Agreement, the new 
classification applies only to applicat io
ns filed on or after the effective date of the change.  
(2) In a section 1 or section 44 application filed before the effective date of a change to the 
Nice Agreement, the applicant may amend the application 
to comply with the requirements of the 
current edition.  The applicant must comply with the current edition for all goods or services 
identified in the application.  The applicant must pay the fees for any added class(es). 
(3) In a registration resulting from a section 1 or section 44 application that was filed before the 
effecti ve dat e of a chan ge to the Nice Agree ment, th
e owner may amend the registration to 
comply with the requirements of the current edition.  The owner must reclassify all goods or 
IP/N/1/USA/T/4 
Page 45 -44- January 6, 2012 services identified in the registration to the current edition.  The owner must pay the fee required 
by § 2.6 for amendments under section 7 of the Act.  The owner may reclassify registrations from multiple United States classes (§ 2.85(b)) into a single international classification, where appropriate.   
(f) Classification schedules shall not limit or extend the applicant’s rights, except that in a 
section 66(a) applic ation, the sc ope of th e ide
ntification of goods or services for purposes of 
permissible amendments ( see § 2.71(a)) is limited by the class, pursuant to § 2.85(d). 
[38 FR 14681, June 4, 1973, as amended at 39 FR 16885, May 1 1974; 47 FR 41282, Sept. 17, 1982; 63 
FR 48081, Sept. 9, 1998, effective Oct. 9, 1998; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.86  Application may include multiple classes.   
(a) In a single application, an applicant may apply to register the same mark for goods and/or 
services in multiple classes.  The applicant  
must: 
(1) Specifically identify the goods or services in each class;  
(2) Submit an application filing fee for each class, as set forth in § 2.6(a)(1); and 
(3) Include either dates of use (see §§ 2.34(a)(1)(ii) and (iii)) and one specimen for each class, 
or a stat ement of a bo na fide int ention to use th e ma rk in co mme
rce on or in connection with all 
the goods or services specified in each class.  The applicant may not claim both use in commerce and a bona fide intention to use the mark in commerce for the identical goods or services in one application. 
(b) An amendment to allege use under § 2.76 or a statement of use under § 2.88 must 
include , for each cl ass, the requi red fee, dates
 of use, and one specimen.  The applicant may not 
file the amendment to allege use or statement of use until the applicant has used the mark on all the goods or services, unless the applicant files a request to divide.  See § 2.87 for information regarding requests to divide.    
(c) The Office will issue a single certificate of registration for the mark, unless the applicant 
files a request to divide.  See § 2.87 
for information regarding requests to divide. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37954, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 70 FR 2952, Jan. 19, 2005, effective Jan. 31, 2005; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.87  Dividing an application.   
(a) Application may be divided .  An application may be divided into two or more s eparate 
applications upon the payment of a fee for each new application created and submission by the 
applicant of a request in accordance with paragraph (d) of this section.   
(b) Fee.  In the case of a request to divide out one or more entire classes from an application, 
only the fee for di viding an applic ation as set forth in § 2.6(a)(19) will be requ ired.  Howeve r, in the 
case of
 a request to divide out some, but not all, of the goods or services in a class, the applicant 
must submit the application filing fee as set forth in § 2.6(a)(1) for each new separate application 
to be created by the division, in addition to the fee for dividing an application. 
(c) Time for filing .  (1) A request to divide an appl i cation may be filed at any time between the 
application filing date and the date on which the trademark examining attorney approves the mark for publication; or during an opposition, concurrent use, or interference proceeding, upon motion granted by the Trademark Trial and Appeal Board.   
(2) In an application under section 1(b) of the Act, a request to divide may also be filed with a 
statement of use under § 2.88 or at a
ny time between the filing of a statement of use and the date 
on which the trademark examining attorney approves the mark for registration. 
IP/N/1/USA/T/4 
Page 46 -45- January 6, 2012 (3) In a multiple-basis application, a request to divide out goods or services having a particular 
basis may also be filed during the period between the issuance of the notice of allowance under 
section 13(b)(2) of the Act and the filing of a statement of use under § 2.88.   
(d) Form.   A request to divide an application should be made in a separate document from any 
other amendme
nt or response in the application.  The title “Request to Divide Application” should 
appear at the top of the first page of the document. 
(e) Outstanding time periods apply to newly created applications .  Any time period for action  
by t
he applicant which is outstanding in the original application at the time of the division will apply 
to each separate new application created by the division, except as follows: 
(1) If an Office action pertaining to less than all the classes in a multiple-class application is 
outstanding, and the applicant files a request to divid
e out the goods, services, and/or class(es) to 
which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application;   
(2) If an Office action pertaining to less than all the bases in a multiple-basis application is 
outstanding, and the applicant fil es a 
request to divide out the goods/services having the basis or 
bases to which the Office action does not pertain before the response deadline, a response to the Office action is not due in the new (child) application(s) created by the division of the application; or 
(3) In a multiple-basis application in which a notice of allowance has issued, if the applicant 
files a re quest to di vide out the goods/servic es ha
ving the basis or bases to which the notice of 
allowance does not pertain befor e the deadline for filing the stat ement of use, the new (child) 
applications created by the division are not affected by the notice of allowance.   
(f) Signa ture.  The re quest to di vide must be si gned by the applicant, someone with legal 
authority to bind the applicant ( e.g., a corporate officer or general partner of a partnership), or a 
practitioner who meets the requirements of § 11.14, in accordance with the requirements of § 2.193(e)(2). 
(g) Sectio n 66(a) applications - change of ownership with respect to some but not all of the 
goods or services .  (1 ) Wh en the 
 International Bureau of the World Intellectual Property 
Organization notifies the Office that an international registration has been divided as the result of a change of ownership with respect to some but not all of the goods or services, the Office will construe the International Bureau’s notice as a reques t to divide.  The Office will record the partial 
change of ownership in the Assignment Services Branch, and divide out the assigned goods/services from the original (parent) application .  The Office will create a new (child) 
application serial number, and enter the information about the new application in its automated records.   
(2) To obtain a certificate of registration in the name of the new owner for the goods/services 
that h ave been di vided out, t
he new owner must pay the fee(s) for the request to divide, as 
required by § 2.6 and paragraph (b) of this section.  The examining attorney will issue an Office action in the child application requiring the new owner to pay the required fee(s).  If the owner of the child application fails to respond, the child application will be abandoned.  It is not necessary for the new owner to file a separate request to divide.   
(3) The Office will not divide a section 66(a) application based upon a change of ownership 
unless t he Internatio nal Bureau notifies th
e Office that the international registration has been 
divided.   
[37 FR 3898, Feb. 24, 1972, as amended at 54 FR 375 95, Sept. 11, 1989; 57 FR 38190, Aug. 21, 1992; 63 
FR 48081, Sept. 9, 1998, effective Oct. 9, 1998; 70 FR 2952, Jan. 19, 2005, effective Jan. 31, 2005; 73 FR 
67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
IP/N/1/USA/T/4 
Page 47 -46- January 6, 2012 POST NOTICE OF ALLOWANCE 
§ 2.88  Filing statement of use after notice of allowance. 
(a) In an application under section 1(b) of the Act, a statement of use, required under section 
1(d) of the Act, must be filed within six month s
 after issuance of a notice of allowance under 
section 13(b)(2) of the Act, or within an extension of time granted under § 2.89.  A statement of 
use that is filed prior to issuance of a notice of allowance is premature, will not be considered, and will be returned to  the applicant. 
(b) A complete statement of use must include: 
(1) A statement that is signed and verified (sworn to) or supported by a declaration under 
§ 2.2 0 by a perso n prop erly author 
ized to sign on behalf of the applicant ( see § 2.193(e)(1)) that: 
(i) The applicant believes it is the owner of the mark; and 
(ii) The mark is in use in commerce, specifying the date of the applicant’s first use of the mark 
and first use of the mark in commerc
e on or in connection with the goods or services identified in 
the notice of allowance, and setting forth or incorporating by reference those goods/services identified in the notice of allowance on or in connection with which the mark is in use in commerce.  Where an applicant claims section 1(a) of the Act for some goods/services in a class and section 1(b) of the Act for other goods/services in the same class, the statement of use must include dates for the section 1(b) goods/services; 
(2) One specimen of the mark as actually used in commerce.  See § 2.56 for the requirements 
for specimens; and 
(3) The fee per class re quire
d by § 2.6.  The applicant must pay a filing fee sufficient to cover 
at least o ne class withi n the stat utory time f or fili ng the stat
ement of use, or the application will be 
abandoned.  If the applicant submits a fee insufficient to cover all the classes in a multiple-class application, the applicant must specify the classes to be abandoned.  If the applicant submits a 
fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the 
applicant has not specified the class(es) to be abandoned, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining class(es), or specify the class(es) to be abandoned.  If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees paid, beginning 
with the lowest numbered class(es), in ascending order.  The Office will delete the goods/services 
in the remaining class(es) not covered by the fees submitted. 
(c) The statement of use may be filed only when the applicant has made use of the mark in 
commerce on or in connection with all of the 
goods or services, as specified in the notice of 
allowance, for which applicant will seek registration in that application, un less the statement of use 
is accompanied by a request in accordance with § 2.87 to divide out from the application the 
goods or services to which the statement of use pertains.  If more than one item of goods or 
services is specified in the statement of use, the dates of use required in paragraph (b)(1) of this section need be for only one of the items specified in each class, provided the particular item to which the dates apply is designated. 
(d) The title “Allegation of Use” should appear at the top of the first page of the document. 
(e) The Office will review a timely filed statement of use to determine whether it meets the 
following minimum requirements: 
(1) The fee
 for at least a single class, required by § 2.6; 
(2) One specimen of the mark as used in commerce; 
(3) A statement that is signed and verified (sworn to) or supported by a declaration under 
§ 2.20 by a person properl
y authorized to sign on behalf of the applicant that the mark is in use in 
commerce.  If the verification or declaration is unsigned or signed by the wrong party, the applicant must submit a substitute verification on or before the statutory deadline for filing the statement of use.   
(f) A timely filed statement of use which meets the minimum requirements specified in 
paragraph (e) of this section will be  
examined in accordance with §§ 2.61 through 2.69.  If, as a 
IP/N/1/USA/T/4 
Page 48 -47- January 6, 2012 result of the examination of the statement of use, applicant is found not entitled to registration, 
applicant will be notified and advised of the reasons and of any formal requirements or refusals.  The statement of use may be amended in accordance with §§ 2.59 and 2.71 through 2.75.  If the statement of use is acceptable in all respects, the applicant will be notified of its acceptance.   
(g) If the statement of use does not meet the minimum requirements specified in paragraph (e) 
of this sectio n, applica nt will be no tified of the de ficienc y.  If th
e time permitted for applicant to file 
a statement of use has not expired, applicant may correct the deficiency.  After the filing of a statement of use during a permitted time period for such filing, th e applicant may no t withdraw the 
statement to return to the previous status of awaiting submission of a statement of use, regardless of whether it is in compliance with paragraph (e) of this section. 
(h) The failure to timely file a statement of use which meets the minimum requirements 
specifie d in paragraph (e) of  this sect
ion shall result in the abandonment of the application. 
(i)(1) The goods or services specified in a statement of use must conform to those goods or 
services identified in the notice of
 allowance.  An applicant may specify the goods or services by 
stating “those goods or services identified in the notice of allowance” or, if appropriate, “those 
goods or services identified in the notice of allowance except...,” followed by an identification of 
the goods or services to be deleted.   
(2) If any goods or services specified in the notice of allowance are omitted from the 
identi ficatio n of go ods o r services 
in the statement of use, the Office will delete the omitted 
goods/services from the application.  The applicant may not thereafter reinsert these 
goods/services. 
(3) The statement of use may be accompanied by a separate request to amend the 
identi ficatio n of goods o r services i n the ap
plication, as stated in the notice of allowance, in 
accordance with § 2.71(a). 
(j) The statement of use may be accompanied by a separate request to amend the drawing in 
the application, in accordance wit
h §§ 2.51 and 2.72. 
(k) If the statement of use is not filed within a reasonable time after the date it is signed, the 
Office may require a s ubstitute
 verification or declaration under § 2.20 stating that the mark is still 
in use in commerce.   
(l) For the requirements for a multiple class application, see § 2.86. 
[54 FR 37595, Sept. 11, 1989; as amended 64 FR 48900,  Sept. 8, 1999, effective Oct. 30, 1999; 64 FR 
51244, Sept. 22, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.89  Extensions of time for filing a statement of use. 
(a) The applicant may request a six-month extensi on of time to file the statement of use 
requi red
 by § 2.88.  The extension request must be filed within six months of the date of issuance 
of the notice of allowance under section 13(b)(2) of the Act and must include the following: 
(1) A written request for an extension of time to file the statement of use;  
(2) The fee per class required by § 2.6.  The applicant must pay a filing fee sufficient to cover 
at least one class within the statutory ti
me for filing the extension request, or the request will be 
denied.  If the applicant timely submits a fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the applicant has not specified the class(es) to which the fee applies, the Office will issue a notice granting the applicant  additional time to subm it the fee(s) for the 
remaining classes, or specify the class(es) to be abandoned.   If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will 
apply the fees paid, beginning with the lowest numbered class(es), in ascending order.  The Office 
will delete the goods/services in the remaining classes not covered by the f ees submitted; and 
(3) A statement that the applicant still has a bona fide intention to use the mark in commerce, 
specifying the relevant goods 
or services, signed and verified (sworn to) or supported by a 
declaration under § 2.20 by a person properly authorized to sign on behalf of the applicant ( see 
IP/N/1/USA/T/4 
Page 49 -48- January 6, 2012 § 2.193(e)(1)).  If the verification is unsigned or signed by the wrong party, the applicant must 
submit a substitute verification within six months of the date of issuance of the notice of allowance. 
(b) Before the expiration of the previously granted extension of time, the applicant may 
request further six-month extensions of time to file the state
ment of use by submitting the 
following:  
(1) A written request for an extension of time to file the statement of use;  (2) The fee per class required by § 2.6.  The applicant must pay a filing fee sufficient to cover 
at least  one class wit hin the sta tutory ti me fo r filing the 
extension request, or the request will be 
denied.  If the applicant submits a fee insufficient to cover all the classes in a multiple-class application, the applicant must specify the classes to be abandoned.  If the applicant submits a 
fee sufficient to pay for at least one class, but insufficient to cover all the classes, and the 
applicant has not specified the class(es) to which the fee applies, the Office will issue a notice granting the applicant additional time to submit the fee(s) for the remaining classes, or specify the class(es) to be abandoned.   If the applicant does not submit the required fee(s) or specify the class(es) to be abandoned within the set time period, the Office will apply the fees, beginning with 
the lowest numbered class(es), in ascending order.  The Office will delete the remaining 
goods/services not covered by the fees submitted; 
(3) A statement that the applicant still has a bona fide intention to use the mark in commerce, 
specifying the relevant goods or services, signed 
and verified (sworn to) or supported by a 
declaration under § 2.20 by a person properly authorized to sign on behalf of the applicant ( see 
§ 2.193(e)(1)).  If the verification is unsigned or signed by the wrong party, the applicant must submit a substitute verification before the expiration of the previously granted extension; and 
(4) A showing of good cause, as specified in paragraph (d) of this section. (c) Extensions of time under paragraph (b) of this section will be granted only in six-month 
incre ments and ma y not aggregate mo
re than 24 months. 
(d) The showing of good cause must include a statement of the applicant’s ongoing efforts to 
make use of the mark in commerc
e on or in connection with each of the relevant goods or 
services.  Those efforts may include product or service research or development, market research, manufacturing activities, promotional activities, steps to acquire distributors, steps to obtain governmental approval, or other similar activities.  In the alternative, the applicant must submit a satisfactory explanation for the failure to make efforts to use the mark in commerce. 
(e)(1) At the time of the filing of a statement of use, or during any time  remaining in the 
existing six-month perio
d in which a statement of use is filed, applicant may file one request, in 
accordance with paragraph (a) or (b) of this section, for a six-month extension of time for filing a statement of use, provided that the time requested would not extend beyond 36 months from the issuance of the notice of allowance.  Thereafter, applicant may not request any further extensions of time. 
(2) A request for an extension of time that is filed at the time of the filing of a statement of use, 
or du ring any time remaining i n the e
xisting six-month period in which a statement of use is filed, 
must comply with all the requirements of paragraph (a) of this section, if it is applicant’s first extension request, or paragraph (b) of this section, if it is a second or subsequent extension request.  However, in a request under paragraph (b) of this section, applicant may satisfy the 
requirement for a showing of good cause by asserting that applicant believes that it has made 
valid use of the mark in commerce, as evidenced by the submitted statement of use, but that if the statement of use is found by t he Patent and Trademark Office to  be fatally defective, applicant will 
need additional time in which to file a new statement of use. 
(f) The goods or services specified in a request for an extension of time for filing a statement 
of use must conform to those goods or services identified in the notice o f allowance
.  Any goods 
or services specified in the notice of allowance which are omitted from the identification of goods or services in the request for extension of time will be presumed to be deleted and the applicant may not thereafter request that the deleted goods or services be reinserted in the application.  If appropriate, an applicant may specify the goods or services by stating “those goods or services 
IP/N/1/USA/T/4 
Page 50 -49- January 6, 2012 identified in the notice of allowance” or “those goods or services identified in the notice of 
allowance except...” followed by an identification of the goods or services to be deleted. 
(g) The applicant will be notified of the grant or denial of a request for an extension of time, 
and of the reasons for a denial.  Failure to 
notify the applicant of the grant or denial of the request 
prior to the expiration of the existing period or requested extension does not relieve the applicant of the responsibility of timely filing a statement of use under § 2.88.  If, after denial of an extension request, there is time remaining in the existing six-month period for filing a statement of use, applicant may submit a substitute request for extension of time.  Otherwise, the only recourse available after denial of a request for an extension of time is a petition to the Director in accordance with § 2.66 or § 2.146.  A petition from the denial of an extension request must be 
filed within two months of the date of issuance of the denial of the request.  If the petition is 
granted, the term of the requested six-month extension that was the subject of the petition will run from the date of expiration of the previously existing six-month period for filing a statement of use. 
(h) If the extension request is not filed within a reasonable time after it is signed, the Office 
may require a substitute verification or declara
tion under § 2.20 stating that the applicant still has 
a bona fide intention to use the mark in commerce.  
[54 FR 37595, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 64 FR 51244, Sept. 22, 
1999; 65 FR 36633, June 9, 2000; 68 FR 14332, March 25,  2003, effective May 1, 2003; 73 FR 67759, Nov. 
17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
INTERFERENCES AND CONCURRENT USE PROCEEDINGS 
§ 2.91  Declaration of interference. 
(a) An interference will not be declared between two applications or between an application 
and a registration except upon petit
ion to the Director.  Interferences will be declared by the 
Director only upon a showing of extraordinary circumstances which would result in a party being 
unduly prejudiced without an interference.  In ordinary circumstances, the availability of an opposition or cancellation proceeding to the party  will be deemed to remove any undue prejudice. 
(b) Registrations and applications to register on the Supplemental Register, registrations 
unde r the Act o f 1920, an d re 
gistrations of marks the right to use of which has become 
incontestable are not subject to interference. 
[37 FR 2881, Feb. 9, 1972, as amended at 54 FR  34897, Aug. 22, 1989; 68 FR 14332, March 25, 2003, 
effective May 1, 2003] 
§ 2.92  Preliminary to interference. 
An interference which has been declared by the Director will not be instituted by the 
Trademark Trial and Appeal Board until the Exa m
iner of Trademarks has determined that the 
marks which are to form the subject matter of the controversy are registrable, and all of the marks have been published in the Official Gazette for opposition. 
[37 FR 2881, Feb. 9, 1972, as amended at 54 FR  34897, Aug. 22, 1989; 68 FR 14332, March 25, 2003, 
effective May 1, 2003] 
§ 2.93  Institution of interference. 
An interference is instituted by the issuance of a notice of interference to the parties.  The 
notice shall be sent to each applicant, in care of  t
he applicant’s attorney or other representative of 
record, if any, and if one of the parties is a registrant, the notice shall be sent to the registrant or 
IP/N/1/USA/T/4 
Page 51 -50- January 6, 2012 the registrant’s assignee of record.  The notice shall give the name and address of every adverse 
party and of the adverse party’s attorney or other authorized representative, if any, together with the serial number and date of filing and publication of each of the applications, or the registration number and date of issuance of each of the registrations, involved. 
[41 FR 759, Jan. 5, 1976, as amended at 54 FR 34897, Aug. 22, 1989; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.96  Issue; burden of proof. 
The issue in an interference between applications is normally priority of use, but the rights of 
the parties to registration may also be determined.  The pa rt
y whose application involved in the 
interference has the latest filing date is the junior party and has the burden of proof.  When there 
are more than two parties to an interference, a party shall be a junior party to and shall have the burden of proof as against every other party whose application involved in the interference has an earlier filing date.  If the involved applications of any parties have th e same filing date, the 
application with the latest date of execution will be deemed to have the latest filing date and that applicant will be the junior party.  The issue in an interference between an application and a registration shall be the same, but in the event the final decision is adverse to the registrant, a registration to the applicant will not be authorized so long as the interfering registration remains on the register. 
[48 FR 23135, May 23, 1983; 48 FR 27225, June 14, 1983] 
§ 2.98  Adding party to interference. 
A party may be added to an interference only upon petition to the Director by that party.  If an 
application which is or might be the subject of  a petitio
n for addition to an interference is not 
added, the examiner may suspend action on the application pending termination of the 
interference proceeding. 
[48 FR 23135, May 23, 1983; 68 FR 14332, March 25, 2003, effective May 1, 2003] 
§ 2.99  Application to register as concurrent user. 
(a) An application for registra tion as a lawful concurrent us er will be examined in the same 
manner as o
ther applications for registration. 
(b) If it appears that the applicant is entitled to have the mark registered, subject to a 
concurrent use proc eeding, th e mark will b e publish ed in  the Official  Gazette as  pro
vided by 
§ 2.80. 
(c) If no opposition is filed, or if all oppositions that are filed are dismissed or withdrawn, the 
Trademark Trial and Appeal Board will send a
 notification to the applicant for concurrent use 
registration (plaintiff) and to each applicant, registrant or user specified as a concurrent user in the 
application (defendants).  The notification for each defendant shall state the name and address of the plaintiff and of the plaintiff’s attorney or other authorized representative, if any, together with the serial number and filing date of the application.  If a party has provided the Office with an e-mail address, the notification may be transmitted via e-mail. 
(d)(1) Within ten days from the date of the Boar d’s notification, the applicant for concurrent use
  
registration must serve copies of its application, specimens and drawing on each applicant, registrant or user specified as a concurrent user in the application for registration, as directed by the Board.  If any service copy is returned to the concurrent use applicant as undeliverable, the concurrent use applicant must notify the Board within ten days of receipt of the returned copy. 
IP/N/1/USA/T/4 
Page 52 -51- January 6, 2012 (2) An answer to the notice is not required in the case of an applicant or registrant whose 
application or registration is specified as a concurrent user in the application, but a statement, if 
desired, may be filed within forty days after the issuance of the notice; in the case of any other party specified as a concurrent user in the application, an answer must be filed within forty days 
after the issuance of the notice. 
(3) If an answer, when required, is not filed, judgment will be entered prec
 luding the specified 
user from claiming any right more extensive than that acknowledged in the application(s) for 
concurrent use registration, but the applicant(s) will remain with t he burden of proving entitlement 
to registration(s). 
(e) The applicant for a concurrent use registration has the burden of proving entitlement 
thereto.  If there are two or more
 applications for concurrent use registration involved in a 
proceeding, the party whose application has the latest filing date is the junior party.  A party whose application has a filing date between the filing dates of the earliest involved application and the latest involved application is a junior party to every party whose involved application has an earlier filing date.  If any applications have the same filing date, the application with the latest date of 
execution will be deemed to have the latest filing date and that applicant will be the junior party.  A 
person specified as an excepted user in a concurrent use application but who has not filed an application shall be considered a party senior to every party that has an application involved in the proceeding. 
(f) When a concurrent use registration is sought on the basis that a court of competent 
jurisdiction has finally determined tha
t the parties are entitled to use the same or similar marks in 
commerce, a concurrent use registration proceeding will not be instituted if all of the following conditions are fulfilled: 
(1) The applicant is entitled to registration subject only to the concurrent lawful use of a party 
to the court proce eding ; and 
(2) The c
ourt decree specifies the rights of the parties; and  
(3) A true copy of the court decree is submitted to the examiner; and (4) The concurrent use application complies fully and exactly with the court decree; and (5) The excepted use specified in the concurrent use application does not involve a 
regist ration, or an y involved re
gistration has been restricted by the Director in accordance with the 
court decree.   
If any of the conditions specified in this paragraph is not satisfied, a concurrent use registration 
proce eding  shall b e prepare
d and instituted as provided in paragraphs (a) through (e) of this 
section. 
(g) Registrations and applications to register on the Supplemental Register and registrations 
under the Act of 1920 are not su
bject to concurrent use registration proceedings.  Applications 
under section 1(b) of the Act of 1946 are subject to concurrent use registration proceedings only 
after the applicant files an acceptable allegation of use under § 2.76 or § 2.88.  Applications based 
solely on section 44 or section 66(a) of the Act are not subject to concurrent use registration proceedings.  
(h) The Trademark Trial and Appeal Board will consider and determine concurrent use rights 
only in the context of 
a concurrent use registration proceeding.   
[48 FR 23135, May 23, 1983; 48 FR 27225, June 14,  1983, as amended at 54 FR 37596, Sept. 11, 1989; 
68 FR 14332, March 25, 2003, effective May 1, 2003; 72 FR  42242, Aug. 1, 2007, effective Nov. 1, 2007; 73 
FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
OPPOSITION 
§ 2.101  Filing an opposition. 
(a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition 
with the required fee.  The no
tice must include proof of service on the applicant, or its attorney or 
IP/N/1/USA/T/4 
Page 53 -52- January 6, 2012 domestic representative of record, at the correspondence address of record in the Office, as 
detailed in §§ 2.101(b) and 2.119. 
(b) Any person who believes that he, she or it would be damaged by the registration of a mark 
on the Principal Register may file an 
opposition addressed to the Trademark Trial and Appeal 
Board and must serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office.  The opposer must include with the opposition proof of service pursuant to § 2.119 at the correspondence address of record in the Office.  If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of 
the returned copy.  The opposition need not be verified, but must be signed by the opposer or the 
opposer’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter.  Electronic signatures pursuant to § 2.193(c) are required for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of this section. 
(1) An opposition to an application based on section 1 or 44 of the Act must be filed either on 
paper or through ESTTA. 
(2) An opposition to an application 
based on section 66(a) of the Act must be filed through 
ESTTA. 
(c) The opposition must be filed within thirty days after publication (§ 2.80) of the application 
being opposed or within an ex tensio
n of time (§ 2.102) for filing an opposition. 
(d)(1) The opposition must be accompanied by the required fee for each party joined as 
oppose r for each class  in the  application f
or which registration is opposed (see § 2.6). 
(2) An otherwise timely opposition will not be accepted via ESTTA unless the opposition is 
accompanied by a fee that is suf
ficient to pay in full for each named party opposer to oppose the 
registration of a mark in each class specified in the opposition. 
(3) If an otherwise timely opposition is submitted on paper, the following is applicable if less 
than all required fees are submitted: 
(i) If the opposition is accompani
ed by no fee or a fee insufficient to pay for one person to 
oppose  the registration  of a mark in at least
 one class, the opposition will be refused. 
(ii) If the opposition is accompanied by fees sufficient to pay for one person to oppose 
registration in at least one class, but fees ar
e insufficient to oppose registration in all the classes in 
the application, and the particular class or classes against which the opposition is filed is not specified, the opposition will be presumed to be against the class or classes in ascending numerical order, including only the number of classes in the application for which sufficient fees have been submitted. 
(iii) If persons are joined as party opposers, eac h mus t submit a fee for each class for which 
opposit ion is sough t.  If the
 fees submitted are sufficient to pay for one person to oppose 
registration in at least one class, but are insufficient for each named party opposer, the first-named party will be presumed to be the party oppos er. Additional parties will be deemed to be 
party opposers only to the extent that the fees submitted are sufficient to pay the fee due for each party opposer.  If persons are joined as party opposers against a multiple class application, the fees submitted are insufficient, and no specification of opposers and classes is made at the time 
the party is joined, the fees submitted will be applied first on behalf of the first-named opposer 
against as many of the classes in the application as the submitted fees are sufficient to pay.  Any excess will be applied on behalf of the second-named party to the opposition against the classes in the application in ascending numerical order. 
(4) The filing date of an opposition is the date of receipt in the Office of the notice of 
opposition, with proof of service on the applic
ant, or its attorney or domestic representative of 
record, if one has been appointed, at the correspondence address of record in the Office, and the required fee, unless the notice is filed in accordance with § 2.198. 
[48 FR 3976, Jan. 28, 1983, as amended at 51 FR 28709, Aug. 11, 1986; 54 FR 37596, Sept. 11, 1989; 63 
FR 48081, Sept. 9, 1998, effective Oct. 9, 1998; 64 FR 48900, Sept. 8, 1999, effectiv e Oct. 30, 1999; 68 FR 
IP/N/1/USA/T/4 
Page 54 -53- January 6, 2012 55748, Sept. 26, 2003, effective Nov. 2, 2003; 72 FR 42242,  Aug . 1, 2007 , effective No v. 1, 2 007; 73 FR 
47650, Aug 14. 2008, effective Sept. 15, 2008; 74 FR  54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.102  Extension of time for filing an opposition. 
(a) Any person who believes that he, she or it would be damaged by the registration of a mark 
on the Principal Register may file in th e Off
ice a written request, addressed to the Trademark Trial 
and Appeal Board, to extend the time for filing an opposition.  The written request need not be 
verified, but must be signed by the potential opposer or by the potential opposer's attorney, as specified in § 11.1 of this chapter, or authorized representative, as specified in § 11.14(b) of this chapter.  Electronic signatures pursuant to § 2.193(c) are required for electronically filed extension requests. 
(1) A written request to extend the time for filing an opposition to an application filed under 
section 1 or 44 of the Act
 must be filed either on paper or through ESTTA. 
(2) A written request to extend the time for filing an opposition to an application filed under 
section 66(a) of the Act mus
t be filed through ESTTA. 
(b) A written request to extend the time for filing an opposition must identify the potential 
opposer with reasonable certaint
y.  Any opposition filed during an extension of time should be in 
the name of the person to whom the extension was granted.  An opposition may be accepted if the person in whose name the extension was requested was misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time. 
(c) The time for filing an opposition shall not be extended beyond 180 days from the date of 
publication.  Any request to extend the time for fili
ng an opposition must be filed before thirty days 
have expired from the date of publication or before the expiration of a previously granted extension of time, as appropriate.  Requests to extend the time for filing an opposition must be filed as follows: 
(1) A person may file a first request for either a thirty-day extension of time, which will be 
granted upon request, or a ninety
-day extension of time, which will be granted only for good cause 
shown. 
(2) If a person was granted a thirty-day extension of time, that person may file a request for an 
additional sixty-day ex te
nsion of time, which w ill be granted only for good cause shown.  
(3) After receiving one or two extensions of time totaling ninety days, a person may file one 
final request for an extension of time for an additio
nal sixty days.  The Board will grant this request 
only upon written consent or stipulation signed by the applicant or its authorized representative, or a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or a showing of extraordinary circumstances.  No further extensions of time to file an opposition will be granted under any circumstances. 
[48 FR 3976, Jan. 28, 1983, as amended at 61 FR  36825, July 15, 1996; 63 FR 48081, Sept. 9, 1998, 
effective Oct. 9, 1998; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.104  Contents of opposition. 
(a) The opposition must set forth a short and plain statement showing why the opposer 
believes he, she or it would be dama ged b
y the registration of the opposed mark and state the 
grounds for opposition. 
(b) Oppositions to different applications owned by the same party may be joined in a 
consolidated opposition when ap
propriate, but the required fee must be included for each party 
joined as opposer for each class in which registration is opposed in each application against which the opposition is filed.  
IP/N/1/USA/T/4 
Page 55 -54- January 6, 2012 [51 FR 28709, Aug. 11, 1986, as amended at 54 FR 34897, Aug. 22, 1989; 68 FR 55748, Sept. 26, 2003, 
effec tive No v. 2, 2003 ] 
§ 2.105  Notification to parties of opposition proceeding(s). 
(a) When an opposition in proper form (see §§ 2.101 and 2.104), with proof of service in 
accordance with § 2.101(b), has been filed and the co rrect fe
e has been submitted, the 
Trademark Trial and Appeal Board shall prepare a notification, which shall identify the title and 
number of the proceeding and the application involved and shall designate a time, not less than thirty days from the mailing date of the notification, within which an answer must be filed.  If a party has provided the Office with an e-mail address, the notification may be transmitted via e-mail.  
(b) The Board shall forward a copy of the notification to opposer, as follows: (1) If the opposition is transmitted by an attorney, or a written power of attorney is filed, the 
Board will send the notification to the attorney tr an
smitting the opposition or to the attorney 
designated in the power of attorney, provided that the person is an “attorney” as defined in § 11.1 of this chapter. 
(2) If opposer is not represented by an attorney in the opposition, but opposer has appointed a 
domestic re prese ntative, the Board  will send the noti fication to th e d 
omestic representative, 
unless opposer designates in writing another correspondence address. 
(3) If opposer is not represented by an attorney in the opposition, and no domestic 
representative has been appointed, the Board wil
l send the notification directly to opposer, unless 
opposer designates in writing anot her correspondence address. 
(c) The Board shall forward a copy of the notification to applicant, as follows: (1) If the opposed application contains a clear indication that the application is being 
prosec uted by an a ttorney, as def ined in § 11.1 of this chapte 
r, the Board shall send the 
documents described in this section to applicant’s attorney.   
(2) If the opposed application is not being prosecuted by an attorney but a domestic 
representative has been appointed, the Bo
ard will send the documents described in this section to 
the domestic representative, unless applicant designates in writing another correspondence address. 
(3) If the opposed application is not being prosecuted by an attorney, and no domestic 
represent ative has been appo inted, the Board 
will send the documents described in this section 
directly to applicant, unless applicant designates in writing another correspondence address.   
[48 FR 23136, May 23, 1983; 68 FR 55748, Sept. 26, 2003,  effective Nov. 2, 2003; 72 FR 42242, Aug. 1, 
2007, effective Nov. 1, 2007; 73 FR 47650,  Aug 14. 2008, effective Sept. 15, 2008] 
§ 2.106  Answer. 
(a) If no answer is filed within the time set, the opposition may be decided as in case of 
default. 
(b)(1) An answer shall state in short and plain terms the applicant’s def enses to ea
ch claim 
asserted and shall admit or deny the
 averments upon which the opposer relies.  If the applicant is 
without knowledge or information sufficient to form a belief as to the truth of an averment, 
applicant shall so state and this will have the effect of a denial. Denials may take any of the forms 
specified in Rule 8(b) of the Federal Rules of Civil Procedure.  An answer may contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or affirmative defense.  When pleading special matters, the Federal Rules of Civil Procedure shall be followed.  A reply to an affirmative defense need not be filed.  When a defense attacks the validity of a 
registration pleaded in the opposition, paragraph (b)(2) of this section shall govern.  A pleaded 
IP/N/1/USA/T/4 
Page 56 -55- January 6, 2012 registration is a registration identified by number and date of issuance in an original notice of 
opposition or in any amendment thereto made under Rule 15, Federal Rules of Civil Procedure. 
(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the 
opposition shall be a compulsory co
unterclaim if grounds for such counterclaim exist at the time 
when the answer is filed.  If grounds for a counterclaim are known to the applicant when the answer to the opposition is filed, the counterclaim shall be pleaded with or as part of the answer.  If grounds for a counterclaim are learned during the course of the opposition proceeding, the counterclaim shall be pleaded promptly after the grounds therefor are learned.  A counterclaim need not be filed if it is the subject of another proceeding between the same parties or anyone in privity therewith. 
(ii) An attack on the validity of a registrati on pleaded by an opposer will not be heard unless a 
counterclaim or separate
 petition is filed to seek the cancellation of such registration. 
(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims.  
A time, not less than thirty 
days, will be designated within which an answer to the counterclaim 
must be filed. 
(iv) The times for pleading, di scovery, testi mony, bri efs or oral argument will be reset or 
extend ed when n
ecessary, upon motion by a party, to enable a party fully to present or meet a 
counterclaim or separate petition for cancellation of a registration. 
(c) The opposition may be withdrawn without prejudice before the answer is filed.  After the 
answer is filed, the opposition may not be with
drawn without prejudice except with the written 
consent of the applicant or the applicant’s attorney or other authorized representative. 
[30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6 940, Jan. 22, 1981; 48 FR 23136, May 23, 1983; 54 
FR 34987, Aug. 22, 1989] 
§ 2.107  Amendment of pleadings in an opposition proceeding. 
(a) Pleadings in an opposition proceeding against an application filed under section 1 or 44 of 
the Act may be amended in the same ma nne
r and to the same extent as in a civil action in a 
United States district court, except that, after the close of the time period for filing an opposition including any extension of time for filing an opposition, an opposition may not be amended to add to the goods or services opposed. 
(b) Pleadings in an opposition proceeding against an application filed under section 66(a) of 
the Ac t may be amend ed in the sa me manne
r and to the same extent as in a civil action in a 
United States district court, except that, once filed, the opposition may not be amended to add to the grounds for opposition or to add to the goods or services subject to opposition. 
[48 FR 23136, May 1983; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
CANCELLATION 
§ 2.111  Filing petition for cancellation. 
(a) A cancellation proceeding is commenced by filing in the Office a timely petition for 
cancella tion with the re quire d fee.  The petitio n must incl u
de proof of service on the owner of 
record for the registration, or the owner’s domestic representative of record, at the 
correspondence address of record in the Office, as detailed in §§ 2.111(b) and 2.119. 
(b) Any person who believes that he, she or it is or will be damaged by a registration may file a 
petition, ad dressed t o the Trad e
mark Trial and Appeal Board, for cancellation of the registration in 
whole or in part.  Petitioner must serve a copy of the petition, including any exhibits, on the owner 
of record for the registration, or on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office.  The petitioner must include 
IP/N/1/USA/T/4 
Page 57 -56- January 6, 2012 with the petition for cancellation proof of service, pursuant to § 2.119, on the owner of record, or 
on the owner’s domestic representative of record, if one has been appointed, at the correspondence address of record in the Office.  If any service copy of the petition for cancellation is returned to the petitioner as undeliverable, the petitioner must notify the Board within ten days 
of receipt of the returned copy.  The petition for cancellation need not be verified, but must be 
signed by the petitioner or the petitioner’s attorney, as specified in § 11.1 of this chapter, or other authorized representative, as specified in § 11.14(b) of this chapter.  Electronic signatures pursuant to § 2.193(c) are required for petitions submitted electronically via ESTTA.  The petition for cancellation may be filed at any time in the case of registrations on the Supplemental Register or under the Act of 1920, or registrations under the Act of 1881 or the Act of 1905 which have not 
been published under section 12(c) of the Act, or on any ground specified in section 14(3) or (5) of 
the Act.  In all other cases, the petition for cancellation and the required fee must be filed within five years from the date of registration of the mark under the Act or from the date of publication under section 12(c) of the Act. 
(c)(1) The petition for cancellation must be accompanied by the required fee for each party 
joined as petitioner for each class in the regist
ration for which cancellation is sought (see § 2.6). 
(2) An otherwise timely petition for cancellation will not be accepted via ESTTA unless the 
petition for cancella tion is acco mpanied b
y a fee that is sufficient to pay in full for each named 
party petitioner to petition for cancellation of the registration of a mark in each class specified in the petition for cancellation. 
(3) If an otherwise timely petition for cancellation is submitted on paper, the following is 
applicable if less than all required fee s 
 are submitted: 
(i) If the petition for cancellation is accompanied by no fee or a fee insufficient to pay for one 
person to petition for cancellation against at least one class in the 
registration, the petition for 
cancellation will be refused. 
(ii) If the petition for cancellation is accompanied by fees sufficient to pay for one person to 
petition for cancellation against at least one
 class in the registration, but fees are insufficient for a 
petition for cancellation against all the classes in the registration, and the particular class or classes against which the petition for cancellation is filed is not specified, the petition for cancellation will be presumed to be against the class or classes in ascending numerical order, including only the number of classes in the registration for which sufficient fees have been 
submitted. 
(iii) If persons are joined as party petitioners, each must submit a fee for each class for which 
cancellation is sought.  If the fees submitt
ed are sufficient to pay for one person to petition for 
cancellation of the registration in at least one class but are insufficient for each named party 
petitioner, the first-named party will be presumed to be the party petitioner.  Additional parties will be deemed to be party petitioners only to the extent that the fees submitted are sufficient to pay 
the fee due for each party petitioner.  If persons are joined as party petitioners against a multiple 
class registration, the fees submitted are insufficient, and no specification of parties and classes is made at the time the party is joined, the fees submitted will be applied first on behalf of the first-named petitioner against as many of the classes in the registration as the submitted fees are sufficient to pay.  Any excess will be applied on behalf of the second-named party to the 
cancellation against the classes in the registration in ascending numerical order. 
(4) The filing date of a petition for cancellation is the date of receipt in the Office of the petition 
for cancellation, with proof of service on the 
owner of record, or on the owner’s domestic 
representative, if one has been appointed, at the correspondence address of record in the Office, 
and with the required fee, unless the petition is filed in accordance with § 2.198. 
[48 FR 3976, Jan. 28, 1983; 54 FR 37596, Sept. 11, 1989; 63 FR 48081, Sept. 9, 1998, effective Oct. 9, 
1998; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 
2003; 72 FR 42242, Aug. 1, 2007, effect ive Nov. 1, 2007; 73 FR 47650, Aug 14. 2008, effective Sept. 15, 
2008; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
IP/N/1/USA/T/4 
Page 58 -57- January 6, 2012 § 2.112  Contents of petition for cancellation. 
(a) The petition for cancellation must set forth a short and plain statement showing why the 
petitioner believes he, she or it is or will be da
maged by the registration, state the ground for 
cancellation, and indicate, to the best of petitioner's knowledge, the name and address of the 
current owner of the registration. 
(b) When appropriate, petitions for cancellation of different registrations owned by the same 
party  may be joined in a consolidated petition for cancellation.  The required fee m u
st be included 
for each party joined as a petitioner for each class sought to be cancelled in each registration 
against which the petition for cancellation is filed. 
[48 FR 3997, Jan. 28, 1983, as amended at 51 FR 287 10, Aug. 11, 1986; 54 FR 34897, Aug. 22, 1989; 68 
FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 2.113  Notification of cancellation proceeding. 
(a) When a petition for cancellation in proper form (see §§ 2.111 and 2.112), with proof of 
service in accordance with § 2.111(b) , has been fi
led and the correct fee has been submitted, the 
Trademark Trial and Appeal Board shall prepare a notification which shall identify the title and 
number of the proceeding and the registration(s) involved and shall designate a time, not less than thirty days from the mailing date of the notification, within which an answer must be filed.  If a 
party has provided the Office with an e-mail address, the notification may be transmitted via e-
mail. 
(b) The Board shall forward a copy of the notification to petitioner, as follows:  (1) If the petition for cancellation is transmitted by an attorney, or a written power of attorney is 
filed, the Board will send the notific ation to the at torney trans m
itting the petition for cancellation or 
to the attorney designated in the power of attorney, provided that person is an “attorney” as defined in § 11.1 of this chapter. 
(2) If petitioner is not represented by an attorney in the cancellation proceeding, but petitioner 
has appointed a domes tic represen tative, the Board will send the notification to the domesti c 
represent
ative, unless petitioner designates in writing another correspondence address. 
(3) If petitioner is not represented by an attorney in the cancellation proceeding, and no 
domestic representative has bee
n appointed, the Board will send the notification directly to 
petitioner, unless petitioner designates in writing another correspondence address. 
(c) The Board shall forward a copy of the notification to the respondent (see § 2.118).  The 
respondent shall be the party shown  by th
e records of the Office to be the current owner of the 
registration(s) sought to be cancelled, except that the Board, in its discretion, may join or 
substitute as respondent a party who makes a showing of a current ownership interest in such 
registration(s). 
(d) When the party alleged by the petitioner, pursuant to § 2.112(a), as the current owner of 
the re gistrati on(s) is not the rec ord o wne
r, a courtesy copy of the petition for cancellation shall be 
forwarded with a copy of the notification to the alleged current owner.  The alleged current owner 
may file a motion to be joined or substituted as respondent. 
[48 FR 23136, May 23, 1983; 48 FR 27225, June 14, 1983, as amended at 54 FR 34897, Aug. 22, 1989; 68 
FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 72 FR  42242, Aug. 1, 2007, effect ive Nov. 1, 2007; 73 FR 
47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 2.114  Answer. 
(a) If no answer is filed within the time set, the petition may be decided as in case of default. 
(b)(1) An answer shall state in short and plain terms the respondent’s defenses to each claim 
asserted and shall admit or de n
y the averments upon which the petitioner relies.  If the 
IP/N/1/USA/T/4 
Page 59 -58- January 6, 2012 respondent is without knowledge or information sufficient to form a belief as to the truth of an 
averment, respondent shall so state and this will have the effect of a denial.  Denials may take any of the forms specified in Rule 8(b) of the Federal Rules of Civil Procedure.  An answer may contain any defense, including the affirmative defenses of unclean hands, laches, estoppel, 
acquiescence, fraud, mistake, prior judgment, or any other matter constituting an avoidance or 
affirmative defense.  When pleading special matters, the Federal Rules of Civil Procedure shall be followed.  A reply to an affirmative defense need not be filed.  When a defense attacks the validity of a registration pleaded in the petition, paragraph (b)(2) of this section shall govern.  A pleaded registration is a registration identified by number and date of issuance in an original petition for cancellation or in any amendment thereto made under Rule 15, Federal Rules of Civil Procedure. 
(2)(i) A defense attacking the validity of any one or more of the registrations pleaded in the 
petition shall be a compulsory counterclaim if grounds for such counterclaim e
xist at the time 
when the answer is filed.  If grounds for a counterclaim are known to respondent when the answer to the petition is filed, the counterclaim shall be pleaded with or as part of the answer.  If grounds for a counterclaim are learned during the course of the cancellation proceeding, the counterclaim 
shall be pleaded promptly after the grounds therefor are learned.  A counterclaim need not be filed 
if it is the subject of another proceeding between the same parties or anyone in privity therewith. 
(ii) An attack on the validity of a registration pleaded by a petitioner for cancellation will not be 
heard u nless a c ounterclaim o r separat
e petition is filed to seek the cancellation of such 
registration. 
(iii) The provisions of §§ 2.111 through 2.115, inclusive, shall be applicable to counterclaims.  
A time, not less tha n thirty days, will
 be designated within which an answer to the counterclaim 
must be filed. 
(iv) The times for pleading, discovery, testimon y, briefs, or oral argument will be reset or 
extended when necessary, upon m
otion by a party, to enable a party fully to present or meet a 
counterclaim or separate petition for cancellation of a registration. 
(c) The petition for cancellation may be withdrawn without prejudice before the answer is filed.  
After the a nswer is fil ed, the pe tition ma y not 
be withdrawn without prejudice except with the 
written consent of the registrant or the registr ant’s attorney or other authorized representative. 
[30 FR 13193, Oct. 16, 1965, as amended at 46 FR 6940, Jan. 22, 1981; 46 FR 11548, Feb. 9, 1981; 51 FR 
28710, Aug. 11, 1986; 54 FR 34898, Aug. 22, 1989] 
§ 2.115  Amendment of pleadings in a cancellation proceeding. 
Pleadings in a cancellation proceeding may be amended in the same manner and to the same 
extent as in a civil action in a United Stat
es district court. 
[48 FR 23136, May 23, 1983] 
PROCEDURE IN INTER PARTES PROCEEDINGS 
§ 2.116  Federal Rules of Civil Procedure. 
(a) Except as otherwise provided, and wherever applicable and appropriate, procedure and 
practic e in inter partes proceedi ngs s hall b e go
verned by the Federal Rules of Civil Procedure. 
(b) The opposer in an opposition proceeding or the petitioner in a cancellation proceeding 
shall be in t he positio n of plaintif f, and the applic ant in an opp o
sition proceeding or the respondent 
in a cancellation proceeding shall be in the position of defendant.  A party that is a junior party in 
an interference proceeding or in a concurrent use registration proceeding shall be in the position of plaintiff against every party that is senior, and the party that is a senior party in an interference 
IP/N/1/USA/T/4 
Page 60 -59- January 6, 2012 proceeding or in a concurrent use registration proceeding shall be a defendant against every party 
that is junior. 
(c) The opposition or the petition for cancellation and the answer correspond to the complaint 
and answer in a court proceeding. 
(d) T
he assignment of testimony periods corresponds to setting a case for trial in court 
proce edings . 
(e) The taking of deposi t
ions during the assigned testimony periods corresponds to the trial in 
court proceedings. 
(f) Oral hearing correspo
nds to oral summation in court proceedings. 
(g) The Trademark Trial and Appeal Board’s standard protective order is applicable during 
disclosure, discovery and at trial in all oppositi on, cancellation, int
erference and concurrent use 
registration proceedings, unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board.  The standard protective order is available at the Office’s Web site, or upon request, a copy will be provided.  No material disclosed or produced by a party, presented at trial, or filed with the Board, 
including motions or briefs which discuss such material, shall be treated as confidential or 
shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board. 
[30 FR 13193, Oct. 16, 1965. Redesignated and amended at 37 FR 7606, Apr. 18, 1972, as amended at 48 
FR 23136, May 23, 1983; 72 FR 42242, Aug. 1, 2007, effective Aug. 31, 2007] 
§ 2.117  Suspension of proceedings. 
(a) Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a 
party or parties to a pen d
ing case are engaged in a civil action or another Board proceeding which 
may have a bearing on the case, proceedings before the Board may be suspended until 
termination of the civil action or the other Board proceeding. 
(b) Whenever there is pending before the Board both a motion to suspend and a motion which 
is pote ntially disposi tive of th
e case, the potentially dispositive motion may be decided before the 
question of suspension is considered regardless of the order in which the motions were filed. 
(c) Proceedings may also be suspended, for good cause, upon motion or a stipulation of the 
parties ap proved b y the Boar
d. 
[48 FR 23136, May 23, 1983; 63 FR 48081, Sept. 9, 1998, effective Oct. 9, 1998] 
§ 2.118  Undelivered Office notices. 
When a notice sent by the Office to any registrant or applicant is returned to the Office 
undelivered, additional notice ma
y be given by publication in the Official Gazette for the period of 
time prescribed by the Director. 
[68 FR 14332, March 25, 2003, effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 
72 FR 42242, Aug. 1, 2007, effective Aug. 31, 2007] 
§ 2.119  Service and signing of papers. 
(a) Every paper filed in the United States Patent and Trademark Office in inter partes cases, 
including notices of appeal, must be served u
pon the other parties.  Proof of such service must be 
made before the paper will be considered by the Office.  A statement signed by the attorney or 
other authorized representative, attached to or appearing on the original paper when filed, clearly 
IP/N/1/USA/T/4 
Page 61 -60- January 6, 2012 stating the date and manner in which service was made will be accepted as prima facie proof of 
service. 
(b) Service of papers must be on the attorney or other authorized representative of the party if 
there be such or on the party if there is no atto rney or other authorized 
representative, and may 
be made in any of the following ways:   
(1) By delivering a copy of the paper to the person served;  (2) By leaving a copy at the usual place of business of the person served, with someone in the 
perso n’s employment;  
(3) When the person s
erved has no usual place of business, by leaving a copy at the person’s 
residence, with a member of the person’s fa
mily over 14 years of age and of discretion;  
(4) Transmission by the “Express Mail Post Office to Addressee” service of the United States 
Posta l Servi ce or by first-class 
mail, which may also be certified or registered;  
(5) Transmission by overnight courier.   (6) Electronic transmission when mutually agreed upon by the parties. Whenever it shall be satisfactorily shown to the Director that none of the above modes of 
obtaining service or serving the paper is practicable, servic
e may be by notice published in the  
Official Gazette. 
(c) When service is made by first-class mail, “Express Mail,” or overnight courier, the date of 
mailing or of delivery to the over night courier will be considered the date of service.  Whenever a 
party is re quired to t ake some actio
n within a prescribed period after the service of a paper upon 
the party by another party and the paper is served by first-class mail, “Express Mail,” or overnight courier, 5 days shall be added to the prescribed period. 
(d) If a party to an inter partes proceeding is not domiciled in the United States and is not 
represent ed by an attorney or 
 other authorized representative located in the United States, the 
party may designate by document filed in the United States Patent and Trademark Office the name and address of a person residing in the United States on whom may be served notices or 
process in the proceeding.  If the party has appointed a domestic representative, official 
communications of the United States Patent and Trademark Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under § 11.14(c) of this subchapter.  If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at 
law or other qualified person, the Office will send correspondence directly to the party, unless the 
party designates in writing another address to which correspondence is to be sent.  The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under § 11.14(a), or qualified under § 11.14(b) and authorized under § 2.17(f). 
(e) Every paper filed in an inter partes proceeding, and every request for an extension of time 
to file an opposition, must be signed by the party filing it, or by the party’s attorney
 or other 
authorized representative, but an unsigned paper will not be refused consideration if a signed copy is submitted to the Patent and Trademark Office within the time limit set in the notification of this defect by the Office. 
[37 FR 7606, Apr. 18, 1972, as amended at 41 FR 760, J an. 5, 1976; 54 FR 34898, Aug. 22, 1989; 63 FR 
48081, Sept. 9, 1998, effective Oct. 9, 1998; 67 FR 79520, Dec. 30, 2002; 68 FR 14332, March 25, 2003, 
effective May 1, 2003; 72 FR 42242, Aug. 1, 2007, effective Nov. 1, 2007; 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.120  Discovery. 
(a) In general.  (1) Wherever appropriate, the prov isions  of the Federal Rules of Civil 
Procedure relating to disclosure and discovery shall apply in opposition, cancellation, interference and concurrent use registration proceedings except as otherwise provided in this section.  The 
provisions of Federal Rule of Civil Procedure 26 re lating to required disclosures, the conference of 
IP/N/1/USA/T/4 
Page 62 -61- January 6, 2012 the parties to discuss settlement and to develop a disclosure and discovery plan, the scope, 
timing and sequence of discovery, protective orders, signing of disclosures and discovery responses, and supplementation of disclosures and discovery responses, are applicable to Board proceedings in modified form, as noted in these rules and as may be detailed in any order 
instituting an inter partes proceeding or subsequent scheduling order.  The Board will specify the 
deadline for a discovery conference, the opening and closing dates for the taking of discovery, and the deadlines within the discovery period for making initial disclosures and expert disclosure.  The trial order setting these deadlines and dates will be included with the notice of institution of the proceeding. 
(2) The discovery conference shall occur no later than the opening of the discovery period, 
and t he parties must d iscuss the s
ubjects set forth in Federal Rule of Civil Procedure 26(f) and 
any subjects set forth in the Board’s institutio n order.  A  Board Interlocutory Attorney or 
Administrative Trademark Judge will participate in the conference upon request of any party made after answer but no later than ten days prior to the deadline for the conference.  The participating attorney or judge may expand or reduce the number or nature of subjects to be discussed in the 
conference as may be deemed appr opriate.  The discovery period will be set for a period of 180 
days.  Initial disclosures must be made no later than thirty days after the opening of the discovery 
period.  Disclosure of expert testimony must occur in the manner and sequence provided in Federal Rule of Civil Procedure 26(a)(2), unless alternate directions have been provided by the Board in an institution order or any subsequent order resetting disclosure, discovery or trial dates.  
If the expert is retained after the deadline for disclosure of expert testimony, the party must 
promptly file a motion for leave to use expert testimony.  Upon disclosure by any party of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board may issue an order regarding expert discover y and/or set a deadline for any other party to 
disclose plans to use a rebuttal expert.  The parties may stipulate to a shortening of the discovery period.  The discovery period may be extended upon stipulation of the parties approved by the 
Board, or upon motion granted by the Board, or by order of the Board.  If a motion for an 
extension is denied, the discovery period may remain as originally set or as reset.  Disclosure deadlines and obligations may be modified upon written stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.  If a stipulation or motion for modification is denied, disclosure deadlines may remain as originally set or reset and 
obligations may remain unaltered.  The parties are not required to prepare or transmit to the 
Board a written report outlining their discovery conference discussions, unless the parties have agreed to alter disclosure or discovery obligations set forth by these rules or applicable Federal Rules of Civil Procedure, or unless directed to file such a report by a participating Board Interlocutory Attorney or Administrative Trademark Judge. 
(3) A party must make its initial disclosures prior to seeking discovery, absent modification of 
this re quire ment by a stipulati
on of the parties approved by the Board, or a motion granted by the 
Board, or by order of the Board.  Discovery depositions must be taken, and interrogatories, requests for production of documents and things, and requests for admission must be served, on or before the closing date of the discovery period as originally set or as reset.  Responses to interrogatories, requests for production of documents and things, and requests for admission must 
be served within thirty days from the date of service of such discovery requests.  The time to 
respond may be extended upon stipulation of the parties, or upon motion granted by the Board, or by order of the Board.  The resetting of a party’s time to respond to an outstanding request for discovery will not result in the automatic rescheduling of the discovery and/or testimony periods; such dates will be rescheduled only upon stipulation of the parties approved by the Board, or upon 
motion granted by the Board, or by order of the Board. 
(b) Discove ry deposition within the United States .  The deposi tion of a na tural pe rson 
 shall be 
taken in the Federal judicial district where the person resides or is regularly employed or at any place on which the parties agree by stipulation.  The responsibility rests wholly with the party taking discovery to secure the attendance of a proposed deponent other than a party or anyone who, at the time set for the taking of the deposition, is an officer, director, or managing agent of a 
IP/N/1/USA/T/4 
Page 63 -62- January 6, 2012 party, or a person designated under Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil 
Procedure.  (See 35 U.S.C. 24.) 
(c) Discovery deposition in foreign countries .  (1) The discovery deposition  of a natural person 
residing in a foreign country who is a party or who, at the time set for the taking of the deposition, 
is an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or 
Rule 31(a) of the Federal Rules of Civil Procedure, shall, if taken in a foreign country be taken in the manner prescribed by § 2.124 unless the Trademark Trial and Appeal Board, upon motion for good cause, orders or the parties stipulate, that the deposition be taken by oral examination. 
(2) Whenever a foreign party is or will be, during a time set for discovery, present within the 
United Sta tes or an y terri tory whic h is 
under the control and jurisdiction of the United States, such 
party may be deposed by oral examination upon notice by the party seeking discovery.  Whenever a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf, present within the United States or any territory which is under the control and jurisdiction of the United States, such officer, director, managing agent, or other person who consents to testify in its behalf may be deposed by 
oral examination upon notice by the party seeking discovery.  The party seeking discovery may 
have one or more officers, directors, managing agents, or other persons who consent to testify on behalf of the adverse party, designated under Rule 30(b)(6) of the Federal Rules of Civil Procedure.  The deposition of a person under this paragraph shall be taken in the Federal judicial district where the witness resides or is regularly employed, or, if the witness neither resides nor is 
regularly employed in a Federal judicial district, where the witness is at the time of the deposition.  
This paragraph does not preclude the taking of a discovery deposition of a foreign party by any other procedure provided by paragraph (c)(1) of this section. 
(d) Interrogatories; request for production.   (1) The total number  o
 f written interrogatories 
which a party may serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed seventy-five, counting subparts, except that the 
Trademark Trial and Appeal Board, in its discretion, may allow additional interrogatories upon 
motion therefor showing good cause, or upon stipulation of the parties, approved by the Board.  A motion for leave to serve additional interrogatories must be filed and granted prior to the service of the proposed additional interrogatories and must be accompanied by a copy of the interrogatories, if any, which have already been served by the moving party, and by a copy of the interrogatories 
proposed to be served.  If a party upon which interrogatories have been served believes that the 
number of interrogatories exceeds the limitation specified in this paragraph, and is not willing to 
waive this basis for objection, the party shall, within the time for (and instead of) serving answers and specific objections to the interrogatories, serve a general objection on the ground of their excessive number.  If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of the interrogatories which together are said to 
exceed the limitation, and must otherwise comply with the requirements of paragraph (e) of this 
section. 
(2) The production of documents and things under the provisions of Rule 34 of the Federal 
Rules of Civil Procedure will be made at the pla c
e where the documents and things are usually 
kept, or where the parties agree, or where and in the manner which the Trademark Trial and 
Appeal Board, upon motion, orders. 
(e) Motion for an order to compel disclosure or discovery .  (1) I f a part y fails to make re quire d 
initial  disclos
ures or expert testimony disclosure, or fails to designate a person pursuant to Rule 
30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, or if a party, or such designated 
person, or an officer, director or managing agent of a party fails to attend a deposition or fails to 
answer any question propounded in a discovery deposition, or any interrogatory, or fails to 
produce and permit the inspection and copying of any document or thing, the party entitled to disclosure or seeking discovery may file a motion to compel disclosure, a designation, or attendance at a deposition, or an answer, or production and an opportunity to inspect and copy.  A motion to compel initial disclosures or expert testimony disclosure must be filed prior to the close of the discovery period. A motion to compel discovery must be filed prior to the commencement of 
IP/N/1/USA/T/4 
Page 64 -63- January 6, 2012 the first testimony period as originally set or as reset.  A motion to compel discovery shall include 
a copy of the request for designation or of the relevant portion of the discovery deposition; or a copy of the interrogatory with any answer or objection that was made; or a copy of the request for production, any proffer of production or objection to production in response to the request, and a 
list and brief description of the documents or things that were not produced for inspection and 
copying.  A motion to compel initial disclosures, expert testimony disclosure, or discovery must be supported by a written statement from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion but the parties were unable to resolve their differences.  If issues raised in the motion are subsequently resolved by agreement of the 
parties, the moving party should inform the Board in writing of the issues in the motion which no 
longer require adjudication. 
(2) When a party files a motion for an order to compel initial disclosures, expert testimony 
disclosure, or discovery, the case will be suspen
ded by the Board with respect to all matters not 
germane to the motion.  After the motion is filed and served, no party should file any paper that is 
not germane to the motion, except as otherwise specified in the Board’s suspension order.  Nor 
may any party serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board.  The filing of a motion to compel any disclosure or discovery shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any noticed discovery deposition. 
(f) Motion for a protective order .  Upon motion by
  a party obligated to make initial disclosures 
or expert testimony disclosure or from whom discovery is sought, and for good cause, the Trademark Trial and Appeal Board may make any order which justice requires to protect a party from annoyance, embarrassment, oppression, or undue burden or expense, including one or more of the types of orders provided by clauses (1) through (8), inclusive, of Rule 26(c) of the Federal Rules of Civil Procedure.  If the motion for a protective order is denied in whole or in part, 
the Board may, on such conditions (other than an award of expenses to the party prevailing on the 
motion) as are just, order that any party comply with disclosure obligations or provide or permit discovery. 
(g) Sanctio ns.  (1) If a party fails to participate in the required discovery conference, or if a 
party fails to compl
y with an order of the Trademark Trial and Appeal Board relating to disclosure 
or discovery, including a protective order, the Board may make any appropriate order, including those provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except that the Board will not hold any person in contempt or award expenses to any party.  The Board may impose against a party any of the sanctions provided in Rule 37(b)(2) in the event that said party or any attorney, agent, or designated witness of that party fails to comply with a protective order made pursuant to Rule 26(c) of the Federal Rules of Civil Procedure.  A motion for sanctions against a party for its 
failure to participate in the required discovery conference must be filed prior to the deadline for 
any party to make initial disclosures. 
(2) If a party fails to make required initial disclosures or expert testimony disclosure, and such 
party or the party’s a
ttorney or other authorized representative informs the party or parties entitled 
to receive disclosures that required disclosur es will not be made, the Board may make any 
appropriate order, as specified in paragraph (g)(1) of this section.  If a party, or an officer, director, or managing agent of a party, or a person designated under Rule 30(b)(6) or 31(a) of the Federal Rules of Civil Procedure to testify on behalf of a party, fails to attend the party’s or person’s discovery deposition, after being served with proper notice, or fails to provide any response to a set of interrogatories or to a set of requests for production of documents and things, and such 
party or the party’s attorney or other authorized representative informs the party seeking discovery 
that no response will be made theret o, the Board may make any appro priate order, as specified in 
paragraph (g)(1) of this section. 
(h) Request for admissions.  (1) Any motion b
 y a party to determine the sufficiency of an 
answer or objection to a request made by that party for an admission must be filed prior to the commencement of the first testimony period, as originally set or as reset.  The motion shall 
IP/N/1/USA/T/4 
Page 65 -64- January 6, 2012 include a copy of the request for admission and any exhibits thereto and of the answer or 
objection.  The motion must be supported by a written statement from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion and has 
been unable to reach agreement.  If issues raised in the motion are subsequently resolved by 
agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication. 
(2) When a party files a motion to determine the sufficiency of an answer or objection to a 
request for a n admission , the case wil l be suspen ded b y the 
Board with respect to all matters not 
germane to the motion.  After filing and service of the motion, no party should file any paper that is 
not germane to the motion, except as otherwise specified in the Board’s suspension order.  Nor may any party thereafter serve any additional discovery until the period of suspension is lifted or expires by or under order of the Board.  The filin g of a motion to determine the sufficiency of an 
answer or objection to a request for admission shall not toll the time for a party to comply with any disclosure requirement or to respond to any outstanding discovery requests or to appear for any 
noticed discovery deposition. 
(i) Telephone and pretrial conferences .  (1) Whenever it appears to the Trad
 emark Trial and 
Appeal Board that a stipulation or motion filed in an inter partes proceeding is of such nature that 
its approval or resolution by correspondence is not practical, the Board may, upon its own initiative or upon request made by one or both of the parties, address the stipulation or resolve the 
motion by telephone conference. 
(2) Whenever it appears to the Trademark Trial and Appeal Board that questions or issues 
arising  durin g the i nterlocutory phas e of a n inter 
partes proceeding have become so complex that 
their resolution by correspondence or telephone conference is not practical and that resolution 
would likely be facilitated by a conference in perso n of the parties or th eir attorneys with an 
Administrative Trademark Judge or an Interlocutor y Attorney of the Board, the Board may, upon 
its own initiative or upon motion made by one or both of the parties, request that the parties or their attorneys, under circumstances which will not result in undue hardship for any party, meet with the Board at its offices for a disclosure, discovery or pretrial conference. 
(j) Use of discovery depositi on, a nswe r to i nterrogato
 ry, admission or written disclosure .  
(1) The discovery deposition of a party or of anyone who at the time of taking the deposition was 
an officer, director or managing agent of a party, or a person designated by a party pursuant to 
Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, may be offered in evidence by an adverse party. 
(2) Except as provided in paragraph (j)(1) of this section, the discovery deposition of a witness, 
whether or not a party, shall n 
ot be offered in evidence unless the person whose deposition was 
taken is, during the testimony period of the party offering the deposition, dead; or out of the United 
States (unless it appears that the absence of the witness was procured by the party offering the 
deposition); or unable to testify because of age, ill ness, infirmity, or imprisonment; or cannot be 
served with a subpoena to compel attendance at a testimonial deposition; or there is a stipulation by the parties; or upon a showing that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used.  The use of a discovery 
deposition by any party under this paragraph will be allowed only by stipulation of the parties 
approved by the Trademark Trial and Appeal Board, or by order of the Board on motion, which shall be filed at the time of the purported offer of the deposition in evidence, unless the motion is based upon a claim that such exceptional circumstances exist as to make it desirable, in the interest of justice, to allow the deposition to be used, in which case the motion shall be filed 
promptly after the circumstances claimed to justify use of the deposition became known. 
(3)(i) A discovery deposition, an answer to an interrogatory, an admission to a request for 
admission , or a writte n disclosu re (but not  a disclosed
 document), which may be offered in 
evidence under the provisions of paragraph (j) of this section, may be made of record in the case 
by filing the deposition or any part thereof with any exhibit to the part that is filed, or a copy of the interrogatory and answer thereto with any exhibit made part of the answer, or a copy of the 
IP/N/1/USA/T/4 
Page 66 -65- January 6, 2012 request for admission and any exhibit thereto and the admission (or a statement that the party 
from which an admission was requested failed to respond thereto), or a copy of the written disclosure, together with a notice of reliance.  The notice of reliance and the material submitted thereunder should be filed during the testimony period of the party that files the notice of reliance.  
An objection made at a discovery deposition by a party answering a question subject to the 
objection will be considered at final hearing. 
(ii) A party that has obtained documents from another party through disclosure or under Rule 
34 of the Federal Rules of Ci vil Procedure ma
y not make the documents of record by notice of 
reliance alone, except to the extent that they are admissible by notice of reliance under the provisions of § 2.122(e). 
(4) If only part of a discovery deposition is submitted and made part of the record by a party, 
an adverse party ma y in 
troduce under a notice of reliance any other part of the deposition which 
should in fairness be considered so as to make not misleading what was offered by the submitting party.  A notice of reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse 
party’s notice, failing which the Board, in its discretion, may refuse to consider the additional parts. 
(5) Written disclosures, an answer to an interrogatory, or an admission to a request for 
admission , may be sub mitted an
d made part of the record only by the receiving or inquiring party 
except that, if fewer than all of the written disclosures, answers to interrogatories, or fewer than all 
of the admissions, are offered in evidence by the receiving or inquiring party, the disclosing or 
responding party may introduce under a notice of reliance any other written disclosures, answers 
to interrogatories, or any other admissions, which should in fairness be considered so as to make not misleading what was offered by the receiving or inquiring party.  The notice of reliance filed by the disclosing or responding party must be supported by a written statement explaining why the disclosing or responding party needs to rely upon each of the additional written disclosures or discovery responses listed in the disclosing or responding party’s notice, and absent such 
statement the Board, in its discretion, may refuse to consider the additional written disclosures or 
responses. 
(6) Paragraph (j) of this section will not be interpreted to preclude reading or use of written 
disclosures or documents, a discovery deposit
ion, or answer to an interrogatory, or admission as 
part of the examination or cross-examination of any witness during the testimony period of any 
party. 
(7) When a written disclosure, a discovery deposition, or a part thereof, or an answer to an 
interrogatory, or an admission, has been made
 of record by one party in accordance with the 
provisions of paragraph (j)(3) of this section, it  may be referred to by any party for any purpose 
permitted by the Federal Rules of Evidence.     
(8) Written disclosures or disclosed documents,  requests for discovery, responses thereto, 
and material
s or depositions obtained through the disclosure or discovery process should not be 
filed with the Board, except when submitted with a motion relating to disclosure or discovery, or in 
support of or in response to a motion for summary judgment, or under a notice of reliance, when permitted, during a party’s testimony period. 
[48 FR 23136, May 23, 1983, as amended at 54 FR 34899, Aug. 22, 1989; 54 FR 38041, Sept. 14, 1989; 56 
FR 46376, Sept. 12, 1991; 63 FR 48081, Sept. 9, 1998; 63 FR 52158, Sept. 30, 1998; 72 FR 42242, Aug. 1, 
2007, effective Nov. 1, 2007] 
§ 2.121  Assignment of times for taking testimony. 
(a) The Trademark Trial and Appeal Board will issue a trial order setting a deadline for each 
party’s required p r
etrial disclosures and assigning to each party its time for taking testimony. No 
testimony shall be taken except during the times assigned, unless by stipulation of the parties 
approved by the Board, or upon motion granted by the Board, or by order of the Board.  The deadlines for pretrial disclosures and the testimony periods may be rescheduled by stipulation of 
IP/N/1/USA/T/4 
Page 67 -66- January 6, 2012 the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.  
If a motion to reschedule any pretrial disclosure deadline and/or testimony period is denied, the pretrial disclosure deadline or testimony period and any subsequent remaining periods may remain as set.  The resetting of the closing date for discovery will result in the rescheduling of 
pretrial disclosure deadlines and testimony periods without action by any party. 
(b)(1) The Trademark Trial and Appeal Board will schedule a testimony period for the plaintiff 
to present  its case in ch ief, a testimony period for th
e defendant to present its case and to meet 
the case of the plaintiff, and a testimony period for the plaintiff to present evidence in rebuttal. 
(2) When there is a counterclaim, or when proceedings have been consolidated and one party 
is in the position of plaintiff in one of 
the involved proceedings and in the position of defendant in 
another of the involved proceedings, or when there is an interference or a concurrent use 
registration proceeding involving more than two parties, the Board will schedule testimony periods so that each party in the position of plaintiff will have a period for presenting its case in chief 
against each party in the position of defendant, each party in the position of defendant will have a period for presenting its case and meeting the case of each plaintiff, and each party in the position 
of plaintiff will have a period for presenting evidence in rebuttal. 
(c) A testimony period which is solely for rebutta l will be set for fifteen days. All other testimo
 ny 
periods will be set for thirty days.  The periods may be extended by stipulation of the parties 
approved by the Trademark Trial and Appeal Board, or upon motion granted by the Board, or by order of the Board.  If a motion for an extension is denied, the testimony periods may remain as 
set. 
(d) When parties stipulate to the rescheduling of a deadline for pretrial disclosures and 
subsequ ent testimony periods o r to the resch 
eduling of the closing date for discovery and the 
rescheduling of subsequent deadlines for pretrial disclosures and testimony periods, a stipulation 
presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, shall be 
submitted to the Board. 
(e) A party need not disclose, prior to its testimony period, any notices of reliance it intends to 
file du ring its testi mony perio d.  
However, no later than fifteen days prior to the opening of each 
testimony period, or on such alternate schedule as may be provided by order of the Board, the 
party scheduled to present evidence must disclose the name and, if not previously provided, the 
telephone number and address of each witness from whom it intends to take testimony, or may 
take testimony if the need arises, general identifying information about the witness, such as relationship to any party, including job title if employed by a party, or, if neither a party nor related to a party, occupation and job title, a general summary or list of subjects on which the witness is expected to testify, and a general summary or list of the types of documents and things which may be introduced as exhibits during the testimony of the witness.  Pretrial disclosure of a witness 
under this subsection does not substitute for issuance of a proper notice of examination under 
§ 2.123(c) or § 2.124(b).  If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosure.  When a party fails to make required pretrial disclosures, any adverse party or parties may have remedy by way of a motion to the Board to delay or reset any subsequent pretrial disclosure deadlines and/or testimony periods. 
[48 FR 23138, May 23, 1983; 48 FR 27225, June 14, 1983, as amended at 54 FR 34899, Aug. 22, 1989; 63 
FR 48081, Sept. 9, 1998, effective Oct. 9, 1998; 68 FR  55748, Sept. 26, 2003, effective Nov. 2, 2003; 72 FR 
42242, Aug. 1, 2007, effective Nov. 1, 2007] 
§ 2.122  Matters in evidence. 
(a) Rules of evidence .  The rules of evidence for proce edings  before the Trademark Trial and 
Appeal Board are the Federal Rules of Evidence, the relevant provisions of the Federal Rules of 
Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this Part of Title 37 of the Code of Federal Regulations. 
IP/N/1/USA/T/4 
Page 68 -67- January 6, 2012 (b) Application files.  (1) The file of each application or registration specified in a notice of 
interference, of each application or registration specified in the notice of a concurrent use 
registration proceeding, of the application against which a notice of opposition is filed, or of each registration against which a petition or counterclaim for cancellation is filed forms part of the 
record of the proceeding without any action by the parties and reference may be made to the file 
for any relevant and competent purpose. 
(2) The allegation in an application for registration, or in a registration, of a date of use is not 
evidence  on behal f of the applic ant 
or registrant; a date of use of a mark must be established by 
competent evidence.  Specimens in the file of an application for registration, or in the file of a registration, are not evidence on behalf of the applicant or registrant unless identified and 
introduced in evidence as exhibits during the period for the taking of testimony. 
(c) Exhibi ts to pleadings .  Exc ept as provided 
 in paragraph (d)(1) of this section, an exhibit 
attached to a pleading is not evidence on behalf of the party to whose pleading the exhibit is 
attached unless identified and introduced in evidence as an exhibit during the period for the taking of testimony. 
(d) Registrations .  (1) A registration of the opp
 oser or petitioner pleaded in an opposition or 
petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by an original or photocopy of the registration prepared and issued by the United States Patent and Trademark Office showing both the current status of and current title to the registration, or by a current printout of information from the electronic database records of the 
USPTO showing the current status and title of the registration.  For the cost of a copy of a 
registration showing status and title, see § 2.6(b)(4). 
(2) A registration owned by any party to a proceeding may be made of record in the 
proce eding by that p arty by a
ppropriate identification and introduction during the taking of 
testimony or by filing a notice of reliance, which shall be accompanied by a copy (original or photocopy) of the registration prepared and issued by the Patent and Trademark Office showing 
both the current status of and current title to the registration.  The notice of reliance shall be filed 
during the testimony period of the party that files the notice. 
(e) Printed publications and official records .  Print ed pu blicatio ns, s uch as boo ks and  
perio
dicals, available to the general public in libraries or of general circulation among members of 
the public or that segment of the public which is relevant under an issue in a proceeding, and 
official records, if the publication or official record is competent evidence and relevant to an issue, 
may be introduced in evidence by filing a notice of  reliance on the material being offered.  The 
notice shall specify the printed publication (including information sufficient to identify the source and the date of the publication) or the official record and the pages to be read; indicate generally the relevance of the material being offered; and be accompanied by the official record or a copy thereof whose authenticity is established under the Federal Rules of Evidence, or by the printed 
publication or a copy of the relevant portion thereof.  A copy of an official record of the Patent and 
Trademark Office need not be certified to be offered in evidence.  The notice of reliance shall be filed during the testimony period of the party that files the notice. 
(f) Testimony from other proceedings .  By order of the T
 rademark Trial and Appeal Board, on 
motion, testimony taken in another proceeding, or testimony taken in a suit or action in a court, 
between the same parties or those in privity may be used in a proceeding, so far as relevant and 
material, subject, however, to the right of any adverse party to recall or demand the recall for examination or cross-examination of any witness whose prior testimony has been offered and to rebut the testimony. 
[48 FR 23138, May 23, 1983, as amended at 54 FR 34899, Aug. 22, 1989; 63 FR 48081, Sept. 9, 1998, 
effective Oct. 9, 1998; 72 FR 42242, Aug. 1, 2007, effective Aug. 31, 2007] 
IP/N/1/USA/T/4 
Page 69 -68- January 6, 2012 § 2.123  Trial testimony in inter partes cases. 
(a)(1) The testimony of witnesses in inter partes cases may be taken by depositions upon oral 
examination as provided by this sec
tion or by depositions upon written questions as provided by 
§ 2.124.  If a party serves notice of the taking of a testimonial deposition upon written questions of 
a witness who is, or will be at the time of the deposition, present within the United States or any territory which is under the control and jurisdiction of the United States, any adverse party may, within fifteen days from the date of service of the notice, file a motion with the Trademark Trial and Appeal Board, for good cause, for an order that the deposition be taken by oral examination. 
(2) A testimonial deposition taken in a foreign country shall be taken by deposition upon 
written questions as provided by § 2.
124, unless the Board, upon motion for good cause, orders 
that the deposition be taken by oral examination, or the parties so stipulate. 
(b) Stipulations .  If the parties so stipulate in writing,  depositions may be taken before any 
person authorized to administer oaths, at any place, upon any notice, and in any manner, and 
when so taken may be used like other depositions.  By written agreement of the parties, the 
testimony of any witness or witnesses of any party, may be submitted in the form of an affidavit by such witness or witnesses.  The parties may stipulate in writing what a particular witness would testify to if called, or the facts in the case of any party may be stipulated in writing. 
(c) Notic e of examination of witnesses .  Before the de positi ons of witnes
 ses shall be taken by 
a party, due notice in writing shall be given to the opposing party or parties, as provided in 
§ 2.119(b), of the time when and place where the depositions will be taken, of the cause or matter 
in which they are to be used, and the name and address of each witness to be examined; if the name of a witness is not known, a general description sufficient to identify the witness or the particular class or group to which the witness belongs, together with a satisfactory explanation, may be given instead.  Depositions may be noticed for any reasonable time and place in the 
United States.  A deposition may not be noticed for a place in a foreign country except as 
provided in paragraph (a)(2) of this section.  No party shall take depositions in more than one place at the same time, nor so nearly at the same time that reasonable opportunity for travel from one place of examination to the other is not available. 
(d) Persons before whom depositions may be taken .  Depositions may be taken before 
persons designate
d by Rule 28 of the Federal Rules of Civil Procedure. 
(e) Examination of witnesses .  (1) Eac h witn ess be fore tes tifying shall be du ly sworn acc ordin g 
to law by the officer before whom his deposition is to be taken. 
(2) The deposition shall be taken in answer to questions, with the questions and answers 
recorded in their regular order by the officer, or by
 some other person (who shall be subject to the 
provisions of Rule 28 of the Federal Rules of Civil Procedure) in the presence of the officer except 
when the officer’s presence is waived on the record by agreement of the parties.  The testimony 
shall be taken stenographically and transcribed, unless the parties present agree otherwise.  In the absence of all opposing parties and their attorneys or other authorized representatives, depositions may be taken in longhand, typewriting, or stenographically.  Exhibits which are marked and identified at the deposition will be deemed to have been offered into evidence, 
without any formal offer thereof, unless the intention of the party marking the exhibits is clearly 
expressed to the contrary. 
(3) Every adverse party shall have full opportunity to cross-examine each witness.  If pretrial 
disclosures or the notice of examination of
 witnesses served pursuant to paragraph (c) of this 
section are improper or inadequate with respec t to any witness, an adverse party may cross-
examine that witness under protest while reserving the right to object to the receipt of the 
testimony in evidence.  Promptly after the testimony is completed, the adverse party, to preserve 
the objection, shall move to strike the testimony from the record, which motion will be decided on the basis of all the relevant circumstances.  A motion to strike the testimony of a witness for lack of proper or adequate pretrial disclosure may seek exclusion of the entire testimony, when there was no pretrial disclosure, or may seek exclusion of that portion of the testimony that was not 
adequately disclosed in accordance with § 2.121(e).  A motion to strike the testimony of a witness 
IP/N/1/USA/T/4 
Page 70 -69- January 6, 2012 for lack of proper or adequate notice of examination must request the exclusion of the entire 
testimony of that witness and not only a part of that testimony. 
(4) All objections made at the time of the examination to the qualifications of the officer taking 
the deposition, or to the manner of ta
king it, or to the evidence presented, or to the conduct of any 
party, and any other objection to the proceedings, shall be noted by the officer upon the deposition.  Evidence objected to shall be taken subject to the objections. 
(5) When the deposition has been transcribed, the deposition shall be carefully read over by 
the wi tness or by the of ficer to hi m, a 
nd shall then be signed by the witness in the presence of any 
officer authorized to administer oaths unless the reading and the signature be waived on the record by agreement of all parties. 
(f) Certification and filing of deposition.   (1) The officer shall annex to the deposition his certificate showing: (i) Due administration of the oath by the officer to the witness before the commencement of his 
deposit ion; 
(ii) The name of the person b
y whom the deposition was taken down, and whether, if not taken 
down by the officer, it wa
s taken down in his presence; 
(iii) The presence or absence of the adverse party; (iv) The place, day, and hour of commencing and taking the deposition; (v) The fact that the officer was not disqualified as specified in Rule 28 of the Federal Rules of 
Civil Procedure. 
(2) If any of the fo rego 
ing requirements in paragraph (f)(1) of this section are waived, the 
certific ate sh all so stat e.  The of ficer shall sign th
e certificate and affix thereto his seal of office, if 
he has such a seal.  Unless waived on the record by an agreement, he shall then securely seal in an envelope all the evidence, notices, and paper exhibits, inscribe upon the envelope a certificate giving the number and title of the case, the name of each witness, and the date of sealing.  The officer or the party taking the deposition, or its attorney or other authorized representative, shall 
then promptly forward the package to the address set out in § 2.190.  If the weight or bulk of an 
exhibit shall exclude it from the envelope, it shall, unless waived on the record by agreement of all parties, be authenticated by the officer and transmitted by the officer or the party taking the deposition, or its attorney or other authorized representative, in a separate package marked and addressed as provided in this section. 
(g) Form of deposition .  (1) The pag
 es of each deposition must be numbered consecutively, 
and the name of the witness plainly and conspicuously written at the top of each page.  A deposition must be in written form.  The questions propounded to each witness must be consecutively numbered unless the pages have nu mbered lines.  Each question must be followed 
by its answer. 
(2) Exhibits must be numbered or lettered consecutively and each must be marked with the 
number and ti
tle of the case and the name of the party offering the exhibit.  Entry and 
consideration may be refused to improperly marked exhibits. 
(3) Each deposition must contain an index of the names of the witnesses, giving the pages 
where their exam
ination and cross-examination begin, and an index of the exhibits, briefly 
describing their nature and giving the pages at which they are introduced and offered in evidence. 
(h) Depositions must be filed .  All depositions which are taken must be d uly fil ed in the Patent 
and Trademark Office.  On refusal to file, the Office at its discretion will not further hear or consider the contestant with whom the refusal lies; and the Office may, at its discretion, receive and consider a copy of the withheld deposition, attested by such evidence as is procurable. 
(i) Inspection of depositions .  After the depositions are fil
 ed in the Office, they may be 
inspected by any party to the case, but they cannot be withdrawn for the purpose of printing.  They may be printed by someone specially designated by the Office for that purpose, under proper restrictions. 
(j) Effect of errors and irregularities in depositions :  Rule 3 2(d)(1), (2), and (
 3)(A) and (B) of the 
Federal Rules of Civil Procedure shall apply to errors and irregularities in depositions.  Notice will not be taken of merely formal or technical objections which shall not appear to have wrought a 
IP/N/1/USA/T/4 
Page 71 -70- January 6, 2012 substantial injury to the party raising them; and in case of such injury it must be made to appear 
that the objection was raised at the time specified in said rule. 
(k) Objections to admissibility :  Subject to the provisions of p aragraph (j) of this section, 
objection may be made to receiving in evidence any deposition, or part thereof, or any other 
evidence, for any reason which would require the exclusion of the evidence from consideration.  
Objections to the competency of a witness or to the competency, relevancy, or materiality of testimony must be raised at the time specified in Rule 32(d)(3)(A) of the Federal Rules of Civil Procedure.  Such objections will not be considered until final hearing. 
(l) Evide nce not considered .  Evidence not ob
 tained and filed in compliance with these 
sections will not be considered. 
[27 FR 7606, Apr. 18, 1972, as amended at 41 FR 760, Jan. 5 1976; 48 FR 23139, May 23, 1983; 54 FR 
34899, Aug. 22, 1989; 63 FR 48081, Sept. 9, 1998, effective Oct. 9, 1998; 68 FR 14332, March 25, 2003, 
effective May 1, 2003; 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; 68 FR 55748, Sept. 26, 2003, 
effective Nov. 2, 2003; 72 FR 42242, Au g. 1, 2007, effective Nov. 1, 2007] 
§ 2.124  Depositions upon written questions. 
(a) A deposition upon written questions may be taken before any person before whom 
depositions may be taken as provid e
d by Rule 28 of the Federal Rules of Civil Procedure. 
(b)(1) A party desiring to take a testimonial deposition upon written questions shall serve 
notice  thereof upon each adverse  part
y within ten days from the opening date of the testimony 
period of the party who serves the notice.  The notice shall state the name and address of the 
witness.  A copy of the notice, but not copies of the questions, shall be filed with the Trademark Trial and Appeal Board. 
(2) A party desiring to take a discovery deposition upon written questions shall serve notice 
thereof u pon each adverse p arty and sha ll file a cop y 
 of the notice, but not copies of the 
questions, with the Board.  The notice shall state the name and address, if known, of the person whose deposition is to be taken.  If the name of the person is not known, a general description sufficient to identify him or the particular class or group to which he belongs shall be stated in the notice, and the party from whom the discovery deposition is to be taken shall designate one or 
more persons to be deposed in the same manner as is provided by Rule 30(b)(6) of the Federal 
Rules of Civil Procedure. 
(c) Every notice given under the provisions of paragraph (b) of this section shall be 
accompan ied by th e name o r descripti ve titl e of the office
r before whom the deposition is to be 
taken. 
(d)(1) Every notice served on any adverse party under the provisions of paragraph (b) of this  
section sh
all be accompanied by the written questions to be propounded on behalf of the party 
who proposes to take the deposition.  Within twenty days from the date of service of the notice, any adverse party may serve cross questions upon the party who proposes to take the deposition; any party who serves cross questions shall also serve every other adverse party.  Within ten days 
from the date of service of the cross questions, the party who proposes to take the deposition may 
serve redirect questions on every adverse party.  Within ten days from the date of service of the redirect questions, any party who served cross questions may serve recross questions upon the party who proposes to take the deposition; any party who serves recross questions shall also serve every other adverse party.  Written objections to questions may be served on a party propounding questions; any party who objects shall serve a copy of the objections on every other 
adverse party.  In response to objections, substitute questions may be served on the objecting 
party within ten days of the date of service of the objections; substitute questions shall be served on every other adverse party. 
(2) Upon motion for good cause by any party, or upon its own initiative, the Trademark Trial 
and Appeal Board may extend any of the time periods provided by
 paragraph (d)(1) of this 
section.  Upon receipt of written notice that one or more testimonial depositions are to be taken 
IP/N/1/USA/T/4 
Page 72 -71- January 6, 2012 upon written questions, the Trademark Trial and Appeal Board shall suspend or reschedule other 
proceedings in the matter to allow for the orderly completion of the depositions upon written questions. 
(e) Within ten days after the last date when questions, objections, or substitute questions may 
be served, the party who proposes to take th
e deposition shall mail a copy of the notice and 
copies of all the questions to the officer designated in the notice; a copy of the notice and of all the questions mailed to the officer shall be served on every adverse party.  The officer designated in the notice shall take the testimony of the witness in response to the questions and shall record each answer immediately after the corresponding question.  The officer shall then certify the transcript and mail the transcript and exhibits to the party who took the deposition. 
(f) The party who took the deposition shall promptly serve a copy of the transcript, copies of 
documentary exhibits, and duplic
ates or photographs of physical exhibits on every adverse party.  
It is the responsibility of the part y who takes the deposition to assure that the transcript is correct 
(see § 2.125(b)).  If the deposition is a discovery deposition, it may be made of record as provided by § 2.120(j).  If the deposition is a testimonial deposition, the original, together with copies of 
documentary exhibits and duplicates or photographs of physical exhibits, shall be filed promptly 
with the Trademark Trial and Appeal Board. 
(g) Objections to questions and answers in depositions upon written questions may be 
conside red at fin al hearing. 
[48 FR 23139, May 23, 1983] 
§ 2.125  Filing and service of testimony. 
(a) One copy of the transcript of testimony taken in accordance with § 2.123, together with 
copies of documentary exhibits and d uplicat
es or photographs of physical exhibits, shall be served 
on each adverse party within thirty days after completion of the taking of that testimony.  If the transcript with exhibits is not served on each ad verse party within thirty days or within an 
extension of time for the purpose, any adverse party which was not served may have remedy by way of a motion to the Trademark Trial and Appeal Board to reset such adverse party’s testimony and/or briefing periods, as may be appropriate.  If the deposing party fails to serve a copy of the transcript with exhibits on an adverse party after having been ordered to do so by the Board, the Board, in its discretion, may strike the deposition, or enter judgment as by default against the 
deposing party, or take any such other action as may be deemed appropriate. 
(b) The party who takes testimony is responsible for having all typographical errors in the 
transcript and all errors of
 arrangement, indexing and form of the transcript corrected, on notice to 
each adverse party, prior to the filing of one certified transcript with the Trademark Trial and 
Appeal Board.  The party who takes testimony is  responsible for serving on each adverse party 
one copy of the corrected transcript or, if reasonably feasible, corrected pages to be inserted into 
the transcript previously served. 
(c) One certified transcript and exhibits shall be filed with the Trademark Trial and Appeal 
Board. Notic e of such fil ing shall b e s
erved on each adverse party and a copy of each notice shall 
be filed with the Board. 
(d) Each transcript shall comply with § 2.123(g) with respect to arrangement, indexing and 
form. 
(e) Upon motion by any party, for good cause, the Trademark Trial and Appeal Board may 
order that any part of a deposit ion t
ranscript or any exhibits that directly disclose any trade secret 
or other confidential research, development, or commercial information may be filed under seal 
and kept confidential under the provisions of § 2.27(e).  If any party or any attorney or agent of a party fails to comply with an order made under this paragraph, the Board may impose any of the 
sanctions authorized by § 2.120(g). 
IP/N/1/USA/T/4 
Page 73 -72- January 6, 2012 [48 FR 23410, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63 FR 48081, Sept. 9, 1998, 
effec tive Oc t. 9, 1998 ] 
§ 2.126  Form of submissions to the Trademark Trial and Appeal Board. 
(a) Submissions may be made to the Trademark Trial and Appeal Board on paper where 
Board practice or the rules in this part permit.  A paper sub m
ission, including exhibits and 
depositions, must meet the following requirements: 
(1) A paper submission must be printed in at least 11-point type and double-spaced, with text 
on on e side only of each sheet; 
(2) A paper 
submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) wide and 11 to 11.69 inches 
(27.9 to 29.7 cm.) long, and contai
n no tabs or other such devices extending beyond the edges of 
the paper; 
(3) If a paper submission contains dividers, the dividers must not have any extruding tabs or 
other devices, and  must  be on  the sa
me size and weight paper as the submission; 
(4) A paper submission must not be stapled or bound; 
(5) All pages of a paper submission must be numbered and exhibits shall be identified in the 
manner prescribed in § 2.123(g)(2); 
(6) Exhibits pert
aining to a paper submission must be filed on paper and comply with the 
requirements for a paper submissio n.
 
(b) Submissions may be made to the Trademark Trial and Appeal Board electronically via the 
Internet where the rules in this part or Board practice 
permit, according to the parameters 
established by the Board and published on the web site of the Office.  Text in an electronic submission must be in at least 11-point type and double-spaced.  Exhibits pertaining to an electronic submission must be made electronically as an attachment to the submission. 
(c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that 
are con fidential in whole or pa rt pursuant to § 2.
125(e) must be submitted under a separate cover.  
Both the submission and its cover must be marked confidential and must identify the case number 
and the parties.  A copy of the submission with the confidential portions redacted must be 
submitted. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 72 FR 42242, effective Aug. 31, 2007] 
§ 2.127  Motions. 
(a) Every motion must be submitted in written form and must meet the requirements 
prescribed in § 2.126.  It shall contain a full statement of th e grou
nds, and shall embody or be 
accompanied by a brief.  Except as provided in paragraph (e)(1) of this section, a brief in 
response to a motion shall be filed within fifteen days from the date of service of the motion unless another time is specified by the Trademark Trial and Appeal Board, or the time is extended by stipulation of the parties approved by the Board, or upon motion granted by the Board, or upon 
order of the Board.  If a motion for an extension is denied, the time for responding to the motion 
remains as specified under this section, unless otherwise ordered.  Except as provided in paragraph (e)(1) of this section, a reply brief, if filed, shall be filed within fifteen days from the date of service of the brief in response to the motion.  The time for filing a reply brief will not be extended.  The Board will consider no further papers in support of or in opposition to a motion.  
Neither the brief in support of a motion nor the brief in response to a motion shall exceed twenty-
five pages in length in its entirety, including table of contents, index of cases, description of the record, statement of the issues, recitation of the facts, argument, and summary.  A reply brief shall not exceed ten pages in length in its entirety.  Exhibits submitted in support of or in opposition to a motion are not considered part of the brief for purposes of determining the length of the brief.  
IP/N/1/USA/T/4 
Page 74 -73- January 6, 2012 When a party fails to file a brief in response to a motion, the Board may treat the motion as 
conceded.  An oral hearing will not be held on  a motion except on order by the Board. 
(b) Any request for reconsideration or modification of an order or decision issued on a motion 
must be filed within one month 
from the date thereof.  A brief in response must be filed within 15 
days from the date of service of the request. 
(c) Interlocutory motions, requests, and other matters not actually or potentially dispositive of a 
proce eding  may be acted 
upon by a single Administrative Trademark Judge of the Trademark 
Trial and Appeal Board or by an Interlocutory Attorney of the Board to whom authority so to act has been delegated. 
(d) When any party files a motion to dismiss, or a motion for judgment on the pleadings, or a 
motion for summary judgment, or any other 
motion which is potentially dispositive of a proceeding, 
the case will be suspended by the Trademark Tria l and Appeal Board with respect to all matters 
not germane to the motion and no party should file any paper which is not germane to the motion except as otherwise specified in the Board’s suspension order.  If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the 
motion is decided. 
(e)(1) A party may not file a motion for summary judgment until the party has made its initial 
disclosures, except for a motion asse
rting claim or issue preclusion or lack of jurisdiction by the 
Trademark Trial and Appeal Board.  A motion for summary judgment, if filed, should be filed prior 
to the commencement of the first testimony period, as originally set or as reset, and the Board, in 
its discretion, may deny as untimely any motion for summary judgment filed thereafter. A  motion 
under Rule 56(f) of the Federal Rules of Civil Procedure, if filed in response to a motion for summary judgment, shall be filed within thirty days from the date of service of the summary 
judgment motion.  The time for filing a motion under Rule 56(f) will not be extended.  If no motion under Rule 56(f) is filed, a brief in response to the motion for summary judgment shall be filed within thirty days from the date of service of the motion unless the time is extended by stipulation 
of the parties approved by the Board, or upon motion granted by the Board, or upon order of the 
Board.  If a motion for an extension is denied, the time for responding to the motion for summary judgment may remain as specified under this section.  A reply brief, if filed, shall be filed within fifteen days from the date of service of the brief in response to the motion.  The time for filing a reply brief will not be extended.  The Board will consider no further papers in support of or in 
opposition to a motion for summary judgment. 
(2) For purposes of summary judgment only, the Board will consider any of the following, if a 
copy is provided with the part y
’s brief on the summary judgment motion: written disclosures or 
disclosed documents, a discovery deposition or any part thereof with any exhibit to the part that is 
filed, an interrogatory and answer thereto with any exhibit made part of the answer, a request for production and the documents or things produced in response thereto, or a request for admission 
and any exhibit thereto and the admission (or a statement that the party from which an admission 
was requested failed to respond thereto). 
(f) The Board will not hold any person in contemp t, or award  attorne ys’ fe
 es or other expenses 
to any party. 
[48 FR 23140, May 23, 1983, as amended at 54 FR 34 900, Aug. 22, 1989; 63 FR 48081, Sept. 9, 1998; 63 
FR 52158, Sept. 30, 1998; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 72 FR 42242, Aug. 1, 
2007, effective Nov. 1, 2007] 
§ 2.128  Briefs at final hearing. 
(a)(1) The brief of the party in the position of plaintiff shall be due not later than sixty days after 
the date set for the close of rebu
ttal testimony.  The brief of the party in the position of defendant, 
if filed, shall be due not later than thirty days after the due date of the first brief.  A reply brief by the party in the position of plaintiff, if filed, shall be due not later than fifteen days after the due date of the defendant’s brief. 
IP/N/1/USA/T/4 
Page 75 -74- January 6, 2012 (2) When there is a counterclaim, or when proceedings have been consolidated and one party 
is in the position of plaintiff in one of the involved proceedings and in the position of defendant in 
another of the involved proceedings, or when there is an interference or a concurrent use registration proceeding involving more than two parties, the Trademark Trial and Appeal Board 
will set the due dates for the filing of the main brief, and the answering brief, and the rebuttal brief 
by the parties. 
(3) When a party in the position of plaintiff fails to file a main brief, an order may be issued 
allowi ng pl aintiff u ntil a s et time, not less than f ift 
een days, in which to show cause why the Board 
should not treat such failure as a concession of the case.  If plaintiff fails to file a response to the order, or files a response indicating that he has lost interest in the case, judgment may be entered 
against plaintiff. 
(b) Briefs must be submitted in written form and must meet the requirements prescribed in 
§ 2.126.  Each bri ef sh all conta in an alpha 
betical index of cited cases.  Without prior leave of the 
Trademark Trial and Appeal Board, a main brief on the case shall not exceed fifty-five pages in 
length in its entirety, including the table of contents, index of cases, description of the record, 
statement of the issues, recitation of the facts, argument, and summary; and a reply brief shall not 
exceed twenty-five pages in its entirety. 
[48 FR 23140, May 23, 1983; 48 FR 27225, June 14, 1983, as amended at 54 34900, Aug. 22, 1989; 68 FR 
55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 2.129  Oral argument; reconsideration. 
(a) If a party desires to have an oral argument at final hearing, the party shall request such 
argument by a separate notice filed not later than ten d a
ys after the due date for the filing of the 
last reply brief in the proceeding.  Oral argument s will be heard by at least three Administrative 
Trademark Judges of the Trademark Trial and Appeal Board at the time specified in the notice of 
hearing.  If any party appears at the specified ti me, that party will be heard.  If the Board is 
prevented from hearing the case at the specified time, a new hearing date will be set.  Unless 
otherwise permitted, oral argumen ts in an inter partes case will be limited to thirty minutes for 
each party.  A  party in the position of plaintiff may reserve part of the time allowed for oral 
argument to present a rebuttal argument. 
(b) The date or time of a hearing may be reset, so far as is convenient and proper, to meet the 
wishes of the parties and their attorneys
 or other authorized representatives. 
(c) Any request for rehearing or reconsideration or modification of a decision issued after final 
hearing must be filed within one mon
th from the date of the decision.  A brief in response must be 
filed within fifteen days from the date of service of the request.  The times specified may be extended by order of the Trademark Trial and Appeal Board on motion for good cause. 
(d) When a party to an inter partes proceeding before the Trademark Trial and Appeal Board 
cannot prevail without establishing  const 
ructive use pursuant to section 7(c) of the Act in an 
application under section 1(b) of the Act, the Trademark Trial and Appeal Board will enter a judgment in favor of that party, subject to the party’s establishment of constructive use.  The time for filing an appeal or for commencing a civil action under section 21 of the Act shall run from the 
date of the entry of the judgment. 
[48 FR 23141, May 23, 1983, as amended at 54 FR 29 554, July 13, 1989; 54 FR 34900, Aug. 22, 1989; 54 
FR 37597, Sept. 11, 1989; 72 FR 42242, Aug. 1, 2007, effective Aug. 31, 2007] 
§ 2.130  New matter suggested by the trademark examining attorney. 
If, while an inter partes proceeding involving an application under section 1 or 44 of the Act is 
pending, facts appear which, in the opinion of the trademark exa m
ining attorney, render the mark 
in the application unregistrable, the facts should be called to the attention of the Trademark Trial 
IP/N/1/USA/T/4 
Page 76 -75- January 6, 2012 and Appeal Board.  The Board may suspend the proceeding and refer the application to the 
trademark examining attorney for an ex parte determination of the question of registrability.  A 
copy of the trademark examining attorney's final action will be furnished to the parties to the inter partes proceeding following the final determination of registrability by the trademark examining 
attorney or the Board on appeal.  The Board will consider the application for such further inter 
partes action as may be appropriate. 
[Amended 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 2.131  Remand after decision in inter partes proceeding. 
If, during an inter partes proceeding involving an application under section 1 or 44 of the Act, 
facts are disclosed which app ear 
to render the mark unregistrable, but such matter has not been 
tried under the pleadings as filed by the parties or as they might be deemed to be amended under Rule 15(b) of the Federal Rules of Civil Procedure to conform to the evidence, the Trademark Trial and Appeal Board, in lieu of determining the matter in the decision on the proceeding, may remand the application to the trademark examining attorney for reexamination in the event the 
applicant ultimately prevails in the inter partes proceeding.  Upon remand, the trademark 
examining attorney shall reexamine the application in light of the reference by the Board.  If, upon reexamination, the trademark examining attorney finally refuses registration to the applicant, an appeal may be taken as provided by §§ 2.141 and 2.142. 
[48 FR 23141, May 23, 1983; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 2.132  Involuntary dismissal for failure to take testimony. 
(a) If the time for taking testimony by any party in the position of plaintiff has expired and that 
party has not taken testim o
ny or offered any other evidence, any party in the position of defendant 
may, without waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground of the failure of the plaintiff to prosecute.  The party in the position of 
plaintiff shall have fifteen days from the date of service of the motion to show cause why judgment 
should not be rendered against him.  In the absence of a showing of good and sufficient cause, judgment may be rendered against the party in the position of plaintiff.  If the motion is denied, testimony periods will be reset for the party in  the position of defend ant and for rebuttal. 
(b) If no evidence other than a copy or copies of Patent and Trademark Office records is 
offered b y any party in t
he position of plaintiff, any party in the position of defendant may, without 
waiving the right to offer evidence in the event the motion is denied, move for dismissal on the ground that upon the law and the facts the party in the position of plaintiff has shown no right to relief.  The party in the position of plaintiff shall have fifteen days from the date of service of the motion to file a brief in response to the motion.  The Trademark Trial and Appeal Board may render judgment against the party in the position of plaintiff, or the Board may decline to render 
judgment until all of the evidence is in the record.  If judgment is not rendered, testimony periods 
will be reset for the party in the position of defendant and for rebuttal. 
(c) A motion filed under paragraph (a) or (b) of this section must be filed before the opening of 
the testimony period of the 
moving party, except that the Trademark Trial and Appeal Board may 
in its discretion grant a motion under paragraph (a) even if the motion was filed after the opening 
of the testimony period of the moving party. 
[48 FR 23141, May 23, 1983, as amended at 51 FR 28710, Aug. 11, 1986] 
IP/N/1/USA/T/4 
Page 77 -76- January 6, 2012 § 2.133  Amendment of application or registration during proceedings. 
(a) An application subject to an opposition may not be amended in substance nor may a 
registration subject to a cancellation be amended  or disclai
med in part, except with the consent of 
the other party or parties and the approval of the Trademark Trial and Appeal Board, or upon 
motion granted by the Board. 
(b) If, in an inter partes proceeding, the Trademark Trial and Appeal Board finds that a party 
whos e appli cation o r registra tion is the subj ect of the p
roceeding is not entitled to registration in 
the absence of a specified restriction to the application or registration, the Board will allow the 
party time in which to file a motion that the application or registration be amended to conform to 
the findings of the Board, failing which judg ment will be entered against the party.  
(c) Geographic limitations will be considered and determined by the Trademark Trial and 
Appe al Board onl y in the conte xt
 of a concurrent use registration proceeding.   
(d) A plaintiff’s pleaded registration will not be restricted in the absence of a counterclaim to 
cancel the registration in whole or in part, except that
 a counterclaim need not be filed if the 
registration is the subject of another proceeding between the same parties or anyone in privity therewith.   
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37597, Sept. 11, 1989; 72 FR 42242, Aug. 1, 2007, 
effective Aug. 31, 2007] 
§ 2.134  Surrender or voluntary cancellation of registration. 
(a) After the commencement of a cancellation proceeding, if the respondent applies for 
cancellation of the involved registration under se ction 7(e) of
 the Act of 1946 without the written 
consent of every adverse party to the proceeding, judgment shall be entered against the 
respondent.  The written consent of an adverse party may be signed by the adverse party or by 
the adverse party’s attorney or other authorized representative. 
(b) After the commencement of a cancellation proceeding, if it comes to the attention of the 
Trademark Trial and Appeal Boar
d that the respondent has permitted his involved registration to 
be cancelled under section 8 of the Act of 1946 or has failed to renew his involved registration under section 9 of the Act of 1946, an order may be issued allowing respondent until a set time, 
not less than fifteen days, in which to show cause why such cancellation or failure to renew should 
not be deemed to be the equivalent of a cancellation by request of respondent without the consent of the adverse party and should not result in entry of judgment against respondent as provided by paragraph (a) of this section.  In the absence of a showing of good and sufficient cause, judgment may be entered against respondent as provided by paragraph (a) of this section. 
[48 FR 23141, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989; 63 FR 48081, Sept. 9, 1998, 
effective Oct. 9, 1998] 
§ 2.135  Abandonment of application or mark. 
After the commencement of an opposition, concurrent use, or interference proceeding, if the 
applicant files a written abandonment of the ap pli
cation or of the mark without the written consent 
of every adverse party to the proceeding, judgment shall be entered against the applicant.  The 
written consent of an adverse party may be signed by the adverse party or by the adverse party’s attorney or other authorized representative. 
[48 FR 23141, May 23, 1983, as amended at 54 FR 34900, Aug. 22, 1989] 
IP/N/1/USA/T/4 
Page 78 -77- January 6, 2012 § 2.136  Status of application on termination of proceeding. 
On termination of a proceeding involving an application, the application, if the judgment is not 
adverse, returns to the status it had
 before the institution of the proceedings.  If the judgment is 
adverse to the applicant, the application stands refused without further action and all proceedings 
thereon are considered terminated. 
APPEALS 
§ 2.141  Ex parte appeals from action of trademark examining attorney. 
(a) An applicant may, upon final refusal by the trademark examining attorney, appeal to the 
Trademark Trial and Appeal Boa r
d upon payment of the prescribed fee for each class in the 
application for which an appeal is taken, within six months of the date of issuance of the final action.  A second refusal on the same grounds may be considered as final by the applicant for 
purpose of appeal. 
(b) The applicant must pay an appeal fee for each class from which the appeal is taken.  If the 
applica nt do es not pa y an appeal f ee for at least one class of 
 goods or services before expiration 
of the six-month statutory filing period, the application will be abandoned.  In a multiple-class 
application, if an appeal fee is submitted for fewer than all classes, the applicant must specify the class(es) in which the appeal is taken.  If the applicant timely submits a fee sufficient to pay for an 
appeal in at least one class, but insufficient to cover all the classes, and the applicant has not 
specified the class(es) to which the fee applies, the Board will issue a written notice setting a time limit in which the applicant may either pay the additional fees or specify the class(es) being appealed.  If the applicant does not submit the required fee or specify the class(es) being appealed within the set time period, the Board will apply the fee(s) to the class(es) in ascending 
order, beginning with the lowest numbered class.  
[41 FR 760, Jan. 5, 1976; amended 73 FR 67759,  Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.142  Time and manner of ex parte appeals. 
(a) Any appeal filed under the provisions of § 2.141 must be filed within six months from the 
date of the final refusal or t he d
ate of the action from which the appeal is taken.  An appeal is 
taken by filing a notice of appeal in written form, as prescribed in § 2.126, and paying the appeal 
fee. 
(b)(1) The brief of appellant shall be filed within sixty days from the date of appeal.  If the brief 
is not file d within th e time allo wed, the appe al 
may be dismissed.  The examiner shall, within sixty 
days after the brief of appellant is sent to the examiner, file with the Trademark Trial and Appeal 
Board a written brief answering the brief of appellant and shall mail a copy of the brief to the 
appellant.  The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examiner. 
(2) Briefs must be submitted in written form and must meet the requirements prescribed in 
§ 2.126.  Each bri ef sh all conta 
in an alphabetical index of cited cases.  Without prior leave of the 
Trademark Trial and Appeal Board, a brief shall not exceed twenty-five pages in length in its 
entirety, including the table of contents, index of cases, description of the record, statement of the 
issues, recitation of the facts, argument, and summary. 
(c) All requirements made by the examiner and not the subject of appeal shall be complied 
with prior to the filing of a n 
appeal. 
(d) The record in the application should be complete prior to the filing of an appeal.  The 
Trademark Trial and Appeal Board will ordina
rily not consider additional evidence filed with the 
Board by the appellant or by the examiner after the appeal is filed.  After an appeal is filed, if the appellant or the examiner desires to introduce additional evidence, the appellant or the examiner 
IP/N/1/USA/T/4 
Page 79 -78- January 6, 2012 may request the Board to suspend the appeal and to remand the application for further 
examination. 
(e)(1) If the appellant desires an oral hearing, a request should be made by a separate notice 
filed not later than ten days after the due date for a reply brief.  Oral ar
gument will be heard by at 
least three Administrative Trademark Judges of the Trademark Trial and Appeal Board at the time specified in the notice of hearing, which may be reset if the Board is prevented from hearing the argument at the specified time or, so far as is convenient and proper, to meet the wish of the appellant or the appellant’s attorney or other authorized representative. 
(2) If the appellant requests an oral argument, the examiner who issued the refusal of 
regist ration or the requirement from which the 
appeal is taken, or in lieu thereof another examiner 
from the same examining division as designated by the supervisory attorney thereof, shall present an oral argument.  If no request for an oral hearing is made by the appellant, the appeal will be decided on the record and briefs. 
(3) Oral argument will be limited to twenty minutes by the appellant and ten minutes by the 
examiner.  The a ppellant may 
reserve part of the time allowed for oral argument to present a 
rebuttal argument. 
(f)(1) If, during an appeal from a refusal of registration, it appears to the Trademark Trial and 
Appeal Board that an issue not prev iousl
y raised may render the mark of the appellant 
unregistrable, the Board may suspend the appeal and remand the application to the examiner for further examination to be completed within thirty days. 
(2) If the further examination does not result in an additional ground for refusal of registration, 
the examiner shall promptl y 
 return the application to the Board, for resumption of the appeal, with 
a written statement that further examination did not result in an additional ground for refusal of registration. 
(3) If the further examination does result in an additional ground for refusal of registration, the 
examiner and appellant shall proc eed as provided by §§ 2.61, 2. 62, 2.63 and 2.64.  If the ground 
for refusal is made 
final, the examiner shall return the application to the Board, which shall 
thereupon issue an order allowing the appellant sixty days from the date of the order to file a supplemental brief limited to the additional ground for the refusal of registration.  If the supplemental brief is not filed by the appellant within the time allowed, the appeal may be dismissed. 
(4) If the supplemental brief of the appellant is filed, the examiner shall, within sixty days after 
the supplemental brief of the appellant is sent
 to the examiner, file with the Board a written brief 
answering the supplemental brief of appellant and shall mail a copy of the brief to the appellant.  The appellant may file a reply brief within twenty days from the date of mailing of the brief of the examiner. 
(5) If an oral hearing on the appeal had been requested prior to the remand of the application 
but not yet held, an oral hearing 
will be set and heard as provided in paragraph (e) of this section.  
If an oral hearing had been held prior to the remand or had not been previously requested by the appellant, an oral hearing may be requested by the appellant by a separate notice filed not later than ten days after the due date for a reply brief on the additional ground for refusal of registration.  If the appellant files a request for an oral hearing, one will be set and heard as provided in 
paragraph (e) of this section.   
(6) If, during an appeal from a refusal of registration, it appears to the examiner that an issue 
not involved in the appeal may render the mark of the app
ellant unregistrable, the examiner may, 
by written request, ask the Board to suspend the appeal and to remand the application to the 
examiner for further examination.  If the request is granted, the examiner and appellant shall 
proceed as provided by §§ 2.61, 2.62, 2.63 and 2.64.  After the additional ground for refusal of 
registration has been withdrawn or made final, the examiner shall return the application to the Board, which shall resume proceedings in the appeal and take further appropriate action with respect thereto. 
(g) An application which has been considered and decided on appeal will not be reopened 
except f or the ent ry of a disclai mer unde r secti on 6 of the
 Act of 1946 or upon order of the 
IP/N/1/USA/T/4 
Page 80 -79- January 6, 2012 Director, but a petition to the Director to reopen an application will be considered only upon a 
showing of sufficient cause for consideration of any matter not already adjudicated. 
[48 FR 23141, May 23, 1983, as amended at 54 FR 34901, Aug. 22, 1989; 68 FR 14332, March 25, 2003, 
effective May 1, 2003; 68 FR 55748, Sept. 26, 2003, ef fective Nov. 2, 2003; 72 FR 42242, Aug. 1, 2007, 
effective Aug. 31, 2007] 
§ 2.144  Reconsideration of decision on ex parte appeal. 
Any request for rehearing or reconsideration, or modification of the decision, must be filed 
within one month from  
the date of the decision.  Such time may be extended by the Trademark 
Trial and Appeal Board upon a showing of sufficient cause. 
[41 FR 760, Jan. 5. 1976, as amended at 54 FR 29554, July 13, 1989] 
§ 2.145  Appeal to court and civil action. 
(a) Appeal to U.S. Court of Appeals for the Federal Circuit .  An applicant fo r registration, or 
any party to an interference, opposition, or cancellation proceeding or any party to an application to register as a concurrent user, hereinafter referred to as inter partes proceedings, who is dissatisfied with the decision of the Trademark Trial and Appeal Board and any registrant who has filed an affidavit or declaration under section 8 of the Act or who has filed an application for renewal and is dissatisfied with the decision of the Director (§§ 2.165, 2.184), may appeal to the 
U.S. Court of Appeals for the Federal Circuit.  The appellant must take the following steps in such 
an appeal: 
(1) In the Patent and Trademark Office give written notice of appeal to the Director (see 
paragraphs (b) a nd (d) of this sec tion
); 
(2) In the court, file a copy of the notice of appeal and pay the fee for appeal, as provided by 
the rules of the Court.   
(b) Notice o
f appeal .  (1) When an appeal is taken  to the U.S. Court of Appeals for the Federal 
Circuit, the appellant shall give notice thereof in writing to the Director, which notice shall be filed in the Patent and Trademark Office, within the time specified in paragraph (d) of this section.  The notice shall specify the party or parties taking the appeal and shall designate the decision or part thereof appealed from. 
(2) In inter partes proceedings, the notice must be served as provided in § 2.119. (3) Notices of appeal directed to the Director shall be mailed to or served by hand on the 
General Counsel, acc ording to p art 104 of t
his chapter, with a duplicate copy mailed or served by 
hand on the Trademark Trial and Appeal Board. 
(c) Civil action .  (1) Any person who may appeal to the U.S. Court of Appeals for the Federal 
Circuit (paragraph (a) of this section), may have remedy by civil action under section 21(b) of the Act.  Such civil action must be commenced within the time specified in paragraph (d) of this section. 
(2) Any applicant or registrant in an ex parte case who takes an appeal to the U.S. Court of 
Appeals for the Federal Circu i
t waives any right  to proceed under section 21(b) of the Act. 
(3) Any adverse party to an appeal taken to the U.S. Court o f App eals fo r the Fe deral Circui t 
by a defeated party in an inter partes proceeding may file a notice with the Office, addressed to the Office of the General Counsel, according to part 104 of this chapter, within twenty days after the filing of the defeated party's notice of appea l to the court (paragraph (b) of this section), 
electing to have all further proceedings conducted as provided in section 21(b) of the Act.  The notice of election must be served as provided in § 2.119. 
(4) In order to avoid premature termination of a proceeding, a party who commences a civil 
action, p ursuant to secti on 21(b ) of the Act, must
 file written notice thereof at the Trademark Trial 
and Appeal Board. 
IP/N/1/USA/T/4 
Page 81 -80- January 6, 2012 (d) Time for appeal or civil action.   (1) The time for filing the notice of appeal to the U.S. Court 
of Appeals for the Federal Circuit (paragraph (b) of this section), or for commencing a civil action 
(paragraph (c) of this section), is two months from  the date of the decision of the Trademark Trial 
and Appeal Board or the Director, as the case may be.  If a request for rehearing or 
reconsideration or modification of the decision is filed within the time specified in §§ 2.127(b), 
2.129(c) or 2.144, or within any extension of time granted thereunder, the time for filing an appeal or commencing a civil action shall expire two months after action on the request.  In inter partes cases, the time for filing a cross-action or a notice of a cross-appeal expires 
(i) 14 days after service of the notice of appeal or the summons and complaint; or (ii) Two months from the date of the decision of the Trademark Trial and Appeal Board or the 
Direc tor, whichever is lat er. 
(2) The ti
mes specified in this section in days are calendar days.  The times specified herein in 
months are calend ar months e xcept
 that one day shall be added to any two-month period which 
includes February 28.  If the last day of time specified for an appeal, or commencing a civil action falls on a Saturday, Sunday or Federal holiday in the District of Columbia, the time is extended to 
the next day which is neither a Saturday, Sunday nor a Federal holiday. 
(3) If a party to an inter partes proceeding has taken an appeal to the U.S. Court of Appeals 
for the Fe deral Ci rcuit and an ad verse part y has filed noti ce under se 
ction 21(a)(1) of the Act  
electing to have all further proceedings conducted under section 21(b) of the Act, the time for filing 
a civil action thereafter is specified in section 21(a)(1) of the Act.  The time for filing a cross-action 
expires 14 days after service of the summons and complaint. 
(e) Extensions of time to commence judicial review.  The Director may extend the time for 
filing an ap peal or comme ncing  a civil  acti
on (1) for good cause shown if requested in writing 
before the expiration of the period for filing an appeal or commencing a civil action, or (2) upon 
written request after the expiration of the period for filing an appeal or commencing a civil action upon a showing that the failure to act was the result of excusable neglect. 
[47 FR 47382, Oct. 26, 1982, as amended at 53 FR 1 6414, May 9, 1988; 54 FR 29554, July 13, 1989; 54 
FR 34901, Aug. 22, 1989; 58 FR 54503, Oct. 22, 1993; 68 FR 14332, March 25, 2003, effective May 1, 
2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
PETITIONS AND ACTION BY THE DIRECTOR 
§ 2.146  Petitions to the Director. 
(a) Petition may be taken to the Director:  (1) From any repeated or final formal requirement of 
the examiner in the e
x parte prosecution of an application if permitted by § 2.63(b); (2) in any case 
for which the Act of 1946, or Title 35 of the United States Code, or this Part of Title 37 of the Code 
of Federal Regulations specifies that the matter is to be determined directly or reviewed by the 
Director; (3) to invoke the supervisory authority of the Director in appropriate circumstances; (4) in any case not specifically defined and provided for by this Part of Title 37 of the Code of Federal Regulations; (5) in an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a 
requirement of the Act of 1946. 
(b) Questions of substance arising during the ex parte prosecution of applications, including, 
but not limited to, questions arising under sections 2, 3, 
4, 5, 6 and 23 of the Act of 1946, are not 
considered to be appropriate subject matter for petitions to the Director. 
(c) Every petition to the Director shall include a statement of the facts relevant to the petition, 
the points to be reviewed, the action or relief req
uested, and the fee required by § 2.6.  Any brief 
in support of the petition shall be embodied in or accompany the petition.  The petition must be 
signed by the petitioner, someone with legal authority to bind the petitioner ( e.g., a corporate 
officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(5).  When facts are to be proved 
IP/N/1/USA/T/4 
Page 82 -81- January 6, 2012 on petition, the petitioner must submit proof in the form of affidavits or declarations in accordance 
with § 2.20, signed by someone with firsthand knowledge of the facts to be proved, and any exhibits. 
(d) A petition must be filed within two months of the date of issuance of the action from which 
relief is requested, unless a different 
deadline is specified elsewhere in this chapter. 
(e)(1) A petition from the grant or denial of a request for an extension of time to file a notice of 
opposit ion must be filed within fift
een days from the date of issuance of the grant or denial of the 
request.  A petition from the grant of a request must be served on the attorney or other authorized representative of the potential opposer, if any, or on the potential opposer.  A petition from the denial of a request must be served on the attorney or other authorized representative of the 
applicant, if any, or on the applicant.  Proof of service of the petition must be made as provided by 
§ 2.119.  The potential opposer or the applicant, as the case may be, may file a response within fifteen days from the date of service of the petition and must serve a copy of the response on the petitioner, with proof of service as provided by § 2.119.  No further document relating to the petition may be filed. 
(2) A petition from an interlocutory order of the Trademark Trial and Appeal Board must be 
filed within thirty days after the d
ate of issuance of the order from which relief is requested.  Any 
brief in response to the petition must be filed, with any supporting exhibits, within fifteen days from the date of service of the petition.  Petitions and responses to petitions, and any documents accompanying a petition or response under this subsection must be served on every adverse 
party pursuant to § 2.119. 
(f) An oral hearing will not be held on a petiti on except when considered necessary by the 
Direc tor. 
(g) The mere filing of a petiti 
on to the Director  will not act as a stay in any appeal or inter 
partes proceedin
g that is pending before the Trademark Trial and Appeal Board nor stay the 
period for replying to an Office action in an application except when a stay is specifically requested and is granted or when §§ 2.63(b) and 2.65 are applicable to an ex parte application. 
(h) Authority to act on petitions, or on any petition, may be delegated by the Director. 
(i) Where a petitioner seeks to reactivate an application or registration that was abandoned, 
cancelle d or expire d because d ocume 
nts were lost or mishandled, the Director may deny the 
petition if the petitioner was not diligent in checking the status of the application or registration.  To 
be considered diligent, a petitioner must: 
(1) During the pendency of an application, check the status of the application every six months 
between the filing date of the applic
ation and issuance of a registration;  
(2) After registration, check the status of the registration every si x months from the filing of an 
affidavit of use or excus
able nonuse under section 8 or 71 of the Act, or a renewal application 
under section 9 of the Act, until the petitioner receives notice that the affidavit or renewal application has been accepted; and 
(3) If the status check reveals that the Office has not received a document filed by the 
petitioner, or that t he Office has issue d an acti on or no 
tice that the petitioner has not received, the 
petitioner must promptly request corrective action.   
(j) If the Director denies a petition, the petitioner may request reconsideration, if the petitioner: (1) Files the request within two months of the date of issuance of the decision denying the 
petition; and  
(2) Pa ys a second peti tion 
fee under § 2.6. 
[48 FR 23142, May 23, 1983; 48 FR 27225, June 14, 1983;  63 FR 48081, Sept. 9, 1998,  effective Oct. 9, 
1998; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 68 FR 14332, March 25, 2003, effective May 1, 
2003; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 
2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
IP/N/1/USA/T/4 
Page 83 -82- January 6, 2012 § 2.148  Director may suspend certain rules. 
In an extraordinary situation, when justice requires and no other party is injured thereby, any 
requirement of the rules in this part not being a require ment 
of the statute may be suspended or 
waived by the Director. 
[68 FR 14332, March 25, 2003, effective May 1, 2003] 
CERTIFICATE 
§ 2.151  Certificate. 
When the Office determines that a mark is regis trable, the Office will issue  a certifica te statin g 
that th e ap plicant is e
ntitled to registration on the Principal Register or on the Supplemental 
Register.  The certificate will state the application filing date, the act under which the mark is 
registered, the date of issue, and the number of the registration.  A reproduction of the mark and pertinent data from the application will be sent with the certificate.  A notice of the requirements of 
sections 8 and 71 of the Act will accompany the certificate. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
PUBLICATION OF MARKS REGISTERED UNDER 1905 ACT 
§ 2.153  Publication requirements. 
The owner of a mark registered under the provisions of the Trademark Act of 1881 or 1905 
may at any time prior to the expiration of the period for which the regi
stration was issued or 
renewed, upon the payment of the prescribed fee, file an affidavit or declaration in accordance 
with § 2.20 setting forth those goods or services in the registration on or in connection with which said mark is in use in commerce, and stating that the owner claims the benefits of the Act of 1946.  The affidavit or declaration must be signed by a person properly authorized to sign on behalf of 
the owner under § 2.193(e)(1). 
[31 FR 5262, Apr. 1, 1966; amended 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, 
Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.154  Publication in Official Gazette. 
A notice of the claim of benefits under the Act of 1946 and a repr oduction of the mark will then 
be published in the Official Gazette  as soon as  practic
able.  The published mark will retain its 
original registration number. 
§ 2.155  Notice of publication. 
The Office will send the registrant a notice of publication of the mark and of the requirement 
for filing the affidavit or declaration re
quired by section 8 of the Act. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
IP/N/1/USA/T/4 
Page 84 -83- January 6, 2012 § 2.156  Not subject to opposition; subject to cancellation. 
The published mark is not subject to opposition, but is subject to petitions to cancel as 
specified in § 2.111 and to cancel lat
ion for failure to file the affidavit or declaration required by 
section 8 of the Act. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
REREGISTRATION OF MARKS REGISTERED UNDER PRIOR ACTS 
§ 2.158  Reregistration of marks registered under Acts of 1881, 1905, and 1920. 
Trademarks registered under the Act of 1881, the Act of 1905 or the Act of 1920 may be 
reregistered under t he Act of 19 46, eith
er on the Principal Register, if eligible, or on the 
Supplemental Register, but a new complete application for registration must be filed complying 
with the rules relating thereto, and such application will be subject to examination and other proceedings in the same manner as other applications filed under the Act of 1946.  See § 2.26 for 
use of old drawing. 
CANCELLATION FOR FAILURE TO FILE  AFFIDAVIT OR DECLARATION  
§ 2.1 60 
 Affidavit or declaration of continued use or excusable nonuse required to avoid 
cancellation of registration. 
(a) Du
ring the following time periods, the owner of the registration must file an affidavit or 
declaration of continued use o r
 excusable nonuse, or the registration will be cancelled: 
(1)(i) For registrations issued under the Trademark Act of 1946, on or after the fifth 
anniversary and no later than the
 sixth anniversary after the date of registration; or  
(ii) For registrations issued under prior Acts, on or after the fifth anniversary and no later than 
the sixth anniversary afte
r the date of publication under section 12(c) of the Act; and  
(2) For all registrations, within the year before  the end  of every te n-ye ar period after the date 
of registration. 
(3) The affidavit or declaration may be filed within a grace period of six months after the end of 
the deadline set forth in paragrap
hs (a)(1) and (a)(2) of this section, with payment of the grace 
period surcharge per class required by section 8(a)(3) of the Act and § 2.6.  
(b) For the requirements for the affidavit or declaration, see § 2.161. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; amended 75 FR 35973, June 24, 2010, effective June 
24, 2010] 
§ 2.161  Requirements for a complete affidavit or declaration of continued use or excusable 
nonuse. 
A complete affidavit or declaration under section 8 of the Act must: (a) Be filed by the owner within the period set forth in § 2.160(a);  (b) Include a statement that is signed and verified (sworn to) or supported by a declaration 
under § 2.20 by a pers
on properly authorized to sign on behalf of the owner under § 2.193(e)(1), 
attesting to the use or excusable nonuse of the mark within the period set forth in section 8 of the Act.  The verified statement must be executed on or after the beginning of the filing period specified in § 2.160(a).   
(c) Include the registration number; (d)(1) Include the fee required by § 2.6 for each class of goods or services that the affidavit or 
declaration  covers; 
IP/N/1/USA/T/4 
Page 85 -84- January 6, 2012 (2) If the affidavit or declaration is filed during the grace period under section 8(a)(3) of the Act, 
include the grace period surcharge per class required by § 2.6;   
(3) If at least one fee is submitted for a multi-class registration, but the class(es) to which the 
fee(s) should be applied are not specified, t
he Office will issue a notice requiring either the 
submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should 
be applied.  Additional fee(s) may be submitted if the requirements of § 2.164 are met.  If the required fee(s) are not submitted and the class(es) to which the original fee(s) should be applied are not specified, the Office will presume that the fee(s) cover the clas ses in ascending order, 
beginning with the lowest numbered class;   
(e)(1) Specify the goods or services for which the mark is in use in commerce, and/or the 
goods or services  for which excusabl
e nonuse is claimed under § 2.161(f)(2);   
(2) If the affidavit or declaration covers less than all the goods or services, or less than all the 
classes in the registratio n, speci fy the goo ds or
 services being deleted from the registration; 
(f)(1) State that the registered mark is in use in commerce on or in connection with the goods 
or services in the registration; or 
(2) If the registered mark is not in use in co
mmerce on or in connection with all the goods or 
services i n the re gistrati on, se t forth the d ate wh
en use of the mark in commerce stopped and the 
approximate date when use is expected to resume; and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark;  
(g) Include a specimen showing current use of the mark for each class of goods or services, 
unless e xcusable n onus e is clai med unde r § 2.16
1(f)(2).  The specimen must:   
(1)  Show the mark as actually used on or in connection with the goods or in the sale or 
advertising of the services.  A photocopy or other reproducti
on of the specimen showing the mark 
as actually used is acceptable.  However, a photocopy that merely reproduces the registration certificate is not a proper specimen;   
(2) Be flat and no larger than 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long.  If a 
speci men exceeds t hese  size requi rements (a “bu 
lky specimen”), the Office will create a facsimile 
of the specimen that meets the requirements of the rule (i.e., is flat and no larger than 8.5 inches (21.6 cm.) wide by 11.69 inches (29.7 cm.) long) and put it in the record.  In the absence of non-bulky alternatives, the Office may accept an audio or video cassette tape recording, CD-ROM, or 
a specimen in another appropriate medium.   
(3) Be a digitized image in .jpg or .pdf format, if transmitted through TEAS. 
[41 FR 761, Jan. 5, 1976, as amended at 47 FR 41282, Sept. 17, 1982; 48 FR 3977, Jan. 28, 1983; 54 FR 
37597, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, effe ctive Oct. 30, 1999; 67 FR 79520, Dec. 30, 2002; 
68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008; 
73 FR 67759, Nov. 17, 2008, effectiv e Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 
75 FR 35973, June 24, 2010, effective June 24, 2010] 
§ 2.162  Notice to registrant. 
When a certificate of registration is originally issued, the Office includes a notice of the 
requirement for filing the affidavit or declaration o f
 use or excusable nonuse under section 8 of the 
Act.  However the affidavit or declaration must be filed within the time period required by section 8 
of the Act even if this notice is not received. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
§ 2.163  Acknowledgment of receipt of affidavit or declaration. 
The Office will issue a notice as to whether an affidavit or declaration is acceptable, or the 
reasons for refusal.   
IP/N/1/USA/T/4 
Page 86 -85- January 6, 2012 (a) If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, 
deficiencies may be corrected after notification from the Office if the requirements of § 2.164 are 
met. 
(b) A response to the refusal must be filed within six months of the date of issuance of the 
Office action, or before the end of the filing p
eriod set forth in section 8(a) of the Act, whichever is 
later.  The response must be signed by the owner, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice 
under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2). 
(c) If no response is filed within this time peri od, the registrati on will be  cancelled , unl
 ess time 
remains in the grace period under section 8(a)(3) of the Act.  If time remains in the grace period, 
the owner may file a complete new affidavit. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999 ; amended 73 FR 67759, Nov. 17, 2008, effective Jan. 
16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009; 75 FR 35973, June 24, 2010, effective June 
24, 2010; 76 FR 69132, Nov. 8, 2011, effective Nov. 8, 2011] 
§ 2.164  Correcting deficiencies in affidavit or declaration. 
(a) If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, 
deficiencies may be corrected after n
otification from the Office, as follows: 
(1) Correcting deficiencies in affidavits or declarations timely fi led within the periods set forth in 
sections 8(a)(1) and 8(a)(2) of the Act.  If the affidavit or declaration is timely filed within the 
relevant filing period set forth in section 8(a)(1) or section 8(a)(2) of the Act, deficiencies may be 
corrected before the end of this filing period without paying a deficiency surcharge.  Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.   
(2) Correcting deficiencies in affidavits or declarations filed during th
 e grace period .  If the 
affidavit or declaration is filed during the six-month grace period provided by section 8(a)(3) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.   
(b) If the affidavit or declaration is not filed within the time periods set forth in section 8 of the 
Act, the registration will be cancelled.   
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; amended 75 FR 35973, June 24, 2010, effective June 
24, 2010; 76 FR 69132, Nov. 8, 2011, effective Nov. 8, 2011] 
§ 2.165  Petition to Director to review refusal. 
(a) A response to the examiner’s initial refusal to accept an affidavit or declaration is required 
before filing a petition to 
the Director, unless the examiner directs otherwise.  See § 2.163(b) for 
the deadline for responding to an examiner’s Office action. 
(b) If the examiner maintains the refusal of the affidavit or declaration, the owner may file a 
petition to the Director to review the action.  The petition 
must be filed within six months of the 
date of issuance of the action maintaining the refusal, or the Office will cancel the registration and issue a notice of the cancellation. 
(c) A decision by the Director is necessary before filing an appeal or commencing a civil action 
in an y court. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; amended 68 FR 14332, March 25, 2003, effective 
May 1, 2003; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
IP/N/1/USA/T/4 
Page 87 -86- January 6, 2012 § 2.166  Affidavit of continued use or excusable nonuse combined with renewal 
application. 
An affidavit or declaration under section 8 of the Act and a renewal application under section 9 
of the Act may be combined into a single docu ment
, provided that the document meets the 
requirements of both sections 8 and 9 of the Act.   
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
AFFIDAVIT OR DECLARATION UNDER SECTION 15 
§ 2.167  Affidavit or declaration under section 15. 
The affidavit or declaration in accordance with § 2.20 provided by section 15 of the Act for 
acquiri ng incontestability for a mark registered on the Pri ncipal Regis ter or a mark registered 
unde r the 
Act of 1881 or 1905 and published under section 12(c) of the Act (§ 2.153) must: 
(a) Be verified (sworn to) or supported by a declaration under § 2.20, signed by the owner of 
the registration or a person properly 
authorized to sign on behalf of the owner under § 2.193(e)(1); 
(b) Identify the certificate of registration by the certificate number and date of registration; (c) Recite the goods or services stated in the registration on or in connection with which the 
mark has b een in conti nuous use i n comme rce for a peri od of five years aft er the date of 
 
registration or date of publication under section 12(c) of the Act, and is still in use in commerce; 
(d) Specify that there has been no final decision adverse to the owner’s claim of ownership of 
such mark for such goods or services, or to the owner’s right to register the same o
r to keep the 
same on the register; 
(e) Specify that there is no proceeding involving said rights pending in the Patent and 
Trademark Office or in a
 court and not finally disposed of; 
(f) Be filed within one year after the expiration of any five-year period of continuous use 
following registration or publication under sec
tion 12(c).  The Office will issue a notice 
acknowledging receipt of the affidavit or declaration. 
(g) Include the required fee for each class to which the affidavit or declaration pertains in the 
regist ration.  If no fee, or a fee insuf
ficient to cover at least one class, is filed at an appropriate 
time, the affidavit or declaration will not be refused if  the required fee(s) (See § 2.6) are filed in the 
Patent and Trademark Office within the time limit set forth in the notification of this defect by the 
Office.  If insufficient fees are included to cover all classes in the registration, the particular class 
or classes to which the affidavit or declaration pertains should be specified.  
[30 FR 13193, Oct. 16, 1965, as amended at 47 FR  41282, Sept. 17, 1982; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, 
effective Dec. 28, 2009] 
§ 2.168  Affidavit or declaration under section 15 combined with affidavit or declaration under sections 8 or 71, or with renewal application. 
(a) The affidavit or declaration filed under section 15 of the Act may also be used as the 
affidavit or declaration required by section 8, if the affida vi 
t or declaration meets the requirements 
of both sections 8 and 15.  The affidavit or declaration filed under section 15 of the Act may also be used as the affidavit or declaration required by section 71, if the affidavit or declaration meets the requirements of both sections 71 and 15. 
(b) The affidavit or declaration filed under section 15 of the Act may be combined with an 
applica tion for renewal of a registra
tion under section 9 of the Act, if the requirements of both 
sections 9 and 15 are met. 
IP/N/1/USA/T/4 
Page 88 -87- January 6, 2012 [64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; amended 75 FR 35973, June 24, 2010, effec tive June  
24, 2010 ] 
CORRECTION, DISCLAIMER, SURRENDER, ETC. 
§ 2.171  New certificate on change of ownership. 
(a) Full change of ownership .  If the ownershi p of a re gistered mark changes, the new owner 
may request that a new certificate of registration be issued in the name of the new owner.  The 
assignment or other document changing title must be recorded in the Office.  The request for the new certificate must include the fee required by § 2.6(a)(8) and be signed by the owner of the registration, someone with legal authority to bind the owner ( e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter.  In a 
registered extension of protection, the assignment must be recorded with the International Bureau 
of the World Intellectual Property Organization before it can be recorded in the Office ( see § 7.22).   
(b) Partial change of ownership .   
(1) In a regis tration result
ing from an application based on section 1 or section 44 of the Act, if 
ownership of a registration has cha
nged with respect to some but not all of the goods and/or 
services, the owner(s) may file a request that the registration be divided into two or more separate registrations.  The assignment or other document changing title must be recorded in the Office.  The request to divide must include the fee required by § 2.6(a)(8) for each new registration created by the division, and be signed by the owner of the registration, someone with legal authority to bind the owner ( e.g., a corporate officer or general partner of a partnership), or a 
practitioner qualified to practice under § 11.14 of this chapter, in accordance with § 2.193(e)(2) of this chapter. 
(2)(i) When the International Bureau of the World Intellectual Property Organization notifies 
the Office that an international registrati
on has been divided as the result of a change of 
ownership with respect to some but not all of the goods or services, the Office will construe the International Bureau’s notice as a request to divide.  The Office will record the partial change of 
ownership in the Assignment Services Branch, and divide out the assigned goods/services from 
the registered extension of protection (parent registration), issue an updated certificate for the parent registration, and publish notice of the parent registration in the Official Gazette.    
(ii) The Office will create a new registration number for the child registration, and enter the 
informatio n about the n ew regist ration in its au tomated 
records.  The Office will notify the new 
owner that the new owner must pay the fee required by § 2.6 to obtain a new registration certificate for the child registration.  It is not necessary for the new owner to file a separate request to divide.   
(iii) The Office will not divide a registered ex tension of protection unless the International  
Bureau notifies the  Office  that
 the international registration has been divided.   
[31 FR 5262, Apr. 1, 1966; 68 FR 55748, Sept. 26, 2 003, effective Nov. 2, 2003; 73 FR 67759, Nov. 17, 
2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.172  Surrender for cancellation. 
Upon application by the owner, the Director may permit any registration to be surrendered for 
cancellation.  The application  fo
r surrender must be signed by the owner of the registration, 
someone with legal authority to bind the owner ( e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under § 11.14 of this chapter.  When a registration has more than one class, one or more entire class(es) but fewer than the total number of classes may be surrendered.  Deletion of fewer than all the goods or services in a single class constitutes amendment of the registration as to that class ( see § 2.173), not surrender.  
IP/N/1/USA/T/4 
Page 89 -88- January 6, 2012 [41 FR 761, Jan. 5, 1976; 68 FR 14332, March 25, 2003,  effective May 1, 200 3; 69  FR 513 62, Aug. 19,  
2004, e ffective Sep t
. 20, 2004; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.173  Amendment of registration 
(a) Form of amendment .  The owner of a registration may apply to ame nd a reg istration or to 
disclaim part of the mark in the registration.  The owner must submit a written request specifying 
the amendment or disclaimer.  If the registration is involved in an inter partes proceeding before the Trademark Trial and Appeal Board, the request must be filed by appropriate motion to the Board.   
(b) Requirements for request .  A request f or amend
 ment or disclaimer must: 
(1) Include the fee required by § 2.6; 
(2) Be signed by the owner of the registration, someone with legal authority to bind the owner 
(e.g., a corp orate office r or gene ral partner of a  partne rship), or a pract
itioner who meets the 
requirements of § 11.14, and verified or supported by a declaration under § 2.20; and 
(3) If the amendment involves a change in the mark:  a new specimen showing the mark as 
used on or in connection with the goods 
or services; an affidavit or declaration under § 2.20 
stating that the specimen was in use in commer ce at least as early as the filing date of the 
amendment; and a new drawing of the amended mark.   
(c) Regist ration must still contain registrable matter .  Th e registrati on as amende d must stil l 
contain
 registrable matter, and the mark as amended must be registrable as a whole.   
(d) Amendment may not materially alter the mark .  An amendment or disclaimer must not 
materially alter the character of the mark.   
(e) Amendment of identification of goods .  No a mendment in the ide ntification o f goods or 
services in a registration will be permitted except to restrict the identification or to change it in 
ways that would not require republication of the mark.   
(f) Conforming amendments may be required .  If the registration includes a disclaimer, 
description of the mark,
 or other miscellaneous statement, any request to amend the registration 
must include a request to make any necessary conforming amendments to the disclaimer, description, or other statement.   
(g) Elimination of disclaimer .  No a mendment seeking th e elimi
 nation of a disclaimer will be 
permitted, unless deletion of the disclaimed portion of the mark is also sought. 
[30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 48 FR 23141, May 23, 1983; 64 FR 
48900, Sept. 8, 1999, effective Oct. 30, 1999; 69 FR 5 1362, Aug. 19, 2004, effective Sept. 20, 2004; 72 FR 
42242, Aug. 1, 2007, effective Aug. 31, 2007; 73 FR  67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.174  Correction of Office mistake. 
Whenever Office records clearly disclose a material mistake in a registration, incurred through 
the fault of the Office, the Office will issue a certificate o f
 correction stating the fact and nature of 
the mistake, signed by the Director or by an employee designated by the Director, without charge.  
Thereafter, the corrected certificate shall have the same effect as if it had been originally issued in the corrected form.  In the discretion of the Director, the Office may issue a new certificate of 
registration without charge. 
[68 FR 14332, March 25, 2003, effective May 1, 2003;  69 FR 51362, Aug. 19, 2004, effective Sept. 20, 
2004; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
IP/N/1/USA/T/4 
Page 90 -89- January 6, 2012 § 2.175  Correction of mistake by owner. 
(a) Whenever a mistake has been made in a registration and a showing has been made that 
the mistake occurred in good fait h throug
h the fault of the owner, the Director may issue a 
certificate of correction.  In the discretion of the Director, the Office may issue a new certificate 
upon payment of the required fee, provided that the correction does not involve such changes in the registration as to require republication of the mark. 
(b) An application for such action must: (1) Include the following: 
(i) Specification of the mistake for which correction is sought; (ii) Description of the manner in which it arose; and (iii) A showing that it occurred in good faith; 
(2) Be signed by the owner of the registration, someone with legal authority to bind the owner 
(e.g., a corp orate officer or general partner of a partne
rship), or a practitioner who meets the 
requirements of § 11.14 of this chapter, and verified or include a declaration in accordance with § 2.20; and  
(3) Be accompanied by the required fee.   
 [30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 68 FR 14332, March 25, 2003, 
effective May 1, 2003; 69 FR 51362, Aug. 19, 2004, effective Sept. 20, 2004; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.176  Consideration of above matters. 
The matters in §§ 2.171 to 2.175 will be cons idered in the first instance by the Post 
Registra tion
 examiners, except for requests to amend registrations involved in inter partes 
proceedings before the Trademark Trial and Appeal Board, as specified in § 2.173(a), which shall 
be considered by the Board.  If an action of the examiner is adverse, the owner of the registration may petition the Director to review the action under § 2.146.  If the owner does not respond to an adverse action of the examiner within six months of the date of issuance, the matter will be considered abandoned. 
[68 FR 14332, March 25, 2003, effective May 1, 2003;  69 FR 51362, Aug. 19, 2004, effective Sept. 20, 
2004; 72 FR 42242, Aug. 1, 2007, effective Aug. 31, 2007] 
TERM AND RENEWAL 
§ 2.181  Term of original registrations and renewals. 
(a)(1) Subject to the provisions of section 8 of the Act requiring an affidavit or declaration of 
continued use or excusable nonuse,  registrations issued or renew ed prior to November 16, 1989, 
whethe
r on the Principal Register or on the Supplemental Register, remain in force for twenty 
years from their date of issue or the date of renewal, and may be further renewed for periods of ten years, unless previously cancelled or surrendered. 
(2) Subject to the provisions of section 8 of the Act requiring an affidavit or declaration of 
continu ed use or exc usable non use, registratio 
ns issued or renewed on or after November 16, 
1989, whether on the Principal Register or on the Supplemental Register, remain in force for ten years from their date of issue or the date of renewal, and may be further renewed for periods of ten years, unless previously cancelled or surrendered. 
(b) Registrations issued under the Acts of 1905 and 1881 remain in force for their unexpired 
terms and may be renewed in the same
 manner as registrations under the Act of 1946. 
IP/N/1/USA/T/4 
Page 91 -90- January 6, 2012 (c) Registrations issued under the Act of 1920 cannot be renewed unless renewal is required 
to support foreign registrations and in such case may be renewed on the Supplemental Register 
in the same manner as registrations under the Act of 1946. 
[30 FR 13193, Oct. 16, 1965, as amended at 54 FR  37597, Sept. 11, 1989; 64 FR 48900, Sept. 8, 1999, 
effective Oct. 30, 1999] 
§ 2.182  Time for filing renewal application. 
An application for renewal must be filed within one year before the expiration date of the 
registration, or within the six-month grace pe riod 
after the expiration date of the registration.  If no 
renewal application is file d within this period, the registration will expire. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
§ 2.183  Requirements for a complete renewal application. 
A complete renewal application must include: 
(a) A request for renewal of the registration, signed by the registrant or the registrant’s 
represent ative; 
(b) The fee required by  §
 2.6 for each class; 
(c) The additional fee required by § 2.6 for each class if the renewal application is filed during 
the six-month grace period set forth in section 9(a) of
 the Act; 
(d) If the renewal application covers less than all the goods or services in the registration, a list 
of the particular goods or services to be rene
wed. 
(e) If at least one fee is submitted for a multi-class registration, but the class(es) to which the 
fee(s ) should be  applied are n ot specifie d, t
he Office will issue a notice requiring either the 
submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should 
be applied.  Additional fee(s) may be submitted if the requirements of § 2.185 are met.  If the 
required fee(s) are not submitted and the class(es) to which the original fee(s) should be applied 
are not specified, the Office will presume that the fee(s) cover the clas ses in ascending order, 
beginning with the lowest numbered class.  
(f) Renewals of registrations issued under a prior classification system will be processed on 
the basis of that system,
 unless the registration has been amended to adopt international 
classification pursuant to § 2.85(e)(3). 
[30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 41 FR 761, Jan. 5, 1976; 64 FR 
48900, Sept. 8, 1999, effective Oct. 30, 1999; 67 FR  79520, Dec. 30, 2002; 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
§ 2.184  Refusal of renewal. 
(a) If the renewal application is not acceptable, the Office will issue a notice stating the 
reason(s) for refusal.   
(b)(1) The registrant must file  a 
response to the refusal of renewal within six months of the 
date of issuance of the Office action, or be
fore the expiration date of the registration, whichever is 
later.  If no response is filed within this time period, the registration will expire, unless time remains 
in the grace period under section 9(a) of the Act.  If time remains in the grace period, the registrant may file a complete new renewal application. 
(2) The response must be signed by the registrant, someone with legal authority to bind the 
regist rant (e.g., a corporat 
e officer or general partner of a partnership), or a practitioner who meets 
the requirements of § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2).   
IP/N/1/USA/T/4 
Page 92 -91- January 6, 2012 (c) If the renewal application is not filed within the time periods set forth in section 9(a) of the 
Act, the registration will expire. 
[48 FR 23143, May 23, 1983; 64 FR 48900, Sept. 8, 1 999, effective Oct. 30, 1999; 73 FR 67759, Nov. 17, 
2008, effective Jan. 16, 2009; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.185  Correcting deficiencies in renewal application. 
(a) If the renewal application is filed within the time periods set forth in section 9(a) of the Act, 
deficiencies may be corrected, as foll ows: 
(1) Co
rrecting deficiencies in renewal applications filed within one year before the expiration 
date of the registration.  If the ren
ewal application is filed within one year before the expiration 
date of the registration, deficiencies may be corrected before the expiration date of the registration 
without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration date of the registration with payment of the deficiency surcharge required by section 9(a) of the Act and § 2.6.   
(2) Correcting deficiencies in renewal applications filed during the grace period .  If the renewal 
application is
 filed during the six-month grace period, deficiencies may be corrected before the 
expiration of the grace period without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 9(a) of the Act and § 2.6.   
(b) If the renewal application is not filed within the time periods set forth in section 9(a) of the 
Act, the registration will expire
.  This deficiency cannot be cured. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
§ 2.186  Petition to Director to review refusal of renewal. 
(a) A response to the examiner’s initial refusal of the renewal application is required before 
filing a petition to th e Di
rector, unless the examiner directs otherwise.  See § 2.184(b) for the 
deadline for responding to an examiner’s Office action. 
(b) If the examiner maintains the refusal of the renewal application, a petition to the Director to 
review the refusal may be filed .  The petit
ion must be filed within six months of the date of 
issuance of the Office action maintaining the refusal, or the renewal application will be abandoned and the registration will expire.    
(c) A decision by the Director is necessary before filing an appeal or commencing a civil action 
in an y court. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999;  68 FR 14332, March 25, 2003, effective May 1, 2003; 
73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
IP/N/1/USA/T/4 
Page 93 -92- January 6, 2012 GENERAL INFORMATION AND CORRES PONDENCE IN TRADEMARK CASES 
2.188  [Reserved] 
2.189  [Reserved] 
§ 2.190  Addresses for trademark correspondence with the United States Patent and 
Trademark Office.   
(a) Tradem a
rk correspondence.  In general.  All trademark-related documents filed o n  paper, 
except documents sent to the Assignment Services Division for recordation; requests for copies of trademark documents; and certain documents filed under the Madrid Protocol as specified in paragraph (e) of this section, should be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.  All trademark-related documents may be delivered by hand, 
during the hours the Office is open to receive correspondence, to the Trademark Assistance 
Center, James Madison Building--East Wing, Conc ourse Level, 600 Dulany Street, Alexandria, 
Virginia 22314.  
(b) Electronic trademark documents .  An appli cant may trans mit a trade mark do cumen t
  
through TEAS, at http://www.uspto.gov . 
(c) Trademark Assignments .  Requests to record docum ents in the Assignm ent Services 
Division
 may be filed through the Office's web site, at http://www.uspto.gov/ .  Paper documents 
and cover sheets to be recorded in the Assignment Services Division should be addressed to:  Mail Stop Assignment Recordation Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.  See § 3.27 of this chapter. 
(d) Requests for Copies of Trademark Documents .  Copies of trade mark docu ments
  can be 
ordered through the Office’s web site at http://www.uspto.gov/ .  Paper requests for certified or 
uncertified copies of trademark documents should be addressed to:  Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. 
(e) Certain Documents Relating to International Applications
  and Registrations .  International 
applications under § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacements under § 7.28, requests for transformation under § 7.31, and petitions to the Director to review an action of the Office's Madrid Processing Unit, when filed by mail, must be mailed to:  Madrid Processing Unit, 600 Dulany Street, MDE-7B87, Alexandria, 
VA 22314-5793. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004; 69 FR 63320, Nov. 1, 2004; 72 FR 18907, April 16, 2007] 
§ 2.191  Business to be transacted in writing.   
All business with the Office should be transacted in writing.  The personal appearance of 
applicants or their representatives at the Of fice i
s unnecessary.  The action of the Office will be 
based exclusively on the written record.  No attention will be paid to any alleged oral promise, 
stipulation, or understanding in relation to which there is disagreement or doubt.  The Office encourages parties to file documents through TEAS wherever possible. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
IP/N/1/USA/T/4 
Page 94 -93- January 6, 2012 § 2.192  Business to be conducted with decorum and courtesy.   
Trademark applicants, registrants, and parties to proceedings before the Trademark Trial and 
Appeal Board and their attorneys or agents are required to conduct t
heir business with decorum 
and courtesy.  Documents presented in violation of this requirement will be submitted to the 
Director and will be returned by the Director’s direct order.  Complaints against trademark examining attorneys and other employees must be made in correspondence separate from other documents. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
§ 2.193  Trademark correspondence and signature requirements.   
(a) Signature required .  Each piece of correspondence that  requires a signature must bear:   
(1) A handwritten signature personally signed in permanent ink by the person named as the 
signatory, or a true copy thereof;
 or 
(2) An electronic signature that meets the requirements of paragraph (c) of this section, 
personally entered b y
 the person named as the signatory.  The Office will accept an electronic 
signature that meets the requirements of paragraph (c) of this section on correspondence filed on paper, by facsimile transmission (§ 2.195(c)), or through TEAS or ESTTA.   
(b) Copy of original signature.  If a copy, such a
 s a photocopy or facsimile copy of an original 
signature is filed, the filer should retain the original as evidence of authenticity.  If a question of 
authenticity arises, the Office may require submission of the original.   
(c) Requirements for electronic signature .  A person sign ing a docu ment  electronically must:    
(1) Personally enter any combination of letters, numbers, spaces and/or punctuation marks 
that he or she has adopted as a signature, placed bet
ween two forward slash (“/”) symbols in the 
signature block on the electronic submission; or 
(2) Sign the verified statement using some other form of electronic signature specified by the 
Direc tor.  
(d) Signa tory m ust be identified.  Th
e name of the person wh o signs a document in connection 
with a trademark application, registration, or proceeding before the Trademark Trial and Appeal 
Board must be set forth in printed or typed form immediately below or adjacent to the signature, or identified elsewhere in the filing ( e.g., in a cover letter or other document that accompanies the 
filing).   
(e) Proper person to sign .  Docu ments fil ed in  connec tion with
  a trademark application or 
registration must be signed by a proper person.  Unless otherwise specified by law, the following requirements apply:   
(1) Verification of facts .  A verification in support of an application for reg
 istration, amendment 
to an application for registration, allegation of use under § 2.76 or § 2.88, request for extension of time to file a statement of use under § 2.89, or an affidavit under section 8, 12(c), 15, or 71 of the Trademark Act must be sworn to or supported by a declaration under § 2.20, signed by the owner or a person properly authorized to sign on behalf of the owner.  A person who is properly authorized to verify facts on behalf of an owner is:   
(i) A person with legal authority to bind the owner ( e.g., a corporate officer or general partn
 er 
of a partnership);  
(ii) A person with firsthand knowledge of the facts and actual or implied authority to act on 
behalf of the owner; or  
(iii) An attorney as defined in § 11.1 of this chapter who has an actual wri
tten or verbal power 
of attorney or
 an implied power of attorney from the owner.   
(2) Resp onses, amendments to applications, requests for express abandonment, requests for 
reconsi derat ion of fin al actions, a nd req uest
s to divide .  Responses to Office actions, 
amendments to applications, requests for express abandonment, requests for reconsideration of final actions, and requests to divide must be signed by the owner of the application or registration, 
IP/N/1/USA/T/4 
Page 95 -94- January 6, 2012 someone with legal authority to bind the owner ( e.g. a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance 
with the following guidelines: 
(i) If the owner is represented by a practitioner qualified to practice before the Office under § 
11.14 of this chapter, the practitioner must sign,
 except where the owner is required to sign the 
correspondence; or 
(ii) If the owner is not represented by a practitioner qualified to practice under § 11.14 of this 
chapter, the individual owne r o
r someone with legal authority to bind the owner ( e.g., a corporate 
officer or general partner of a partnership) must sign.  In the case of joint owners who are not represented by a qualified practitioner, all must sign.   
(3) Powers of attorney and revocations of powers of attorney .  Powers of atto rn
 ey and 
revocations of powers of attorney must be signed by the individual applicant, registrant or party to a proceeding pending before the Office, or by someone with legal authority to bind the applicant, registrant, or party ( e.g., a corporate officer or general partner of a partnership).  In the case of 
joint applicants, registrants, or parties, all must sign.  Once the applicant, registrant or party has 
designated a qualified practitioner(s), the named practitioner may sign an associate power of 
attorney appointing another qualified practitioner(s) as an additional person(s) authorized to prosecute the application or registration.  If the applicant, registrant, or party revokes the original power of attorney, the revocation discharges any associate power signed by the practitioner whose power has been revoked.  If the practitioner who signed an associate power withdraws, the 
withdrawal discharges any associate power signed by the withdrawing practitioner upon 
acceptance of the request for withdrawal by the Office. 
(4) Petitions to revive under § 2.66 .  A petition to revive under § 2.66
  must be signed by 
someone with firsthand knowledge of the facts regarding unintentional delay. 
(5) Petitions to Director under § 2.146 .  A petition to the Director under § 2.1 46 must be signed 
by the petitioner, someone with legal authority to bind the petitioner ( e.g., a corporate officer or 
general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the following guidelines: 
(i) If the petitioner is represented by a practitioner qualified to practice before the Office under 
§ 11. 14 of this chapt er, the practition 
er must sign; or 
(ii) If the petitioner is not represented by a practitioner authorized to practice before the Office 
under § 11.14 of this chapter, the in
dividual petitioner or someone with legal authority to bind the 
petitioner ( e.g., a corporate officer or general partner of a partnership) must sign.  In the case of 
joint petitioners, all must sign.  
(6) Requests for correction, amendment or surrender of registrations .  A request for correction, 
amendment or surren d
er of a registration must be signed by the owner of the registration, 
someone with legal authority to bind the owner ( e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice before the Office under § 11.14 of this chapter.  In the case of joint owners who are not represented by a qualified practitioner, all must sign.   
(7) Rene wal applications .  A rene wal applicat ion must b e signed b y the regist rant
  or the 
registrant’s representative.   
(8) Designations and revocations of domestic representative .  A designation or revocation of a 
domestic represe
ntative must be signed by the applicant or registrant, someone with legal 
authority to bind the applicant or registrant ( e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under § 11.14 of this chapter.  In the case of joint applicants or registrants, all must sign.   
(9) Requests to change correspondence address in an application or registration .  A notice  of 
change o f corres pond ence addres 
s in an application or registration must be signed by the 
applicant or registrant, someone with legal authority to bind the applicant or registrant ( e.g., a 
corporate officer or general partner of a partnership ), or a practitioner qualified to practice under 
§ 11.14 of this chapter, in accordance with the following guidelines: 
(i) If the applicant or registrant is represented by  a practi tione r qualifi ed to  practice b efore th e 
Office unde
r § 11.14 of this chapter, the practitioner must sign; or 
IP/N/1/USA/T/4 
Page 96 -95- January 6, 2012 (ii) If the applicant or registrant is not represented by a practitioner qualified to practice before 
the Office under § 11.14, the individual applicant or registrant or someone with legal authority to 
bind the applicant or registrant ( e.g., a corporate officer or general partner of a partnership) must 
sign.  In the case of joint applicants or joint registrants, all must sign.  
(10) Cover l etters .  A person transm itting paper documents to the Office may sign a cover 
letter or transmittal letter.  The Office neither requires cover letters nor questions the authority of a person who signs a communication that merely transmits paper documents.   
(f) Signature as certification.  The presentation to the Of
 fice (whether by signing, filing, 
submitting, or later advocating) of any document by any person, whether a practitioner or non-practitioner, constitutes a certification under § 11.18(b) of this chapter.  Violations of § 11.18(b) of 
this chapter may jeopardize the validity of the application or registration, and may result in the 
imposition of sanctions under § 11.18(c) of this chapter.  Any practitioner violating § 11.18(b) of this chapter may also be subject to disciplinary action.  See §§ 10.23(c)(15) and 11.18(d) of this 
chapter. 
(g) Separate copies for separate files .  (1 ) Since each f ile mus
 t be complete in itself, a 
separate copy of every document to be filed in connection with a trademark application, registration, or inter partes  proceeding must be furnished for each file to which the document 
pertains, even though the contents of the documents filed in multiple files may be identical.   
(2) Parties should not file duplicate copies of correspondence in a single application, 
registration, or proceeding  file 
, unless the Office requires the filing of duplicate copies.  The Office 
may dispose of duplicate copies of correspondence. 
(h) Separate documents for separate branches of the Office .  Since different bran ches o r 
sections of the Office may consider different matters, each distinct subject, inquiry or order must be contained in a separate document to avoid confusion and delay in answering correspondence. 
(i) Certified documents required by statute .  When a statute requires that a docu
 ment be 
certified, a copy or facsimile transmission of the certification is not acceptable. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; 73 FR 47650, Aug 14. 2008, effective Sept. 
15, 2008; 74 FR 54898, Oct. 26, 2009, effective Dec. 28, 2009] 
§ 2.194  Identification of trademark application or registration.   
(a) No correspondence relating to a trademark application should be filed prior to receipt of the 
application serial number.   
(b) (1) A le
tter about a trademark application should identify the serial number, the name of 
the applicant, and the mark.    
(2) 
A letter about a registered trademark should identify the registration number, the name of 
the registrant, and the mark. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
§ 2.195  Receipt of trademark correspondence.   
(a) Date of receipt and Express Mail date of deposit .  Trade mark correspo ndence received in 
the Office is given a filing date as of the date of receipt except as follows:  
(1) The Office is not open for the filing of correspondence on any day that is a Saturday, 
Sund ay, or Fede ral holi day
 within the District of Columbia.  Except for correspondence transmitted 
electronically under paragraph (a)(2) of this se ction or transmitted by facsimile under paragraph 
(a)(3) of this section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia. 
(2) Trademark-related correspondence transmitted electronically will be given a filing date as 
of the date on which the Office recei
ves the transmission. 
IP/N/1/USA/T/4 
Page 97 -96- January 6, 2012 (3) Correspondence transmitted by facsimile will be given a filing date as of the date on which 
the complete transmission is received in the Office unless that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia, in which case the filing date will be the next succeeding day that is not a Saturday, Sunday, or Federal holiday within the District of Columbia.  
(4) Correspondence filed in accordance with § 2.198 will be given a filing date as of the date of 
deposit  as “Express Mai l” with the United St ates Posta l Servi ce. 
 
(b) Correspondence delivered by hand .  Correspondence may be deli vered by hand during 
hours the Office is open to receive correspondence. 
(c) Facsimile transmission .  Except in the cases enumerated in paragraph (d) of this section,  
correspondence, including authorizations to charge a deposit account, may be transmitted by 
facsimile.  The receipt date accorded to the correspondence will be the date on which the 
complete transmission is received in the Office, unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.  See § 2.196.  To facilitate proper processing, each 
transmission session should be limited to correspondence to be filed in a single application, registration or proceeding before the Office.  The application serial number, registration number, 
or proceeding number should be entered as a part of the sender’s identification on a facsimile 
cover sheet.   
(d) Facsimile transmissions are not permitted and if subm itted, will not be a ccorded a date of 
receipt, in the following s
ituations: 
(1) Applications for registration of marks; 
(2) Drawings submitted under § 2.51, § 2.52, § 2.72, or § 2.173; 
(3) Correspondence to be filed with the Trademark Trial and Appeal Board, except notices of 
ex pa rte appeal;  
(4) Requests for canc ellation or a
mendment of a registration under section 7(e) of the 
Trademark Act; and certificates of registration surrendered f
or cancellation or amendment under 
section 7(e) of the Trademark Act; and 
(5) Madrid-related correspondence submitted under § 7.11, § 7.21, § 7.14, § 7.23, § 7.24, or 
§ 7.3 1. 
(e) Interruptions in U.S. Postal Service .  (1) If the Directo r desi gnates a pos tal service 
interruption or emergency within the meaning of 35 U.S.C. 21(a), any person attempting to file correspondence by “Express Mail Post Office to Addressee” service who was unable to deposit 
the correspondence with the United States Postal Service due to the interruption or emergency 
may petition the Director to consider such correspondence as filed on a particular date in the Office.   
(2) The petition must:   (i) Be filed promptly after the ending of the designated interruption or emergency;  (ii) Include the original correspondence or a copy of the original correspondence; and 
(iii) Include a statement that the correspondence would have been deposited with the United 
States Postal Service on the requested filing date but for the de
signated interruption or 
emergency in ‘‘Express Mail’’ service; and that the correspondence attached to the petition is the 
original correspondence or a true copy of the correspondence originally attempted to be deposited as Express Mail on the requested filing date. 
(3) Paragraphs (e)(1) and (e)(2) of this section do not apply to correspondence that is 
excluded  from the Express Mail p r 
ocedure pursuant to § 2.198(a)(1). 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.196  Times for taking action:  Expiration on Saturday, Sunday or Federal holiday.   
Whenever periods of time are specified in this part in days, calendar days are intended.  When 
the day, or the last day fixed b
y statute or by regulation under this part for taking any action or 
paying any fee in the Office falls on a Saturday, Sunday, or Federal holiday within the District of 
IP/N/1/USA/T/4 
Page 98 -97- January 6, 2012 Columbia, the action may be taken, or the fee paid, on the next succeeding day that is not a 
Saturday, Sunday, or a Federal holiday.   
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
§ 2.197  Certificate of mailing or transmission.     
(a) Except in the cases enumerated in paragraph (a)(2) of this section, correspondence 
required to be filed in the Office wi thi
n a set period of time will be considered as being timely filed 
if the procedure described in this section is followed.  The actual date of receipt will be used for all other purposes. 
(1) Correspondence will be considered as being timely filed if: 
(i) The correspondence is mailed or transmitted prior to expiration of the set period of time by 
being: 
(A) Addressed as set out in § 2.190 and deposited with the U.S. Postal Service with sufficient 
postag e as first class  mail; or 
(B) Trans
mitted by facsimile to the Office in accordance with § 2.195(c); and 
(ii) The correspondence includes a certificate for each piece of correspondence stating the 
date of d eposit or trans missio n.  T he pers on signing t
he certificate should have a reasonable 
basis to expect that the correspondence would be mailed or transmitted on or before the date 
indicated. 
(2) The procedure described in paragraph (a)(1) of this section does not apply to: 
(i) Applications for the registration of marks under 15 U.S.C. 1051 or 1126; and 
(ii) Madrid-related correspondence filed under § 7.11, § 7.21, § 7.14, § 7.23, § 7.24 or § 7.31. (b) In the event that correspondence is considered timely filed by being mailed or transmitted 
in accord ance with paragraph (a) of this sectio 
n, but not received in the Office, and an application 
is abandoned, a registration is cancelled or expired, or a proceeding is dismissed, terminated, or decided with prejudice, the co rrespondence will be considered time ly if the party who forwarded 
such correspondence: 
(1) Informs the Office of the previous mailing or transmission of the correspondence within two 
months after beco ming aw 
are that the Office has no evidence of receipt of the correspondence; 
(2) Supplies an additional copy of the previously mailed or transmitted correspondence and 
certificate; and 
(3) Includes a statemen
t that attests on a personal knowledge basis or to the satisfaction of 
the Direc tor to th e pre vious ti
mely mailing or transmission.  If the correspondence was sent by 
facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.   
(c) The Office may require additional evidence to determine whether the correspondence was 
timely filed. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004] 
§ 2.198  Filing of correspondence by “Express Mail.”   
(a)(1) Except for documents listed in paragraphs (a)(1)(i) through (vii) of this section, any 
correspon den
ce received by the Office that was delivered by the “Express Mail Post Office to 
Addressee” service of the United States Postal Service (USPS) will be considered filed with the 
Office on the date of deposit with the USPS.  The Express Mail procedure does not apply to: 
(i) Applications for registration of marks;  (ii) Amendments to allege use under section 1(c) of the Act; 
(iii) Statements of use under section 1(d) of the Act; 
(iv) Requests for extension of time to file a statement of use under section 1(d) of the Act; 
IP/N/1/USA/T/4 
Page 99 -98- January 6, 2012 (v) Affidavits of continued use under section 8 of the Act; 
(vi) Renewal requests under section 9 of the Act; and (vii) Requests to change or correct addresses.   (2) The date of deposit with USPS is shown by the “date in” on the “Express Mail” label or 
other official USPS notation.  If the USPS deposit date canno
t be determined, the correspondence 
will be accorded the date of receipt in the Office as the filing date.   
(b) Correspondence should be deposited directly with an employee of the USPS to ensure 
that the person depositing the correspondence receiv es a
 legible copy of the “Express Mail” 
mailing label with the “date-in” clearly marked.  Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail”  drop box) do so at the risk of not receiving a 
copy of the “Express Mail” mailing label with the desired “date-in” clearly marked.  The paper(s) or fee(s) that constitute the correspondence should also include the “Express Mail” mailing label number thereon.  See paragraphs (c), (d) and (e) of this section. 
(c) Any person filing correspondence under this section that was received by the Office and 
delivered by the “Express Mail Pos
t Office to Addressee” service of the USPS, who can show that 
there is a discrepancy between the filing date acco rded by the Office to the correspondence and 
the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Director to accord the correspondence a filing date as of the “date-in” on the “Express Mail” mailing label or other official USPS notation, provided that: 
(1) The petition is filed within two months after the person becomes aware that the Office has 
accorded, or will accord, a filing date other than the US PS deposit date; 
(2) T he nu mber of the “Express 
Mail” mailing la bel was plac ed on the p aper(s) o r fee(s) that 
constitu te the correspo ndence 
prior to the original mailing; and 
(3) The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” 
and of any other official notatio
n by the USPS relied upon to show the date of deposit. 
(d) Any person filing correspondence under this section that was received by the Office and 
delivered by the “Express Mail Pos
t Office to Addressee” service of the USPS, who can show that 
the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that: 
(1) The petition is filed within two months after the person becomes aware that the Office has 
accorded, or will accord, a filing date based upon an incorrect entry by the USPS; 
(2) The number of the “Exp
ress Mail” mailing label was placed on the paper(s) or fee(s) prior 
to the original mailing; and 
(3) The petition includes a showin
g that establishes, to the satisfaction of the Director, that the 
correspondence was deposited in the “Express Mail Post Office to Ad
dressee” service prior to the 
last scheduled pickup on the requested filing date.  Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or evidence that came into being within one business day after the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS. 
(e) If correspondence is properly addressed to the Office pursuant to § 2.190 and deposited 
with su fficient posta ge in the “Expre ss Mail Post Office to Ad dresse e” service o f
 the USPS, but not 
received by the Office, the party who mailed the correspondence may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that: 
(1) The petition is filed within two months after the person becomes aware that the Office has 
no evidence  of rec eipt of the co rrespo 
ndence; 
(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) prior 
to the original mailing; 
(3) The petition i nclud es a co p
y of the originally deposited paper(s) or fee(s) showing the 
number of the “Express Mail” mailing label thereon, a co
py of any returned postcard receipt, a 
copy of the “Express Mail” mailing label showing the “date-in,” a copy of any other official notation by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date 
IP/N/1/USA/T/4 
Page 100 -99- January 6, 2012 other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the 
USPS, a showing pursuant to paragraph (d)(3) of this section that the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup on the requested filing date; and 
(4) The petition includes a statement that establishes, to the satisfaction of the Director, the 
origin al de posit of the c orres pond en
ce and that the copies of the correspondence, the copy of the 
“Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and official notation entered by the USPS. 
(f) The Office may require additional evidence to determine whether the correspondence was 
deposited as “Express Mail” with th
e USPS on the date in question. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; 68 FR 56556, Oct. 1, 2003] 
§ 2.199  [Reserved] 
TRADEMARK RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE 
§ 2.200  Assignment records open to public inspection.   
(a)(1) Separate assignment records are maintained in the Office for patents and trademarks.  
The assignment records relating to trade ma
rk applications and registrations (for assignments 
recorded on or after January 1, 1955) are open to public inspection at the Office, and copies of 
those assignment records may be obtained upon request and payment of the fee set forth in § 2.6 
of this chapter. 
(2) All records of trademark assignments recorded before January 1, 1955, are maintained by 
the Na tional Archi ves a nd Rec ords
 Administration (NARA).  The records are open to public 
inspection.  Certified and uncertified copies of those assignment records are provided by NARA 
upon request and payment of the fees required by NARA. 
(b) An order for a copy of an assignment or other document should identify the reel and frame 
number where the  assi
gnment or document is recorded.  If a document is identified without 
specifying its correct reel and frame, an extra charge as set forth in § 2.6(b)(10) will be made for 
the time consumed in making a search for such assignment. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
§ 2.201  Copies and certified copies.   
(a) Non-certified copies of trademark registrations and of any trademark records or trademark 
documents within the ju risdictio
n of the Office and open to the public, will be furnished by the 
Office to any person entitled thereto, upon payment of the appropriate fee required by § 2.6. 
(b) Certified copies of trademark registrations and of any trademark records or trademark 
docu ments within the j urisdictio
n of the Office and open to the public will be authenticated by the 
seal of the Office and certified by the Director, or in his or her name attested by an officer of the Office authorized by the Director, upon payment of the fee required by § 2.6. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
IP/N/1/USA/T/4 
Page 101 -100- January 6, 2012 § 2.202  [Reserved] 
§ 2.203  [Reserved] 
§ 2.204  [Reserved] 
§ 2.205  [Reserved] 
FEES AND PAYMENT OF MONEY IN TRADEMARK CASES 
§ 2.206  Trademark fees payable in advance.   
(a) Trademark fees and charges payable to the Office are required to be paid in advance; that 
is, at the time of requesting any action b y
 the Office for which a fee or charge is payable. 
(b) All fees paid to the Office must be itemized in each individual trademark application or 
registration file, or trademark procee
ding, so that the purpose for which the fees are paid is clear.  
The Office may return fees that are not itemized as required by this paragraph.   
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
§ 2.207  Methods of payment.   
(a) All payments of money required in trademark cases, including fees for the processing of 
international trademark applicat ions
 and registrations that are paid through the Office, shall be 
made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank 
note, or United States Postal Service money order.  If sent in any other form, the Office may delay 
or cancel the credit until collection is made.  Checks and money orders must be made payable to 
the Director of the United States Patent and Trademark Office.  (Checks made payable to the Commissioner of Patents and Trademarks will continue to be a ccepted.)  Payments from foreign 
countries must be payable and immediately negotiable in the United States for the full amount of 
the fee required.  Money s ent to the Office by mail will be at  the risk of the se nder, and letters 
containing money should be registered with the United States Postal Service.  
(b) Payments of money required for trademark fees may also be made by credit card, except 
for replenishing a deposit account. Payment of a fee 
by credit card must specify the amount to be 
charged to the credit card and such other information as is necessary to process the charge, and 
is subject to collection of the fee. The Office will not accept a general authorization to charge fees 
to a credit card. If credit card information is provided on a form or document other than a form 
provided by the Office for the paym ent of fees by credit card, the Office will not be liable if the 
credit card number becomes public knowledge. 
[Added 68 FR 48286, Aug. 13, 2003, effective Se pt. 12, 2003; amended 69 FR 43751, July 22, 2004] 
§ 2.208  Deposit accounts.   
(a) For the convenience of attorneys, and the general public in paying any fees due, in 
ordering copies of records, or services offered by the Office, deposit accou nts ma
y be established 
in the Office upon payment of the fee for establishing a deposit account (§ 2.6(b)(13)).  A minimum deposit of $1,000 is required for paying any fees due or in ordering any services offered by the Office.  The Office will issue a deposit account statement at the end of each month.  A 
remittance must be made promptly upon receipt of the statement to cover the value of items or 
IP/N/1/USA/T/4 
Page 102 -101- January 6, 2012 services charged to the account and thus restore the account to its established normal deposit.  
An amount sufficient to cover all fees, copies, or services requested must always be on deposit.  Charges to accounts with insufficient funds will not be accepted.  A service charge (§ 2.6(b)(13)) 
will be assessed for each month that the balance at the end of the mont h is below $1,000.   
(b) A general authorization to charge all fees, or only certain fees to a deposit account 
contain ing sufficie nt funds ma 
y be filed in an individual application, either for the entire pendency 
of the application or with respect to a particular document filed.  An authorization to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.    
(c) A deposit account holder may replenish the deposit account by submitting a payment to 
the Office.  A payment
 to replenish a deposit account must be submitted by one of the methods 
set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section. 
(1) A payment to replenish a deposit account may be submitted by electronic funds transfer 
through the Federal Reserve Fedwi
re System, which requires that the following information be 
provided to the deposit account holder’s bank or financial institution: 
(i) Name of the Bank, which is Tr eas NYC (Treasury New York  City); 
(ii) Bank Routing Code, which is 021030004; (iii) United States Patent and Trademark Office account number with the Department of the 
Treasury, which is 13100001; and 
(iv) The 
deposit account holder’s company name and deposit account number. 
(2) A payment to replenish a deposit account may be submitted by electronic funds transfer 
over t he Office’s Internet Web s ite 
(http://www.uspto.gov ).  
(3) A payment to replenish a deposit account may be addressed to:  Director of the United 
States Patent and Trademark Offic
e, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, 
Alexandria, Virginia 22314. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; amended 69 FR 43751, July 22, 2004; 70 FR 
56119, Sept. 26, 2005, effective Nov. 25, 2005; 73 FR  67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 2.209  Refunds.   
(a) The Director may refund any fee paid by mistake or in excess of that required.  A change 
of purpose after the pay me
nt of a fee, such as when a party desires to withdraw a trademark 
application, appeal or other trademark filing for which a fee was paid, will not entitle a party to a refund of such fee.  The Office will not refund amounts of twenty-five dollars or less unless a refund is specifically requested, and will not notify the payor of such amounts.  If a party paying a fee or requesting a refund does not provide the banking information necessary for making refunds 
by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that 
refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund.  Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. 
(b) Any request for refund must be filed within two years from the date the fee was paid, 
except as otherwise provid
ed in this paragraph.  If the Office charges a deposit account by an 
amount other than an amount specifically indicated in an authorization (§ 2.208(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement.  The time periods set forth in this paragraph are not extendable. 
[Added 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003] 
IP/N/1/USA/T/4 
Page 103 -102- January 6, 2012 37 C.F.R. PART 3—ASSIGNMENT , RECORDING AND RIGHTS OF 
ASSIGNEE 
AUTHORITY:  15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted. 
SOURCE:  57 FR 29642, July 6, 1992, unless otherwise noted 
§ 3.1  Definitions 
For purposes of this part, the following definitions shall apply: Application  means a national application for patent, an internation
 al patent application that 
designates the United States of America, or an application to register a trademark under section 1 
or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise indicated. 
Assignment  means a transfer by a party of all o r part of its right, title and interest in a patent, 
patent application, registered mark or a mark for which an application to register has been filed. 
Document  means a document which a party requests to be recorded in the Office pursuant to 
§ 3.11 and which affects some interest in an 
application, patent, or registration. 
Office means the United States Patent and Trademark Office. 
Recorded document  means a doc ument which has bee n recorde d in the Office pursuant to 
§ 3.11. 
Registration means a trademark registration issued by the Office. 
[69 FR 29865, May 26, 2004, effective June 25, 2004] 
DOCUMENTS ELIGIBLE FOR RECORDING 
§ 3.11  Documents which will be recorded. 
(a) Assignments of applications, patents, and registrations, accompanied by completed cover 
sheets as s pecifie d in §§ 3.2 8 an d 3.31 , will  be reco rded in the Off
ice.  Other documents, 
accompanied by completed cover sheets as specified in §§ 3.28 and 3.31, affecting title to 
applications, patents, or registrations, will be recorded as provided in this part or at the discretion 
of the Director.     
(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) 
requi res t he severa l departments and ot her 
executive agencies of the Government, including 
Government-owned or Government-controlled corporations, to forward promptly to the Director for 
recording all licenses, assignments, or other interests of the Government in or under patents or 
patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part. 
(c) A joint research agreement or an excerpt of a joint research agreement will also be 
recorded as provided in  this pa rt. 
[62 FR 53186, Oct. 10, 1997; 68 FR 14332, March 25, 2003, effective May 1, 2003; 70 FR 1824, Jan. 11, 
2005; 70 FR 54267, Sept. 14, 2005] 
§ 3.16  Assignability of trademarks prior to filing of an allegation of use statement. 
Before an allegation of use under either 15 U.S.C. 1051(c) or 15 U.S.C. 1051(d) is filed, an 
applicant may only assign an application to  re
gister a mark under 15 U.S.C. 1051(b) to a 
successor to the applicant’s business, or portion of the business to which the mark pertains, if that 
business is ongoing and existing. 
IP/N/1/USA/T/4 
Page 104 -103- January 6, 2012 [64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999] 
REQUIREMENTS FOR RECORDING 
§ 3.25  Recording requirements for trademark applications and registrations. 
(a) Documents affecting title.  To record documents affecting title to a trademark application or 
registration, a legible cover sheet 
(see § 3.31) and one of the following must be submitted: 
(1) A copy of the original document; 
(2) A copy of an extract from the document evidencing the effect on title; or (3) A statement signed by both the party conveying the interest and the party receiving the 
interest explaining how the con v 
eyance affects title. 
(b) Name changes .  Only a legible c over sheet is required (see § 3.31). 
(c) All documents.  (1) For electronic submissions :  All docu ments mus
 t be submitted as digitized images in 
Tagged Image File Format (TIFF) or another form as prescribed by the Director.  When printed to a paper size of either 21.6 by 27.9 cm (8½ by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 cm (one-inch) margin must be present on all sides. 
(2) For paper or facsimile  submissions :  All documents should be sub
 mitted on white and non-
shiny paper that is either 8½ by 11 inches (21.6 by 27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a one-inch (2.5 cm) margin on all sides in either case.  Only one side of each page may be used.  The Office will not return recorded documents, so original documents should not be submitted for recording. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 69 FR 29865, May 26,2004, effective June 25, 2004] 
§ 3.26  English language requirement. 
The Office will accept and record non-English language documents only if accompanied by an 
English translation signed b y
 the individual making the translation. 
[62 FR 53186, Oct. 10, 1997] 
§ 3.27  Mailing address for submitting documents to be recorded. 
Documents and cover sheets submitted by mail for recordation should be addressed to Mail 
Stop Assignment Recordation Servic es, Directo
r of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications. 
[62 FR 53186, Oct. 10, 1997; 65 FR 54604, Sept. 8, 2000; 68 FR 14332, March 25, 2003, effective May 1, 
2003; 69 FR 29865, May 26,2004, effective June 25, 2004] 
§ 3.28  Requests for recording. 
Each document submitted to the Office for recording must include a single cover sheet (as 
specified in § 3.31) referring either to
 those patent applications and patents, or to those trademark 
applications and registrations, against which the document is to be recorded.  If a document to be 
recorded includes interests in, or transactions involving, both patents and trademarks, then separate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted.  If a document to be recorded is not accompanied by a completed 
cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for 
IP/N/1/USA/T/4 
Page 105 -104- January 6, 2012 proper completion, in which case the document and a completed cover sheet should be 
resubmitted. 
[64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005] 
COVER SHEET REQUIREMENTS 
§ 3.31  Cover sheet content. 
(a) Each patent or trademark cover sheet required by § 3.28 must contain: (1) The name of the party conveying the interest;  (2) The name and address of the party receiving the interest; (3) A description of the interest conveyed or transaction to be recorded; 
(4) Identification of the interests involved: 
(i) For trademark assignments and trademark name changes :  Each trademark r
 egistration 
number and each trademark application number, if known, against which the Office is to record the document.  If the trademark application number is not known, a copy of the application or a reproduction of the trademark must be submitted, along with an estimate of the date that the 
Office received the application; or  
(ii) For any other document affecting title to a trademark or patent application, registration or 
paten t:  Eac h trad emark or pate nt applicati
on number or each trademark registration number or 
patent against which the document is to be recorded, or an indication that the document is filed 
together with a patent application; 
(5) The name and address of the party to whom correspondence concerning the request to 
record th e document  should b e mailed;  
(6) The dat e 
the document was executed; 
(7) The signature of the party submitting the document.  For an assignment document or 
name change filed electronically, the person 
who signs the cover sheet must either: 
(i) Place a symbol comprised of letters, numbers, and/or punctuation marks between forward 
slash marks (e.g. /Thomas O'Malley III/) in th
e signature block on the electronic submission; or 
(ii) Sign the cover sheet using some other form of electronic signature specified by the 
Direc tor. 
(8) For trade mark assi gnments, the e
ntity and citizenship of the party receiving the interest.  In 
addition, if the party receiving the in
terest is a domestic partnership or domestic joint venture, the 
cover sheet must set forth the names, legal entities, and national citizenship (or the state or country of organization) of all general partners or active members that compose the partnership or joint venture. 
(b) A cover sheet should not refer to both patents and trademarks, since any information, 
includin g informati on about p ending paten t a
pplications, submitted with a request for recordation 
of a document against a trademark application or trademark registration will become public record 
upon recordation.  
(c) Each patent cover sheet required by § 3.28 seeking to record a governmental interest as 
provided by § 3.11(b) mu st: 
(1) Indic
ate that the document relates to a Government interest; and 
(2) Indicate, if applicable, that the document to be recorded is not a document affecting title 
(see § 3.41(b)). 
(d) Each trademark cover sheet re
quired by § 3.28 seeking to record a document against a 
trademark applicati on or regist ration 
should include, in addition to the serial number or registration 
number of the trademark, identification of the trademark or a description of the trademark, against 
which the Office is to record the document. 
(e) Each patent or trademark cover sheet required by § 3.28 should contain the number of 
applications, patents or registrations identified in t
he cover sheet and the total fee.  
IP/N/1/USA/T/4 
Page 106 -105- January 6, 2012 (f) Each trademark cover sheet should include the citizenship of the party conveying the 
interest. 
(g) The cover sheet required by § 3.28 seeking to record a joint research agreement or an 
excerpt of a joint researc
h agreement as provided by § 3.11(c) must: 
(1) Identify the document as a “joint research agreement” (in the space provided for the 
descrip tion of the inte rest conve yed or transact
ion to be recorded if using an Office-provided 
form); 
(2) Indicate the name of the owner of the application or patent (in the space provided for the 
name and address of the pa
rty receiving the interest if using an Office-provided form); 
(3) Indicate the name of each other party to the joint research agreement party (in the space 
provided for the nam
e of the party conveying the interest if using an Office-provided form); and 
(4) Indicate the date the joint research agreement was executed. 
[62 FR 53186, Oct. 10, 1997; 64 FR 48900, Sept. 8, 1 999, effective Oct. 30, 1999;  67 FR 79520, Dec. 30, 
2002; 69 FR 29865, May 26,2004, effective June 25, 2004;  70 FR 56119, Sept. 26, 2005, effective Nov. 25, 
2005; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 3.34  Correction of cover sheet errors. 
(a) An error in a cover sheet recorded pursuant to § 3.11 will be corrected only if: 
(1) The error is apparent when the cover sheet is compared with the recorded document to 
which it pertains, and 
(2) A corrected cove r sh
eet is filed for recordation. 
(b) The corrected cover sheet must be accompanied by a copy of the document originally 
submitted for recordi ng a
nd by the recording fee as set forth in § 3.41. 
[69 FR 29865, May 26,2004, effective June 25, 2004] 
FEES 
§ 3.41  Recording fees. 
(a) All requests to record documents must be accompanied by the appropriate fee. Except as 
provided in paragraph (b) of th is section, 
a fee is required for each application, patent and 
registration against which the document is recorded as identified in the cover sheet.  The 
recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for 
trademarks. 
(b) No fee is required for each patent application and patent against which a document 
requi red by Execut ive Order 942
4 is to be filed if: 
(1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); 
and 
(2) The document and cover sheet are either: Faxed or electronically submitted as prescribed 
by the  Director, or mailed
 to the Office in compliance with § 3.27. 
[62 FR 53186, Oct. 10, 1997; 63 FR 48081, Sept. 9, 1998; 63 FR 52158, Sept. 30, 1998; 69 FR 29865, May 
26,2004, effective June 25, 2004] 
IP/N/1/USA/T/4 
Page 107 -106- January 6, 2012 DATE AND EFFECT OF RECORDING 
§ 3.51  Recording date. 
The date of recording of a document is the date the document meeting the requirements for 
recording s et forth in this part is  filed in th e Office. A 
document which does not comply with the 
identification requirements of § 3.21 will not be recorded. Documents not meeting the other 
requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available.  The returned papers, stamped with the original date of receipt by the Office, 
will be accompanied by a letter which will indicate that if the returned papers are corrected and 
resubmitted to the Office within the time specified in the letter, the Office will consider the original 
date of filing of the papers as the date of record ing of the document.  Th e procedure set forth in 
§ 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the benefit of the date of deposit in the United States Postal Service.  If the returned papers are not 
corrected and resubmitted within the specified period, the date of filing of the corrected papers will 
be considered to be the date of recording of the document.  The specified period to resubmit the returned papers w ill not be extended. 
[62 FR 53186, Oct. 10, 1997] 
§ 3.54  Effect of recording. 
The recording of a document pursuant to § 3.11 is not a determination by the Office of the 
validity of the document  
or the effect that document has on the title to an application, a patent, or a 
registration.  When necessary, the Office will de termine what effect a document has, including 
whether a party has the authority to take an action in a matter pending before the Office. 
§ 3.56  Conditional assignments. 
Assignments which are made conditional on the performance of certain acts or events, such 
as the payment of money or other condition subs
equent, if recorded in the Office, are regarded as 
absolute assignments for Office purposes until cancelled with the written consent of all parties or 
by the decree of a court of competent jurisdiction.  The Office does not determine whether such 
conditions have been fulfilled. 
§ 3.58  Governmental registers. 
(a) The Office will maintain a Departmental Register to record governmental interests required 
to be recorded by Executive Order 
9424. 
This Departmental Register will not be open to public inspection but will be available for 
examination and inspection by duly a
uthorized representatives of the Government. Governmental 
interests recorded on the Departmental Register will be available for public inspection as provided 
in § 1.12. 
(b) The Office will maintain a Secret Register to  record governmental in terests required to be 
recorded by Executive Order 9424
. Any instrument to be recorded will be placed on this Secret 
Register at the request of the department or agency submitting the same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of 
such authority by the Director. No instrument or record other than the one specified may be 
examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submitted an instrument no 
IP/N/1/USA/T/4 
Page 108 -107- January 6, 2012 longer requires secrecy with respect to that instrument, it must be recorded anew in the 
Departmental Register. 
[Added 62 FR 53186, Oct. 10, 1997, effective Dec. 1,  1997; 68 FR 14332, March 25, 2003, effective May 1, 
2003] 
DOMESTIC REPRESENTATIVE 
§ 3.61  Domestic representative. 
If the assignee of a patent, patent application, trademark application or trademark registration 
is not domiciled in the United States, the assigne
e may designate a domestic representative in a 
document filed in the United States Patent and Trademark Office.  The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.  
[Amended 67 FR 79520, Dec. 30, 2002]  
ACTION TAKEN BY ASSIGNEE 
§ 3.71  Prosecution by assignee. 
(a) Patents—conducting of prosecution .  One or more assig nees as defined in paragraph (b) 
of this section may, after becoming of record pursuant to paragraph (c) of this section, conduct prosecution of a national patent application or a reexamination proceeding to the exclusion of 
either the inventive entity, or the assignee(s) previously entitled to conduct prosecution. 
(b) Patents—Assignee(s) who can prosecute .  The assig nee(s) who may co nduct eithe
 r the 
prosecution of a national application for patent or a reexamination proceeding are: 
(1) A single assignee . An assignee of the entire right, title and interest in the application or 
patent being reexamined who is of record, or 
(2) Partial assignee(s) together or with inventor(s) .  All partial  ass ignees,  o r all partial 
assignees and inventors who have not assigned their right, title and interest in the application or 
patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined.  A partial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexamined. 
(c) Patents—Becoming of record .  An assignee becomes of
  record either in a national patent 
application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee. 
(d) Trademarks .  The assignee of a trade m
 ark application or registration may prosecute a 
trademark application, submit documents to maintain a trademark registration, or file papers against a third party in reliance on the assignee's trademark application or registration, to the 
exclusion of the original applicant or previous assignee.  The assignee must establish ownership 
in compliance with § 3.73(b).  
[65 FR 54604, Sept. 8, 2000] 
§ 3.73  Establishing right of assignee to take action. 
(a) The inventor is presumed to be the owner of a patent application, and any patent that may 
issue therefrom, unless there is an assignment.  The original applicant is presu m
ed to be the 
owner of a trademark application or registration, unless there is an assignment. 
IP/N/1/USA/T/4 
Page 109 -108- January 6, 2012 (b)(1) In order to request or take action in a patent or trademark matter, the assignee must 
establish its ownership of the patent or trademark property of paragraph (a) of this section to the 
satisfaction of the Director.  The establishm ent of ownership by the assignee may be combined 
with the paper that requests or takes the action.  Ownership is established by submitting to the 
Office a signed statement identifying the assignee, accompanied by either: 
(i) Documentary evidence of a chain of title from the original owner to the assignee (e.g., copy 
of an  executed assig nment).  For 
trademark matters only, the documents submitted to establish 
ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the 
Office as a condition to permitting the assignee to take action in a matter pending before the Office.  For patent matters only, the submission of the documentary evidence must be 
accompanied by a statement affirming that the documentary evidence of the chain of title from the 
original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or 
(ii) A statement specifying where documentary evidence of a chain of title from the original 
owner to the assigne e is recorded i n the assi gnment record
s of the Office (e.g., reel and frame 
number). 
(2) The submission establishing ownership must show that the person signing the submission 
is a person authorized to act on behalf of  th
e assignee by: 
(i) Including a statement that the person signing the submission is authorized to act on behalf 
of the assignee; or 
(ii) Being signed b
y a person having apparent authority to sign on behalf of the assignee, e.g., 
an of ficer of the assi gnee. 
(c) For pate nt mat ters
 only: 
(1) Establishment of ownership by the assignee must be submitted prior to, or at the same 
time as, the paper requesting or taking actio
n is submitted. 
(2) If the submission under this section is by an assignee of less than the entire right, title and 
interest, such assignee must indicate the extent (b
y percentage) of its ownership interest, or the 
Office may refuse to accept the submission as an establishment of ownership. 
[62 FR 53186, Oct. 10, 1997; 65 FR 54604, Sept. 8, 2000; 68 FR 14332, March 25, 2003, effective May 1, 
2003; 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 2005] 
ISSUANCE TO ASSIGNEE 
§ 3.85  Issue of registration to assignee. 
The certificate of registration may be issued to the assignee of the applicant, or in a new name 
of the applicant, provided that the p
arty files a written request in the trademark application by the 
time the application is being prepared for issuance of the certificate of registration, and the 
appropriate document is recorded in the Office.  If the assignment or name change document has 
not been recorded in the Office, then the written request must state that the document has been filed for recordation.  The address of the assignee must be made of record in the application file.  
 
IP/N/1/USA/T/4 
Page 110 -109- January 6, 2012 37 C.F.R. PART 6—CLASSIFICAT ION OF GOODS AND SERVICES 
UNDER THE TRADEMARK ACT 
AUTHORITY:  Secs. 30, 41, 60 Stat. 436, 440; 15 U.S.C. 1112, 1123; 35 U.S.C. 2, unless 
otherwise noted 
CLASSIFICATION OF GOODS AND SERV ICES UNDER THE TRADEMARK ACT 
§ 6.1  International sch
edule of classes of goods and services. 
GOODS 
1.  Chemicals used in industry, science and photography, as well as in agriculture, horticulture 
and fo restry; unprocessed artificial resins, unprocessed pl a
stics; manures; fire extinguishing 
compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. 
2.  Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; 
colora nts; morda nts; raw natural resi ns; metals i n foil an d p 
owder form for painters, decorators, 
printers and artists. 
3.  Bleaching preparations and other substances  for laundry use; cleaning, polishing , scourin g 
and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. 
4.  Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; 
fuels (including motor spirit) 
and illuminants; candles and wicks for lighting. 
5.  Pharmaceutical and veteri nary preparations; sanitary preparations for medical pu rposes; 
dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides. 
6.  Common metals and their alloys; metal building materials; transportable buildings of metal; 
materi als of metal for railway tracks; non-el ectric cabl es and wires of common metal;  
ironmongery, sm 
all items of metal hardware; pipes and tubes of metal; safes; goods of common 
metal not included in other classes; ores. 
7.  Machines and machine tools; motors and engines (except for land vehicles); machine 
couplin g and trans missi on compon ents (e xcep
t for land vehicles); agricultural implements other 
than hand-operated; incubators for eggs. 
8.  Hand tools and implements (hand-operated); cutlery; side arms; razors. 9.  Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, 
measuring, signalling, checking (sup ervision), life-saving and teaching apparatus and instruments; 
appa ratus 
and instruments for conducting, switching, transforming, accumulating, regulating or 
controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-
operated apparatus; cash registers, calculating machines, data processing equipment and 
computers; fire-extinguishing apparatus. 
10.  Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes 
and t eeth; orthope dic arti 
cles; suture materials. 
11.  Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, 
ventilating, water supply and s
anitary purposes. 
12.  Vehicles; apparatus for locomotion by land, air or water. 13.  Firearms; ammunition and projectiles; explosives; fireworks. 14.  Precious metals and their alloys and goods in precious metals or coated therewith, not 
include d in other c lasses;  jewellery, p r
ecious stones; horological and chronometric instruments. 
15.  Musical instruments. 
IP/N/1/USA/T/4 
Page 111 -110- January 6, 2012 16.  Paper, cardboard and goods made from these materials, not included in other classes; 
printed matter; bookbinding material; photographs; stationery; adhesives for stationery or 
household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging 
(not included in other classes) ; printers' type; printing blocks. 
17.  Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and 
not includ ed in other cla sses; plastic s in extrude d form for u se in man ufacture; pack 
ing, stopping 
and insulating materials; flexible pipes, not of metal. 
18.  Leather and imitations of leather, and goods made of these materials and not included in 
other classes; animal skins, hides; trunks and tr avelling bags; umbrellas, parasols and walking 
sticks; whips
, harness and saddlery. 
19.  Building materials (non-met allic); non-metallic rigid pipes for building; asphalt, pitch and 
bitumen; non-metallic tr ansportable buildings; monuments, not of metal. 
20.  Furniture, mirrors
, picture frames; goods (not included in other classes) of wood, cork, 
reed, cane, wicker, horn, bone, ivory, whalebone,
 shell, amber, mother-of-pearl, meerschaum and 
substitutes for all these materials, or of plastics. 
21.  Household or kitchen utensils and containers; combs and sponges; brushes (except paint 
brushes); brush-making materials; articles for cleaning purpo s
es; steelwool; unworked or semi-
worked glass (except glass used in building); glassware, porcelain and earthenware not included 
in other classes. 
22.  Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other 
classes); padding and stuffing materials (e xc
ept of rubber or plastics); raw fibrous textile materials. 
23.  Yarns and threads, for textile use. 24.  Textiles and textile goods, not included in other classes; bed and table covers 25.  Clothing, footwear, headgear. 26.  Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; 
artificial flowers. 
27.  Carpets, rugs, mats and matti
ng, linoleum and other materials for covering existing floors; 
wall han gings (non-textile). 
28.  Ga mes and pla y
things; gymnastic and sporting articles not included in other classes; 
decorations for Christmas trees. 
29.  Meat, fi
sh, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits 
and vegetables; jelli es, jams, compot
es; eggs, milk and milk products; edible oils and fats. 
30.  Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made 
from cereals, bread, pastry and confectione
ry, ices; honey, treacle; yeast, baking-powder; salt, 
mustard; vinegar, sauces (condiments); spices; ice. 
31.  Agricultural, horticultural and forestry products and grains not included in other classes; 
live animals; fresh fruits and vegetables; seeds, natural plants and flowers;
 foodstuffs for animals, 
malt. 
32.  Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit 
juices; syrups and oth er prep arations 
for making beverages. 
33.  Alcoholic beverages (except beers). 
34.  Tobacco; smokers' articles; matches. 
SERVICES 
35.  Advertising; business management; business administration; office functions. 
36.  Insurance; financial affairs; monetary affairs; real estate affairs. 37.  Building construction; repair; installation services. 38.  Telecommunications. 39.  Transport; packaging and storage of goods; travel arrangement. 
40.  Treatment of materials. 
41.  Education; providing of training; entertainment; sporting and cultural activities. 
IP/N/1/USA/T/4 
Page 112 -111- January 6, 2012 42.  Scientific and technological services and research and design relating thereto; industrial 
analysis and research services; design and development of computer hardware and software. 
43.  Services for providing food and drink; temporary accommodation. 
44.  Medical services; veterinary services; hygienic and beauty care for human beings or 
animals; agriculture, horticulture an
d forestry services. 
45.  Legal services; security services for the protection of property and individuals; personal 
and soci al services rendered by
 others to meet the needs of individuals. 
[38 FR 14681, June 4, 1973; 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 66 FR 48338, Sept. 20, 
2001; 72 FR 28610, May 22, 2007] 
§ 6.2  Prior U.S. schedule of classes of goods and services. 
GOODS 
Class Title 
1  Raw or partly prepared materials. 
2  Receptacles. 3  Baggage, animal equipments, portfolios, and pocket books. 
4  Abrasives and polishing materials. 
5  Adhesives. 6  Chemicals and chemical compositions. 7  Cordage. 8  Smokers’ articles, not including tobacco products. 
9  Explosives, firearms, equipments, and projectiles. 
10 Fertilizers. 11  Inks and inking materials. 12  Construction materials. 13  Hardware and plumbing and steamfitting supplies. 14  Metals and metal castings and forgings. 
15  Oils and greases. 
16  Protective and decorative coatings. 17  Tobacco products. 18  Medicines and pharmaceutical preparations. 19  Vehicles. 
20  Linoleum and oiled cloth. 
21  Electrical apparatus, machines, and supplies. 22 Games, toys, and sporting goods. 23  Cutlery, machinery, and tools, and parts thereof. 24  Laundry appliances and machines. 25  Locks and safes. 
26  Measuring and scientific appliances. 
27  Horological instruments. 28  Jewelry and precious-metal ware. 29  Brooms, brushes, and dusters. 30  Crockery, earthenware, and porcelain. 
31  Filters and refrigerators. 
32  Furniture and upholstery. 33  Glassware 34  Heating, lighting, and ventilating apparatus. 35  Belting, hose, machinery packing, and nonmetallic tires. 
36  Musical instruments and supplies. 
IP/N/1/USA/T/4 
Page 113 -112- January 6, 2012 37  Paper and stationery. 
38  Prints and publications. 39 Clothing. 40  Fancy goods, furnishings, and notions. 
41  Canes, parasols, and umbrellas. 
42  Knitted, netted, and textile fabrics, and substitutes therefor. 43  Thread and yarn. 44  Dental, medical, and surgical appliances. 45  Soft drinks and carbonated waters. 46 Foods and ingredients of foods. 
47  Wines. 
48  Malt beverages and liquors. 49  Distilled alcoholic liquors. 50  Merchandise not otherwise classified. 51  Cosmetics and toilet preparations. 
52  Detergents and soaps. 
 
SERVICES 
100  Miscellaneous. 101  Advertising and business. 
102  Insurance and financial. 
103  Construction and repair. 104  Communication. 105  Transportation and storage. 106  Material treatment. 107  Education and entertainment. 
[24 FR 10383, Dec. 22, 1959.  Redesignated at 38 FR 14681, June 4, 1973] 
§ 6.3  Schedule for certification marks. 
In applications for registration of certification marks based on sections 1 and 44 of the 
Trademark Act and registrations resulting from  suc
h applications, goods and services are 
classified in two classes as follows: 
 A. Goods. B. Services. 
[24 FR 10383, Dec. 22, 1959.  Redesignated at 38 FR 14681, June 4, 1973; amended 73 FR 67759, Nov. 
17, 2008, effective Jan. 16, 2009] 
§ 6.4  Schedule for collective membership marks. 
All collective membership marks in applications based on sections 1 and 44 of the Trademark 
Act and registrations resulting from such ap plicati
ons are classified as follows: 
 
Class  Title  200  Collective Membership. 
[24 FR 10383, Dec. 22, 1959.  Redesignated at 38 FR 14681, June 4, 1973; amended 73 FR 67759, Nov. 
17, 2008, effective Jan. 16, 2009] 
IP/N/1/USA/T/4 
Page 114 -113- January 6, 2012 PART 7 – RULES OF PRACTICE IN FILINGS PURSUANT TO THE 
PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING 
THE INTERNATIONAL RE GISTRATION OF MARKS 
AUTHORITY:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted. 
SUBPART A -- GENERAL INFORMATION 
§ 7.1  Definitions of terms as used in this part. 
(a) The Act means the Tradema r k Act of 1946, 60 Stat. 427, as amended, codified in 15 
U.S.C. 1051 et seq. 
(b) Subsequent designation  means a request for e xtension of protection of an international 
registration to a Contracting Party made after the International Bureau registers the mark. 
(c) The acronym TEAS  means the Trademark El ectronic Application System available on-line 
through the Office’s web site at: http://www.uspto.gov . 
(d) The term Office means the United States Pate nt and Trademark Office. 
(e) All references to sections in this part refer to 37 Code of Federal Regulations, except as 
otherwise stated. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.2  [Reserved] 
§ 7.3  Correspondence must be in English. 
International applications and registrations, requests for extension of protection and all other 
related correspondence wi th the
 Office must be in English.  The Office will not process 
correspondence that is in a language other than English. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.4  Receipt of correspondence.  
(a) Correspondence Filed Through TEAS.  Correspon dence relat ing to international 
applications and registrations and requests for ex tension of protection submitted through TEAS 
will be accorded the date and time on which the complete transmission is received in the Office 
based on Eastern Time.  Eastern Time means eastern standard time or eastern daylight time, as appropriate.  
(b) Correspondence Filed By Mail .  Internatio nal a pplica ti
 ons under § 7.11, subsequent 
designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacement under § 7.28, requests for transformation under § 7.31, and petitions to the Director to review an action of the Office's Madrid Processing Unit, when filed by mail, must be addressed to: Madrid Processing Unit, 600 Dulany Street, MDE-7B87, Alexandria, VA 22314-5793. 
(1) International applications under § 7.11, subsequent designations under § 7.21, requests to 
record cha nges in t he In ternation al Registe
r under § 7.23 and § 7.24, and petitions to the Director 
to review an action of the Office’s Madrid Processing Unit, when filed by mail, will be accorded the date of receipt in the Office, unless they are sent by Express Mail pursuant to § 2.198, in which case they will be accorded the date of deposit with the United States Postal Service. 
IP/N/1/USA/T/4 
Page 115 -114- January 6, 2012 (2) Responses to notices of irregularity under § 7.14, requests to note replacement under 
§ 7.28, and requests for transformation under § 7.31, when filed by mail, will be accorded the date 
of receipt in the Office. 
(c) Hand-Delivered Correspondence.   International applications under § 7.1 1, subsequent 
designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacement under § 7.28, requests for transformation under § 7.31, and petitions to the Director to review an action of the Office's Madrid Processing Unit, may be delivered by hand during the hours the Office is open to receive correspondence.  Madrid-related hand-delivered correspondence must be delivered to the Trademark Assistance Center, James Madison Building--East Wing, 
Concourse Level, 600 Dulany Street, Alexandria, VA 22314, Attention: MPU. 
(d) Facsimile Transmission Not Permitted.  The following documents may not be sent by 
facsimile transmission, and will not be accorded a date of receipt if sent by facsi
mile transmission: 
(1) International applications under § 7.11; 
(2) Subsequent designations under § 7.21; 
(3) Responses to notices of irregularity under § 7.14; 
(4) Requests to record changes of ownership under § 7.23;  (5) Requests to record restrictions of the holder’s right of disposal, or the release of such 
restric tions, unde r § 7.24 ; and 
(6) Request s for 
transformation under § 7.31. 
(e) Certificate of Mailing or Trans mission Procedure Does Not Apply .  Th e certificate of mailing 
or transmission procedure provided in § 2.197 does not apply to the documents specified in paragraph (d) of this section.  
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004; 69 FR 63320, Nov. 1, 2004; 72 FR 18907, April 16, 2007] 
§ 7.5  [Reserved] 
§ 7.6  Schedule of U.S. process fees. 
(a) The Office requires the following process fees: 
(1) For certifying an international application based on a single basic application or 
regist ration, per class—$100.00 
(2) For certifyi ng a
n international application based on more than one basic application or 
registration, per class—$150.00 
(3) For transmitting
 a subsequent designation under § 7.21—$100.00 
(4) For transmitting a request to record an assignment or restriction, or release of a restriction, 
unde r § 7.23 or § 7.24—$100. 00 
(5) For filin g a notic
e of replacement under § 7.28, per class—$100.00 
(6) For filing an affidavit under § 71  of the Act, per class—$100.00 
(7) Surcharge for filing an affidavit u
nder § 71 of the Act during the grace period, per class—
$100.00 
(8) For correcting a deficiency in a section 7
1 affidavit—$100.00 
(b) The fees required in paragraph (a) of this section must be paid in U.S. dollars at the time of 
submission of the requ ested acti on.  See § 2.207 of this cha
pter for acceptable forms of payment 
and § 2.208 of this chapter for payments using a deposit account established in the Office. 
[Added 68 FR 55748, Sept. 26, 2003, effective No v. 2, 2003; amended 75 FR 35973, June 24, 2010, 
effective June 24, 2010] 
IP/N/1/USA/T/4 
Page 116 -115- January 6, 2012 § 7.7  Payments of fees to International Bureau. 
(a) For documents filed through TEAS, the following fees may be paid either directly to the 
International Bureau or through t he 
Office: 
(1) International application fees; 
(2) Subsequent designation fees; and (3) Recording fee for an assignment of an international registration under § 7.23.    
(b) The fees in paragraph (a) of this section may be paid as follows:  
(1)(i) Directly to the International Bureau by debit to a current account with the International 
Bureau.   In this c ase, an applic a 
nt or holder’s submission to the Office must include the 
International Bureau account number; or 
(ii) Directly to the International Bureau using any other acceptable method of payment.  In this 
case, an applicant or holder’s sub m
ission to the Office must include the International Bureau 
receipt number for payment of the fees; or  
(2) Through the Office.  Fees paid through the Office must be paid in U.S. dollars at the time 
of subm ission.  See § 2.207 of t his chapte r fo
r acceptable forms of payment and § 2.208 of this 
chapter for payments using a deposit account established in the Office.   
(c) All fees for paper filings must be paid directly to the International Bureau. (d) The International Bureau fee calculator may be viewed on the web site of the World 
Intellectual Property Organization, curre
ntly available at: http://www.wipo.int/madrid/en/ . 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004] 
SUBPART B -- INTERNATIONA L APPLICATION ORIGINATING FROM THE UNITED STATES 
§ 7.11  Requirements for international application originating from the United States. 
(a) The Office will grant a date of receipt to an international application that is either filed 
through T EAS, o r type d on the of ficial pape
r form issued by the International Bureau.  The 
international application must include all of the following: 
(1) The filing date and serial number of the basic application and/or the registration date and 
registration number of th
e basic registration;  
(2) The name and entity of the international applicant that is identical to the name and entity of 
the ap plican t or regist rant in the basic
 application or basic registration, and the applicant’s current 
address; 
(3) A reproduction of the mark that is the same as the mark in the basic application and/or 
registration and that meets th
e requirements of § 2.52 of this title.   
(i) If the mark in the basic application and/or registration is depicted in black and white and the 
basic a pplication  or reg istrati on doe
s not include a color claim, the reproduction of the mark in the 
international application must be black and white.   
(ii) If the mark in the basic application or registration is depicted in black and white and 
includes a color claim, the international appl
ication must include both a black and white 
reproduction of the mark and a color reproduction of the mark.   
(iii) If the mark in the basic application and/or r egistration is depicted in co lor, the reproduction 
of the mark in the international application must be in color.   
(iv) If the international application is filed on paper, the mark must be no more than 3.15 
inches (8 cm) high by 3.15 inches (8 cm) wide,
 and must appear in the box designated by the 
International Bureau on the International Bureau’s official form;  
(4) A color claim as set out in § 7.12, if appropriate; 
(5) A description of the mark that is the same as the description of the mark in the basic 
applica tion or registratio n
, as appropriate;  
IP/N/1/USA/T/4 
Page 117 -116- January 6, 2012 (6) An indication of the type of mark if the mark in the basic application and/or registration is a 
three-dimensional mark, a sound mark, a collective mark or a certification mark;   
(7) A list of the goods and/or services that is identical to or narrower than the list of goods 
and/or services in each claimed basic applic
ation or registration and classified according to the 
Nice Agreement Concerning the International Classification of Goods and Services for the 
Purposes of the Registration of Marks ; 
(8) A list of the designated Contracting Parties.  If the goods and/or services in the 
internatio nal applicatio n are not t he same for ea ch designa ted Con tract
ing Party, the application 
must list the goods and/or services in the international application that pertain to each designated 
Contracting Party; 
(9) The certification fee required by § 7.6;  (10) If the application is filed through TEAS, the international application fees for all classes, 
and th e fees for all  desi gnate d Cont ractin g Parti es iden 
tified in the international application ( see 
§ 7.7);   
(11) A statement that the applicant is entitled to file an international application in the Office, 
specifying that applicant:  is a national of the United St
ates; has a domicile in the United States; or 
has a real and effective industrial or commercial establishment in the United States.  Where an applicant’s address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment; and 
(12) If the international application is filed through TEAS, an e-mail address for receipt of 
corres pond ence fro m the Office. 
(b) For re 
quirements for certification, see § 7.13. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
§ 7.12  Claim of color. 
(a) If color is claimed as a feature of the mark in the basic application and/or registration, the 
international application must include a  stat
ement that color is claimed as a feature of the mark 
and set forth the same name(s) of the color(s) claimed in the basic application and/or registration.    
(b) If color is not claimed as a feature of the mark in the basic application and/or registration, 
color may not be claimed as a feature of the mark in th
e international application. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.13  Certification of international application.  
(a) When an international application contains all the elements set forth in § 7.11(a), the Office 
will certify to the International Bureau that the in forma t
ion contained in the international application 
corresponds to the information contained in the basic application(s) and/or basic registration(s) at 
the time of certification, and will then forward the international application to the International Bureau.   
(b) When an international application does not meet the requirements of § 7.11(a), the Office 
will not ce rtify or forwa rd the inte rnationa l appli 
cation.  If the international applicant paid the 
international application fees (see § 7.7) through the Office, the O ffice will refund the international 
fees.  The Office will not refu nd the certification fee.   
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
IP/N/1/USA/T/4 
Page 118 -117- January 6, 2012 § 7.14  Correcting irregularities in international application. 
(a) Response period.  Upon receipt of a notice of irregularities in an international application 
from the Interna tiona
l Bureau, the applicant must respond to the International Bureau within the 
period set forth in the notice.   
(b) Classi fication and Identification of Goods and Services.  Responses to International 
Bureau notices of i rregulariti
es in the classification or identification of goods or services in an 
international application must be submitted through the Office for forwarding to the International 
Bureau.  The Office will review an applicant’s response to a notice of irregularities in the 
identification of goods or services to ensure that the response does not identify goods or services 
that are broader than the scope of the goods or services in the basic application or registration.     
(c) Fees .  If the Int ernational Bure au notice of irregula r ities requires the payment of fees, the 
fees for correcting irregularities in the international application must be paid directly to the International Bureau.  
(d) Other Irregularities Requiring Response from Applicant.  Exce pt fo r resp onses to  
irregularities 
 mentioned in paragraph (b) of this section and payment of fees for correcting 
irregularities mentioned in paragraph (c) of this section, all other responses may be submitted through the Office in accordance with § 7.14(e), or filed directly at the International Bureau.  The Office will forward timely responses to the International Bureau, but will not review the responses or respond to any irregularities on behalf of the international applicant.   
(e) Proce dure for response .  To be conside red timely, a res
 ponse must be received by the 
International Bureau before the end of the response period set forth in the International Bureau’s notice.  Receipt in the Office does not fulfill this requirement.  Any response submitted through the Office for forwarding to the International Bureau should be submitted as soon as possible, but at least one month before the end of the response period in the International Bureau’s notice.  The 
Office will not process any response received in  the Office after the International Bureau’s 
response deadline. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009] 
SUBPART C  -- SUBSEQUENT DESIGNATION SUBMITTED THROUGH THE OFFICE 
§ 7.21  Subsequent designation. 
(a) A subsequent designation may be filed directly with the International Bureau, or, if it meets 
the requi rements o f paragraph (b) o
f this section, submitted through the Office. 
(b) The Office will grant a date of receipt to a subsequent designation that is either filed 
through TE
AS, or typed on the official paper form issued by the International Bureau.  The 
subsequent designation must contain all of the following: 
(1) The international registration number; 
(2) The serial number of the U.S. application or registration number of the U.S. registration 
that formed the basis of the intern atio
nal registration; 
(3) The name and address of the holder of the international registration; (4) A statement that the holder is entitled to file a subsequent designation in the Office, 
specif ying that holder: is a national of the 
United States; has a domicile in the United States; or 
has a real and effective industrial or commercial establishment in the United States.  Where a holder’s address is not in the United States, the holder must provide the address of its U.S. domicile or establishment; 
(5) A list of goods and/or services that is identical to or narrower than the list of goods and/or 
services i n the int ernational regist ration;  
(6) 
A list of the designated Contracting Parties.  If the goods and/or services in the subsequent 
designation are not the same for each design
ated Contracting Party, the holder must list the 
IP/N/1/USA/T/4 
Page 119 -118- January 6, 2012 goods and/or services covered by the subsequent designation that pertain to each designated 
Contracting Party; 
(7) The U.S. transmittal fee required by § 7.6;  (8) If the subsequent designation is filed through TEAS, the subsequent designation fees ( see 
§ 7.7); and 
(9) If the subsequent 
designation is filed through TEAS, an e-mail address for receipt of 
corres pond ence fro m the Office. 
(c) If th e sub s
equent designation is accorded a date of receipt, the Office will then forward the 
subsequent designation to the International
 Bureau. 
(d) If the subsequent designation fails to contain all the elements set forth in paragraph (b) of 
this section, the Office will not forward the subsequent designation to the Internatio
nal Bureau.  
The Office will notify the holder of the reason(s ).  If the holder paid the subsequent designation 
fees ( see § 7.7) through the Office, the Office will refund the subsequent designation fees.  The 
Office will not refund the transmittal fee. 
(e) Correspondence to correct any irregularities in a subsequent designation must be made 
directl y with the International Bureau .
     
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004] 
SUBPART D -- RECORDING CHANGES TO INTERNATIONAL REGISTRATION 
§ 7.22  Recording changes to international registration. 
Except as provided in §§ 7.23 and 7.24, requests to record changes to an international 
regist ration must be file d with t he In ternation al Bureau.  If 
a request to record an assignment or 
restriction of a holder’s right of disposal of an international registration or the release of such a 
restriction meets the requirements of § 7.23 or 7.24, the Office will forward the request to the 
International Bureau.  Section 10 of the Act and part 3 of this chapter are not applicable to assignments or restrictions of international registrations.  
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.23  Requests for recording assignments at the International Bureau.  
A request to record an assignment of an international registration may be submitted through 
the Office for forwarding to the International Burea u onl
y if the assignee cannot obtain the 
assignor’s signature for the request to record the assignment.   
(a) A request to record an assignment submitted through the Office must include all of the 
following:  
(1) The inte rnation al registrati on num
ber; 
(2) The name and address of the holder of the international registration; (3) The name and address of the assignee of the international registration; (4) A statement that the assignee: is a national of the United States; has a domicile in the 
United St ates; or has a real an d effective indus trial or co mme
rcial establishment in the United 
States. Where an assignee’s address is not in the United States, the assignee must provide the 
address of its U.S. domicile or establishment;   
(5) A statement that the assignee could not obtain the assignor’s signature for the request to 
record th e assign ment; 
(6) An indica tion that the assign
ment applies to the designation to the United States;  
IP/N/1/USA/T/4 
Page 120 -119- January 6, 2012 (7) A statement that the assignment applies to all the goods and/or services in the 
international registration, or if less, a list of the goods and/or services in the international 
registration that have been assigned that pertain to the designation to the United States; and 
(8) The U.S. transmittal fee required by § 7.6. 
(b) If a request to record an assignment contains all the elements set forth in paragraph (a) of 
this secti on, the Office will forward the reques t to the International Bureau.  Forwarding the
 
request to the International Bureau is not a determination by the Office of the validity of the 
assignment or the effect that the assignment has on the title of the international registration. 
(c) If the request fails to contain all the elements set forth in paragraph (a) of this section, the 
Office will not forward the request to the Inte rnational Bureau.  The Office will notify the 
assignee(s) of the reaso
n(s).  If the assignee paid the fees to record the assignment ( see § 7.7) 
through the Office, the Office will refund the recording fee.  The Office will not refund the transmittal fee. 
(d) Correspondence to correct any irregularities in a request to record an assignment must be 
made directly wit 
h the International Bureau. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004] 
§ 7.24  Requests to record security interest or other restriction of holder’s rights of 
disposal or release of such restriction submitted through the Office. 
(a) A party who obtained a security interest or other restriction of a holder’s right to dispose of 
an international registration, or th e re
lease of such a restriction, may submit a request to record 
the restriction or release through the Office for forwarding to the International Bureau only if:   
(1) the restriction or release  
(i) is the result of a court order; or  
(ii) is the result of an agreement between the holder of the international registration and the 
party restricting the hold er’s ri
ght of disposal, and the signature of the holder cannot be obtained 
for the request to record the restriction or release; 
(2) the party who obtained the restriction is a national of, is domiciled in, or has a real and 
effective industrial or commer
cial establishment in the United States; and 
(3) the restriction or release applies to the holder’s right to dispose of the international 
regist ration in the  Unite d States. 
  
(b) A request to record a restriction or the release of a restriction must be submitted by the 
party who obtained the 
restriction of the holder’s right of disposal and include all the following: 
(1) The international registration number; 
(2) The name and address of the holder of the international registration; 
(3) The name and address of the party who obtained the restriction; 
(4) A statement that the party who submitted the request: is a national of the United States; 
has a d omicile in the Unit
ed States; or has a real and effective industrial or commercial 
establishment in the United States.  Where a party’s address is not in the United States, the party must provide the address of its U.S. domicile or establishment; 
(5) (i) A statement that the restriction is the result of a court order, or  (ii) where the restriction is the result of an agreement between the holder of the international 
regist ration and the pa rty res tricting the holde
r’s right of disposal, a statement that the signature of 
the holder of the international registration could not be obtained for the request to record the restriction or release of the restriction; 
(6) A summary of the main facts concerning the restriction;   
(7) An indication that the restriction, or the release of the restriction, of the holder’s right of 
disposal  of the int ernational regist rati 
on applies to the designation to the United States; and 
(8) The U.S. transmittal fee required by § 7.6. 
IP/N/1/USA/T/4 
Page 121 -120- January 6, 2012 (c) If a request to record a restriction, or the release of a restriction, contains all the elements 
set forth in paragraph (b) of this section, the Office will forward the request to the International 
Bureau.  Forwarding the request to the International Bureau is not a determination by the Office of the validity of the restriction, or its release, or the effect that the restriction has on the holder’s right 
to dispose of the international registration. 
(d) If the request fails to contain all the elements set forth in paragraph (b) of this section, the 
Office wi ll not forwa rd the req uest.  The Office will no tify th e party 
who submitted the request of 
the reason(s).  The Office will not refund the transmittal fee. 
(e) Correspondence to correct any irregularities in a request to record a restriction of a 
holder’s right to dispose of an international registration or the release of such a restricti
on must be 
made directly with the International Bureau. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
SUBPART E -- EXTENSION OF PROTECTION TO THE UNITED STATES  
§ 7.25  Sections of part 2 applicable to extension of protection. 
(a) Except for §§ 2.22-2.23, 2.130-2.131, 2,160-2.166, 2.173, and 2.181-2.186, all sections in 
parts 2, 10, and 11 of this chapter shall apply to an exte nsi
on of protection of an international 
registration to the United States, including sections related to proceedings before the Trademark 
Trial and Appeal Board, unless otherwise stated.   
(b) The Office will refer to a request for an extension of protection to the United States as an 
application under section 66(a) of the Act, and references to applicati
ons and registrations in part 
2 of this chapter include extensions of protection to the United States.  
(c) Upon registration in the United States under section 69 of the Act, an extension of 
protection to the United States is ref erred to as a  registratio n, a regist
ered extension of protection, 
or a section 66(a) registration. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004; 70 FR 38768, July 6, 2005, e ffective July 18, 2005; 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008; 73 FR 67759, Nov. 17, 2008, effective Jan. 16, 2009; 75 FR 35973, June 24, 2010, effective June 24, 2010] 
§ 7.26  Filing date of extension of protection for purposes of examination in the Office.  
(a) If a request for extension of protection of an international registration to the United States is 
made in an international application and the  re
quest includes a declaration of a bona fide intention 
to use the mark in commerce as set out in § 2.33(e) of this chapter, the filing date of the extension 
of protection to the United States is the international registration date.  
(b) If a request for extension of protection of an international registration to the United States is 
made in a s ubsequ ent d esignat ion a nd the requ est includ es a declaratio n of a bona fide int
ention 
to use the mark in commerce as set out in § 2.33(e), the filing date of the extension of protection 
to the United States is the date that the International Bureau records the subsequent designation.  
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.27  Priority claim of extension of protection for purposes of examination in the Office.   
An extension of protection of an international registration to the United States is entitled to a 
claim of priority under section 67 o f
 the Act if: 
(a) The request for extension of protection contains a claim of priority;  
IP/N/1/USA/T/4 
Page 122 -121- January 6, 2012 (b) The request for extension of protection specifies the filing date, serial number and the 
country of the application that forms the basis for the claim of priority; and 
(c) The date of the international registration or the date of recording of the subsequent 
designation at the International Bure
au of the request for extension of protection to the United 
States is not later than six months after the filing date of the application that forms the basis for the 
claim of priority.  
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.28  Replacement of U.S. registration by registered extension of protection. 
(a) A registered extension of protection affords the same rights as those afforded to a 
previously is sued U.
S. registration if: 
(1) Both registrations are owned by the same person and identify the same mark; and 
(2) All the goods and/or services listed in the U.S. registration are also listed in the registered 
extensio n of protection .   
(b) The
 holder of an international registration with a registered extension of protection to the 
United States that meets the requ
irements of paragraph (a) of this section may file a request to 
note replacement of the U.S. registration with the extension of protection.  If the request contains all of the following, the Office will take note of the replacement in its automated records:  
(1) The serial number or registration number of the extension of protection; (2) The registration number of the replaced U.S. registration; and 
(3) The fee required by § 7.6. 
(c) If the request to note replacement is denied, the Office will notify the holder of the 
reaso n(s) for refusal.   
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.29  Effect of replacement on U.S. registration. 
A U.S. registration that has been replaced by a registered extension of protection under 
section 74 of the Act and § 7.28 
will remain in force, unless cancelled, expired or surrendered, as 
long as: 
(a) The owner of the replaced U.S. registration continues to file affidavits or declarations of 
use in commerce or excusable n
onuse under section 8 of the Act; and 
(b) The replaced U.S. registration is renewed under section 9 of the Act.   
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
§ 7.30  Effect of cancellation or expiration of international registration.  
When the International Bureau notifies the Office of the cancellation or expiration of an 
international registration, in wh
ole or in part, the Office shall cancel, in whole or in part, the 
corresponding pending or registered extension of protection to the United States.  The date of cancellation of an extension of protection or relevant part shall be the date of cancellation or expiration of the corresponding international registration or relevant part. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
IP/N/1/USA/T/4 
Page 123 -122- January 6, 2012 § 7.31  Requirements for transformation of an extension of protection to the United States 
into a U.S. application. 
If the International Bureau cancels an international registration in whole or in part, under 
Article 6(4) of the Madrid Protocol, t he
 holder of that international registration may file a request to 
transform the corresponding pending or registered extension of protection to the United States into an application under section 1 or 44 of the Act.   
(a) The holder of the international registration must file a request for transformation within 
three months of the date of cancellati
on of the international registration and include:    
(1) The serial number or registration number of the extension of protection to the United 
States;   
(2) The name and  address of t he hol
der of the international registration; 
(3) The application filing fee for at  least one class of goods or services required by § 2.6(a)(1) 
of this chapter; and  
(4) 
An e-mail address for receipt of correspondence from the Office.  
(b) If the request for transformation contains all the elements set forth in paragraph (a) of this 
section, t he extensio n of prot ection s hall be tra nsforme d into an applica tio
n under section 1 and/or 
44 of the Act and accorded the same filing date and the same priority that was accorded to the extension of protection. 
(c) The application under section 1 and/or 44 of the Act that results from a transformed 
extension of protection will be exa
mined under part 2 of this chapter.   
(d) A request for transformation that fails to contain all the elements set forth in paragraph (a) 
of this  secti on will  not be accepte d.  
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 69 FR 57181, Sept. 24, 2004, 
effective Oct. 4, 2004] 
SUBPART F -- AFFIDAVIT UNDER SECTIO N 71 OF THE ACT FOR EXTENSION OF 
PROTECTION TO THE UNITED STATES 
§ 7.36  Affidavit or declaration of use in commerce or excusable nonuse required to avoid 
cancellation of an extension of protectio n to 
the United States. 
(a) Subject to the provisions of section 71 of the Act, a registered extension of protection shall 
remain in force for the term of the international registration upon which it is based unless the  
internatio
nal registration expires or is cancelled under section 70 of the Act due to cancellation of 
the international registration by the International Bureau. 
(b) During the following time periods, the holder of an international registration must file an 
affidavit or declaration of use or ex
cusable nonuse , or the registered extension of protection will 
be cancelled under section 71 of the Act: 
(1) On or after the fifth anniversary and no later than the sixth anniversary after the date of 
registration in the United States; and  
(2) Withi
n the year before the end of every ten-y ear period after the date of registration in th e 
United States.  
(3) The affidavit or declaration may be filed within a grace period of six months after the end of 
the d eadline set fo rth in paragraphs (b)(1) a nd 
(b)(2) of this section, with payment of the grace 
period surcharge per class required by section 71(a)(3) of the Act and § 7.6.  
(c) For the requirements for the affidavit or declaration, see § 7.37. 
[Added 68 FR 55748, Sept. 26, 2003, effective No v. 2, 2003; amended 75 FR 35973, June 24, 2010, 
effective June 24, 2010] 
IP/N/1/USA/T/4 
Page 124 -123- January 6, 2012 § 7.37  Requirements for a complete affidavit or declaration of use in commerce or 
excusable nonuse. 
A complete affidavit or declaration under section 71 of the Act must: (a) Be filed by the holder of the international registration within the period set forth in § 7.36(b); (b) Include a statement that is signed and verified (sworn to) or supported by a declaration 
under § 2.20 of this chapte r
 by a person properly authorized to sign on behalf of the holder, 
attesting to the use in commerce or excusable nonuse of the mark within the period set forth in section 71 of the Act.  The verified statement must be executed on or after the beginning of the 
filing period specified in § 7.36(b).  A person who is properly authorized to sign on behalf of the 
holder is:   
(1) A person with legal authority to bind the holder; or  (2) A person with firsthand knowledge of the facts and actual or implied authority to act on 
behalf  of the holde r; or  
(3) An  attorn 
ey as defined in § 11.1 of this chapter who has an actual written or verbal power 
of attorne y or an im
plied power of attorney from the holder.   
(c) Include the U.S. registration number; (d)(1) Include the fee required by § 7.6 for each class of goods or services that the affidavit or 
declaration covers; 
(2) If the affidavit or decl
aration is filed during the grace period under section 71(a)(3) of the 
Act, include the grace period s
urcharge per class required by § 7.6;   
(3) If at least one fee is submitted for a multi-class registration, but the class(es) to which the 
fee(s ) should be  applied are n
ot specified, the Office will issue a notice requiring either the 
submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied.  If the required fee(s) are not submitted within the time period set out in the Office 
action and the class(es) to which the original fee(s) should be applied are not specified, the Office 
will presume that the fee(s) co ver the classes in ascending or der, beginning with the lowest 
numbered class;   
(e)(1) Specify the goods or services for which the mark is in use in commerce, and/or the 
goods or services  for which e 
xcusable nonuse is claimed under § 7.37(f)(2);   
(2) Specify the goods or services being deleted from the registration, if the affidavit or 
declaration covers less  than all th e goods or servic es or less than  all the classes in the  
regist rati
on; 
(f)(1) State that the registered mark is in use in commerce on or in connection with the goods 
or services in the registration; or 
(2) If the registere
d mark is not in use in commerce on or in connection with all the goods or 
services in the registration, set forth 
the date when use of the mark in commerce stopped and the 
approximate date when use is expected to resume and recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark; and 
(g) Include a specimen showing current use of the mark for each class of goods or services, 
unless e xcusable nonuse is clai med un
der § 7.37(f)(2).  The specimen must meet the 
requirements of § 2.56 of this chapter. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008; 75 FR 35973, June 24, 2010, effective June 24, 2010] 
§ 7.38  Notice to holder of extension of protection. 
The registration certificate for an extension of protection to the United States includes a notice 
of the requirement for filing the affida v
it or declaration of use or excusable nonuse under section 
71 of the Act.  However, the affidavit or declaration must be filed within the time period required by 
section 71 of the Act regardless of whether this notice is received. 
IP/N/1/USA/T/4 
Page 125 -124- January 6, 2012 [Added 68 FR 55748, Sept. 26, 2003 , effe ctive Nov. 2, 2003] 
§ 7.39  Acknowledgment of receipt of and correcting deficiencies in affidavit or declaration 
of use in commerce or excusable nonuse. 
The Office will issue a notice as to whether an affidavit or declaration is acceptable, or the 
reasons for refusal.   
(a) A response to the refusal  
must be filed within six months of the date of issuance of the 
Office actio n, or befo re the end of the filing pe riod set forth in section 71 (a) 
of the Act, whichever is 
later.  The response must be signed by the holder, someone with legal authority to bind the holder (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2).   
(b) If no response is filed within this time period, the extension of protection will be cancelled, 
unless ti me remains i n the grace pe riod u nder section 7 1(a
)(3) of the Act.  If time remains in the 
grace period, the holder may file a complete, new affidavit. 
(c) If the affidavit or declaration is filed within the time periods set forth in section 71 of the Act, 
deficiencies may be corrected after notification from
 the Office, as follows: 
(1) Correcting deficiencies in affidavits or declarations timely filed within the periods se t forth in 
sections 71(a)(1) and 71(a)(2) of the Act.  If the affidavit or declaration is timely filed within the relevant filing period set forth in section 71(a)(1) or section 71(a)(2) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge.  Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 71(c) of the Act and § 7.6.   
(2) Correcting deficiencies in affidavits or declarations filed during the grace period .  If th
 e 
affidavit or declaration is filed during the six-month grace period provided by section 71(a)(3) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 71(c) of the Act and § 7.6.   
(d) If the affidavit or declaration is not filed within the time periods set forth in section 71 of the 
Act, the registration will be cancelled. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009; 75 FR 35973,  June 24, 2010, effective June 24, 2010; 76 FR 69132, Nov. 8, 2011, 
effective Nov. 8, 2011] 
§ 7.40  Petition to Director to review refusal. 
(a) A response to the examiner’s initial refusal to accept an affidavit or declaration is required 
before filing a petition to the Director, unless the examiner directs otherwise.  See § 7.3 9(b) f
or the 
deadline for responding to an examiner’s Office action. 
(b) If the examiner maintains the refusal of the affidavit or declaration, the holder may file a 
petition to the Di rector to re view the e
xaminer’s action.  The petition must be filed within six 
months of the date of issuance of the action maintaining the refusal, or the Office will cancel the 
registration.   
(c) A decision by the Director is necessary before filing an appeal or commencing a civil action 
in any court. 
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003; amended 73 FR 67759, Nov. 17, 2008, 
effective Jan. 16, 2009] 
IP/N/1/USA/T/4 
Page 126 -125- January 6, 2012 SUBPART G--RENEWAL OF INTERNATIONAL REGISTRATION AND EXTENSION OF 
PROTECTION 
§ 7.41  Renewal of international registration and extension of protection. 
(a) Any request to renew an international registration and its extension of protection to the 
United Sta tes must be made at the In
ternational Bureau in accordance with Article 7 of the Madrid 
Protocol. 
(b) A request to renew an international registration or extension of protection to the United 
States submitted through the Office will not be processed.   
[Added 68 FR 55748, Sept. 26, 2003, effective Nov. 2, 2003] 
IP/N/1/USA/T/4 
Page 127IP/N/1/USA/T/4 
Page 128 -127- January 6, 2012 37 C.F.R. PART 10—R EPRESENTATION OF OTHERS BEFORE THE 
PATENT AND TRADE MARK OFFICE 
AUTHORITY:  5 U.S.C. 500; 15 U.S.C. 1123; 35 U.S.C. 2, 6, 32, 41. 
SOURCE:  50 FR 5172, Feb. 6, 1985, unless otherwise noted. 
§ 10.1  Definitions.   
This part governs solely the practice of patent, trademark, and other law before the Patent and 
Trademark Office.  Nothing in this pa
rt shall be construed to preempt the authority of each State to 
regulate the practice of law, except to the extent necessary for the Patent and Trademark Office to 
accomplish its federal objectives. Unless otherwise clear from the context, the following definitions 
apply to this part: 
(a) “Affidavit ” means  affidavit, decla ration under 35 U.S.C. 25 (see § 1.68 and § 2.20 of this 
subchapter), or statutory declaration under 28 U.S.C. 1746. 
(b) “Application” includes an application for a design, plant , or utility patent, an application to 
reissue any patent, and an application to register a trademark. 
(c) “Attorney ” or “ lawyer ” mea ns an indi vidual wh o is a me mber in good st anding of the bar of 
any United States court or the highest court of any State.  A “ non-lawyer” is a person who is not 
an attorney or lawyer. 
(d) “Canon ” is defined in § 10.20(a). 
(e) “Confi
dence” is defined in § 10.57(a). 
(f) “Diffe
ring interests ” include every interest t hat may adversely affect either the judgment or 
the loyalty of a practitioner to a client, whether it be a conflicting, inconsistent, diverse, or other interest. 
(g) “Director” means the Director of Enrollment and Discipline. (h) “Disciplinary Rule ” is defined in § 10.20(b). 
(i) “Employ ee of a tribun
al” inclu des all employe es of courts, the Office, and other adjudicatory 
bodies. 
(j) “Giving information ” within the meaning of  § 10.23(c) (2) includes making (1) a written 
statement or representation or (2) an oral statement or representation.  
(k) “Law firm ” includes a professional legal corporation or a partnership. 
(l) “Legal counsel ” mean s pract itioner. 
(m)“
Legal profession ” includes the individuals who are la wfully engaged in practice of patent, 
trademark, and other law before the Office. 
(n) “Legal service” means any legal service which may lawfully be performed by a practitioner 
before the Office. 
(o) “Legal Syste
m” includes the Office and courts and adjudicatory b odies which review 
matters on which the Office has acted. 
(p) “Office” means Patent and Trademark Office. 
(q) “Person ” includ es a  corp oration
, an  association, a trust, a partnership, and any other 
organization or legal entity. 
(r) “Practitioner” means (1) an attorne y or agent registered to practice before the Office in 
patent cases or (2) an individual authorized under 5 U.S.C. 500(b) or otherwise as provided by this subchapter, to practice before the Office in trademark cases or other non-patent cases. A “suspended or excluded practitioner ” is a practitioner who is suspended or excluded under 
10.156. A “ non-practitioner ” is an individual who is not a practitioner. 
(s) A “proceeding before the Office ” includes a n applicat ion, a ree xaminatio
 n, a protest, a 
public use proceeding, a patent interference, an inter partes  trademark proceeding, or any other 
proceeding which is pending before the Office. 
(t) “Professional legal corporation” means a corporation authorized by law to practice law for 
profit. 
IP/N/1/USA/T/4 
Page 129 -128- January 6, 2012 (u) “Registration ” means registration to practice before the Office in patent cases. 
(v) “Respondent ” is defined in § 10.134(a)(1). 
(w) “Secret ” is defined i
n § 10.57(a). 
(x) “Solicit ” is
 defined in § 10.33. 
(y) “State” includes t he Distric t of Columbia, Puert o Ric o, and other federal territories and 
possessions. 
(z) “Tribunal ” includes courts, the Office, and other adj udicatory bodies. 
(aa) “ United States” means the United States of America, its territories and possessions. 
[Added 50 FR 5172, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.2 - 10.3 [Reserved] 
[69 FR 35428, June 24, 2004, effective July 26, 2004] 
§ 10.4  [Reserved] 
(a) The Commissioner shall appoint a Committee on Discipline.  The Committee on Discipline 
shall consist of at least three employees of the Office, none o f
 whom reports directly or indirectly 
to the Director or the Solicitor.  Each member of the Committee on Discipline shall be a member in 
good standing of the bar of a State. 
(b) The Committee on Discipline shall meet at the request of the Director and after reviewing 
evidence p resente d by the Directo r shall, b y
 majority vote, determine whether there is probable 
cause to bring charges under § 10.132 against a practitioner.  When charges are brought against 
a practitioner, no member of the Committee on Discipline, employee under the direction of the 
Director, or associate solicitor or assistant solicitor in the Office of Solicitor shall participate in rendering a decision on the charges. 
(c) No discovery shall be authorized of, and no member of the Committee on Discipline shall 
be requi red to testi fy about, deliberati 
ons of the Committee on Discipline. 
[Removed 73 FR 59514, Oct. 9, 2008] 
INDIVIDUALS ENTITLED TO PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE 
§ 10.5 -10  [Reserved] 
[69 FR 35428, June 24, 2004, effective July 26, 2004] 
§ 10.11  Removing names from the register. 
A letter may be addressed to any individual on t he register, at the address of which separate  
notice 
was last received by the Director, for the purpose of ascertaining whether such individual 
desires to remain on the register. The name of any individual failing to reply and give any information requested by the Director within a time  limit specified will be removed from the register 
and the names of individuals so removed will be published in the Official Gazette. The name of any individual so removed may be reinstated on the register as may be appropriate and upon payment of the fee set forth in Sec.  1.21(a)(3) of this subchapter. 
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; amended 69 FR 35428, June 24, 2004, effective 
July 26, 2004] 
IP/N/1/USA/T/4 
Page 130 -129- January 6, 2012 § 10.14   [Reserved] 
[73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 10.15   [Reserved] 
[73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 10.18  [Reserved] 
[73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
PATENT AND TRADEMARK OFFICE CODE OF PROFESSIONAL RESPONSIBILITY 
§ 10.20  Canons and Disciplinary Rules. 
(a) Canons are set out in §§ 10.21, 10.30, 10.46, 10.56, 10.61, 10.76, 10.83, 10.100, and 
10.11 0.  Canons a re stat
ements of axiomatic norms, expressing in general terms the standards of 
professional conduct expected of practitioners in their relationships with the public, with the legal 
system, and with the legal profession. 
(b) Disciplinary Rules are set out in §§ 10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 
10.77 , 10.78, 10 .84, 10.85,  10.
87-10.89, 10.92, 10.93, 10.101-10.103, 10.111, and 10.112.  
Disciplinary Rules are mandatory in character and state the minimum level of conduct below which no practitioner can fall without being subjected to disciplinary action. 
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.21  Canon 1. 
A practitioner should assist in maintaining the integrity and competence of the legal 
profession. 
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.22  Maintaining integrity and competence of the legal profession. 
(a) A practitioner is subject to discipline if the practitioner has made a materially false 
statement in, or if the pr actitio
ner has deliberately failed to disclose a material fact requested in 
connection with, the practitioner’s application for registration or membership in the bar of any 
United States court or any State court or his or her authority to otherwise practice before the 
Office in trademark and other non-patent cases. 
(b) A practitioner shall not further the application for regist ration  or me mbershi p in the bar of 
any United States court, State court, or administrative agency of another person known by the practitioner to be unqualified in respect to character, education, or other relative attribute. 
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985] 
IP/N/1/USA/T/4 
Page 131 -130- January 6, 2012 § 10.23  Misconduct . 
(a) A practitioner shall not engage in disreputable or gross misconduct. 
(b) A practitioner shall not: 
(1) Violate a Disciplinary Rule. (2) Circumvent a Disciplinary Rule through actions of another. (3) Engage in illegal conduct involving moral turpitude. (4) Engage in conduct involving dishonesty, fraud, deceit, or misrepresentation. (5) Engage in conduct that is prejudicial to the administration of justice. 
(6) Engage in any other conduct that adversely reflects on the practitioner’s fitness to practice 
before the Office. 
(c) Conduct which constitutes a violat ion of paragraphs (a) a
nd (b) of this section includes, but 
is not limited to: 
(1) Conviction of 
a criminal offense involving moral turpitude, dishonesty, or breach of trust. 
(2) Knowingly giving false or misleading information or knowingly participating in a material 
way in giving false  or misleadin g info
rmation, to: 
(i) A client in connection with any immediate, prospective, or pending business before the 
Office. 
(ii) The Office or any employ
ee of the Office. 
(3) Misappropriation of, or failure to properly or timely remit, funds received by a practitioner or 
the practitioner’s firm from a client to pay a fee which the client is required by law to pay to the 
Off
ice. 
(4) Directly or indirectly improperly influencing, attempting to improperly influence, offering or 
agreeing to improperly in
fluence, or attempting to offer or agree to improperly influence an official 
action of any employee of the Office by: 
(i) Use of threats, false accusations, duress, or coercion, 
(ii) An offer of any special inducement or promise of advantage, or (iii) Improperly bestowing of any gift, favor, or thing of value.  (5) Suspension or disbarment from practice as an attorney or agent on ethical grounds by any 
duly consti tuted a uthority of a Stat e or th e Uni
ted States or, in the case of a practitioner who 
resides in a foreign country or is registered un der § 11.6(c), by any duly constituted authority of: 
(i) A State, (ii) The United States, or (iii) The country in which the practitioner resides. (6) Knowingly aiding or abetting a practitioner suspended or excluded from practice before the 
Office in  engaging in unauthorized practice b
efore the Office under § 11.58. 
(7) Knowingly withholding from the Office information identifying a patent or patent application 
of another from which  one or more cl aims have been c
opied. See §§ 1.604(b) and 1.607(c) of this 
subchapter. 
(8) Failing to inform a client or former client or failing to timely notify the Office of an inability to 
notify a client or former client of correspondence received fro
m the Office or the client’s or former 
client’s opponent in an inter partes  proceeding before the Office when the correspondence (i) 
could have a significant effect on a matter pending before the Office, (ii) is received by the practitioner on behalf of a client or former client and (iii) is correspondence of which a reasonable practitioner would believe under the circumstances the client or former client should be notified. 
(9) Knowingly misusing a ‘‘Certificate of Mailing or Transmission” under § 1.8 of this chapter. (10) Knowingly violating or causing to be violated the requirements of § 1.56 or § 1.555 of this 
subchap ter. 
(11) Exce pt as permitte d by § 1.52(c) of th
is chapter, knowingly filing or causing to be filed an 
applica tion c ontain ing an y mate rial al teration 
made in the application papers after the signing of 
the accompanying oath or declaration without identifying the alteration at the time of filing the application papers. 
IP/N/1/USA/T/4 
Page 132 -131- January 6, 2012 (12) Knowingly filing, or causing to be filed, a frivolous complaint alleging a violation by a 
practitioner of the Patent and Trademark Office Code of Professional Responsibility. 
(13) Knowingly preparing or prosecuting or providing assistance in the preparation or 
prosecution of a patent applicati
on in violation of an undertaking signed under § 11.10(b). 
(14) Knowingly failing to advise the Director in writing of any change which would preclude 
continu ed re gistra tion un der § 11.6. 
(15) Signi
ng a paper filed in the Office in violation of the provisions of § 11.18 or making a 
scandalous or indecent stateme
nt in a paper filed in the Office. 
(16) Willfully refusing to reveal or report knowledge or evidence to the Director contrary to 
§ 10.24 or § 11.22(b). 
(17) Repr
esenting before the Office in a patent case either a joint venture comprising an 
invento r and an in vention de
veloper or an inventor referred to the registered practitioner by an 
invention developer when (i) the registered practitioner knows, or has been advised by the Office, 
that a formal complaint filed by a federal or state agency, based on any violation of any law relating to securities, unfair methods of competition, unfair or deceptive acts or practices, mail 
fraud, or other civil or criminal conduct, is pending before a federal or state court or federal or 
state agency, or has been resolved unfavorably by such court or agency, against the invention developer in connection with invention development services and (ii) the registered practitioner fails to fully advise the inventor of the existence of the pending complaint or unfavorable resolution thereof prior to undertaking or continuing representation of the joint venture or inventor. “Invention 
developer” means any person, and any agent, employee, officer, partner, or independent 
contractor thereof, who is not a registered practitioner and who advertises invention development services in media of general circulation or who enters into contracts for invention development services with customers as a result of such advertisement.  “Invention development services” 
means acts of invention development required or promised to be performed, or actually performed, or both, by an invention developer for a customer. “Invention development” means the 
evaluation, perfection, marketing, brokering, or promotion of an invention on behalf of a customer 
by an invention developer, including a patent search, preparation of a patent application, or any other act done by an invention developer for consideration toward the end of procuring or attempting to procure a license, buyer, or patent for an invention. “Customer” means any individual who has made an invention and who enters into a contract for invention development 
services with an invention developer with respect to the invention by which the inventor becomes 
obligated to pay the invention developer less than $5,000 (not to include any additional sums which the invention developer is to receive as a result of successful development of the invention).  “Contract for invention development services” means a contract for invention development services with an invention developer with respect to an invention made by a customer by which the inventor becomes obligated to pay the invention developer less than $5,000 (not to include 
any additional sums which the invention developer is to receive as a result of successful 
development of the invention). 
(18) In the absence of information sufficient to establish a reasonable belief that fraud or 
inequi table c onduct h as occurred, all eging be fore a tribunal t h
at anyone has committed a fraud on 
the Office or engaged in inequitable conduct in a proceeding before the Office. 
(19) Action by an employee of the Office contrary to the provisions set forth in § 11.10(d). (20) Knowing practice by a Government employee contrary to applicable Federal conflict of 
interest la ws, or regulations of the 
Department, agency, or commission employing said individual. 
(d) A practitioner who acts with reckless indiffe rence to whether a representat ion is true or 
false is chargeable with knowledge of its falsity.  Deceitful statements of half-truths or 
concealment of material facts shall be deemed actual fraud within the meaning of this part. 
[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 1985; amended 50 FR 25073, June 17, 1985; 50 FR 
25980, June 24, 1985; paras. (c)(13), ( 19) & (20), 53 FR 33950, Oct. 4, 1988, effective Nov. 4, 1988; 
corrected 53 FR 41278, Oct. 20, 1988; paras. (c)(10) & (c )(11), 57 FR 2021, Jan. 17, 1992, effective Mar. 
16, 1992; para. (c)(a) amended, 58 FR 54494, Oct. 2, 1993,  effective Nov. 22, 1993; para. (c)(9) amended, 
IP/N/1/USA/T/4 
Page 133 -132- January 6, 2012 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; 62 FR 53186, Oct. 10, 1997; 65 FR 54604, Sept. 8, 
2000; 73  FR 59514, Oc t. 9, 2008 ] 
§ 10.24  Disclosure of information to authorities. 
(a) A practitioner possessing unprivileged knowledge of a violation of a Disciplinary Rule shall 
report such knowledge to the Directo r
. 
(b) A practitioner possessing unprivileged knowledge or evidence concerning another 
practi tione r, emplo yee of the Office, or
 a judge shall reveal fully such knowledge or evidence upon 
proper request of a tribunal or other authority empowered to investigate or act upon the conduct of 
practitioners, employees of the Office, or judges. 
[Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.30  Canon 2. 
A practitioner should assist the legal profession in fulfilling its duty to make legal counsel 
available. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.31  Communications concerning a practitioner’s services. 
(a) No practitioner shall with respect to any prospective business before the Office, by word, 
circular, letter, or advertising, with intent t o de
fraud in any manner, deceive, mislead, or threaten 
any prospective applicant or other person having immediate or prospective business before the Office. 
(b) A practitioner may not use the name of a Member of either House of Congress or of an 
individual in the service  of the Uni ted Sta tes in  advertisi ng 
the practitioner’s practice before the 
Office. 
(c) Unless authorized under § 11.14(b), a non-lawyer practitioner shall not hold himself or 
herself out as authorized to practic
e before the Office in trademark cases. 
(d) Unless a practitioner is an attorney, the practitioner shall not hold himself or herself out: (1) To be an attorney or lawyer or (2) As authorized to practice before the Office in non-patent and trademark cases. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar.  8, 1985; amended 73 FR 59514, Oct. 9, 2008] 
§ 10.32  Advertising.  
(a) Subject to § 10.31, a practitioner may advertise services through public media, including a 
telephone directory, legal directory, newsp ape
r, or other periodical, radio, or television, or through 
written communications not involving solicitation as defined by § 10.33. 
(b) A practitioner shall not give anything of value to a person for recommending the 
practitioner’s services, except that a prac
titioner may pay the reasonable cost of advertising or 
written communication permitted by this section and may pay the usual charges of a not-for-profit lawyer referral service or other legal service organization. 
(c) Any communication made pursuant to this section shall include the name of at least one 
practi tione r responsib le for its  cont ent. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
IP/N/1/USA/T/4 
Page 134 -133- January 6, 2012 § 10.33  Direct contact with prospective clients. 
A practitioner may not solicit professional employment from a prospective client with whom the 
practitioner has no family or prior profession al relatio
nship, by mail, in-person, or otherwise, when 
a significant motive for the practitioner’s doing so is the practitioner’s pecuniary gain under 
circumstances evidencing undue influence, intimidation, or overreaching.  The term “solicit” includes contact in person, by telephone or telegraph, by letter or other writing, or by other communication directed to a specific recipient, but does not include letters addressed or advertising circulars distributed generally to persons not specifically known to need legal services 
of the kind provided by the practitioner in a particular manner, but who are so situated that they 
might in general find such services useful. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.34  Communications of fields of practice. 
A registered practitioner may state or imply that  the practitioner is a specia l ist as follows: 
(a) A registered practitioner who is an attorney may use the designation “Patents,” “Patent 
Attorney,” “Patent Lawyer
,” “Registered Patent Attorney,” or a substantially similar designation. 
(b) A registered practitioner who is not an attorney may use the designation “Patents,” “Patent 
Agent,” “Registered Patent Agent,” or a subst antially similar designa
tion, except that any 
practitioner who was registered prior to November 15, 1938, may refer to himself or herself as a 
“patent attorney.” 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.35  Firm names and letterheads. 
(a) A practitioner shall not use a firm name, letterhead, or other professional designation that 
violates § 10.31. A tra
de name may be used by a practitioner in private practice if it does not imply 
a current connection with a government agency or with a public or charitable legal services 
organization and is not otherwise in violation of § 10.31. 
(b) Practitioners may state or imply that they practice in a partnership or other organization 
only when  that is t he fact. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.36  Fees for legal services. 
(a) A practitioner shall not enter into an agreement for, charge, or collect an illegal or clearly 
excessive fee. 
(b) A fee is clearly  exc
essive when, after a review of the facts, a practitioner of ordinary 
prudence would be left with a defini
te and firm conviction that the fee is in excess of a reasonable 
fee. Factors to be considered as guides in determining the reasonableness of a fee include the following: 
(1) The time and labor required, the novelty and difficulty of the questions involved, and the 
skill requisite to perform the legal s ervice properl y. 
(2) Th e likeli hood, if a
pparent to the client, that the acceptance of the particular employment 
will preclude other employme nt by the practitioner. 
(3) The fee customarily charged for similar legal services. (4) The amount involved and the results obtained. (5) The time limitations imposed by the client or by the circumstances. 
IP/N/1/USA/T/4 
Page 135 -134- January 6, 2012 (6) The nature and length of the professional relationship with the client. 
(7) The experience, reputation, and ability of the practitioner or practitioners performing the 
services. 
(8) Whether the fee is fixed or con
tingent. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.37  Division of fees among practitioners. 
(a) A practitioner shall not divide a fee for legal services with another practitioner who is not a 
partner in or associate of the pr acti
tioner’s law firm or law office, unless: 
(1) The client consents to employment of the other practitioner after a full disclosure that a 
division of fees will be made. 
(2) The divis
ion is made in proportion to the se rvices pe rforme d and  responsibility assumed by  
each. 
(3) The total fee of the practitioners does not clearly exceed reasonable compensation for all 
legal services rendered to the client. 
(b) This sect
ion does not prohibit payment to a former partner or associate pursuant to a 
separation or retirement agreement .  
 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.38  Agreements restricting the practice of a practitioner. 
(a) A practitioner shall not be a party to or participate in a partnership or employment 
agreement with another practitioner that restric t
s the right of a practitioner to practice before the 
Office after the termination of a relationship created by the agreement, except as a condition to payment of retirement benefits. 
(b) In connection with the settlement of a controversy or suit, a practitioner shall not enter into 
an ag reement that restricts the  practi tione 
r’s right to practice before the Office. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.39  Acceptance of employment. 
A practitioner shall not accept employment on behalf of a person if the practitioner knows or it 
is obvious that such person wishes to: 
(a) Bring a l egal actio
n, commence a proceeding before the Office, conduct a defense, assert 
a position in any proceeding pending before the Office, or otherwise have steps tak
en for the 
person, merely for the purpose of harassing or maliciously injuring any other person. 
(b) Present a claim or defense in litigation or any proceeding before the Office that it is not 
warran ted u nder e xisting law, u nless it can be su pported b y
 good faith argument for an extension, 
modification, or reversal of existing law. 
[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.40  Withdrawal from employment. 
(a) A practitioner shall not withdraw from employment in a proceeding before the Office 
without permission from the Office (see §§ 1. 36 and 2.
19 of this subchapter). In any event, a 
practitioner shall not withdraw from employment until the practitioner has taken reasonable steps to avoid foreseeable prejudice to the rights of the client, including giving due notice to his or her 
IP/N/1/USA/T/4 
Page 136 -135- January 6, 2012 client, allowing time for employment of another practitioner, delivering to the client all papers and 
property to which the client is entitled, and complying with applicable laws and rules. A practitioner who withdraws from employment shall refund promptly any part of a fee paid in advance that has not been earned. 
(b) Manda tory withdrawal . A practitioner represe
 nting a client before the Office shall withdraw 
from employment if: 
(1) The practitioner knows or it is obvious that the client is bringing a legal action, commencing 
a proceeding before the Office, con
ducting a defense, or asserting a position in litigation or any 
proceeding pending before the Office, or is otherwise having steps taken for the client, merely for the purpose of harassing or maliciously injuring any person; 
(2) The practitioner knows or it is obvious that the practitioner’s continued employment will 
result in violation of a Disciplinary Rule; 
(3) T he p
ractitioner’s mental or physical condition renders it unreasonably difficult for the 
practitioner to carry out the emp
loyment effectively; or 
(4) The practitioner is discharged by the client. 
(c) Permissi ve wit hdrawal.  If paragraph (b ) of t his section is not applicable, a practitioner may 
not request permission to withdraw in matters pending before the Office unless such request or 
such withdrawal is because: 
(1) The petitioner’s client: (i) Insists upon presenting a claim or defense that is not warranted under existing law and 
cannot be supported by 
good faith argument for an extension, modification, or reversal of existing 
law; 
(ii) Personally seeks to pursue an illegal course of conduct; (iii) Insists that the practitioner pursue a course of conduct that is illegal or that is prohibited 
unde r a Disciplinary Rule ; 
(iv) By other conduc t rende
rs it unreasonably difficult for the practitioner to carry out the 
employment effectivel
y; 
(v) Insists, in a matter not pending before a tribunal, that the practitioner engage in conduct 
that is co ntrary to  the judgme
nt and advice of the practitioner but not prohibited under the 
Disciplinary Rule; or 
(vi) Has failed to pay one or more bills rendered by the practitioner for an unreasonable period 
of time or has failed to hono
r an agreement to pay a retainer in advance of the performance of 
legal services. 
(2) The practitioner’s continued employment is likely to result in a violation of a Disciplinary 
Rule; 
(3) The prac titioner’s inability to  work with co-counsel indic ates that the best interes t
s of the 
client likel
y will be served by withdrawal; 
(4) The practitioner’s mental or physical condition renders it difficult for the practitioner to carry 
out the employment eff ectivel
y; 
(5) The practitioner’s client knowingly and freely assents to termination of the employment; or (6) The practitioner believes in good faith, in a proceeding pending before the Office, that the 
Office will find the existenc
e of other good cause for withdrawal. 
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.46 Canon 3. 
A practitioner should assist in preventing the unauthorized practice of law. 
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 
IP/N/1/USA/T/4 
Page 137 -136- January 6, 2012 § 10.47  Aiding unauthorized practice of law. 
(a) A practitioner shall not aid a non-practitioner in the unauthorized practice of law before the 
Office. 
(b) A practitioner shall not aid a suspended o r
 excluded practitioner in the practice of law 
before the Office. 
(c) A practitioner shall n
ot aid a non-lawye r in the unauthorized practice of law. 
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.48  Sharing legal fees. 
A practitioner or a firm of practitioners shall not share legal fees with a non-practitioner except 
that: 
(a) An agreement by a practitioner with the practitioner’s firm, partner, or associate may 
provide for the payment of money, ove r
 a reasonable period of time after the practitioner’s death, 
to the practitioner’s estate or to one or more specified persons. 
(b) A practitioner who undertakes to complete unfinished legal business of a deceased 
practi tione r ma y pay to the estate  of the dec eased pract i
tioner that proportion of the total 
compensation which fairly represents the services rendered by the deceased practitioner. 
(c) A practitioner or firm of practitioners may include non-practitioner employees in a 
compensation or retirement plan, even th
ough the plan is based in whole or in part on a profit-
sharing arrangement, providing such plan does not circumvent another Disciplinary Rule. 
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.49  Forming a partnership with a non-practitioner. 
A practitioner shall not form a partnership with a non–practitioner if any of the activities of the 
partnership consist of the practice of pate nt, 
trademark, or other law before the Office. 
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.56  Canon 4. 
A practitioner should preserve the confidences and secrets of a client. 
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.57  Preservation of confidences and secrets of a client. 
(a) “Confidence” refers to information protected by the attorney-client or agent-client privilege 
under applicable law. “Secret” refers to the other info rma
tion gained in the professional 
relationship that the client has requested be held inviolate or the disclosure of which would be 
embarrassing or would be likely to be detrimental to the client. 
(b) Except when permitted under paragraph (c) of this section, a practitioner shall not 
knowi ngly: 
(1) Re veal a  confid ence  or secret of a 
client. 
(2) Use a confidence or secret of a client to the disadvantage of the client. 
(3) Use a confidence or secret of a client for the advantage of the practitioner or of a third 
person, unless the client consents after full disclo
sure. 
(c) A practitioner may reveal: 
IP/N/1/USA/T/4 
Page 138 -137- January 6, 2012 (1) Confidences or secrets with the consent of the client affected but only after a full disclosure 
to the client. 
(2) Confidences or secrets when permitted un der Disciplinary Rules or re quired by law or 
court order. 
(3) The intention of a client to commit a crime and the information necessary to prevent the 
crime. 
(4) Confidences or secrets necessary to establish or collect the practitioner’s fee or to defend 
the p ractitioner o r the p
ractitioner’s employees or associates against an accusation of wrongful 
conduct. 
(d) A practitioner shall exercise reasonable care to prevent the practitioner’s employees, 
associates, and others whose services are ut
ilized by the practitioner from disclosing or using 
confidences or secrets of a client, except that a practitioner may reveal the information allowed by 
paragraph (c) of this section through an employee. 
[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.61  Canon 5. 
A practitioner should exercise independent professional judgment on behalf of a client. 
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.62  Refusing employment when the interest of the practitioner may impair the practitioner’s independent professional judgment. 
(a) Except with the consent of a client after full disclosure, a practitioner shall not accept 
employment if the ex e 
rcise of the practitioner’s professional judgment on behalf of the client will 
be or reasonably may be affected by the practitioner’s own financial, business, property, or personal interests. 
(b) A practitioner shall not accept employment in a proceeding before the Office if the 
practitioner knows or it is obvi
ous that the practitioner or another practitioner in the practitioner’s 
firm ought to sign an affidavit to be filed in the Office or be called as a witness, except that the practitioner may undertake the employment and the practitioner or another practitioner in the practitioner’s firm may testify: 
(1) If the testimony will relate so lely to an uncontested matter. 
(2) If t he tes timon y will relate sol
ely to a matter of formality and there is no reason to believe 
that s ubsta ntial evidence
 will be offered in opposition to the testimony. 
(3) If the testimony will relate solely to the nature and value of legal services rendered in the 
case by the practitioner or th
e practitioner’s firm to the client. 
(4) As to any matter, if refusal would work a substantial hardship on the client because of the 
distinctive value of the pr
actitioner or the practitioner’s firm as counsel in the particular case. 
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.63  Withdrawal when the practitioner becomes a witness. 
(a) If, after undertaking employment in a proceeding in the Office, a practitioner learns or it is 
obvious that the practitioner or another practiti oner in the 
practitioner’s firm ought to sign an 
affidavit to be filed in the Office or be called as a witness on behalf of a practitioner’s client, the practitioner shall withdraw from the conduct of the proceeding and the practitioner’s firm, if any, shall not continue representation in the proceeding, except that the practitioner may continue the 
IP/N/1/USA/T/4 
Page 139 -138- January 6, 2012 representation and the practitioner or another practitioner in the practitioner’s firm may testify in 
the circumstances enumerated in paragraphs (1) through (4) of § 10.62(b). 
(b) If, after undertaking employment in a proceeding before the Office, a practitioner learns or 
it is obvious that the practitioner or a
nother practitioner in the practitioner’s firm may be asked to 
sign an affidavit to be filed in the Office or be called as a witness other than on behalf of the practitioner’s client, the practitioner may continue the representation until it is apparent that the practitioner’s affidavit or testimony is or may be prejudicial to the practitioner’s client. 
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.64  Avoiding acquisition of interest in litigation or proceeding before the Office. 
(a) A practitioner shall not acquire a proprietary interest in the subject matter of a proceeding 
before the Office which the practiti on
er is conducting for a client, except that the practitioner may: 
(1) Acquire a lien granted by law to secure the practitioner’s fee or expenses; or (2) Contract with a client for a reasonable contingent fee; or (3) In a patent case, take an interest in the patent as part or all of his or her fee. 
(b) While representing a client in connection with a contemplated or pending proceeding 
before the Office, a practitio ner s h
all not advance or guarantee financial assistance to a client, 
except that a practitioner may advance or guarantee the expenses of going forward in a 
proceeding before the Office including fees required by law to be paid to the Office, expenses of investigation, expenses of medical examination, and costs of obtaining and presenting evidence, 
provided the client remains ultimately liable for such expenses. A practitioner may, however, 
advance any fee required to prevent or remedy an abandonment of a client’s application by reason of an act or omission attributable to the practitioner and not to the client, whether or not the client is ultimately liable for such fee. 
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.65  Limiting business relations with a client. 
A practitioner shall not enter into a business transaction with a client if they have differing 
interests therein and if the client e x
pects the practitioner to exercise professional judgment therein 
for the protection of the client, unless the client has consented after full disclosure. 
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.66  Refusing to accept or continue employment if the interests of another client may 
impair the independent professional judgment of the practitioner. 
(a) A practitioner shall decline proffered employment if the exercise of the practitioner’s 
independent professional judgment in behalf of a  client wil
l be or is likely to be adversely affected 
by the acceptance of the proffered employment, or if it would be likely to involve the practitioner in representing differing interests, except to the extent permitted under paragraph (c) of this section. 
(b) A practitioner shall not continue multiple employment if the exercise of the practitioner’s 
independent professional judgment in behalf of a  client wil 
l be or is likely to be adversely affected 
by the practitioner’s representation of another client, or if it would be likely to involve the 
practitioner in representing differing interests, except to the extent permitted under paragraph (c) 
of this section. 
(c) In the situations covered by paragraphs (a) and (b) of this section, a practitioner may 
represent multiple cli ents if it is ob vious tha t the practi
tioner can adequately represent the interest 
of each and if each consents to the representation after full disclosure of the possible effect of 
IP/N/1/USA/T/4 
Page 140 -139- January 6, 2012 such representation on the exercise of the practitioner’s independent professional judgment on 
behalf of each. 
(d) If a practitioner is required to decline employment or to withdraw from employment under a 
Disciplinary Rule, no partner, or associate, 
or any other practitioner affiliated with the practitioner 
or the practitioner’s firm, may accept or continue such employment unless otherwise ordered by the Director or Commissioner. 
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.67  Settling similar claims of clients. 
A practitioner who represents two or more clients shall not make or participate in the making 
of an aggregate settlem ent 
of the claims of or against the practitioner’s clients, unless each client 
has consented to the settlement after being advised of the existence and nature of all the claims involved in the proposed settlement, of the total amount of the settlement, and of the participation of each person in the settlement. 
[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.68  Avoiding influence by others than the client. 
(a) Except with the consent of the practitioner’s client after full disclosure, a practitioner shall 
not: 
(1) Accept compensation from one other than the practitioner’s client for the practitioner’s legal 
services to or for the client. 
(2) Acc ept f
rom one other than the practitioner’s client any thing of value related to the 
practi tione r’s represen tation of
 or the practitioner’s employment by the client. 
(b) A practitioner shall not permit a person who recommends, employs, or pays the 
practitioner to render legal services f
or another, to direct or regulate the practitioner’s professional 
judgment in rendering such legal services. 
(c) A practitioner shall not practice with or in the form of a professional corporation or 
associati on autho rized  to prac tice la w fo
r a profit, if a non-practitioner has the right to direct or 
control the professional judgment of a practitioner. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.76  Canon 6. 
A practitioner should represent a client competently. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.77  Failing to act competently. 
A practitioner shall not: 
(a) Handle a legal matter which the practitioner k nows  or should know that the pract itioner is 
not competent to handle, without associating with the practitioner another practitioner who is 
competent to handle it. 
(b) Handle a legal matter without preparation adequate in the circumstances. (c) Neglect a legal matter entrusted to the practitioner. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
IP/N/1/USA/T/4 
Page 141 -140- January 6, 2012 § 10.78  Limiting liability to client. 
A practitioner shall not attempt to exonerate hims elf or herself from, or limit his or her liability 
to, a client for his or her p erson
al malpractice. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.83  Canon 7. 
A practitioner should represent a client zealously within the bounds of the law. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.84  Representing a client zealously. 
(a) A practitioner shall not intentionally: 
(1) Fail to seek the lawful objectives of a client through reasonable available means permitted 
by law and the Disciplinary Rules, except as provided by  pa
ragraph (b) of this section. A 
practitioner does not violate the provisions of this section, however, by acceding to reasonable requests of opposing counsel which do not prejudice the rights of the client, by being punctual in fulfilling all professional commitments, by avoiding offensive tactics, or by treating with courtesy and consideration all persons involved in the legal process. 
(2) Fail to carry out a contract of employment entered into with a client for professional 
services,  but a practiti oner may withdraw as p ermitted 
under §§ 10.40, 10.63, and 10.66. 
(3) Prejudice or damage a client during the course of a professional relationship, except as 
requi red under this part. 
(b) In repres entati on of a client,
 a practitioner may: 
(1) Where permissible, exercise professional judgment to waive or fail to assert a right or 
position of the client. 
(2) Refuse to aid or participate in co
nduct that the practitioner believes to be unlawful, even 
thoug h there is so me s upport for an  argu
ment that the conduct is legal. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.85  Representing a client within the bounds of the law. 
(a) In representation of a client, a practitioner shall not: 
(1) Initiate or defend any proceeding before the Office, assert a position, conduct a defense, 
delay a trial or proceeding before the Office, or take oth
er action on behalf of the practitioner’s 
client when the practitioner knows or when it is obvious that such action would serve merely to 
harass or maliciously injure another. 
(2) Knowingly advance a claim or defense that is unwarranted under existing law, except that 
a practitioner may advance such claim 
or defense if it can be supported by good faith argument 
for an extension, modification, or reversal of existing law. 
(3) Conceal or knowingly fail to disclose that which the practitioner is required by law to reveal. (4) Knowingly use perjured testimony or false evidence. (5) Knowingly make a false statement of law or fact. (6) Participate in the creation or preservation of evidence when the practitioner knows or it is 
obvious that the e videnc e is false . 
(7) 
Counsel or assist a client in conduct that the practitioner knows to be illegal or fraudulent. 
(8) Knowingly engage in other illegal conduct or conduct contrary to a Disciplinary Rule. (b) A practitioner who receives information clearly establishing that: 
IP/N/1/USA/T/4 
Page 142 -141- January 6, 2012 (1) A client has, in the course of the representation, perpetrated a fraud upon a person or 
tribunal shall promptly call upon the client to rectify the same, and if the client refuses or is unable 
to do so the practitioner shall reveal the fraud to the affected person or tribunal. 
(2) A person other than a client has perpetrated a fraud upon a tribunal shall promptly reveal 
the fraud to the tribunal. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.87  Communicating with one of adverse interest. 
During the course of representation of a client, a practitioner shall not:  (a) Communicate or cause another to communicate on the subject of the representation with a 
party the practitioner knows t 
o be represented by another practitioner in that matter unless the 
practitioner has the prior consent of the other practitioner representing such other party or is authorized by law to do so. It is not improper, however, for a practitioner to encourage a client to meet with an opposing party for settlement discussions. 
(b) Give advice to a person who is not represented by a practitioner other than the advice to 
secure counsel, if the interests of such pers on 
are to have a reasonable possibility of being in 
conflict with the interests of the practitioner’s client. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.88  Threatening criminal prosecution. 
A practitioner shall not present, participate in presenting, or threaten to present criminal 
charges solely to obtain an ad va
ntage in any prospective or pending proceeding before the Office.  
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.89  Conduct in proceedings. 
(a) A practitioner shall not disregard or advise a client to disregard any provision of this 
Subchapter or a decision of the
 Office made in the course of a proceeding before the Office, but 
the practitioner may take appropriate steps in good faith to test the validity of such provision or decision. 
(b) In presenting a matter to the Office, a practitioner shall disclose: (1) Controlling legal authority known to the practitioner to be directly adverse to the position of 
the client an d which is not discl
osed by opposing counsel or an employee of the Office. 
(2) Unless privileged or irrelevant, the identities of the client the practitioner represents and of 
the p ersons who emplo
yed the practitioner. 
(c) In appearing in a professional capacity before a tribunal, a practitioner shall not: (1) State or allude to any matter that the practitioner has no reasonable basis to believe is 
relevant to the ca se or that will not be supp orted by admissible evidence. 
(2) Ask 
any question that the practitioner has no reasonable basis to believe is relevant to the 
case an d that is in tended to deg
rade a witness or other person. 
(3) Assert the practitioner’s personal knowledge of the facts in issue, except when testifying as 
a witness. 
(4) Assert the practitioner’s person
al opinion as to the justness of a cause, as to the credibility 
of a witness, as to the culpabili
ty of a civil litigant, or as to the guilt or innocence of an accused; 
but the practitioner may argue, on the practitioner’s analysis of the evidence, for any position or conclusion with respect to the matters stated herein. 
IP/N/1/USA/T/4 
Page 143 -142- January 6, 2012 (5) Engage in undignified or discourteous conduct before the Office (see § 1.3 of the 
subchapter). 
(6) Intentionally or habitually violate any provision of this subchapter or established rule of 
evidence. 
[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.92  Contact with witnesses. 
(a) A practitioner shall not suppress any evidence that the practitioner or the practitioner’s 
client has a legal obligation to reveal or p
roduce. 
(b) A practitioner shall not advise or cause a person to be secreted or to leave the jurisdiction 
of a tribunal for the purpose of making the person una
vailable as a witness therein. 
(c) A practitioner shall not pay, offer to pay, or acquiesce in payment of compensation to a 
witness cont ingent u pon the conten t of the witn ess’ affida vit, testi
mony or the outcome of the 
case. But a practitioner may advance, guarantee, or acquiesce in the payment of: 
(1) Expenses reasonably incurred by a witness in attending, testifying, or making an affidavit. 
(2) Reasonable compensation to a witness for the witness’ loss of time in attending, testifying, 
or making an affidavit. 
(3) A reason able f
ee for the professional services of an expert witness. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.93  Contact with officials. 
(a) A practitioner shall not give or lend anything of value to a judge, official, or employee of a 
tribunal under circumstances which mig ht gi
ve the appearance that the gift or loan is made to 
influence official action. 
(b) In an adversary proceeding, including any inter partes  proceeding before the Office,  a 
practitioner shall not communicate, or cause another to communicate, as to the merits of the cause with a judge, official, or Office employee before whom the proceeding is pending, except: 
(1) In the course of official proceedings in the cause. 
(2) In writing if the practitioner promptly delivers a copy of the writing to opposing counsel or to 
the a dverse party if the adverse 
 party is not represented by a practitioner. 
(3) Orally upon adequate notice to opposing counsel or to the adverse party if the adverse 
party is not represented by a practitio
ner. 
(4) As otherwise authorized by law. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.100  Canon 8. 
A practitioner should assist in improving the legal system. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.101  Action as a public official. 
(a) A practitioner who holds public office shall not: (1) Use the practitioner’s public position to obtain, or attempt to obtain, a special advantage in 
legislative matters for the practitioner or for a client under circum sta 
nces where the practitioner 
knows or it is obvious that such action is not in the public interest. 
IP/N/1/USA/T/4 
Page 144 -143- January 6, 2012 (2) Use the practitioner’s public position to influence, or attempt to influence, a tribunal to act in 
favor of the practitioner or of a client. 
(3) Accept any thing of value from any person when the practitioner knows or it is obvious that 
the offer is for the purpos
e of influencing the practitioner’s action as a public official. 
(b) A practitioner who is an officer or employee of the United States shall not practice before 
the Office in paten t cases e
xcept as provided in §§ 10.10(c) and 10.10(d). 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8,  1985; para. (b) amended, 54 FR 6520, Feb. 13, 1989] 
§ 10.102  Statements concerning officials. 
(a) A practitioner shall not knowingly make false statements of fact concerning the 
qualifications of a candi date
 for election or appointment to a judicial office or to a position in the 
Office. 
(b) A practitioner shall not knowingly make false accusations against a judge, other 
adjudic atory office r, or empl
oyee of the Office. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.103  Practitioner candidate for judicial office. 
A practitioner who is a candidate for judicial office shall comply with applicable provisions of 
law. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.110  Canon 9. 
A practitioner should avoid even the appearance of professional impropriety. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.111  Avoiding even the appearance of impropriety. 
(a) A practitioner shall not accept private employment in a matter upon the merits of which he 
or she has acted in a judi cial cap
acity. 
(b) A practitioner shall not accept private employment in a matter in which he or she had 
personal responsibility while a 
public employee. 
(c) A practitioner shall not state or imply that the practitioner is able to influence improperly or 
upon irrelevant grounds an
y tribunal, legislative body, or public official. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985] 
§ 10.112  Preserving identity of funds and property of client. 
(a) All funds of clients paid to a practitioner or a practitioner's firm, other than advances for 
costs and expenses, shall be d epos
ited in one or more identifiable bank accounts maintained in 
the United States or, in the case of a practitioner having an office in a foreign country or registered 
under § 11.6(c), in the United States or the foreign country. 
(b) No funds belonging to the practitioner or the practitioner’s firm shall be deposited in the 
bank acc ounts req uired b y paragra ph 
(a) of this section except as follows: 
(1) Funds reasonably sufficient to pay bank charges may be deposited therein. 
IP/N/1/USA/T/4 
Page 145 -144- January 6, 2012 (2) Funds belonging in part to a client and in part presently or potentially to the practitioner or 
the practitioner’s firm must be deposited therein, but the portion belonging to the practitioner or the 
practitioner’s firm may be withdrawn when due unless the right of the practitioner or the practitioner’s firm to receive it is disputed by the client, in which event the disputed portion shall 
not be withdrawn until the dispute is finally resolved. 
(c) A practitioner shall: 
(1) Promptly notify a client of the receipt of the client’s funds, securities, or other properties. (2) Identify and label securities and properties of a client promptly upon receipt and place 
them in a s afe de posit box or other 
place of safekeeping as soon as practicable. 
(3) Maintain complete records of all funds, securities, and other properties of a client coming 
into the possession of the practitioner and render appro
priate accounts to the client regarding the 
funds, securities, or other properties. 
(4) Promptly pay or deliver to the client as requested by a client the funds, securities, or other 
properties in the possess ion of  the practitio ner 
which the client is entitled to receive. 
[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 1985; amended 70 FR 56119, Sept. 26, 2005, effective 
Nov. 25, 2005] 
§ 10.130-10.145  [Reserved] 
[Removed 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 10.149 -10.161 [Reserved] 
[73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 10.170  [Reserved] 
[73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
IP/N/1/USA/T/4 
Page 146 -145- January 6, 2012 PART 11--REPRESENTATION OF OT HERS BEFORE THE UNITED 
STATES PATENT AND TRADEMARK OFFICE 
AUTHORITY: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32. 
Subpart A--General Provisions 
General Information 
§ 11.1  Definitions. 
This part governs solely the practice of patent, trademark, and other law before the United 
States Patent and Trademark Office.  Nothi ng
 in this part shall be construed to preempt the 
authority of each State to regulate the practice of law, except to the extent necessary for the 
United States Patent and Trademark Office to accomplish its Federal objectives.  Unless otherwise clear from the context, the following definitions apply to this part: 
Attorney or lawyer  means an  individual who is a
  member in good standing of the highest court 
of any State, including an individual who is in good standing of the highest court of one State and not under an order of any court or Federal agency suspending, enjoining, restraining, disbarring or otherwise restricting the attorney from practice before the bar of another State or Federal agency.  A non-lawyer  means a person who is not an attorney or lawyer. 
Belief or believes  means that the person involved actually
  supposed the fact in question to be 
true. A person's belief may be inferred from circumstances. 
Conviction or convicted means any confession to a crime; a verdict or judgment finding a 
perso n guil ty of a cri me; an
y entered plea, including nolo contendre  or Alford plea, to a crime; or 
receipt of deferred adjudication (whether judgment or sentence has been entered or not) for an accused or pled crime. 
Crime  means any offense declared to be a felony or misdemeanor by Federal or State law in 
the ju risdic tion where t 
he act occurs. 
Data sheet means a form used to collect the name, address, and telephone information from 
individuals recognized to practice b
efore the Office in patent matters. 
Disqualified  means any action that prohibits a p ractitioner from participating in or appearing 
before the program or agency, regardless of how long the prohibition lasts or the specific 
terminology used.   
Federal agency  means any aut hority of the e xecutive branch of the Government of the United 
States. 
Federal program  means any program establis hed by an Act of Congress or administered by a 
Federal agency. 
Fiscal year means the time period from October 1st through the ensuing September 30th. 
Fraud or fraudulent  means conduc t having a purpose to deceive and not merely negligent 
misrepresentation or failure to apprise another of relevant information. 
Good moral character and reputation  means the possession of honesty and truthfulness , 
trustworthiness and reliability, and a professional commitment to the legal process and the 
administration of justice, as well as the condition of being regarded as possessing such qualities. 
Knowingly, known, or knows  mea ns actual knowle dge of the fact in question.  A person's 
knowledge may be inferred from circumstances. 
Matter  means any litigation, admini strative proceeding, lobbying activity, application, claim, 
investigation, controversy, arrest, charge, accusation, contract, negotiation, estate or family 
relations practice issue, request for a ruling or other determination, or any other matter covered by 
the conflict of interest rules of the appropriate Government entity. 
IP/N/1/USA/T/4 
Page 147 -146- January 6, 2012 Mandatory Disciplinary Rule  is a rule identified in § 10.20(b) of  this chapter as a Disciplinary 
Rule. 
OED  means the Office of Enrollment and Discipline. 
OED Director  means 
the Director of the Office of Enrollmen t and Discipline. 
OED Director's representatives  means atto rneys within the USPTO Office  of General Counsel 
who act as representatives of the OED Director. 
Office  means the United States Patent and Trademark Office. 
Practitioner  means: 
(1) An attorney or agent registered to practic
e bef
ore the Office  
in patent matters, 
(2) An individual authorized under 5 U.S.C. 500(b) or otherwise as provided by § 10.14(b), (c), 
and (e ) of th is subchap ter, to practice  before t he Office in tra dem
ark matters or other non-patent 
matters, or 
(3) An individual authorized to practice before the Office in a patent case or matters under 
§ 11.9(a) or (b). 
Proceeding before 
the Office  means an applic ation for pat ent, a n application for reissue, a 
reexamination, a protest, a public use matter, an inter partes  patent matter, correction of a patent, 
correction of inventorship, an application to register a trademark, an inter partes  trademark matter, 
an appeal, a petition, and any other matter that is pending before the Office. 
Reasonable or reasonably  when used in relation to conduct by a practitioner means the 
conduct of a reasonably prudent and competent practitioner. 
Registration  means regis tration to practice before the Office in patent proceedings. 
Roster  means a list of individuals who have been registered as either a patent attorney or 
patent agent. 
Serious Crime  means: 
(1) 
Any crimi
nal offense classified as a felony under the laws of the  
United States, any state or any foreign country where the crime occurred; or  
(2) Any crime a necessary element of which, as determined by the statutory or common law 
defini tion of such cri me in the j urisdic tion 
where the crime occurred, includes interference with the 
administration of justice, false swearing, misrepres entation, fraud, willful failure to file income tax 
returns, deceit, bribery, extortion, misappropriation, theft, or an attempt or a conspiracy or 
solicitation of another to commit a “serious crime.”   
Significant evidence of rehabilitation  means sa tisfactory e vidence that is significa ntly more 
probable than not that there will be no recurrence in the foreseeable future of the practitioner's 
prior disability or addiction. 
State means any of the 50 states of the United States of America, the District of Columbia, 
and any Commonwealth or territor
y of the United States of America. 
Substantial  when used  in reference to deg ree or extent mea ns a material matter of clear and 
weighty importance. 
Suspend or suspension  means a temporary debarring f rom practice before the Office or other 
jurisdiction. 
United States  means the United States of America, and th e territories and possessions the 
United States of America. 
USPTO Director means t he Direct or of the Unite d States Patent a nd Trademark Office, or an 
employee of the Office delegated authority to act for the Director of the United States Patent and Trademark Office in matters arising under this part. 
[Added 69 FR 35428, June 24, 2004, effective Ju ly 26, 2004; amended 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008] 
IP/N/1/USA/T/4 
Page 148 -147- January 6, 2012 § 11.2  Director of the Office of Enrollment and Discipline. 
(a) Appointment.  The USPTO Director shall appoint a Director of the Office of Enrollment and 
Discipline (OED Director).  In the ev e
nt of a vacancy in the office of the OED Director, the USPTO 
Director may designate an employee of the Office to serve as acting OED Director.  The OED 
Director shall be an active member in good standing of the bar of the highest court of a State. 
(b) Duties.  The OED Directo r shall:  
(1) Supervise staff as may be necessary for the performance of the OED Director's duties. (2) Receive and act upon applications for registration, prepare and grade the examination 
provided for in § 11.7(b), mai
ntain the register provided for in § 11.5, and perform such other 
duties in connection with enrollment and recognition of attorneys and agents as may be necessary. 
(3) Conduct investigations into the moral character and reputation of any individual seeking to 
be regist ered as an att orney or ag 
ent, or of any individual seeking limited recognition, deny 
registration or recognition of individuals failing to demonstrate possession of good moral character and reputation, and perform such other duties in connection with enrollment matters and investigations as may be necessary. 
(4) Conduct investigations of matters involving possible grounds for discipline of practitioners 
coming to the atte ntion of the OED 
Director.  Except in matters meriting summary dismissal, no 
disposition under § 11.22(h) shall be recommended or undertaken by the OED Director until the 
accused practitioner shall have been afforded an opportunity to respond to a reasonable inquiry 
by the OED Director. 
(5) With the consent of a panel of three members of the Committee on Discipline, initiate 
disciplina ry proce edings  unde r § 1
1.32 and perform such other duties in connection with 
investigations and disciplinary proceedings as may be necessary. 
(6) Oversee the preliminary screening of information and close investigations as provided for 
in § 11.22. 
(7) [Reserved] (c) Petition to OED 
Director regarding enrollment or recognition .  Any petition fro m any action 
or requirement of the staff of OED reporting to the OED Director shall be taken to the OED 
Director accompanied by payment of the fee set forth in § 1.21(a)(5)(i) of this chapter.  Any such 
petition not filed within sixty days from the mailing date of the action or notice from which relief is requested will be dismissed as untimely.  The filing of a petition will neither stay the period for taking other action which may be running, nor stay other proceedings.  The petitioner may file a single request for reconsideration of a decision within thirty days of the date of the decision.  Filing a request for reconsideration stays the period for seeking review of the OED Director’s decision 
until a final decision on the request for reconsideration is issued.  A final decision by the OED 
Director may be reviewed in accordance with the provisions of paragraph (d) of this section.  
(d) Review of OED Director’s decision regarding enrollment or recognition .  A party 
dissatisfied with a final d
ecision of the OED Director regarding enrollment or recognition may seek 
review of the decision upon petition to the USPTO Director accompanied by payment of the fee 
set forth in § 1.21(a)(5)(ii) of this chapter.  Any such petition to the USPTO Director waives a right 
to seek reconsideration from the OED Director.  An y petition not filed within thirty days after the 
final decision of the OED Director may be dismissed as untimely.  Briefs or memoranda, if any, in support of the petition shall accompany the petition.  The petition will be decided on the basis of the record made before the OED Director.  The USPTO Director in deciding the petition will consider no new evidence.  Copies of documents already of record before the OED Director shall 
not be submitted with the petition.  An oral he aring will not be granted except when considered 
necessary by the USPTO Director.  Any request fo r reconsideration of the decision of the USPTO 
Director may be dismissed as untimely if not filed within thirty days after the date of said decision. 
(e) Petition to USPTO Director in disciplinary matters .  Petition may be t
 aken to the USPTO 
Director to invoke the supervisory authority of the USPTO Director in appropriate circumstances in disciplinary matters.  Any such petition must contain a statement of the facts involved and the 
IP/N/1/USA/T/4 
Page 149 -148- January 6, 2012 point or points to be reviewed and the action requested.  Briefs or memoranda, if any, in support 
of the petition must accompany the petition.  Where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.  The OED Director may be directed by the USPTO Director to file a reply to the petition, supplying a copy to the 
petitioner.  An oral hearing will not be granted except when considered necessary by the USPTO 
Director.  The mere filing of a petition will not stay an investigation, disciplinary proceeding or other proceedings.  Any petition unde r this part not filed within thirty days of the mailing date of the 
action or notice from which relief is requested may be dismissed as untimely.  Any request for reconsideration of the decision of the USPTO Director may be dismissed as untimely if not filed within thirty days after the date of said decision.  
[Added 69 FR 35428, June 24, 2004, effective Ju ly 26, 2004; amended 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008] 
§ 11.3  Suspension of rules. 
(a) In an extraordinary situation, when justice requires, any requirement of the regulations of 
this Part which is not a requirement of st atu
te may be suspended or waived by the USPTO 
Director or the designee of the USPTO Director, sua sponte,  or on petition by any party, including 
the OED Director or the OED Director’s representat ive, subject to such other requirements as may 
be imposed. 
(b) No petition under this section shall stay a disciplinary proceeding unless ordered by the 
USPTO Directo
r or a hearing officer. 
[Added 69 FR 35428, June 24, 2004, effective Ju ly 26, 2004; amended 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008] 
Subpart B--Recognition To Practice Before the USPTO 
Patents, Trademarks, and Other Non-Patent Law 
§ 11.4  [Reserved] 
§ 11.5 Register of attorneys and agents in patent matters; practice before the Office. 
(a) A register of attorneys and agents is kept in the Office on which are entered the names of 
all indi viduals recognized as entitled to represent ap
plicants having prospective or immediate 
business before the Office in the preparation and prosecution of patent applications.  Registration 
in the Office under the provisions of this part shall entitle the individuals so registered to practice 
before the Office only in patent matters. 
(b) Practice  befo re the Off ice.  Practice b efore the Office includes, but is not limited to, law-
related service that comprehends any matter connected with the presentation to the Office or any of its officers or employees relating to a client’s rights, privileges, duties, or responsibilities under the laws or regulations administered by the Office for the grant of a patent or registration of a 
trademark, or for enrollment or disciplinary matters.  Such presentations include preparing 
necessary documents in contemplation of filing the documents with the Office, corresponding and communicating with the Office, and representing a client through documents or at interviews, hearings, and meetings, as well as communicating with and advising a client concerning matters pending or contemplated to be presented before the Office.  Nothing in this section proscribes a 
practitioner from employing or retaining non-practitioner assistants under the supervision of the 
IP/N/1/USA/T/4 
Page 150 -149- January 6, 2012 practitioner to assist the practitioner in matters pending or contemplated to be presented before 
the Office. 
(1) Practice before the Office in patent matters .  Practice before the Office in patent mat ters 
includes, but is not limited to, preparing and prosecuting any patent application, consulting with or 
giving advice to a client in contemplation of filing a patent application or other document with the 
Office, drafting the specification or claims of a patent application ; drafting an amendment or reply 
to a communication from the Office that may require written argument to establish the patentability 
of a claimed invention; drafting a reply to a communication from the Office regarding a patent application; and drafting a communication for a public use, interference, reexamination proceeding, petition, appeal to or any other proceeding before the Board of Patent Appeals and 
Interferences, or other proceeding.  Registration to practice before the Office in patent cases 
sanctions the 
performance of those services which are reasonably necessary and incident to the 
preparation and prosecution of patent applications or other proceeding before the Office involving a 
patent application or patent in which the practition er is authorized to participate.  The services 
include: 
(i) Considering the advisability of relying upon  alternative forms of protection wh ich may be 
avai
lable under state law, and 
(ii) Drafting an assignment or causing an assignment to be executed for the patent owner in 
contemplation of filing or prosecution of a patent application for the patent owner, where the practitioner represents the patent owner after a patent issues in a proceeding before the Office, and when drafting the assignment the practitioner does no more than replicate the terms of a 
previously existing oral or written obligation of assignment from one person or party to another 
person or party.   
(2) Pract ice before the Office in trademark matters .  Practic e befo re the Offic e in trade
 mark 
matters includes, but is not limited to, consulting with or giving advice to a client in contemplation of filing a trademark application or other document with the Office; preparing and prosecuting an 
application for trademark registration; preparing an amendment which may require written 
argument to establish the registrability of the mark; and conducting an opposition, cancellation, or concurrent use proceeding; or conducting an app eal to the Trademark Trial and Appeal Board. 
[Added 69 FR 35428, June 24, 2004, effective Ju ly 26, 2004; amended 73 FR 47650, Aug 14. 2008, 
effective Sept. 15, 2008] 
§ 11.6  Registration of attorneys and agents. 
(a) Attorneys .  Any citizen of the Unit ed States who is an attorney and who fulfills the 
requirements of this part may be registered as a patent attorney to practice before the Office. When appropriate, any alien who is an attorney, who lawfully resides in the United States, and 
who fulfills the requirements of this part may be registered as a patent attorney to practice before 
the Office, provided that such registration is not inconsistent with the terms upon which the alien was admitted to, and resides in, the United States and further provided that the alien may remain registered only: 
(1) If the alien continues to lawfully reside in the United States and registration does not 
beco me inconsisten t wit
h the terms upon which the alien continues to lawfully reside in the United 
States, or 
(2) If the alien ceases to reside in the United States, the alien is qualified to be registered 
unde r paragraph (c) of this sectio
n. See also § 11.9(b). 
(b) Agents .  Any citizen of the Unit ed States who is not an attorney, and who fulfills the 
requirements of this part may be registered as a patent agent to practice  before the Office. When 
appropriate, any alien who is not an attorney, who lawfully resides in the United States, and who fulfills the requirements of this part may be registered as a paten t agent to practice before the 
Office, provided that such registration is not inconsistent with the terms upon which the alien was 
IP/N/1/USA/T/4 
Page 151 -150- January 6, 2012 admitted to, and resides in, the United States, and further provided that the alien may remain 
registered only: 
(1) If the alien continues to lawfully reside in the United States and registration does not 
become inconsistent with the terms upon 
which the alien continues to lawfully reside in the United 
States or 
(2) If the alien ceases to reside in the United States, the alien is qualified to be registered 
unde r paragraph (c) of this sectio n. See also  § 
11.9(b). 
(c) Foreigners .  Any foreigner not a resident of the United States who shall file proof to the 
satisfaction of the OED Director that he or she is registered and in good standing before the patent office of the country in which he or she resides and practices, and who is possessed of the 
qualifications stated in § 11.7, may be registered as a patent agent to practice before the Office for 
the limited purpose of presenting and prosecuting patent applications of applicants located in such country, provided that the patent office of such country allows substantially reciprocal privileges to those admitted to practice before the Office.  Registration as a patent agent under this paragraph shall continue only during the period that the conditions specified in this paragraph obtain.  Upon 
notice by the patent office of such country that a patent agent registered under this section is no 
longer registered or no longer in good standing before the patent office of such country, and absent a showing of cause why his or her name should not be removed from the register, the OED Director shall promptly remove the name of the patent agent from the register and publish the fact of removal. Upon ceasing to reside in such country, the patent agent registered under this 
section is no longer qualified to be registered under this section, and the OED Director shall 
promptly remove the name of the patent agent from the register and publish the fact of removal. 
(d) Interference matters .  The  Chief Adminis trative Paten
 t Judge or Vice Chief Administrative 
Patent Judge of the Board of Patent Appeals and Interferences shall determine whether and the circumstances under which an attorney who is not registered may take testimony for an interference under 35 U.S.C. 24, or under § 1.672 of this subchapter. 
[Added 69 FR 35428, June 24, 2004, effective July 26, 2004] 
§ 11.7  Requirements for registration. 
(a) No individual will be registered to practice before the Office unless he or she has: (1) Applied to the USPTO Director in writing by completing an application for registration form 
supplied by the OED Director and furn ishing all 
requested information and material; and 
(2) Established to the satisfaction of the OED Director that he or she: (i) Possesses good moral character and reputation; (ii) Possesses the legal, scientific, and technical qualifications necessary for him or her to 
render applicants valuable servic e; and 
(iii) Is  co 
mpetent to advise and assist patent applicants in the presentation and prosec ution of 
their applications before the Office. 
(b)(1) To enable the OED Director to determine whether an individual has the qualifications 
specifie d in paragraph (a)(2 ) of this section,  th
e individual shall: 
(i) File a complete application for registration each time admission to the registration 
examination is requested.  A compl
ete application for registration includes: 
(A) An application for registration form supplied by the OED Director wherein all requested 
information and supporting documents are  fu
rnished, 
(B) Payment of the fees required by § 1.21(a)(1) of this subchapter, (C) Satisfactory proof of scientific and technical qualifications,  and (D) For aliens, provide proof that recognition is not inconsistent with the terms of their visa or 
entry into the United States; 
(ii) Pass the registration exa
mination, unless the taking and passing of the examination is 
waived as pro vided in parag raph (d) of this section.  Unless examina
tion is waived pursuant to 
IP/N/1/USA/T/4 
Page 152 -151- January 6, 2012 paragraph (d) of this section, each individual seeking registration must take and pass the 
registration examination to enable the OED Director to determine whether the individual possesses the legal and competence qualifications specified in paragraphs (a)(2)(ii) and (a)(2)(iii) of this section.  An individual failing the examination may, upon receipt of notice of failure from 
OED, reapply for admission to the examination.  An individual failing the examination must wait 
thirty days after the date the individual last took the examination before retaking the examination. An individual reapplying shall: 
(A) File a completed application for registration form wherein all requested information and 
suppo rting documents  are furnishe d, 
(B) Pa
y the fees required by § 1.21(a)(1) of this subchapter, and 
(C) For aliens, provide proof that recognition is not inconsistent with the terms of their visa or 
entry into the United  States; a nd 
(iii) 
Provide satisfactory proof of possession of good moral character and reputation. 
(2) An individual failing to file a complete application for registration will not be admitted to the 
examination and will be notifie
d of the incompleteness.  Applications for registration that are 
incomplete as originally submitted will be cons idered only when they have been completed and 
received by OED, provided that this occurs within sixty days of the mailing date of the notice of incompleteness.  Thereafter, a new and complete application for registration must be filed.  Only an individual approved as satisfying the require ments of paragraphs (b)(1)(i)(A), (b)(1)(i)(B), 
(b)(1)(i)(C) and (b)(1)(i)(D) of this se ction may be admitted to the examination. 
(3) If an individual does not reapply until more than one year after the mailing date of a notice 
of failure, that individual 
must again comply with paragraph (b)(1)(i) of this section. 
(c) Each individual seeking registration is responsible for updating all information and answers 
submitted in or with the
 application for registration based upon anything occurring between the 
date the application for registration is signed by the individual, and the date he or she is registered or recognized to practice before the Office in patent matters.  The update shall be filed within thirty 
days after the date of the occasion that necessitates the update. 
(d) Waive r of the Registration Examination for Former Office Employees .  
(1) Former patent examiners who by July 26, 2004, had not actively served four years in the 
paten t examining c 
orps, and were serving in the corps at the time of their separation .  The OED 
Director may waive the taking of a registration examination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner but by 
July 26, 2004, had not served four years in the patent examining corps, if the individual demonstrates that he or she: 
(i) Actively served in the patent examining corps of the Office and was serving in the corps at 
the ti me o f separation  from 
the Office; 
(ii) Received a certificate of legal competency and negotiation authority; 
(iii) After receiving the certificate of legal competency and negotiation authority, was rated at 
least full y su
ccessful in each quality performance element of his or her performance plan for the 
last two complete fiscal years as a patent examiner; and 
(iv) Was not under an oral or written warning regarding the quality performance elements at 
the time of separation from 
the patent examining corps. 
(2) Former patent examiners who on July 26, 2004, had actively served four years in the 
paten t examining c
orps, and were serving in the corps at the time of their separation .  The OED 
Director may waive the taking of a registration examination in the case of any individual meeting 
the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner and by July 26, 2004, had served four years in the patent examining corps, if the individual demonstrates 
that he or she: 
(i) Actively served for at least four years in the patent examining corps of the Office by July 26, 
2004,  and was servi ng in  the c orps at 
 the time of separation from the Office; 
(ii) Was rated at least fully successful in each quality performance element of his or her 
performance plan for the last t
wo complete fiscal years as a patent examiner in the Office; and 
IP/N/1/USA/T/4 
Page 153 -152- January 6, 2012 (iii) Was not under an oral or written warning regarding the quality performance elements at 
the time of separation from the patent examining corps. 
(3) Certain former Office employees who were n ot serving in the patent examining corps upon 
their separation from the Office .  The OED Director may waive the taking of a registration 
examination in the case of a former Office employee meeting the requirements of paragraph 
(b)(1)(i)(C) of this section who by petition demonstrates possession of the necessary legal qualifications to render to patent applicants and others valuable service and assistance in the preparation and prosecution of their applications or other business before the Office by showing that he or she has: 
(i) Exhibited comprehensive knowledge of patent law equivalent to that shown by passing the 
regist ration examination as a resul t
 of having been in a position of responsibility in the Office in 
which he or she: 
(A) Provided substantial guidance on patent examination policy, including the development of 
rule o r procedure cha nges, p atent exa
mination guidelines, changes to the Manual of Patent 
Examining Procedure, development of training or testing materials for the patent examining corps, 
or development of materials for the registration examination or continuing legal education; or 
(B) Represented the Office in patent cases before Federal courts; and 
(ii) Was rated at least fully successful in each quality performance element of his or her 
performa nce plan f or sai d positi on fo r the l ast two co
mplete rating periods in the Office, and was 
not under an oral or written warning regarding such performance elements at the time of 
separation from the Office. 
(4) To be eligible for consideration for waiver, an individual formerly employed by the Office 
within the sc ope of one of paragrap
hs (d)(1), (d)(2) or (d)(3) of this section must file a complete 
application for registration and pay the fee required by § 1.21(a)(1)(i) of this subchapter within two 
years of the individual's date of separation from the Office.  All other individuals formerly employed by the Office, including former examiners, filing an application for registration or fee more than two 
years after separation from the Office, are required to take and pass the registration examination. 
The individual or former examiner must pay the examination fee required by § 1.21(a)(1)(ii) of this subchapter within thirty days after notice of non-waiver. 
(e) Examination results .  Notification of the exam
 ination results is final. Within sixty days of the 
mailing date of a notice of failure, the individual is entitled to inspect, but not copy, the questions 
and answers he or she incorrectly answered. Review will be under supervision.  No notes may be 
taken during such review.  Substantive review of the answers or questions may not be pursued by petition for regrade. An individual who failed the examination has the right to retake the examination an unlimited number of times upon payment of the fees required by § 1.21(a)(1)(i) and (ii) of this subchapter, and a fee charged by a commercial entity administering the examination. 
(f) Application for reciprocal recognition .  An individual seeking reciprocal recognition unde
 r 
§ 11.6(c), in addition to satisfying the provisions of paragraphs (a) and (b) of this section, and the provisions of § 11.8(c), shall pay the application f ee required by §1.21(a)(1)(i) of this subchapter 
upon filing an application for registration. 
(g) Investigation of good moral character and reputation .  
(1) Every individual seeking recognition shall answer
 all questions in the application for 
regist ration and reques t(s) for comme nts issu e
d by OED; disclose all relevant facts, dates and 
information; and provide verified copies of documents relevant to his or her good moral character and reputation.  An individual who is an attorney shall submit a certified copy of each of his or her State bar applications and moral character determinations, if available. 
(2)(i) If the OED Director receives information from any source that reflects adversely on the 
good moral charac ter or reput ation of an indi vid
ual seeking registration or recognition, the OED 
Director shall conduct an investigation into the good moral character and reputation of that individual.  The investigation will be conducted a fter the individual has passed the registration 
examination, or after the registration examination has been waived for the individual, as applicable. An individual failing to timely answer questions or respond to an inquiry by OED shall 
IP/N/1/USA/T/4 
Page 154 -153- January 6, 2012 be deemed to have withdrawn his or her application, and shall be required to reapply, pass the 
examination, and otherwise satisfy all the requirements of this section.  No individual shall be certified for registration or recognition by the OED Director until, to the satisfaction of the OED Director, the individual demonstrates his or her possession of good moral character and 
reputation. 
(ii) The OED Director, in considering an application for registration by an attorney, may accept 
a State  bar's characte r determinat io
n as meeting the requirements set forth in paragraph (g) of 
this section if, after review, the Office finds no substantial discrepancy between the information 
provided with his or her application for registration and the State bar application and moral character determination, provided that acceptance is not inconsistent with other rules and the 
requirements of 35 U.S.C. 2(b)(2)(D). 
(h) Good  moral character and reputation .  Evid ence sho wing la
 ck of good moral character and 
reputation may include, but is not limited to, conviction of a felony or a misdemeanor identified in 
paragraph (h)(1) of this section, drug or alcohol abuse; lack of candor; suspension or disbarment on ethical grounds from a State bar; and resignation from a State bar while under investigation. 
(1) Conviction of felony or misdemeanor .  An individ ual wh
 o has been convicted of a felony or 
a misdemeanor involving moral turpitude, breach of trust, interference with the administration of justice, false swearing, misrepresentation, fraud, deceit, bribery, extortion, misappropriation, theft, 
or conspiracy to commit any felony or misdemeanor, is presumed not to be of good moral character and reputation in the absence of a pardon or a satisfactory showing of reform and 
rehabilitation, and shall file with his or her application for registration the fees required by 
§ 1.21(a)(1)(ii) and (a)(10) of this subchapter.   The OED Director shall determine whether 
individuals convicted of said felony or misdemeanor provided satisfactory proof of reform and rehabilitation. 
(i) An individual who has been convicted of a felony or a misdemeanor identified in paragraph 
(h)(1) o f this  section sh all not be eligible to a ppl
y for registration during the time of any sentence 
(including confinement or commitment to imprisonment), deferred adjudication, and period of probation or parole as a result of the conviction, and for a period of two years after the date of completion of the sentence, deferred adjudication, and period of probation or parole, whichever is later. 
(ii) The following presumptions apply to the determination of good moral character and 
reputation of an in dividua
l convicted of said felony or misdemeanor: 
(A) The court record or docket entry of conviction is conclusive evidence of guilt in the 
absence of a pardon or a satisf acto
ry showing of reform or rehabilitation; and 
(B) An individual convicted of a felony or any misdemeanor identified in paragraph (h)(1) of 
this section is conclusively deemed not to ha
ve good moral character and reputation, and shall not 
be eligible to apply for registration for a period of two years after completion of the sentence, 
deferred adjudication, and period of probation or parole, whichever is later. 
(iii) The individual, upon applying for registration, shall provide satisfactory evidence that he or 
she is o f good moral cha racter 
and reputation. 
(iv) Upon proof that a conviction has been set aside or reversed, the individual shall be eligible 
to file a complete application for registration and the 
fee required by § 1.21(a)(1)(ii) of this 
subchapter and, upon passing the registration examination, have the OED Director determine, in 
accordance with paragraph (h)(1) of this section, whether, absent the conviction, the individual possesses good moral character and reputation. 
(2) Good moral character and reputation involving drug or alcohol abuse .  An in dividual's 
record is re view 
ed as a whole to see if there is a drug or alcohol abuse issue.  An individual 
appearing to abuse drugs or alcohol may be asked to undergo an evaluation, at the individual's expense, by a qualified professional approved by the OED Director.  In instances where, before an investigation commences, there is evidence of a present abuse or an individual has not established a record of recovery, the OED Director may request the individual to withdraw his or her application, and require the individual to satisfactorily demonstrate that he or she is complying with treatment and undergoing recovery. 
IP/N/1/USA/T/4 
Page 155 -154- January 6, 2012 (3) Moral character and reputation involving lack of candor.  An individual's lack of candor in 
disclosing facts bearing on or relevant to issues concerning good moral character and reputation 
when completing the application or any time thereafter may be found to be  
cause to deny registration on moral character and reputation grounds. 
(4) Moral charact er and reputation involving susp ension, dis barmen t, or resignat ion fro m a 
profession .  (i) An individual who has been disbarred or suspended from practice of law or other 
profession, or has resigned in lieu of a disciplinary proceeding (excluded or disbarred on consent) 
shall be ineligible to apply for registration as follows: 
(A) An individual who has been disbarred from practice of law or other profession, or has 
resigned in lieu of a disciplinary proceeding (excluded or disbarred on co
nsent) shall be ineligible 
to apply for registration for a period of five  years from the date of disbarment or  
resignation. (B) An individual who has been suspended on ethical grounds from the practice of law or other 
profession s hall b e ine ligible to apply for regist 
ration until expiration of the period of suspension. 
(C) An individual who was not only disbarred, suspended or resigned in lieu of a disciplinary 
proceeding, but also convicted in a c
ourt of a felony, or of a crime involving moral turpitude or 
breach of trust, shall be ineligible to apply for registration until the conditions in paragraphs (h)(1) and (h)(4) of this section are fully satisfied. 
(ii) An individual who has been disbarred or suspended, or who resigned in lieu of a 
disciplinary proceeding shall file an application for registratio n and 
the fees required by 
§ 1.21(a)(1)(ii) and (a)(10) of this subchapter; provide a full and complete copy of the proceedings that led to the disbarment, suspension, or resignation; and provide satisfactory proof that he or she possesses good moral character and reputation.  The following presumptions shall govern the determination of good moral character and reputation of an individual who has been licensed to practice law or other profession in any jurisdiction and has been disbarred, suspended on ethical grounds, or allowed to resign in lieu of discipline, in that jurisdiction: 
(A) A copy of the record resulting in disbarment, suspension or resignation is prima facie  
evidence of the matters contained in the record, and the im
position of disbarment or suspension, 
or the acceptance of the resignation of the individual shall be deemed conclusive that the individual has committed professional misconduct. 
(B) The individual is ineligible for registration and is deemed not to have good moral character 
and reputation during the period of the i
mposed discipline. 
(iii) The only defenses available with regard to  an underlying disciplinary matter resulting in 
disbarment, suspension on ethical grounds, or  re
signation in lieu of a disciplinary proceeding are 
set out below, and must be shown to the satisfaction of the OED Director: 
(A) The procedure in the disciplinary court was so lacking in notice or opportunity to be heard 
as to constitute a deprivation of due process; 
(B) 
There was such infirmity of proof establishing the misconduct as to give rise to the clear 
conviction that the  Office  could n ot, consisten t
ly with its duty, accept as final the conclusion on 
that subject; or 
(C) The finding of lack of good moral character and reputation by the Office would result in 
grave injustice. 
(i) Factors that may be t
aken into consideration when evaluating rehabilitation of an individual 
seeking a moral cha racter and reputati on de
termination .  The factors enumerated below are 
guidelines to assist the OED Director in determining whether an individual has demonstrated rehabilitation from an act of misconduct or moral turpitude. The factors include: 
(1) The nature of the act of misconduct, including whether it involved moral turpitude, whether 
there were aggravating or mitigating circum
stances, and whether the activity was an isolated 
event or part of a pattern; 
(2) The age and education of the individual at the time of the misconduct and the age and 
educati on of the i ndividual at the pres
ent time; 
(3) The length of time that has passed between the misconduct and the present, absent any 
involvement in any further acts 
of moral turpitude, the amount of time and the extent of 
IP/N/1/USA/T/4 
Page 156 -155- January 6, 2012 rehabilitation being dependent upon the nature and seriousness of the act of misconduct under 
consideration; 
(4) Restitution by the individual to any person who suffered monetary losses through acts or 
omissions of the individual; 
(5) 
Expungement of a conviction; 
(6) Successful completion or early discharge from probation or parole; (7) Abstinence from the use of controlled substances or alcohol for not less than two years if 
the sp ecific misco nduc t was a ttribut 
able in part to the use of a controlled substance or alcohol, 
where abstinence may be demonstrated by, but is not necessarily limited to, enrolling in and complying with a self-help or professional treatment program; 
(8) If the specific misconduct was attributable in part to a medically recognized mental 
disease, disorder or illn e 
ss, proof that the individual sought professional assistance, and complied 
with the treatment program prescribed by the professional, and submitted letters from the treating psychiatrist/psychologist verifying that the medically recognized mental disease, disorder or illness will not impede the individual's ability to competently practice before the Office; 
(9) Payment of the fine imposed in connection with any criminal conviction; (10) Correction of behavior responsible in some degree for the misconduct; (11) Significant and conscientious involvement in programs designed to provide social benefits 
or to ameliorate soci al proble
ms; and 
(12) Change in attitude from that which existed at the time of the act of misconduct in question 
as evidenced by any
 or all of the following: 
(i) Statements of the individual; (ii) Statements from persons familiar with the individual's previous misconduct and with 
subsequ ent attitu des an d behav 
ioral patterns; 
(iii) Statements from probation or parole officers or law enforcement officials as to the 
individual's social adjustments; and 
(iv) 
Statements from persons competent to test ify with regard to n europs ychiatry or emotional 
disturbances. 
(j) Notice to Show Cause . The OED Director shall inq uire into the good moral character and 
reputation of an individual seeking registration, providing the individual with the opportunity to create a record on which a decision is made.  If, following inquiry and consideration of the record, 
the OED Director is of the opinion that the individual seeking registration has not satisfactorily 
established that he or she possesses good moral character and reputation, the OED Director shall issue to the individual a notice to show cause why the individual's application for registration should not be denied. 
(1) The individual shall be given no less than ten days from the date of the notice to reply.  
The n otice shall be given b y certifi
ed mail at the address appearing on the application if the 
address is in the United States, and by any other reasonable means if the address is outside the United States. 
(2) Following receipt of the individual's response, or in the absence of a response, the OED 
Director shall consider the indi vid 
ual's response, if any, and the record, and determine whether, in 
the OED Director's opinion, the individual has sustained his or her burden of satisfactorily 
demonstrating that he or she possesses good moral character and reputation. 
(k) Reapplication for registration . An individual who has  be en refused registration for lack of 
good moral character or reputation may reapply for registration two years after the date of the 
decision, unless a shorter period is otherwise orde red by the USPTO Director.  An individual, who 
has been notified that he or she is under investigation for good moral character and reputation 
may elect to withdraw his or her application for registration, and may reapply for registration two 
years after the date of withdrawal.  Upon reapplication for registration, the individual shall pay the fees required by § 1.21(a)(1)(ii) and (a)(10) of this subchapter, and has the burden of showing to the satisfaction of the OED Director his or her possession of good moral character and reputation as prescribed in paragraph (b) of this section.  Upon reapplication for registration, the individual 
IP/N/1/USA/T/4 
Page 157 -156- January 6, 2012 also shall complete successfully the examination prescribed in paragraph (b) of this section, even 
though the individual has previously passed a registration examination. 
[Added 69 FR 35428, June 24, 2004, effective July 26, 2004] 
§ 11.8  Oath and registration fee. 
(a) After an individual passes the examination, or the examination is waived, the OED Director 
shall promptly publish a solicitation for informa t
ion concerning the individual's good moral 
character and reputation.  The solicitation shall include the individual's name, and business or communication postal address. 
(b) An individual shall not be registered as an attorney under § 11.6(a), registered as an agent 
under § 11.6(b) or (c), or granted limited recogniti
on under § 11.9(b) unless within two years of the 
mailing date of a notice of passing registration examination or of waiver of the examination the individual files with the OED Director a completed Data Sheet, an oath or declaration prescribed by the USPTO Director, and the registration fee set forth in § 1.21(a)(2) of this subchapter.  An individual seeking registration as an attorney under § 11.6(a) must provide a certificate of good 
standing of the bar of the highest court of a State that is no more than six months old. 
(c) An individual who does not comply with the requirements of paragraph (b) of this section 
within the two-year
 period will be required to retake the registration examination. 
(d) Annual practitioner maintenance fee .  A registered patent attorney or agent  shall annually 
pay to the USPTO Director a practitioner maintenance fee in the amount set forth in § 1.21(a)(7) of this subchapter.  Individuals granted limited recognition under paragraph (b) of § 11.9 shall 
annually pay to the USPTO Director a practitioner maintenance fee in the amount set forth in § 1.21(a)(8) of this subchapter.  Adequate notice shall be published and sent to practitioners in advance of the due date for payment of the annual practitioner maintenance fee. Payment shall be for the fiscal year in which the annual practitioner maintenance fee is assessed.  Payment shall be due by the last day of the payment period. Persons newly registered or granted limited 
recognition shall not be liable for the annual practitioner maintenance fee during the fiscal year in 
which they are first registered or granted limited recognition.  Failure to comply with the provisions of this paragraph (d) shall require the OED Director to subject a practitioner to a delinquency fee penalty set forth in § 11.11(b)(1), and further financial penalties and administrative suspension as set forth in § 11.11(b)(2) and (b)(3). 
[Added 69 FR 35428, June 24, 2004, effective July  26, 2004; amended 73 FR 67750, Nov. 17, 2008, 
effective Dec. 17, 2008] 
§ 11.9  Limited recognition in patent matters. 
(a) Any individual not registered under § 11.6 may, upon a showing of circumstances which 
render it necessary or justifiable, and that the individual is of good moral charac
ter and reputation, 
be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications.  Limited recognition under this paragraph shall not extend further than the application or applications specified.  Limited recognition shall not be granted while individuals who have passed the examination or for whom the examination has 
been waived are awaiting registration to practice before the Office in patent matters. 
(b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) 
and (b) ma
y be granted limited recognition if the nonimmigrant alien is authorized by the Bureau 
of Citizenship and Immigration Services to be employed or trained in the United States in the 
capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized 
employment or training. Limited recognition shall not be granted or extended to a non-United 
IP/N/1/USA/T/4 
Page 158 -157- January 6, 2012 States citizen residing abroad.  If granted, limited recognition shall automatically expire upon the 
nonimmigrant alien's departure from the United States. 
(c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an 
international patent application onl
y before the United States International Searching Authority 
and the United States International Preliminary Examining Authority, provided that the individual has the right to practice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1 bis and 90.1. 
[Added 69 FR 35428, June 24, 2004, effective July 26, 2004] 
§ 11.10  Restrictions on practice in patent matters. 
(a) Only practitioners who are registered under § 11.6 or individuals given limited recognition 
under § 11.9(a) or (b) are permitted to  prosecut
e pat ent applications of others before the Office; or 
represent others in any proceedings before the Office. 
(b) Post employment agreement of former Office employee .  No individual wh o has served in 
the patent examining corps or elsewhere in the Office may practice before the Office after termination of his or her service, unless he or she signs a written undertaking agreeing: 
(1) To not knowingly act as agent or attorney for, or otherwise represent, or assist in any 
manner the representation of,  an 
y other person: 
(i) Before the Office, 
(ii) In connection with any particular patent or patent application, 
(iii) In which said employee participated personally and substantially as an employee of the 
Office; and 
(2) To not knowingly act within t w
o years after terminating employment by the Office as agent 
or attorney for, or otherwise
 represent, or assist in any manner the representation of any other 
person: 
(i) Before the Office, (ii) In connection with any particular patent or patent application, (iii) If such patent or patent application was pending under the employee's official responsibility 
as an officer or e mployee wi
thin a period of one year prior to the termination of such responsibility. 
(3) The words and phrases in paragraphs (b)(1) and (b)(2) of this section are construed as 
follows: 
(i) Represent and representation  mean actin g as patent attorne y  or patent agent or other 
representative in any appearance before the Office, or communicating with an employee of the Office with intent to influence. 
(ii) Assist in any manner  means aid or hel
 p another person on a particular patent or patent 
application involving representation. 
(iii) Particular patent or patent application  mean s any pate nt or pate nt application, including, 
but not limited to, a provisional, substitute, international, continuation, divisional, continuation-in-part, or reissue patent application, as well as any protest, reexamination, petition, appeal, or interference based on the patent or patent application. 
(iv) Participate personally and substantia
 lly.  (A) Basic requirements.  The restrictions of 
§ 11.10(a)(1) apply only to those patents and patent applications in which a former Office employee had ``personal and substantial participation,'' exercised ``through decision, approval, disapproval, recommendation, the rendering of advice, investigation or otherwise.''  To participate 
personally  means directly, and includes the participation of a subordinate when actually directed 
by the former Office employee in the patent or patent application. Substantially  means that the 
employee's involvement must be of significance to the matter, or form a basis for a reasonable 
appearance of such significance. It requires more than official responsibility, knowledge, 
perfunctory involvement, or involvement on an administrative or peripheral issue. A finding of substantiality should be based not only on the effort devoted to a patent or patent application, but 
IP/N/1/USA/T/4 
Page 159 -158- January 6, 2012 also on the importance of the effort. While a series of peripheral involvements may be 
insubstantial, the single act of approving or participation in a critical step may be substantial. It is essential that the participation be related to a ``particular patent or patent application.'' (See paragraph (b)(3)(iii) of this section.) 
(B) Participation on ancillary matters.  An Offi ce empl oyee's partici pation on subj ects not 
directl y involving t
he substantive merits of a patent or patent application may not be ``substantial,'' 
even if it is time-consuming.  An employee whose offi cial responsibility is the review of a patent or 
patent application solely for compliance with administrative control or budgetary considerations and who reviews a particular patent or patent application for such a purpose should not be regarded as having participated substantially in the patent or patent application, except when such 
considerations also are the subject of the employee's proposed representation. 
(C) Role of official responsibility in determi ning substantial participation.  Official resp onsibility  
is define d in para graph (b)(3)(v) 
of this section.  “Personal and substantial participation'' is 
different from “official responsibility.”  One's responsibility may, however, play a role in determining 
the ``substantiality'' of an Office employee's participation. 
(v) Official responsibility means the direct administrativ e or operating authority, whether 
intermediate or final, and either exercisable alone or with others, and either personally or through subordinates, to approve, disapprove, or otherwise direct Government actions. 
(A) Determining official responsibility.  Ordinarily, those areas assigned by statute, regulation, 
Executive Order, job description, or delegation o
f authority determine the scope of an employee's 
``official responsibility''.  All particular matters under consideration in the Office are under the ``official responsibility'' of the Director of the Office, and each is under that of any intermediate supervisor having responsibility for an employee w ho actually participates in the patent or patent 
application within the scope of his or her duties.  A patent examiner would have ``official responsibility'' for the patent applications assigned to him or her. 
(B) Ancillary matters and official responsibility.  Administrative authority 
 as used in paragraph 
(v) of this section means authority for planning, organizing and controlling a patent or patent application rather than authority to review or make decisions on ancillary aspects of a patent or patent application such as the regularity of budgeting procedures, public or community relations aspects, or equal employment opportunity considerations.  Responsibility for such an ancillary consideration does not constitute official responsibility for the particular patent or patent 
application, except when such a consideration is also the subject of the employee's proposed 
representation. 
(C) Duty to inquire. In order for a former employee, e.g., former patent examiner, to be barred 
from representing or assisting in represent
ing another as to a particular patent or patent 
application, he or she need not have known, while employed by the Office, that the patent or patent application was pending under his or her official responsibility.  The former employee has a 
reasonable duty of inquiry to learn whether the patent or patent application had been under his or 
her official responsibility.  Ordinarily, a former employee who is asked to represent another on a patent or patent application will become aware of fact s sufficient to suggest the relationship of the 
prior matter to his or her former office, e.g., technology center, group or art unit. If so, he or she is under a duty to make further inquiry. It would be prudent for an employee to maintain a record of 
only patent application numbers of the applications actually acted upon by decision or 
recommendation, as well as those applications under the employee's official responsibility which he or she has not acted upon. 
(D) Self-disqualification.  A former employee, e.g., former patent examiner, cannot avoid the 
restrictions of this section through self-disqualification with respect t
o a patent or patent 
application for which he or she otherwise had official responsibility.  However, an employee who through self-disqualification does not participate personally and substantially in a particular patent or patent application is not subject to the lifetime restriction of paragraph (b)(1) of this section. 
(vi) Pending means that the matter was in fact referred to or under consideration by persons 
within the empl oyee's area of  official responsibility. 
IP/N/1/USA/T/4 
Page 160 -159- January 6, 2012 (4) Measurement of the two-year restriction period.  The two-year period under paragraph 
(b)(2) of this section is meas ured from the date when the employee 's official responsibility in a 
particular area ends, not from the termination of service in the Office, unless the two occur 
simultaneously. The prohibition applies to all particular patents or patent applications subject to 
such official responsibility in the one-year period before termination of such responsibility. 
(c) Former employees of the Office .  This s ection impose s restrictions generally parallel to 
those imposed in 18 U.S.C. 207(a) and (b)(1).  This section, however, does not interpret these 
statutory provisions or any other post-employment restrictions that may apply to former Office employees, and such former employees should not assume that conduct not prohibited by this section is otherwise permissible.  Former employees of the Office, whether or not they are 
practitioners, are encouraged to contact the Department of Commerce for information concerning 
applicable post-employment restrictions. 
(d) An employee of the Office may not prosecute or aid in any manner in the prosecution of 
any patent applicati on before 
the Office. 
(e) Practice before the Office by Government employees is subject to any applicable conflict of 
interest laws, regulations or codes 
of professional responsibility. 
[Added 69 FR 35428, June 24, 2004, effective July 26, 2004] 
§ 11.11  Administrative suspension, inactivation, resignation, and readmission. 
(a) A registered attorney or agent must notify the OED Director of his or her postal address for 
his or her office, up to three e-mail  
addresses where he or she receives e-mail, and business 
telephone number, as well as every change to any of said addresses or telephone numbers within thirty days of the date of the change.  A registered attorney or agent shall, in addition to any notice of change of address and telephone number filed in individual patent applications, separately file written notice of the change of address or telep hone number to the OED Director.  A registered 
practitioner who is an attorney in good standing with the bar of the highest court of one or more 
States shall provide the OED Director with the State bar identification number associated with 
each membership.  The OED Director shall publish from the roster a list containing the name, postal business addresses, business telephone number, registration number, and registration status as an attorney or agent of each registered practitioner recognized to practice before the Office in patent cases. 
(b) Administrative suspension . (1) Whene ver it a
 ppears that a registered patent attorney, a 
registered patent agent or a person granted limited recognition under § 11.9(b) has failed to comply with § 11.8(d), the OED Director shall publish and send a notice to the attorney, agent or person granted limited recognition advising of the noncompliance, the consequence of being administratively suspended under paragraph (b)(5) of this section if noncompliance is not timely remedied, and the requirements for reinstatement under paragraph (f) of this section.  The notice 
shall be published and sent to the attorney, agent or person granted limited recognition by mail to 
the last postal address furnished under paragraph (a) of this section or by e-mail addressed to the last e-mail addresses furnished un der paragraph (a) of this section.  The notice shall demand 
compliance and payment of a delinquency fee set forth in § 1.21(a)(9)(i) of this subchapter within sixty days after the date of such notice. 
(2) In the event a registered patent attorney, registered patent agent or person granted limited 
recognition fails to comply with the
 notice of paragraph (b)(1) of this section within the time 
allowed, the OED Director shall publish and send in the manner provided for in paragraph (b)(1) of this section to the attorney, agent, or person granted limited recognition a Rule to Show Cause why his or her registration or recognition should not be administratively suspended, and he or she no longer be permitted to practice before the Office in patent matters or in any way hold himself or 
herself out as being registered or authorized to practice before the Office in patent matters. The 
OED Director shall file a copy of the Rule to Show Cause with the USPTO Director. 
IP/N/1/USA/T/4 
Page 161 -160- January 6, 2012 (3) Within 30 days of the OED Director's sending the Rule to Show Cause identified in 
§ 11.11(b)(2), the registered patent attorney, registered patent agent or person granted limited 
recognition may file a response to the Rule to Show Cause with the USPTO Director.  The response must set forth the factual and legal bases why the person should not be administratively 
suspended.  The registered patent attorney, registered patent agent or person granted limited 
recognition shall serve the OED Director with a copy of the response at the time it is filed with the USPTO Director.  Within ten days of receiving a copy of the response, the OED Director may file a reply with the USPTO Director that includes documents demonstrating that the notice identified in § 11.11(b)(1) was published and sent to the practitione r in accordance with § 11.11(b)(1).  A copy 
of the reply by the OED Director shall be served on the registered patent attorney, registered 
patent agent or person granted limited recognition.  When acting on the Rule to Show Cause, if 
the USPTO Director determines that there are no genuine issues of material fact regarding the Office's compliance with the notice requirements under this section or the failure of the person to pay the requisite fees, the USPTO Director shall enter an order administratively suspending the registered patent attorney, registered patent agent or person granted limited recognition.  
Otherwise, the USPTO Director shall enter an appropriate order dismissing the Rule to Show 
Cause.  Nothing herein shall permit an administratively suspended registered patent attorney, registered patent agent or person granted limited recognition to seek a stay of the administrative suspension during the pendency of any review of the USPTO Director's final decision. 
(4) An administratively suspended attorney, agent or person granted limited recognition 
remains responsibl e for payi ng his  or her a nnual practiti oner mai
ntenance fee required by 
§ 11.8(d). 
(5) An administratively suspended attorney, agent or person granted limited recognition is 
subject t o investigation a nd disciplin e for his or h er cond uct p
rior to, during, or after the period he 
or she was administratively suspended. 
(6) An administratively suspended attorney, agent or person granted limited recognition is 
prohibited from practicing before the Office
 in patent cases while administratively suspended.  An 
attorney, agent or person granted limited recognition who knows he or she has been administratively suspended under this section will be subject to discipline for failing to comply with the provisions of this paragraph. 
(c) Administrative Inactivation . (1) Any registered practitioner who shall become e m
 ployed by 
the Office shall comply with § 10.40 of this subchapter for withdrawal from the applications, patents, and trademark matters wherein he or she represents an applicant or other person, and notify the OED Director in writing of said employment on the first day of said employment.  The name of any registered practitioner employed by the Office shall be endorsed on the roster as administratively inactive.  The practitioner shall not be responsible for payments of the annual practitioner maintenance fee each complete fiscal year while the practitioner is in administratively 
inactive status.  Upon separation from the Office , the practitioner may request reactivation by 
completing and filing an application, Data Sheet, signing a written undertaking required by 
§ 11.10, and paying the fee set forth in § 1.21(a)(1)(i) of this subchapter.  Upon restoration to active status, the practitioner shall be responsible for paying the annual practitioner maintenance fee for the fiscal year in which the practitioner is restored to active status.  An administratively 
inactive practitioner remains subject to the provisions of the Mandatory Disciplinary Rules 
identified in § 10.20(b) of this subchapter, and to proceedings and sanctions under §§ 11.19 
through 11.58 for conduct that violates a provis ion of the Mandatory Disciplinary Rules identified 
in § 10.20(b) of this subchapter prior to or during employment at the Office.  If, within 30 days after separation from the Office, the practitioner does not request active status or another status, the 
practitioner will be endorsed on the roster as voluntarily inactive  and be subject to the provisions 
of paragraph (d) of this section. 
(2) Any registered practitioner who is a judge of  a court of record, full-time court commissioner,
  
U.S. bankruptcy judge, U.S. magistrate judge, or a retired judge who is eligible for temporary 
judicial assignment and is not engaged in the practice of law may request, in writing, that his or her name be endorsed on the roster as administratively inactive.  Upon acceptance of the request, 
IP/N/1/USA/T/4 
Page 162 -161- January 6, 2012 the OED Director shall endorse the name of the practitioner as administratively inactive. The 
practitioner shall not be responsible for payment of the annual practitioner maintenance fee for each complete fiscal year the practitioner is in administratively inactive status.  Following separation from the bench, the practitioner may request restoration to active status by completing 
and filing an application, Data Sheet, signing a written undertaking required by § 11.10, and 
paying the fee set forth in § 1.21(a)(1)(i) of this subchapter.  Upon restoration to active status, the practitioner shall be responsible for paying the annual practitioner maintenance fee for the fiscal year in which the practitioner is restored to active status. 
(d) Volun tary Inactivation. (1) Except as provided in paragraph (d)(4) of this section, any 
regist ered practitio ner may volun taril
y enter inactive status by filing a request, in writing, that his or 
her name be endorsed on the roster as voluntarily inactive.  Upon acceptance of the request, the OED Director shall endorse the name as voluntarily inactive. 
(2) A registered practitioner in voluntary inactive status shall be responsible for payment of the 
annua l prac titione r maint enance 
fee for voluntary inactive status set forth in § 1.21(a)(7)(ii) of this 
subchapter for each complete fiscal year the practitioner continues to be in voluntary inactive 
status. 
(3) A registered practitioner who seeks or enters into voluntary inactive status is subject to 
investig ation  and discipli ne fo r his or her cond uct
 prior to, during, or after the period of his or her 
inactivation. 
(4) A registered practitioner who is in arrears in paying annual practitioner maintenance fees 
or under administrative suspensio
n for annual practitioner maintenance fee delinquency is 
ineligible to seek or enter into voluntary inactive status. 
(5) A registered practitioner in voluntary inactive status is prohibited from practicing before the 
Office in  patent cas es while in
 voluntary inactive status.  A practitioner in voluntary inactive status 
will be subject to discipline for failing to comply with the provisions of this paragraph.  Upon 
acceptance of the request for voluntary inactive status, the practitioner must comply with the 
provisions of § 10.40 of this subchapter. 
(6) Any registered practitioner whose name has been endorsed as voluntarily inactive 
pursu ant t o parag raph (d)(1) o f
 this section and is not under investigation, not subject to a 
disciplinary proceeding, and not in arrears for the annual practitioner maintenance fee for 
voluntary inactive status may be restored to active status on the register as may be appropriate 
provided that the practitioner files a written request for restoration, a completed application for 
registration on a form supplied by the OED Director furnishing all requested information and material, including information and material pertaining to the practitioner's moral character and reputation under § 11.7(a)(2)(i) during the period of inactivation, a declaration or affidavit attesting to the fact that the practitioner has read the most recent revisions of the patent laws and the rules of practice before the Office, and pays the fees set forth in §§ 1.21(a)(7)(iii) and (iv) of this 
subchapter. 
(e) Resignation . A registered practitioner o
 r a practitioner recognized under § 11.14(c), who is 
neither under investigation under § 11.22 for a possible violation of the Mandatory Disciplinary 
Rules identified in § 10.20(b) of Part 10 of this subchapter, subject to discipline under §§ 11.24 or 11.25, nor a practitioner against whom no probable cause has been found by a panel of the 
Committee on Discipline under § 11.23(b), may resign by notifying the OED Director in writing that 
he or she desires to resign.  Upon acceptance in writing by the OED Director of such notice, that registered practitioner or practitioner under § 11.14 shall no longer be eligible to practice before the Office but shall continue to file a change of address for five years thereafter in order that he or she may be located in the event information regarding the practitioner's conduct comes to the 
attention of the OED Director or any grievance is made about his or her conduct while he or she 
engaged in practice before the Office.  The name of any registered practitioner whose resignation is accepted shall be removed from the register, endorsed as resigned, and notice thereof published in the Official Gazette. Upon acceptance of the resignation by the OED Director, the practitioner must comply with the provisions of § 10.40 of this subchapter. 
IP/N/1/USA/T/4 
Page 163 -162- January 6, 2012 (f) Administrative reinstatement . (1) Any registered practitioner who has been administratively 
suspended pursuant to paragraph (b) of this section, or who has resigned pursuant to paragraph 
(e) of this section, may be reinstated on the register provided the practitioner has applied for reinstatement on an application form supplied by the OED Director, demonstrated compliance 
with the provisions of §§ 11.7(a)(2)(i) and (iii), and paid the fees set forth in §§ 1.21(a)(7)(i), 
(a)(9)(i) and (a)(9)(ii) of this subchapter.  Any person granted limited recognition who has been administratively suspended pursuant to paragraph (b) of this section may have their recognition reactivated provided the practitioner has applied for reinstatement on an application form supplied by the OED Director, demonstrated compliance with the provisions of §§ 11.7(a)(2)(i) and (iii), and paid the fees set forth in §§ 1.21(a)(8)(i), (a)(9)(i) and (a)(9)(ii) of this subchapter.  A practitioner 
who has resigned or was administratively suspended for two or more years before the date the 
Office receives a completed application from the person who resigned or was administratively suspended must also pass the registration examination under § 11.7(b)(1)(ii).  Any reinstated practitioner is subject to investigation and discipline for his or her conduct that occurred prior to, during, or after the period of his or her administrative suspension or resignation. 
(2) Any registered practitioner whose registration has been administratively inactivated 
pursu ant to paragraph (c) of this se ction may be reinsta ted to the re
gister as may be appropriate 
provided within two years after his or her employme nt with the Office ceases or within two years 
after his or her employment in a judicial capacity ceases the following is filed with the OED Director:  a request for reinstatement, a completed application for registration on a form supplied 
by the OED Director furnishing all requested information and material, and the fee set forth in 
§ 1.21(a)(9)(ii) of this subchapter.  Any registered practitioner inactivated or reinstated is subject to investigation and discipline for his or her conduct before, during, or after the period of his or her inactivation. 
[Added 69 FR 35428, June 24, 2004, effective July  26, 2004; amended 73 FR 67750, Nov. 17, 2008, 
effective Dec. 17, 2008] 
§ 11.2 [Reserved] 
§ 11.13 [Reserved] 
§ 11.14 Individuals who may practice before the Office in trademark and other non-patent 
matters. 
(a) Attorneys .  Any individual who is an a tto rney as defined in § 11.1 may represent others 
before the Office in trademark and other non-patent  matters.  An attorney is not required to apply 
for registration or recognition to practice before the Office in trademark and other non-patent matters.  Registration as a patent practitioner does not itself entitle an individual to practice before the Office in trademark matters. 
(b) Non-l awyers .  Indi viduals wh o are not att orneys are not recog nized t
 o practice before the 
Office in trademark and other non-patent matters, except that individuals not attorneys who were 
recognized to practice before the Office in trademark matters under this chapter prior to January 
1, 1957, will be recognized as agents to continue prac tice before the Office in trademark matters.  
Except as provided in the preceding sentence, registration as a patent agent does not itself entitle an individual to practice before the Office in trademark matters. 
(c) Foreigners .  Any forei gn attorney or 
 agent not a resident of the United States who shall file 
a written application for reciprocal recognition under paragraph (f) of this section and prove to the satisfaction of the OED Director that he or she is registered or in good standing before the patent or trademark office of the country in which he or she resides and practices and is possessed of good moral character and reputation, may be recognized for the limited purpose of representing 
IP/N/1/USA/T/4 
Page 164 -163- January 6, 2012 parties located in such country before the Office in the presentation and prosecution of trademark 
matters, provided:  the patent or trademark office of such country allows substantially reciprocal privileges to those permitted to practice in trademark matters before the Office.  Recognition under this paragraph shall continue only during the period that the conditions specified in this 
paragraph obtain. 
(d) Recognition of any individual under this section shall not be construed as sanctioning or 
autho rizing the pe rformance of any ac
t regarded in the jurisdiction where performed as the 
unauthorized practice of law. 
(e) No individual other than those specified in paragraphs (a), (b), and (c) of this section will be 
permitted to practice before the Office in tra
demark matters on behalf of a client.  Any individual 
may appear in a trademark or other non-patent matter in his or her own behalf.  Any individual 
may appear in a trademark matter for:  
(1) A firm of which he or she is a member,  (2) A partnership of which he or she is a partner, or  (3) A corporation or association of which he or she is an officer and which he or she is 
autho rized t o repres ent, if such firm, pa rtners
hip, corporation, or association is a party to a 
trademark proceeding pending before the Office. 
(f) Applica tion for reciprocal recognition .  An ind ividual seeki ng recip roca l recognition under 
paragraph (c) of this section, in addition to providing evidence satisfying the provisions of paragraph (c) of this section, shall apply in writing to the OED Director for reciprocal recognition, 
and shall pay the application fee required by § 1.21(a)(1)(i) of this subchapter. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.15 Refusal to recognize a practitioner. 
Any practitioner authorized to appear before the Office may be suspended, excluded, or 
reprimanded in accordance with the pro v
isions of this Part.  Any practitioner who is suspended or 
excluded under this Part shall not be entitled to practice before the Office in patent, trademark, or 
other non-patent matters while suspended or excluded. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.16 - 11.17 [Reserved]   
§ 11.18 Signature and certificate for correspondence filed in the Office. 
(a) For all documents filed in the Office in patent, trademark, and other non-patent matters, 
and all documents filed with
 a hearing officer in a disciplinary proceeding, except for 
correspondence that is required to be signed by the applicant or party, each piece of 
correspondence filed by a practitioner in the Office must bear a signature, personally signed or 
inserted by such practitioner, in compliance with § 1.4(d)(1), § 1.4(d)(2), or § 2.193(a) of this chapter. 
(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by 
signing , filin g, sub mitting, or late r ad 
vocating) any paper, the party presenting such paper, 
whether a practitioner or non-practitioner, is certifying that— 
(1) All statements made therein of the party’s own knowledge are true, all statements made 
therein o n information  and b elief ar
e believed to be true, and all statements made therein are 
made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers  up by any trick, scheme, or device a material 
fact, or knowingly and willfully makes any fa lse, fictitious, or fraudulent statements or 
representations, or knowingly and willfully makes or uses any false writing or document knowing 
IP/N/1/USA/T/4 
Page 165 -164- January 6, 2012 the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the 
penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and 
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry 
reasonable under the circumstances, 
(i) The pap
er is not being presented for any improper purpose, such as to harass someone or 
to caus e unnecessa ry delay or needless increas
e in the cost of any proceeding before the Office; 
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous 
argument for the extension, modifica
tion, or reversal of existing law or the establishment of new 
law; 
(iii) The allegations and other fa ctual contenti ons have evidentiary support or, if speci fically so 
identi fied, a
re likely to have evidentiary support after a reasonable opportunity for further 
investigation or discovery; and 
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so 
identified, are reasonably based on a lack o
f information or belief. 
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and 
reaso nable  oppo rtunity to res pond , s
ubject to such sanctions or actions as deemed appropriate by 
the USPTO Director, which may include, but are not limited to, any combination of-- 
(1) Striking the offending paper;  (2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for 
appropriate action; 
(3) Precluding a party or practitioner from
 submitting a paper, or presenting or contesting an 
issue; 
(4) Affecting the weight given to the offending paper; or (5) Terminating the proceedings in the Office. (d) Any practitioner violating the provisions of this section may also be subject to disciplinary 
action.    
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008; amended 74 FR 54898, Oct. 26, 2009, 
effective Dec. 28, 2009] 
Subpart C – Investigations and Disciplinary Proceedings; Jurisdiction, Sanctions, 
Investigations, and Proceedings 
§ 11.19 Disciplinary jurisdiction; Jurisdiction to transfer to disability inactive status.  
(a) All practitioners engaged in practice before the Office; all practitioners administratively 
suspend ed; all practi tioners regist ered t o practice be fore the Office in pat
ent cases; all 
practitioners inactivated; all practitioners authorized under § 11.6(d) to take testimony; and all 
practitioners transferred to disability inactive status, reprimanded, suspended, or excluded from 
the practice of law by a duly constituted authority,  including by the USPTO Director, are subject to 
the disciplinary jurisdiction of the Office.  Practitioners who have resigned shall also be subject to such jurisdiction with respect to conduct undertaken prior to the resignation and conduct in regard to any practice before the Office following the resignation. 
(b) Grounds for discipline; Grounds for transfer to disability inactive status .  The following, 
whether done indi
vidually by a practitioner or in concert with any other person or persons and 
whether or not done in the course of providing legal services to a client, or in a matter pending before the Office, constitute grounds for discipline or grounds for transfer to disability inactive 
status.   
(1) Grounds for discipline include: 
(i) Conviction of a serious crime; 
(ii) Discipline on ethical grounds imposed in another jurisdiction or disciplinary disqualification 
from participating in or appea 
ring before any Federal program or agency; 
IP/N/1/USA/T/4 
Page 166 -165- January 6, 2012 (iii) Failure to comply with any order of a Cour t disciplining a practitioner, or any final decision 
of the USPTO Director in a disciplinary matter; 
(iv) Violation of a Mandatory Disciplinary Rule identified in § 10.20(b) of Part 10 of this 
Subchapter; or 
(v) V
iolation of the oath or declaration taken by the practitioner.  See § 11.8. 
(2) Grounds for transfer to disability inactive status include: 
(i) Being transferred to disability inactive status in another jurisdiction;   (ii) Being judicially declared incompetent, being judicially ordered to be involuntarily 
commi tted after a h earing on the gro 
unds of insanity, incompetency or disability, or being placed 
by court order under guardianship or conservatorship; or  
(iii) Filing a motion requesting a disciplinary proceeding be held in abeyance because the 
practi tione r is sufferi ng from a d isabili ty o
r addiction that makes it impossible for the practitioner to 
adequately defend the charges in the disciplinary proceeding. 
(c) Petitions to disqualify a practitioner in ex parte  or inter parte s matters in the Office are not 
governed by §§ 11.19 through 11.60 and will be handled on a case-by-case basis under such 
conditions as the USPTO Director deems appropriate. 
(d) The OED Director may refer the existence of circumstances suggesting unauthorized 
practice of law to the aut horiti
es in the appropriate jurisdiction(s). 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.20 Disciplinary sanctions ; Transfer to disability inactive status .  
(a) Types of discipline.  The USPTO Director, after notice and opportunity for a hearing, and 
where grounds for discip l
ine exist, may impose on a practitioner the following types of discipline: 
(1) Exclusion from practice before the Office; 
(2) Suspension from practice before the Office for an appropriate period of time; (3) Reprimand or censure; or 
(4) Probat ion.  Probation ma y be i
 mposed in lieu of or in addition to any other disciplinary 
sanction.  Any conditions of probation shall be stated in writing in the order imposing probation.  
The order shall also state whether, and to what extent, the practitioner shall be required to notify clients of the probation.  The order shall establish procedures for the supervision of probation.  Violation of any condition of probation shall  
be cause for the probation to be revoked, and the 
disciplinary sanction to be imposed for the remainder of the probation period.  Revocation of probation shall occur only after an order to show cause why probation should not be revoked is resolved adversely to the practitioner. 
(b) Conditions imposed with discipline .  When the USPT O Direc
 tor imposes discipline, the 
practitioner may be required to make restitution either to persons financially injured by the practitioner’s conduct or to an appropriate client’s security trust fund, or both, as a condition of 
probation or of reinstatement.  Such restitution shall be limited to the return of unearned 
practitioner fees or misappropriated client funds.  Any other reasonable condition may also be imposed, including a requirement that the practitioner take and pass a professional responsibility examination.  
(c) Trans fer to disability inactive status.  The USPTO Director, after notice and opportunity for 
a hea ring may, and  whe re groun ds e
xist to believe a practitioner has been transferred to disability 
inactive status in another jurisdiction, or has been judicially declared incompetent; judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or placed by court order under guardianship or conservatorship, transfer the practitioner to disability inactive status. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
IP/N/1/USA/T/4 
Page 167 -166- January 6, 2012 § 11.21 Warnings. 
A warning is neither public nor a disciplinary sanction.  The OED Director may conclude an 
investigation with the issuance of a warning.  The warning shall contain a brief stat e
ment of facts 
and Mandatory Disciplinary Rules identified in § 10.20(b) of Part 10 of this Subchapter relevant to 
the facts.   
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.22 Investigations.  
(a) The OED Director is authorized to investigate possible grounds for discipline.  An 
investigation may be initiated when the OED Direc
tor receives a grievance, information or 
evidence from any source suggesting possible grounds for discipline.  Neither unwillingness nor neglect by a grievant to prosecute a charge, nor settlement, compromise, or restitution with the grievant, shall in itself justif y abatement of an investigation.  
(b) Any person possessing information or evidence concerning possible grounds for discipline 
of a practi tioner may rep ort the in forma tion or e vidence to th e OED Dire
ctor.  The OED Director 
may request that the report be presented in the form of an affidavit or declaration. 
(c) Information or evidence coming from any source which presents or alleges facts 
suggesting possible grounds for discipline of a practitioner 
will be deemed a grievance.   
(d) Preliminary screening of information or evidence .  The OED Director shall examine all 
informatio
n or evidence concerning possible grounds for discipline of a practitioner.   
(e) Notification of investigation .  The OED Direc tor sh all notify the practitioner in writing of the 
initiation of an investigation into whether a practitioner has engaged in conduct constituting possible grounds for discipline.  
(f) Request for information and evidence by OED Director .   
(1) In the course of the investigation, the 
OED Director may request information and evidence 
regarding possible g rounds for discip line of  a prac
titioner from: 
(i) The grievant, (ii) The practitioner, or (iii) Any person who may reasonably be expected to provide information and evidence needed 
in connection with the grievance or investigat
ion. 
(2) The OED Director may request information and evidence regarding possible grounds for 
discipline o f a practiti oner fro m a non-grie
ving client either after obtaining the consent of the 
practitioner or upon a finding by a Contact Member of the Committee on Discipline, appointed in accordance with § 11.23(d), that good cause exists to believe that the possible ground for discipline alleged has occurred with respect to non-grieving clients.  Neither a request for, nor 
disclosure of, such information shall constitute a violation of any of the Mandatory Disciplinary 
Rules identified in § 10.20(b) of this subchapter.    
(g) Where the OED Director makes a request under paragraph (f)(2) of this section to a 
Contact Member of the Commit tee on Disci plin
e, such Contact Member shall not, with respect to 
the practitioner connected to the OED Director's request, participate in the Committee on 
Discipline panel that renders a probable cause determination under paragraph (b)(1) of this 
section concerning such practi tioner, and that forw ards the probable cause finding and 
recommendation to the OED Director under paragraph (b)(2) of this section. 
(h) Disposition of investigation .  Up on the conc lusion of an  investi gation, the OED Direct or 
may:
 
(1) Close the investigation without issuing a warning, or taking disciplinary action;  
(2) Issue a warning to the practitioner;  
(3) Institute formal charges upon the approval of the Committee on Discipline; or (4) Enter into a settlement agreement with the practitioner and submit the same for approval of 
the USPT O Direc tor. 
IP/N/1/USA/T/4 
Page 168 -167- January 6, 2012 (i) Closing investigation without issuing a warning or taking disciplinary action .  The OED 
Director shall terminate an investigation and decline to refer a matter to the Committee on 
Discipline if the OED Director determines that: 
(1) The information or evidence is unfounded;  
(2) The information or evidence relates to matters not within the jurisdiction of the Office;  
(3) As a matter of law, the conduct about which information or evidence has been obtained 
does n ot constitut e grounds fo
r discipline, even if the conduct may involve a legal dispute; or 
(4) The available evidence is insufficient to conclude that there is probable cause to believe 
that grounds exist for dis
cipline. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.23 Committee on Discipline. 
(a) The USPTO Director shall appoint a Committee on Discipline.  The Committee on 
Discipline shall consist of at least three empl oyees of th
e Office.  None of the Committee 
members shall report directly or indirectly to the OED Director or any employee designated by the 
USPTO Director to decide disciplinary matters.  Each Committee member shall be a member in 
good standing of the bar of the highest court of a State.  The Committee members shall select a Chairperson from among themselves.  Three Committee members will constitute a panel of the Committee. 
(b) Powers and duties of the Committee on Discipline .  The Commit tee s hall ha ve 
 the power 
and duty to: 
(1) Meet in panels at the request of the OED Director and, after reviewing evidence presented 
by the OED Direc tor, by majorit
y vote of the pan el, determine whether there is probable cause to 
bring charges under § 11.32 against a practitioner; and 
(2) Prepare and forward its own probable cause findings and recommendations to the OED 
Director. 
(c) No discovery shall 
be authorized of, and no member of the Committee on Discipline shall 
be requi red to testi fy about del
iberations of, the Committee on Discipline or of any panel. 
(d) The Chairperson shall appoint the members of the panels and a Contact Member of the 
Committee on Di
scipline. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.24 Reciprocal discipline.  
(a) Notification of OED Director.  Within thirty days of being publicly censured, publicly 
reprimanded, subjected to probati
on, disbarred or suspended by another jurisdiction, or being 
disciplinarily disqualified from participating in or appearing before any Federal program or agency, a practitioner subject to the disciplinary jurisdiction of the Office shall notify the OED Director in 
writing of the same.  A practitioner is deemed to be disbarred if he or she is disbarred, excluded 
on consent, or has resigned in lieu of a disciplinary proceeding.  Upon receiving notification from any source or otherwise learning that a practitioner subject to the disciplinary jurisdiction of the Office has been so publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended or disciplinarily disqualified, the OED Director shall obtain a certified copy of the record 
or order regarding the public censure, public reprimand, probation, disbarment, suspension or 
disciplinary disqualification and file the same with the USPTO Director.  The OED Director shall, in addition, without Committee on Discipline authorization, file with the USPTO Director a complaint complying with § 11.34 against the practitioner predicated upon the public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification.  The OED Director 
IP/N/1/USA/T/4 
Page 169 -168- January 6, 2012 shall request the USPTO Director to issue a notice and order as set forth in paragraph (b) of this 
section. 
(b) Notification served on practitioner .  Upon receipt of a certified copy of the record or order 
regarding t
he practitioner being so publicly censured, publicly reprimanded, subjected to 
probation, disbarred, suspended or disciplinarily disqualified together with the complaint, the USPTO Director shall issue a notice directed to the practitioner in accordance with § 11.35 and to the OED Director containing: 
(1) A copy of the record or order regarding the public censure, public reprimand, probation, 
disbarment,  suspensio n or disciplinary disqua lification; 
(2) A cop 
y of the complaint; and 
(3) An order directing the practitioner to file a response with the USPTO Director and the OED 
Direc tor, wi thin fo rty days of the date of th e noti
ce establishing a genuine issue of material fact 
predicated upon the grounds set forth in paragraphs (d)(1)(i) through (d)(1)(iv) of this section that the imposition of the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification would be unwarranted and the reasons for that claim. 
(c) Effect of stay in another jurisdiction .  In the event the public censure, public reprimand, 
probation, disbarment, suspension imp osed b
y another jurisdiction or disciplinary disqualification 
imposed in the Federal program or agency has been stayed, any reciprocal discipline imposed by the USPTO may be deferred until the stay expires. 
(d) Hearing and discipline to be imposed .  (1) The USPTO Director shall hear t
 he matter on 
the documentary record unless  the USPTO Director determines th at an oral hearing is necessary .  
After expiration of the forty days from the date of the notice pursuant to provisions of paragraph (b) of this section, the USPTO Director shall consider any timely filed response and shall impose the identical public censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification unless the practitioner clearly and convincingly demonstrates, and the USPTO Director finds there is a genuine issue of material fact that: 
(i) The procedure elsewhere was so lacking in notice or opportunity to be heard as to 
constitu te a depri vation  of due process; 
 
(ii) There was such infirmity of proof establishing the conduct as to give rise to the clear 
conviction that the Office could not, consistent
ly with its duty, accept as final the conclusion on 
that subject;  
(iii) The imposition of the same public censure, public reprimand, probation, disbarment, 
suspension or disciplinary disqualification by t
he Office would result in grave injustice; or  
(iv) Any argument that the practitioner was not publicly censured, publicly reprimanded, placed 
on probation, disbarred, suspended or disciplina
rily disqualified. 
(2) If the USPTO Director determines that there is no genuine issue of material fact, the 
USPTO Director shall enter an appropriate final order.  If the 
USPTO Director is unable to make 
such determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order: 
(i) Referring the complaint to a hearing officer for a formal hearing and entry of an initial 
decision  in accorda nce with th e other rules i n th 
is part, and  
(ii) Directing the practitioner to file an answer to the complaint in accordance with § 11.36. 
(e) Adjudic ation in another jurisdiction  or Federal agency or progra m.  In all othe r respects, a 
final adjudication in another jurisdiction or Fede
ral agency or program  that a practitioner, whether 
or not admitted in that ju
risdiction, has been guilty of misconduct shall esta
blish a prima facie case 
by clear and convincing evidence that the practitioner violated 37 CFR 10.23, as further identified 
under 37 CFR 10.23(c)(5), (or any successor regulation identifying such public censure, public 
reprimand, probation, disbarment, suspension or disciplinary disqualification as a basis for a 
disciplinary proceeding in this Office). 
(f) Reciprocal discipline - action where practice has ceased .  Upon request by the pra ctitioner, 
reciprocal discipline may be imposed nunc pro tunc only if the practitioner promptly notified the 
OED Director of his or her censure, public reprimand, probation, disbarment, suspension or disciplinary disqualification in another jurisdiction, and establishes by clear and convincing 
IP/N/1/USA/T/4 
Page 170 -169- January 6, 2012 evidence that the practitioner voluntarily ceased all activities related to practice before the Office 
and complied with all provisions of § 11.58.  The effective date of any public censure, public reprimand, probation, suspension, disbarment or disciplinary disqualification imposed nunc pro 
tunc shall be the date the practitioner voluntarily ceased all activities related to practice before the 
Office and complied with all provisions of § 11.58. 
(g) Reinst atement following reciprocal discipline proceeding .  A practiti oner may petition for 
reinst ate
ment under conditions set forth in § 11.60 no sooner than completion of the period of 
reciprocal discipline imposed, and compliance with all provisions of § 11.58. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.25 Interim suspension and discipline based upon conviction of committing a serious 
crime. 
(a) Notification of OED Director .  Upon being convicted  of a crime in a court of the United 
States or any State, or violating a criminal law of a foreign country, a practitioner subject to the 
disciplinary jurisdiction of the Office shall notify the OED Director in writing of the same within 
thirty days from the date of such conviction.  Upon being advised or learning that a practitioner 
subject to the disciplinary jurisdiction of the Office has been convicted of a crime, the OED Director shall make a preliminary determination whether the crime constitutes a serious crime warranting interim suspension.  If the crime is a serious crime, the OED Director shall file with the USPTO Director proof of the conviction and request the USPTO Director to issue a notice and 
order set forth in paragraph (b)(2) of this section.  The OED Director shall in addition, without 
Committee on Discipline authorization, file with the USPTO Director a complaint against the practitioner complying with § 11.34 predicated upon the conviction of a serious crime.  If the crime is not a serious crime, the OED Director shall process the matter in the same manner as any other information or evidence of a possible violation of a Mandatory Disciplinary Rule identified in § 10.20(b) of this subchapter  coming to the attention of the OED Director. 
(b) Interim suspension and referral for disciplinary proceeding .  All proceedings un der t
 his 
section shall be handled as expeditiously as possible.  
(1) The USPTO Director has authority to place a practitioner on interim suspension after 
hearing the request for interim s
uspension on the documentary record. 
(2) Notification served on practitioner .  Upon receipt of a certified  copy of the court record, 
docket entry or judgment demonstrating that the practitioner has been so convicted together with the complaint, the USPTO Director shall forthwith issue a notice directed to the practitioner in accordance with §§ 11.35(a), (b) or (c), and to the OED Director, containing: 
(i) A copy of the court record, docket entry, or judgment of conviction;  (ii) A copy of the complaint; and (iii) An order directing the practitioner to file a response with the USPTO Director and the OED 
Direc tor, within fo rty days of t
he date of the notice, establishing that there is a genuine issue of 
material fact that the crime did not constitute a serious crime, the practitioner is not the individual found guilty of the crime, or that the conviction was so lacking in notice or opportunity to be heard as to constitute a deprivation of due process.  
(3) Heari ng and final order on request for interim suspension .  The  request f or interi m 
suspensio n shall be 
heard by the USPTO Director on the documentary record unless the USPTO 
Director determines that the practitioner’s response establishes a genuine issue of material fact 
that: the crime did not constitute a serious crime, the practitioner is not the person who committed 
the crime, or that the conviction was so lacking in notice or opportunity to be heard as to 
constitute a deprivation of due process.  If the USPTO Director determines that there is no genuine 
issue of material fact regarding the defenses set forth in the preceding sentence, the USPTO 
Director shall enter an appropriate final order regarding the OED Director’s request for interim 
suspension regardless of the pendency of any criminal appeal.  If the USPTO Director is unable to make such determination because there is a genuine issue of material fact, the USPTO Director 
IP/N/1/USA/T/4 
Page 171 -170- January 6, 2012 shall enter a final order dismissing the request and enter a further order referring the complaint to 
a hearing officer for a hearing and entry of an initial decision in accordance with the other rules in this part and directing the practitioner to file an answer to the complaint in accordance with § 11.36. 
(4) Termination.  The USPTO Director has authority to terminate an interim suspension.  In the 
interest of justice, the USPTO Direc tor ma
y terminate an interim suspension at any time upon a 
showing of extraordinary circumstances, after affording the OED Director an opportunity to respond to the request to terminate interim suspension. 
(5) Referral for disciplinary proceeding .  Upon entering a final order imp
 osing interim 
suspension, the USPTO Director shall refer the complaint to a hearing officer to conduct a formal 
disciplinary proceeding.  The formal disciplinary proceeding, however, shall be stayed by the 
hearing officer until all direct appeals from the conviction are concluded.  Review of the initial decision of the hearing officer shall be pursuant to § 11.55.   
(c) Proof of conviction and guilt  -- (1) Convic tion in t he United States.  For purpo
 ses of a 
hearing for interim suspension and a hearing on the formal charges in a complaint filed as a 
consequence of the conviction, a certified copy of the court record, docket entry, or judgment of 
conviction in a court of the United States or any State shall establish a prima facie case by clear and convincing evidence that the practitioner was convicted of a serious crime and that the conviction was not lacking in notice or opportunity to be heard as to constitute a deprivation of due process.  
(2) Conviction in a foreign country .  For purposes of a hearing for interi
 m suspension and on 
the formal charges filed as a result of a finding of guilt, a certified copy of the court record, docket entry, or judgment of conviction in a court of a foreign country shall establish a prima facie  case by 
clear and convincing evidence that the practitioner was convicted of a serious crime and that the conviction was not lacking in notice or opportunity to be heard as to constitute a deprivation of due process.  However, nothing in this paragraph shall preclude the practitioner from demonstrating by 
clear and convincing evidence in any hearing on a request for interim suspension there is a 
genuine issue of material fact to be considered when determining if the elements of a serious crime were committed in violating the criminal law of the foreign country and whether a disciplinary sanction should be entered. 
(d) Crime determined not to be serious crime .  If the USPTO Director determine s
  that the 
crime is not a serious crime, the complaint shall be referred to the OED Director for investigation under § 11.22 and processing as is appropriate.   
(e) Reinst atement -- (1) Upon reversal or setting aside a finding of guilt or a conviction .  If a 
practi tione r suspend ed solely unde r the pro 
visions of paragraph (b) of this section demonstrates 
that the underlying finding of guilt or conviction of serious crimes has been reversed or vacated, the order for interim suspension shall be vacated and the practitioner shall be placed on active 
status unless the finding of guilt was reversed or the conviction was set aside with respect to less 
than all serious crimes for which the practitioner was found guilty or convicted.  The vacating of the interim suspension will not terminate any other disciplinary proceeding then pending against the practitioner, the disposition of which shall be determined by the hearing officer before whom the matter is pending, on the basis of all available evidence other than the finding of guilt or 
conviction. 
(2) Following conviction of a serious crime.   Any practitioner convicted of a serious crime and 
discipline
d in whole or in part in regard to that conviction, may petition for reinstatement under 
conditions set forth in § 11.60 no sooner than five years after being discharged following 
completion of service of his or her sentence, or after completion of service under probation or 
parole, whichever is later. 
(f) Notice to clients and others of interim suspension .  An inte rim sus pensio n un der thi s 
section shall constitute a suspension of the practitioner for the purpose of § 11.58. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
IP/N/1/USA/T/4 
Page 172 -171- January 6, 2012 § 11.26 Settlement. 
Before or after a complaint under § 11.34 is filed, a settlement conference may occur between 
the OED Director and the practition er.  An
y offers of compromise and any statements made 
during the course of settlement discussions shall not be admissible in subsequent proceedings.  
The OED Director may recommend to the USPTO Director any settlement terms deemed appropriate, including steps taken to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct.  A settlement agreement shall be effective only upon entry of a final decision by the USPTO Director.   
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.27 Exclusion on consent.   
(a) Required affidavit .  The OED Director may confer  with a  practitioner concerning possible 
violations by the practitioner of the Rules of Professional Conduct whether or not a disciplinary 
proceeding has been instituted.  A practitioner who is the subject of an investigation or a pending 
disciplinary proceeding based on allegations of grounds for discipline, and who desires to resign, may only do so by consenting to exclusion and delivering to the OED Director an affidavit declaring the consent of the practitioner to exclusion and stating:  
(1) That the practitioner’s consent is freely and voluntarily rendered, that the practitioner is not 
being s ubjec ted to coe rcion or du ress
, and that the practitioner is fully aware of the implications of 
consenting to exclusion;  
(2) That the practitioner is aware that there is currently pending an investigation into, or a 
proceeding involving alle gations
 of misconduct, the nature of which shall be specifically set forth in 
the affidavit to the satisfaction of the OED Director;  
(3) That the practitioner acknowledges that, if and when he or she applies for reinstatement 
under § 11.60, the OED Director will conclusi
vely presume, for the limited purpose of determining 
the application for reinstatement, that: 
(i) The facts upon which the investigation or complaint is based are true, and  (ii) The practitioner could not have successfully defended himself or herself against the 
allega tions in the  investi 
gation or charges in the complaint. 
(b) Action by the USPTO Director .  Upon receipt of the required affidav it, the OED Director 
shall file the affidavit and any related papers with the USPTO Director for review and approval.  Upon such approval, the USPTO Director will enter an order excl uding the practitioner on consent 
and providing other appropriate actions.  Upon en try of the order, the excluded practitioner shall 
comply with the requirements set forth in § 11.58. 
(c) When an affidavit under paragraph (a) of this section is received after a complaint under 
§ 11.34 has been fil ed, the OED Di rector sh all n 
otify the hearing officer.  The hearing officer shall 
enter an order transferring the disciplinary proceeding to the USPTO Director, who may enter an order excluding the practitioner on consent. 
(d) Reinstatement.  Any practitioner excluded on consent under this section may not petition 
for reinstatement fo r fi 
ve years.  A practitioner excluded on consent who intends to reapply for 
admission to practice before the Office must comply with the provisions of § 11.58, and apply for reinstatement in accordance with § 11.60.  Failure to comply with the provisions of § 11.58 constitutes grounds for denying an application for reinstatement. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.28 Incapacitated practitioners in a disciplinary proceeding. 
(a) Holding in abeyance a disciplinary proceeding because of incapacitation due to a current 
disability or addiction -- (1) Practitioner’s motion.  In the cours e of 
a disciplinary proceeding under 
IP/N/1/USA/T/4 
Page 173 -172- January 6, 2012 § 11.32, but before the date set by the hearing officer for a hearing, the practitioner may file a 
motion requesting the hearing officer to enter an order holding such proceeding in abeyance based on the contention that the practitioner is suffering from a disability or addiction that makes it impossible for the practitioner to adequately defend the charges in the disciplinary proceeding.   
(i) Content of practitioner’s motion.  The prac titione r’s motion shal l, in additi on to 
 any other 
requirement of § 11.43, include or have attached thereto:  
(A) A brief statement of all material facts;  (B) Affidavits, medical reports, official records, or other documents and the opinion of at least 
one medical expert setting forth and establishing an
y of the material facts on which the 
practitioner is relying; 
(C) A statement that the practitioner acknowledges the alleged incapacity by reason of 
disability or addicti on;  
(D) Wri tten c onsent that the practi tioner be transferred to  disability inac tive status i f
 the motion 
is gr
anted; and  
(E) A written agreement by the practitioner to not practice before the Office in patent, 
trademark or other non-patent cases while on disability inactive status. 
(ii) Response.  The 
OED Director’s response to any motion hereunder shall be served and 
filed within thirty days after service o f the p
ractitioner’s motion unless such time is shortened or 
enlarged by the hearing officer for good cause shown, and shall set forth the following: 
(A) All objections, if any, to the actions requested in the motion; 
(B) An admission, denial or allegation of lack of knowledge with respect to each of the material 
facts in the practitioner’s motion and  
accompanying documents; and  
(C) Affidavits, medical reports, official records, or other documents setting forth facts on which 
the OED Director intends to rely for purposes of disputing or 
denying any material fact set forth in 
the practitioner’s papers. 
(2) Disposition of practitioner’s motion.  The hearing officer shall decide the motion and any 
response thereto.  The motion shall be granted upon a showing of good cause to
 believe the 
practitioner to be incapacitated as alleged.  If the required showing is made, the hearing officer 
shall enter an order holding the disciplinary proceeding in abeyance.  In the case of addiction to drugs or intoxicants, the order may provide that  the practitioner will not be returned to active status 
absent satisfaction of specified conditions.  Upon receipt of the order, the OED Director shall 
transfer the practitioner to disability inactive status, give notice to the practitioner, cause notice to 
be published, and give notice to appropriate authorities in the Office that the practitioner has been placed on disability inactive status.  The practitio ner shall comply with the provisions of § 11.58, 
and shall not engage in practice before the Office in patent, trademark and other non-patent law until a determination is made of the practitioner’s capability to resume practice before the Office in a proceeding under paragraph (c) or paragraph (d) of this section.  A practitioner on disability 
inactive status must seek permission from the OED Director to engage in an activity authorized 
under § 11.58(e).  Permission will be granted only if the practitioner has complied with all the conditions of §§ 11.58(a) through 11.58(d) applicable to disability inactive status.  In the event that permission is granted, the practitioner shall fully comply with the provisions of § 11.58(e).  
(b) Motion for reactivation.  Any practitioner transferred to disability inactive status in a 
disciplina ry proce eding ma y file wit h the hearing office r a 
motion for reactivation once a year 
beginning at any time not less than one year after the initial effective date of inactivation, or once during any shorter interval provided by the order issued pursuant to paragraph (a)(2) of this section or any modification thereof.  If the moti on is granted, the disciplinary proceeding shall 
resume under such schedule as may be established by the hearing officer.   
(c) Contents of motion for reactivation.  A motion by the practitioner for reactivation alleging 
that a practitioner has recovered from a prior disability or addi ction shall be accompanied by all 
available medical reports or simila
r documents relating thereto.  The hearing officer may require 
the practitioner to present such other information as is necessary. 
(d) OED Director’s motion to resume disciplinary proceeding held in abeyance. (1) The OED 
Director, having good cause to believe a practit
ioner is no longer incapacitated, may file a motion 
IP/N/1/USA/T/4 
Page 174 -173- January 6, 2012 requesting the hearing officer to terminate a prior order holding in abeyance any pending 
proceeding because of the practitioner’s disab ility or addiction.  The hearing officer shall decide 
the matter presented by the OED Director’s motion hereunder based on the affidavits and other admissible evidence attached to the OED Director’s motion and the practitioner’s response.  The 
OED Director bears the burden of showing by clear and convincing evidence that the practitioner 
is able to defend himself or herself.  If there is any genuine issue as to one or more material facts, the hearing officer will hold  an evidentiary hearing. 
(2) The hearing officer, upon receipt of the OED Director’s motion under paragraph (d)(1) of 
this section , may direc t the practiti oner to file a respons
e.  If the hearing officer requires the 
practitioner to file a response, the practitioner must present clear and convincing evidence that the 
prior self-alleged disability or addiction continues to make it impossible for the practitioner to 
defend himself or herself in the underlying proceeding being held in abeyance.  
(e) Action by the hearing officer.  If, in deciding a motion under paragraph (b) or (d) of this 
section, t he heari ng offic er dete rmines that th
ere is good cause to believe the practitioner is not 
incapacitated from defending himself or herself, or is not incapacitated from practicing before the 
Office, the hearing officer shall take such action as is deemed appropriate, including the entry of 
an order directing the reactivation of the practitioner and resumption of the disciplinary proceeding. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.29 Reciprocal transfer or initial transfer to disability inactive status.  
(a) Notification of OED Director .  (1) Transfer to disability inactive status in another ju risdiction  
as grounds for reciprocal transfer by the Office.  Within thirty days of being transferred to disability inactive status in another jurisdiction, a practitioner  subject to the disciplinary jurisdiction of the 
Office shall notify the OED Director in writing of the transfer.  Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to 
disability inactive status in another jurisdiction, the OED Director shall obtain a certified copy of the 
order.  The OED Director shall file with the USPTO Director:   
(i) The order;  (ii) A request that the practitioner be transferred to disability inactive status, including the 
specific grounds th erefor; and  
(iii) A reques t 
that the USPTO Director issue a noti ce and order as set fort h in paragraph (b) of  
this section. 
(2) Involu ntary commit
ment, adjudication of incompetency or court ordered placement under 
guardianship or conservatorship as 
grounds for initial transfer to disability inactive status .  Within 
thirty days of being judicially declared incompetent, being judicially ordered to be involuntarily committed after a hearing on the grounds of incompetency or disability, or being placed by court 
order under guardianship or conservatorship in another jurisdiction, a practitioner subject to the 
disciplinary jurisdiction of the Office shall notify the OED Director in writing of such judicial action.  Upon notification from any source that a practitioner subject to the disciplinary jurisdiction of the Office has been subject to such judicial action, the OED Director shall obtain a certified copy of the order.  The OED Director shall file with the USPTO Director:   
(i) The order;  (ii) A request that the practitioner be transferred to disability inactive status, including the 
specific grounds therefor; and  
(iii) A request 
that the USPTO Director issue a notice and order as set fort h in paragraph (b) of 
this section. 
(b) Notice served on pr
actitioner .  Upon receipt of a certifi ed copy of an order or declaration 
issued by another jurisdiction demonstrating that a practitioner subject to the disciplinary jurisdiction of the Office has been transferred to disability inactive status, judicially declared incompetent, judicially ordered to be involuntarily committed after a judicial hearing on the 
IP/N/1/USA/T/4 
Page 175 -174- January 6, 2012 grounds of incompetency or disability, or placed by court order under guardianship or 
conservatorship, together with the OED Director’s request, the USPTO Director shall issue a notice, comporting with § 11.35, directed to the practitioner containing:  
A copy of the order or declaration from the other jurisdiction,  
A copy of the OED Director’s request; and 
(3) An order directing the practitioner to file a response with the USPTO Director and the OED 
Direc tor, wi thin 30 days from the da t 
e of the notice, establishing a genuine issue of material fact 
supported by an affidavit and predicated upon the grounds set forth in § 11.29(d) (1) through (4) that a transfer to disability inactive status would be unwarranted and the reasons therefor.  
(c) Effect of stay of transfer, judicially declared incompetence, judicially ordered involuntarily 
commitment on the grounds of incompete
ncy or disability, or court-ordered placement under 
guardianship or conservatorship .  In the event the transfer, judicially declared incompetence, 
judicially ordered involuntary commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship in the other jurisdiction has been stayed there, any reciprocal transfer or transfer by the Office may be deferred until the stay 
expires. 
 
(d) Hearing and transfer to disability inactive status.  The request for transfer to disability 
inactive status shall be heard by th
e USPTO Director on the documentary record unless the 
USPTO Director determines that there is a genuine issue of material fact, in which case the 
USPTO Director may deny the request .  Upon the expiration of 30 days from the date of the notice 
pursuant to the provisions of paragraph (b) of this section, the USPTO Director shall consider any 
timely filed response and impose the identical trans fer to disability inactive status based on the 
practitioner’s transfer to disability status in another jurisdiction, or shall transfer the practitioner to disability inactive status based on judicially declar ed incompetence, judicial ly ordered involuntary 
commitment on the grounds of incompetency or disability, or court-ordered placement under 
guardianship or conservatorship, unless the practi tioner demonstrates by clear and convincing 
evidence, or the USPTO Director finds there is a genuine issue of material fact by clear and 
convincing evidence that:  
(1) The procedure was so lacking in notice or opportunity to be heard as to constitute a 
depri vation  of du e process;   
(2) There was such infi rmit
y of proof establis hing the transfer to disability status , judici al 
declaration  of inc ompe
tence, judicial order for involuntary commitment on the grounds of 
incompetency or disability, or placement by c ourt order under guardians hip or conservatorship 
that the USPTO Director could not, consistent with Office’s duty, accept as final the conclusion on that subject;  
(3) The imposition of the same disability status or transfer to disability status by the USPTO 
Direc
tor would result in grave injustice; or 
(4) The practitioner is not the individual transferred to disability status, judicially declared 
incompetent, judicially ordered for i nvolunt
ary commitment on the grounds of incompetency or 
disability, or placed by court order un der guardianship or conservatorship. 
 (5) If the USPTO Director determines that there is no genuine issue of material fact 
with regard to any of the ele
ments of paragraphs (d)(1) through (4) of this section, the USPTO 
Director shall enter an appropriate final order.  If the USPTO Director is unable to make that determination because there is a genuine issue of material fact, the USPTO Director shall enter an appropriate order dismissing the OED Director’s request for such reason. 
(e) Adjudication in other jurisdic tion.  In all ot her aspec ts, a final a djudicatio n in anoth er 
jurisdicti
on that a practitioner be transferred to disability inactive status, is judicially declared 
incompetent, is judicially ordered to be involuntarily committed on the grounds of incompetency or disability, or is placed by court order under guardianship or conservatorship shall establish the disability for purposes of a reciprocal transfer to or transfer to disability status before the Office. 
IP/N/1/USA/T/4 
Page 176 -175- January 6, 2012 (f) A practitioner who is transferred to disability inactive status under this section shall be 
deemed to have been refused recognition to practice before the Office for purposes of 35 U.S.C. 
32. 
(g) Order imposing reciprocal transfer to disability inactive status or order imposing initial 
transfer to disability inactive status .  An order by
 the USPTO Director imposing reciprocal transfer 
to disability inactive status, or transferring a practitioner to disability inactive status shall be effective immediately, and shall be for an indefinite period until further order of the USPTO Director.  A copy of the order transferring a practi tioner to disability inactive status shall be served 
upon the practitioner, the practitioner's guardian, and/ or the director of the institution to which the 
practitioner has been committed in the manner the USPTO Director may direct.  A practitioner 
reciprocally transferred or transferred to disability inactive status shall comply with the provisions 
of § 11.58, and shall not engage in practice before the Office in patent, trademark and other non-
patent law unless and until reinstated to active status.   
(h) Confidentiality of proceeding; Orders to be public  -- (1) Confiden
 tiality of proceeding .  All 
proceedings under this section involving allegations  of disability of a practitioner shall be kept 
confidential until and unless the USPTO Director enters an order reciprocally transferring or transferring the practitioner to  disability inactive status.  
(2) Orders t o be Public .  The OED Direc tor s
 hall publicize any reciprocal transfer to disability 
inactive status or transfer to disability inactive status in the same manner as for the imposition of public discipline.  
(i) Employment of practitioners on disability inactive status .  A practitioner on disability inactive 
status must seek permission fro m 
 the OED Director to engage in an activity authorized under 
§ 11.58(e).  Permission will be granted only if the practitioner has complied wi th all the conditions 
of §§ 11.58(a) through 11.58(d) applicable to di sability inactive status .  In the event that 
permission is granted, the practitioner shall fully comply with the provisions of § 11.58(e).  
(j) Reinstatement from disability inactive status . (1) Generally .  No practition er reciprocally 
transferred or transferred to disability inactive status under this section may resume active status except by order of the OED Director.   
(2) Petition.  A prac titioner reci procally trans ferred or transferred to 
 disability inactive status 
shall be entitled to petition the OED Director for transfer to active status once a year, or at whatever shorter intervals the USPTO Director may direct in the order transferring or reciprocally 
transferring the practitioner to disability inactive status  or any modification thereof. 
(3) Examination .  Upon the filing of a petit ion for trans fer to active status, the OED Direc tor 
may 
take or direct whatever action is deemed necessary or proper to determine whether the 
incapacity has been removed, including a direction for an examination of the practitioner by 
qualified medical or psychological experts designated by the OED Director.  The expense of the examination shall be paid and borne by the practitioner. 
(4) Required disclosure, waiver of privilege .  With the filing of a petiti on for reinstatement to 
active stat us, the pract itione 
r shall be required to disclose the name of each psychiatrist, 
psychologist, physician and hospital or other institution by whom or in which the practitioner has been examined or treated for the disability since the transfer to disability inactive status.  The practitioner shall furnish to the OED Director written consent to the release of information and 
records relating to the incapacity if requested by the OED Director. 
(5) Learning in the la w, exa mination.  The OED 
 Director may direct that the practitioner 
establish proof of competence and learning in law, which proof may include passing the 
registration examination. 
(6) Granting of petition for transfer to active status .  The OED Director shall gr ant the petition 
for transfer to active status upon a showing by clear and convincing evidence that the incapacity has been removed. 
(7) Reinstatement in other jurisdiction .  If a practitione r is
  reciprocally transferred to disability 
inactive status on the basis of a transfer to dis ability inactive status in another jurisdiction, the 
OED Director may dispense with further evidence that the disability has been removed and may 
IP/N/1/USA/T/4 
Page 177 -176- January 6, 2012 immediately direct reinstatement to active status upon such terms as are deemed proper and 
advisable. 
(8) Judicial declaration of competency .  If a practitioner is transfe rred to disability inactive 
status on the bas
is of a judicially declared incompetence, judicially ordered involuntary 
commitment on the grounds of incompetency or disability, or court-ordered placement under guardianship or conservatorship has been declared to be competent, the OED Director may dispense with further evidence that the incapacity to practice law has been removed and may immediately direct reinstatement to active status. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§§ 11.30 - 11.31 [Reserved] 
§ 11.32 Instituting a disciplinary proceeding. 
If after conducting an investigation under § 11.22(a), the OED Director is of the opinion that 
grounds exist for discipline under §§ 11.19(b)(3 )
 through (5), the OED Director, after complying 
where necessary with the provisions of 5 U.S.C. 558(c), shall convene a meeting of a panel of the 
Committee on Discipline.  The panel of the Committee on Discipline shall then determine as specified in § 11.23(b) whether a disciplinary proceeding shall be instituted.  If the panel of the Committee on Discipline determines that probable cause exists to bring charges under §§ 11.19(b)(3) through (5), the OED Director shall institute a disciplinary proceeding by filing a 
complaint under § 11.34.   
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.33 [Reserved] 
§ 11.34 Complaint. 
(a) A complaint instituting a disciplinary proceeding under §§ 11.25(b)(4) or 11.32 shall:  
(1) Name the practitioner who may then be referred to as the “respondent”; (2) Give a plain and concise description of the respondent’s alleged grounds for discipline; (3) State the place and time, not less than thirty days from the date the complaint is filed, for 
filing an answer by the respondent ; 
 
(4) State that a decision by default may be entered if an answer is not timely filed by the 
respondent; and 
(5) Be signed by the OED 
Director. 
(b) A complaint will be deemed sufficient if it fairly informs the respondent of any grounds for 
discipline, and where applicable, the Mandatory 
Disciplinary Rules identified in § 10.20(b) of this 
subchapter that form the basis for the disciplinary proceeding so that the respondent is able to adequately prepare a defense.   
(c) The complaint shall be filed in the manner prescribed by the USPTO Director. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.35 Service of complaint. 
(a) A complaint may be served on a respondent in any of the following methods:  
IP/N/1/USA/T/4 
Page 178 -177- January 6, 2012 (1) By delivering a copy of the complaint personally to the respondent, in which case the 
individual who gives the complaint to the respondent shall file an affidavit with the OED Director 
indicating the time and place the complaint was delivered to the respondent.   
(2) By mailing a copy of the complaint by “E xpress Mail,” first-class mail, or any delivery 
service that 
provides ability to confirm delivery or attempted delivery to:  
(i) A respondent who is a registered practitioner at the address provided to OED pursuant to 
§ 11. 11, or  
(ii) A respondent who is
 a nonregistered practitioner at the last address for the respondent 
known to the OED Director. 
(3) By a
ny method mutually agreeable to the OED Director and the respondent. 
(4) In the case of a respondent who resides outside the United States, by sending a copy of 
the c omplai nt by any deliv
ery service that provides  ability to confirm delivery or attempted delivery, 
to: 
(i) A respondent who is a registered practitioner at the address provided to OED pursuant to 
§ 11.11; or 
(ii) A respondent who is
 a nonregistered practitioner at the last address for the respondent 
known to  the OED Direc tor. 
(b) If 
a copy of the complaint cannot be delivered to the respondent through any one of the 
procedures in paragraph (a) of this section, the OED Dire
ctor shall serve the respondent by 
causing an appropriate notice to be published in the Official Gazette for two consecutive weeks, in 
which case, the time for filing an answer shall be thirty days from the second publication of the 
notice.  Failure to timely file an answer will constitute an admission of the allegations in the 
complaint in accordance with paragraph (d) of § 11.36, and the hearing officer may enter an initial decision on default. 
(c) If the respondent is known to the OED Director to be represented by an attorney under 
§ 11.40(a),  a cop y of t 
he complaint shall be served on the attorney in lieu of service on the 
respondent in the manner provided for in paragraph (a) or (b) of this section. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.36 Answer to complaint. 
(a) Time for answer.  An answer to a co mpl aint shall be filed within the time set in the 
complaint but in no event shall that time be less than thirty days from the date the complaint is filed.   
(b) With whom filed.  The answer shall be filed in writing with the hearing officer  at the address 
specifie d in t he co mplaint 
.  The hearing officer may extend the time for filing an answer once for a 
period of no more than thirty days upon a showing of good cause, provided a motion requesting an extension of time is filed within thirty days after the date the complaint is served on respondent.  
A copy of the answer, and any exhibits or attachments thereto, shall be served on the OED 
Director. 
(c) Content.  The resp onden t shall  include in the ans wer a state me
 nt of the facts that 
constitute the grounds of defense and shall specifically admit or deny each allegation set forth in the complaint.  The respondent shall not deny a material allegation in the complaint that the 
respondent knows to be true or state that respondent is without sufficient information to form a 
belief as to the truth of an allegation, when in fact the respondent possesses that information.  The respondent shall also state affirmatively in  the answer special matters of defense and any intent to 
raise a disability as a mitigating factor.  If respo ndent intends to raise a special matter of defense 
or disability, the answer shall specify the defense or disability, its nexus to the misconduct, and the 
reason it provides a defense or mitigation.  A respondent who fails to do so cannot rely on a 
special matter of defense or disability.  The hearing officer may, for good cause, allow the 
respondent to file the statement late, grant additional hearing preparation time, or make other appropriate orders. 
IP/N/1/USA/T/4 
Page 179 -178- January 6, 2012 (d) Failure to deny allegations in complaint.  Every allegation in the complaint that is not 
denied by a respondent in the answer shall be deemed to be admitted and may be considered 
proven.  The hearing officer at any hearing need receive no further evidence with respect to that allegation.   
(e) Default judgment.  Failure to timely file an answer will constitute an admission of the 
allega tions in the  complaint a nd may 
result in entry of default judgment. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.37 [Reserved] 
§ 11.38 Contested case. 
Upon the filing of an answer by the respondent, a disciplinary proceeding shall be regarded as 
a contes ted case within the meaning of 35 U.S. C.
 24.  Evidence obtained by a subpoena issued 
under 35 U.S.C. 24 shall not be admitted into the record or considered unless leave to proceed 
under 35 U.S.C. 24 was previously authorized by the hearing officer.  
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.39 Hearing officer; appointment; responsibilities; review of interlocutory orders; stays.  
(a) Appointment .  A hearing officer, appointed by the USPT O Di rector under 5 U.S.C. 3105 or 
35 U.S.C. 32, shall conduct disciplinary proceedings as provided by this Part. 
(b) Independence of the Hearing Officer.  (1) A heari ng of ficer ap point ed in accordan ce wit h 
paragraph (a) of this section shall not be subject to first level or second level supervision by either 
the USPTO Director or OED Director, or his or her designee. 
(2) A hearing officer appointed in accordance with paragraph (a)  of this section shall not be 
subject to supervision of
 the person(s) investigating or prosecuting the case. 
(3) A hearing officer appointed in accordance with paragraph (a)  of this section shall b e 
impartial, shall no t b
e an individual who has participated in any manner in the decision to initiate 
the proceedings, and shall not have been employed under the immediate supervision of the practitioner.  
(4) A hearing officer appointed in accordance with paragraph (a) of this section shall be 
admitted to practice law and have suitable experi
ence and training conducting hearings, reaching 
a determination, and rendering an initial decision in an equitable manner. 
(c) Responsibilities .  The he aring office r shall ha ve authorit y, consistent with specific 
provisions of these regulations, to: 
(1) Administer oaths and affirmations; (2) Make rulings upon motions and other requests; 
(3) Rule upon offers of proof, receive relevant evidence, and examine witnesses; 
(4) Authorize the taking of a deposition of a witness in lieu of personal appearance of the 
witness be fore the hearing offic er; 
(5) Determi
ne the time and place of any hearing and regulate its course and conduct; 
(6) Hold or provide for the holding of conferences to settle or simplify the issues; 
(7) Receive and consider oral or written arguments on facts or law;  
(8) Adopt procedures and modify procedures fo r the orderly dispositio n of proce edings ;  
(9) Make initial decisions under §§ 11.25 and 11.54; and (10) Perform acts and take measures as necessary to promote the efficient, timely, and 
impartial conduct of any disciplinary proce
eding.  
(d) Time for making initial decision .  The hearing officer shall set times and exercise control  
over a disciplinary proceeding such that an initia l decision under § 11.54 is normally issued within 
IP/N/1/USA/T/4 
Page 180 -179- January 6, 2012 nine months of the date a complaint is filed.  The hearing officer may, however, issue an initial 
decision more than nine months after a complaint is filed if there exist circumstances, in his or her opinion, that preclude issuance of an initial decision within nine months of the filing of the complaint. 
(e) Review of interlocutory orders .  The USPT O Director will  not re view
  an interlocutory order 
of a hearing officer except:  
(1) When the hearing officer shall be of the opinion:  (i) That the interlocutory order involves a controlling question of procedure or law as to which 
there is a substantial ground for 
a difference of opinion, and  
(ii) That an immediate decision by the USPTO Di rector may materially advance t he ultimate 
termination of the disciplinary proceeding, or  
(2) In an extraordinary situation where the USPT O Directo r deems that j ustice requires review. 
(f) Stays pending review of interlocutory order .  If the OED Director or a responde nt seeks 
review of an interlocutory order of a hearing officer under paragraph (b)(2) of this section, any time period set by the hearing officer for taking action shall not be stayed unless ordered by the 
USPTO Director or the hearing officer. 
(g) The hearing officer shall engage in no ex part e discussion s with an y party on the me
 rits of 
the complaint, beginning with appointment and ending when the final agency decision is issued. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.40 Representative for OED Director or respondent. 
(a) A respondent may represent himself or herself, or be represented by an attorney before 
the Office in connection with an in ve
stigation or disciplinary proceeding.  The attorney shall file a 
written declaration that he or she is an attorney within the meaning of § 11.1 and shall state: 
(1) The address to which the attorney wants correspondence related to the investigation or 
disciplinary proceeding sent, and  
(2) A t
elephone number where the attorney may be reached during normal business hours. 
(b) The Deputy General Counsel for Intellectual Property and Solicitor, and attorneys in the 
Office of the Solicitor shall represe nt the OED Direct
or.  The attorneys representing the OED 
Director in disciplinary proceedings shall not consult with the USPTO Director, the General 
Counsel, the Deputy General Counsel for General Law, or an individual designated by the 
USPTO Director to decide disciplinary matters regarding the proceeding.  The General Counsel 
and the Deputy General Counsel for General Law shall remain screened from the investigation and prosecution of all disciplinary proceedings in order that they shall be available as counsel to the USPTO Director in deciding disciplinary proceedings unless access is appropriate to perform their duties.  After a final decision is entered in a disciplinary proceeding, the OED Director and attorneys representing the OED Director shall be available to counsel the USPTO Director, the 
General Counsel, and the Deputy General Counsel for General Law in any further proceedings. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.41 Filing of papers. 
(a) The provisions of §§ 1.8 and 2.197 of this subchapter do not apply to disciplinary 
proceedings.  All papers filed after the complain t and prio
r to entry of an initial decision by the 
hearing officer shall be filed with the hearing officer at an address or place designated by the 
hearing officer. 
(b) All papers filed after entry of an initial decision by the hearing officer shall be filed with the 
USPT O Director.  A cop y of the pap
er shall be served on the OED Director.  The hearing officer or 
IP/N/1/USA/T/4 
Page 181 -180- January 6, 2012 the OED Director may provide for filing papers and other matters by hand, by “Express Mail,” or 
by other means.  
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.42 Service of papers.   
(a) All papers other than a complaint shall be served on a respondent who is represented by 
an attorney by:  
(1) Delivering a copy  of
 the paper to the office of the attorney; or  
(2) Mailing a copy of the paper by first-class mail, “Express Mail,” or other delivery service to 
the attorney at the address provi
ded by the attorney under § 11.40(a)(1); or  
(3) Any other method mutually agreeable to the attorney and a representative for the OED 
Direc tor. 
(b) All pa pers other tha n a comp laint shall be serve d on a res ponde nt wh o is not represente
d 
by an attorney by:  
(1) Delivering a copy
 of the paper to the respondent; or  
(2) Mailing a copy of the paper by first-class mail, “Express Mail,” or other delivery service to 
the respondent at the address to whic
h a complaint may be served or such other address as may 
be designated in writing by the respondent; or 
(3) Any other method mutually agreeable to the respondent and a representative of the OED 
Director. 
(c) A respondent shall serve on the repr
esentative for the OED Director one copy of each 
pape r filed with t he he aring of ficer or the OED Di recto r.  A paper ma
y be served on the 
representative for the OED Director by: 
(1) Delivering a copy of the paper to the representative; or (2) Mailing a copy of the paper by first-class mail, “Express Mail,” or other delivery service to 
an address designated in writing by t
he representative; or 
(3) Any other method mutually agreeable to the respondent and the representative. (d) Each paper filed in a disciplinary proceeding shall contain therein a certificate of service 
indicati ng:  
(1) The dat e on which  service was made; and 
(2) The met
hod by which service was made. 
(e) The hearing officer or the USPTO Director may require that a paper be served by hand or 
by “Express  Mail.” 
(f) Service b y mail is co mpleted wh en the pa
per mailed in the United States is placed into the 
custody of the U.S. Postal Service. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.43 Motions. 
Motions, including all prehearing motions commonly filed under the Federal Rules of Civil 
Procedure, shall be filed with the hearing offic er.  The 
hearing officer will determine whether 
replies to responses will be authorized and the time period for filing such a response.  No motion shall be filed with the hearing officer unless such motion is supported by a written statement by 
the moving party that the moving party or attorney for the moving party has conferred with the 
opposing party or attorney for the opposing party in an effort in good faith to resolve by agreement the issues raised by the motion and has been unable to reach agreement.  If, prior to a decision on the motion, the parties resolve issues raised by a motion presented to the hearing officer, the parties shall promptly notify the hearing officer. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
IP/N/1/USA/T/4 
Page 182 -181- January 6, 2012 § 11.44 Hearings. 
(a) The hearing officer shall preside over hearings in disciplinary proceedings.  The hearing 
officer shall set the time and place f o
r the hearing.  In cases involving an incarcerated respondent, 
any necessary oral hearing may be held at the location of incarceration.  Oral hearings will be 
stenographically recorded and transcribed, and the testimony of witnesses will be received under oath or affirmation.  The hearing officer shall conduct the hearing as if the proceeding were subject to 5 U.S.C. 556.  A copy of the transcript of the hearing shall become part of the record.  A copy of the transcript shall be provided to the OED Director and the respondent at the expense of 
the Office. 
(b) If the respondent to a disciplinary proceeding fails to appear at the hearing after a notice of 
hearing has been given by
 the hearing officer, the hearing officer may deem the respondent to 
have waived the right to a hearing and may proceed with the hearing in the absence of the 
respondent. 
(c) A hearing under this section will not be open to the public except that the hearing officer 
may grant a request b y a
 respondent to open his or her hearing to the public and make the record 
of the disciplinary proceeding available for public inspection, provided , a protective order is 
entered to exclude from public disclosure information which is privileged or confidential under applicable laws or regulations.   
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.45 Amendment of pleadings. 
The OED Director may, without Committee on Discipline authorization, but with the 
authorization of the hearing officer, am e
nd the complaint to include additional charges based upon 
conduct committed before or after the complaint was filed.  If amendment of the complaint is 
authorized, the hearing officer shall authorize amendment of the answer.  Any party who would 
otherwise be prejudiced by the amendment will be given reasonable opportunity to meet the allegations in the complaint or answer as amended, and the hearing officer shall make findings on any issue presented by the complaint or answer as amended. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§§ 11.46 - 11.48 [Reserved] 
§ 11.49 Burden of proof. 
In a disciplinary proceeding, the OED Director shall have the burden of proving the violation by 
clear and convincing evidence a nd a
 respondent shall have the burden of proving any affirmative 
defense by clear and convincing evidence. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.50 Evidence. 
(a) Rules of evidence .  The rules of evidence p r evailing in courts of law and equity are not 
controlling in hearings in disciplinary proceedings.  However, the hearing officer shall exclude 
evidence that is irrelevant, immaterial, or unduly repetitious. 
(b) Deposi tions.  De positions of witnesses tak en purs uant  to § 11.51 may be admitted as 
evidence. 
IP/N/1/USA/T/4 
Page 183 -182- January 6, 2012 (c) Government documents .  Official documents, records, and papers of the Office, including, 
but not limited to, all papers in the file of a disciplinary investigation, are admissible without 
extrinsic evidence of authenticity.  These documents, records, and papers may be evidenced by a copy certified as correct by an employee of the Office. 
(d) Exhibits.  If any document, reco
 rd, or other paper is introduced in evidence as an exhibit, 
the hearing officer may authorize the withdrawal of the exhibit subject to any conditions the 
hearing officer deems appropriate. 
(e) Objections .  Objections to evidence will be  in short form, stating the grounds of objection.  
Objections and rulings on objections will be a part of the record.  No exception to the ruling is necessary to preserve the rights of the parties. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.51 Depositions. 
(a) Depositions for use at the hearing in lieu of personal appearance of a witness before the 
hearing officer may be taken by  res
pondent or the OED Director upon a showing of good cause 
and with the approval of, and under such conditions as may be deemed appropriate by, the hearing officer.  Depositions may be taken upon oral or written questions, upon not less than ten days’ written notice to the other party, before any officer authorized to administer an oath or affirmation in the place where the deposition is to be taken.  The parties may waive the requirement of ten days’ notice and depositions may then be  taken of a witness at a time and 
place mutually agreed to by the parties.  When a deposition is taken upon written questions, copies of the written questions will be served u pon the other party with the notice, and copies of 
any written cross-questions will be served by hand or “Express Mail” not less than five days before the date of the taking of the deposition unless the parties mutually agree otherwise.  A party on whose behalf a deposition is taken shall file a copy of a transcript of the deposition signed by a court reporter with the hearing officer and shall serve one copy upon the opposing party.  
Expenses for a court reporter and preparing, serving, and filing depositions shall be borne by the 
party at whose instance the deposition is taken.  Depositions may not be taken to obtain discovery, except as provided for in paragraph (b) of this section. 
(b) When the OED Director and the respondent agree in writing, a deposition of any witness 
who will appear voluntarily ma
y be taken under such terms and conditions as may be mutually 
agreeable to the OED Director and the respondent.  The deposition shall not be filed with the hearing officer and may not be admitted in evidence before the hearing officer unless he or she orders the deposition admitted in evidence.  The admissibility of the deposition shall lie within the discretion of the hearing officer who may reject the deposition on any reasonable basis including the fact that demeanor is involved and that the witness should have been called to appear personally before the hearing officer. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.52 Discovery. 
Discovery shall not be authorized except as follows: (a) After an answer is filed under § 11.36 and when a party establishes that discovery is 
reasonable and relevant, the heari ng o 
fficer, under such conditions as he or she deems 
appropriate, may order an opposing party to: 
(1) Answer a reasonable number of written requests for admission or interrogatories; (2) Produce for inspection and copying a reasonable number of documents; and (3) Produce for inspection a reasonable number of things oth er than docu ments. 
(b) Disco
very shall not be authorized under paragraph (a) of this section of any matter which: 
IP/N/1/USA/T/4 
Page 184 -183- January 6, 2012 (1) Will be used by another party solely for impeachment; 
(2) Is not available to the party under 35 U.S.C. 122; (3) Relates to any other disciplinary proceeding; (4) Relates to experts except as the hearing officer may require under paragraph (e) of this 
section; 
(5) Is privileged; or (6) Relates to mental impressions, conclusions, opinions, or legal theories of any attorney or 
other representati ve of a part
y. 
(c) The hearing officer may deny discovery requested under paragraph (a) of this section if the 
discovery sought: 
(1) Will unduly delay the disciplinary proceeding; (2) Will plac
e an undue burden on the party required to produce the discovery sought; or 
(3) Consists of information that is available:  (i) Generally to the public;  (ii) Equally to the parties; or  
(iii) To the party seeking the discovery through another source. 
(d) Prior to authorizing discovery under paragraph (a) of this section, the hearing officer shall 
requi re the party seeking 
discovery to file a motion (§ 11.43) and explain in detail, for each request 
made, how the discovery sought is reasonable and relevant to an issue actually raised in the complaint or the answer. 
(e) The hearing officer may require parties to file and serve, prior to any hearing, a pre-hearing 
statement that contains : 
(1) A 
list (together with a copy) of all proposed exhibits to be used in connection with a party’s 
case-in-chief; 
(2) A list of proposed witnesses; (3) As to each proposed expert witness: 
(i) An identification of the field in which the individual will be qualified as an expert; 
(ii) A statement as to the subject matter on which the expert is expected to testify; and (iii) A statement of the substance of the facts and opinions to which the expert is expected to 
testify; 
(4) Copies of memoranda reflecting resp on 
dent’s own statements to administrative 
representatives. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.53 Proposed findings and conclusions; post-hearing memorandum. 
Except in cases in which the respondent has failed to answer the complaint or amended 
complaint, the hearing officer, p r
ior to making an initial decision, shall afford the parties a 
reasonable opportunity to submit proposed findings and conclusions and a post-hearing memorandum in support of the proposed findings and conclusions. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.54 Initial decision of hearing officer. 
(a) The hearing officer shall make an initial decision in the case.  The decision will include:  (1) A statement of findings of fact and conclusions of law, as well as the reasons or bases for 
those findings and conclusions with appro pria 
te references to the record, upon all the material 
issues of fact, law, or discretion presented on the record, and  
(2) An order of default judgment, of suspension or  exclusion from practice, of rep rimand, or an 
order dismissing the complaint.  The hearing officer shall transmit a copy of the decision to the 
IP/N/1/USA/T/4 
Page 185 -184- January 6, 2012 OED Director and to the respondent.  After issuing the decision, the hearing officer shall transmit 
the entire record to the OED Director.  In the absence of an appeal to the USPTO Director, the decision of the hearing officer, including a default judgment, will, without further proceedings, become the decision of the USPTO Director thirty days from the date of the decision of the 
hearing officer. 
(b) The initial decision of the hearing officer shall explain the reason for any default judgment, 
reprimand, suspensio n, or exclusio n.  In determi n
ing any sanction, the following four factors must 
be considered if they are applicable:  
(1) Whether the practitioner has violated a duty owed to a client, to the public, to the legal 
system, or to the profession; 
(2) Whether 
the practitioner acted intentionally, knowingly, or negligently; 
(3) The amount of the actual or potential injury caused by the practitioner’s misconduct; and 
(4) The existence of any aggravating or mitigating factors. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.55 Appeal to the USPTO Director. 
(a) Within thirty days after the date of the initial decision of the hearing officer under §§ 11.25 
or 11.54, either party may appeal to t he USPT
O Director.  The appeal shall include the appellant’s 
brief.  If more than one appeal is filed, the party who files the appeal first is the appellant for purpose of this rule.  If appeals are filed on the same day, the respondent is the appellant.  If an 
appeal is filed, then the OED Director shall transmit the entire record to the USPTO Director.  Any 
cross-appeal shall be filed within fourteen days after the date of service of the appeal pursuant to § 11.42, or thirty days after the date of the initial decision of the hearing officer, whichever is later.  The cross-appeal shall include the cross-appellant’s brief.  Any appellee or cross-appellee brief must be filed within thirty days after the date of service pursuant to § 11.42 of an appeal or cross-appeal.  Any reply brief must be filed within fourteen days after the date of service of any appellee 
or cross-appellee brief. 
(b) An appeal or cross-appeal must include exceptions to the decisions of the hearing officer 
and supporting reasons for those exceptions.  Any exception not raise
d will be deemed to have 
been waived and will be disregarded by the USPTO Director in reviewing the initial decision.  
(c) All briefs shall: (1) Be filed with the USPTO Director at the address set forth in § 1.1(a)(3)(ii) of this 
subchapter and served on the opposing part y; 
(2) 
Include separate sections containing a concise statement of the disputed facts and 
disputed points of law; and 
(3) Be typed on 8 1/2 
by 11-inch paper, and comply with Rule 32(a)(4)-(6) of the Federal 
Rules of Appellate Procedure. 
(d) An appellant’s, cross
-appellant’s, appellee’s, and cross-appellee’s brief shall be no more 
than t hirty pages in le ngth, an d comply wit
h Rule 28(a)(2), (3), and (5) through (10) of the Federal 
Rules of Appellate Procedure.  Any reply brief shall be no more than fifteen pages in length, and 
shall comply with Rule 28(a)(2), (3), (8), and (9) of the Federal Rules of Appellate Procedure.  
(e) The USPTO Director may refuse entry of a nonconforming brief. 
(f) The USPTO Director will decide the appeal on the record made before the hearing officer. 
(g) Unless the USPTO Director permits, no further briefs or motions shall be filed. (h) The USPTO Director may order reopening of a disciplinary proceeding in accordance with 
the pri nciple s that go vern the granting of n ew trials.  An 
y request to reopen a disciplinary 
proceeding on the basis of newly discovered evidence must demonstrate that the newly discovered evidence could not have been discovered by due diligence. 
(i) In the absence of an appeal by the OED Director, failure by the respondent to appeal under 
the p rovisions of t his se ction sh all result in the initial d 
ecision being final and effective thirty days 
from the date of the initial decision of the hearing officer. 
IP/N/1/USA/T/4 
Page 186 -185- January 6, 2012 [Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.56 Decision of the USPTO Director. 
(a) The USPTO Director shall decide an appeal from an initial decision of the hearing officer.  
On appeal from the initial decisio n, 
the USPTO Director has authority to conduct a de novo review 
of the factual record.  The USPTO Director may affirm, reverse, or modify the initial decision or 
remand the matter to the hearing officer for such further proceedings as the USPTO Director may 
deem appropriate.  In making a final decision, the USPTO Director shall review the record or the portions of the record designated by the parties.  The USPTO Director shall transmit a copy of the final decision to the OED Director and to the respondent. 
(b) A final decision of the USPTO Director ma y dismiss a disciplinary proceedi ng, reverse o
 r 
modify the initial decision, reprimand a practitioner, or may suspend or exclude the practitioner from practice before the Office.  A final decision suspending or excluding a practitioner shall require compliance with the provisions of § 11.58.  The final decision may also condition the reinstatement of the practitioner upon a showing that the practitioner has taken steps to correct or mitigate the matter forming the basis of the action, or to prevent recurrence of the same or similar conduct. 
(c) The respondent or the OED Director may make a single request for reconsideration or 
modification of the decision b
y the USPTO Director if filed within twenty days from the date of 
entry of the decision.  No request for reconsideration or modification shall be granted unless the request is based on newly discovered evidence or error of law or fact, and the requestor must demonstrate that any newly discovered evidence could not have been discovered any earlier by 
due diligence.  Such a request shall have the effect of staying the effective date of the order of 
discipline in the final decision.  The decision by the USPTO Director is effective on its date of entry. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.57 Review of final decision of the USPTO Director. 
(a) Review of the final decision by USPTO Director in a disciplinary case may be had, subject 
to § 11.55(d), by a petitio n filed
 in accordance with 35 U.S.C. 32.   The Respondent must serve the 
USPTO Director with the petition.  Respondent must serve the petition in accordance with Rule 4 of the Federal Rules of Civil Procedure and § 104.2 of this Title.  
(b) Except as provided for in § 11.56(c), an order for discipline in a final decision will not be 
stayed except on proof 
of exceptional circumstances. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.58 Duties of disciplined or resigned practitioner, or practitioner on disability inactive status. 
(a) An excluded, suspended or resigned practitioner, or practitioner transferred to disability 
inactive status shall not  eng 
age in any practice of patent, trademark and other non-patent law 
before the Office.  An excluded, suspended or resigned practitioner will not be automatically reinstated at the end of his or her period of exclusion or suspension.  An excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status must comply with the provisions of this section and § 11.60 to be reinstated.  Failure to comply with the provisions of 
this section may constitute both grounds for denying reinstatement or readmission; and cause for 
further action, including seeking further exclusion, suspension, and for revocation of any pending probation. 
IP/N/1/USA/T/4 
Page 187 -186- January 6, 2012 (b) Unless otherwise ordered by the USPTO Director, any excluded, suspended or resigned 
practitioner, or practitioner transferred to disability inactive status shall: 
(1) Within thirty days after the date of entry of the order of exclusion, suspension, acceptance 
of resignation, or transfer to disability inactive status:  
(i) File a notice of withdrawal as of th
e effective date of the exclusion, suspension, acceptance 
of resi gnation, o r trans fer to disa bility inacti
ve status in each pending patent and trademark 
application, each pending reexamination and interference proceeding, and every other matter 
pending in the Office, together with a copy of the notices sent pursuant to paragraphs (b) and (c) of this section; 
(ii) Provide notice to all State and Federal jurisdictions and administrative agencies to which 
the practitioner is admitted to practice and
 all clients the practitioner represents having immediate 
or prospective business before the Office in patent, trademark and other non-patent matters of the order of exclusion, suspension, acceptance of resignation, or transferred to disability inactive status and of the practitioner’s consequent inability to act as a practitioner after the effective date of the order; and that, if not represented by another practitioner, the client should act promptly to 
substitute another practitioner, or to seek legal advice elsewhere, calling attention to any urgency 
arising from the circumstances of the case; 
(iii) Provide notice to the practitioner(s) for all opposing parties (or, to the parties in the 
absence of a practitioner representing the parties) in matters pending before the 
Office of the 
practitioner’s exclusion, suspension, resignation, or transfer to disability inactive status and, that 
as a consequence, the practitioner is disqualified from acting as a practitioner regarding matters 
before the Office after the effective date of the suspension, exclusion, resignation or transfer to disability inactive status, and state in the notice the mailing address of each client of the excluded, suspended or resigned practitioner, or practitioner tr ansferred to disability inactive status who is a 
party in the pending matter; 
(iv) Deliver to all clients having immediate or prospective business before the Office in patent, 
trademark or other non-paten t 
matters any papers or other property to which the clients are 
entitled, or shall notify the clients and any co-practitioner of a suitable time and place where the papers and other property may be obtained, calling attention to any urgency for obtaining the papers or other property; 
(v) Relinquish to the client, or other practitioner designated by the client, all funds for practice 
before the Office, including any leg al fees p
aid in advance that have not been earned and any 
advanced costs not expended;  
(vi) Take any necessary and appropriate steps to remove from any telephone, legal, or other 
direct ory any advertisement, stat
ement, or repr esentation which would reasonably suggest that 
the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office; and 
(vii) Serve all notices required by paragraphs (b)(1)(ii) and (b)(1)(iii) of this section by certified 
mail, return receipt requ ested, u nless mailed ab ro 
ad.  If mailed abroad, all notices shall be served 
with a receipt to be signed and returned to the practitioner. 
(2) Within forty-five days after entry of the order of suspension, exclusion, or of acceptance of 
resignation, the practitioner shall file wit
h the OED Director an affidavit of compliance certifying 
that the practitioner has fully complied with the provisions of the order, this section, and with the Mandatory Disciplinary Rules identified in § 10.20( b) of this subchapter for withdrawal from 
representation.  Appended to the affidavit of compliance shall be: 
(i) A copy of each form of notice, the names and addresses of the clients, practitioners, courts, 
and ag encie s to whic h notices were sent, a nd all  return rec ei 
pts or returned mail received up to 
the date of the affidavit.  Supplemental affidavits shall be filed covering subsequent return receipts and returned mail.  Such names and addresses of clients shall remain confidential unless otherwise ordered by the USPTO Director; 
(ii) A schedule showing the location, title and account number of every bank account 
design ated as a client or trust accou nt, de posit account in 
the Office, or other fiduciary account, 
IP/N/1/USA/T/4 
Page 188 -187- January 6, 2012 and of every account in which the practitioner holds or held as of the entry date of the order any 
client, trust, or fiduciary funds for practice before the Office; 
(iii) A schedule describing the practitioner’s disposition of all client and fiduciary funds for 
practice before the Office in th
e practitioner’s possession, custody or control as of the date of the 
order or thereafter; 
(iv) Such proof of the proper distribution of said funds and the closing of such accounts as has 
been requested b y the OED Di
rector, including copies of checks and other instruments; 
(v) A list of all other State, Federal, and administrative jurisdictions to which the practitioner is 
admitted to practice; and 
(vi
) An affidavit describing the precise nature of the steps taken to remove from any telephone, 
legal, or other directory any ad
vertisement, statem ent, or representation which would reasonably 
suggest that the practitioner is authorized to practice patent, trademark, or other non-patent law before the Office.  The affidavit shall also state the residence or other address of the practitioner to which communications may thereafter be directed, and list all State and Federal jurisdictions, and administrative agencies to which the practitioner is admitted to practice.  The OED Director 
may require such additional proof as is deemed necessary.  In addition, for the period of 
discipline, an excluded or suspended practitioner, or a practitioner transferred to disability inactive status shall continue to file a statement in accordance with § 11.11, regarding any change of residence or other address to which communications may thereafter be directed, so that the excluded or suspended practitioner, or practitioner transferred to disability inactive status may be 
located if a grievance is received regarding any conduct occurring before or after the exclusion or suspension.  The practitioner shall retain copies of all notices sent and shall maintain complete records of the steps taken to comply with the notice requirements. 
(3) Not hold himself or herself out as authorized to practice law before the Office. (4) Not advertise the practitioner’s availability or ability to perform or render legal services for 
any person having i
mmediate or prospective business before the Office as to that business. 
(5) Not render legal advice or services to any person having immediate or prospective 
business before the Office as t o that 
business. 
(6) Promptly take steps to change any sign identifying the practitioner’s or the practitioner’s 
firm’s office and the practitioner’s or the practi tioner’s firm’s statione
ry to delete therefrom any 
advertisement, statement, or representation which would reasonably suggest that the practitioner 
is authorized to practice law before the Office. 
(c) An excluded, suspended or resigned practitioner, or practitioner transferred to disability 
inactive status after entry of the ord er of e
xclusion or suspension, acceptance of resignation, or 
transfer to disability inactive status shall not accept any new retainer  regarding immediate or 
prospective business before the Office, or engage as a practitioner for another in any new case or 
legal matter regarding practice before the Office.  The excluded, suspended or resigned 
practitioner, or practitioner transferred to dis ability inactive status shall be granted limited 
recognition for a period of thirty days.  During the thirty-day period of limited recognition, the 
excluded, suspended or resigned practitioner, or practitioner transferred to disability inactive status shall conclude work on behalf of a client on any matters that were pending before the Office on the date of entry of the order of exclusion or suspension, or acceptance of resignation.  If such 
work cannot be concluded, the excluded, suspended or resigned practitioner, or practitioner 
transferred to disability inactive status shall so advise the client so that the client may make other arrangements. 
(d) Required records .  An excluded, suspended or resi
 gned practitioner , or practitioner 
transferred to disability inactive status shall keep and maintain records of the various steps taken 
under this section, so that in any subsequent proceeding proof of compliance with this section and 
with the exclusion or suspension order will be available.  The OED Director will require the practitioner to submit such proof as a condition precedent to the granting of any petition for reinstatement.   
(e) An excluded, suspended or resigned practitioner, or practitioner on disability inactive status 
who ai ds anothe r prac titione r in an y wa
y in the other practitioner’s practice of law before the 
IP/N/1/USA/T/4 
Page 189 -188- January 6, 2012 Office, may, under the direct supervision of the other practitioner, act as a paralegal for the other 
practitioner or perform other services for the ot her practitioner which ar e normally performed by 
laypersons, provided: 
(1) The excluded, suspended or resigned practitioner, or practitioner transferred to disability 
inactive status is a salaried employe
e of: 
(i) The other practitioner; (ii) The other practitioner’s law firm; or (iii) A client-employer who empl oys the other practitioner as a salaried empl oyee; 
(2) Th e oth er
 practitioner assumes full professional responsibility to any client and the Office 
for any work performed by the excluded, suspended or 
resigned practitioner for the other 
practitioner; 
(3) The excluded, suspended or resigned practitioner, or practitioner transferred to  disability 
inactive status does not: 
(i) Communicate direct l
y in writing, orally, or otherwise with a client of the other practitioner in 
regard to any immediate or prospec
tive business before the Office; 
(ii) Render any legal advice or any legal services to a clien t of the other practitio ner in regard  
to any immediate or prospective business before the Office; or 
(iii) Meet in person or in the presence of the ot her practitioner in rega rd to any immediate or 
prospective business before the Office, with: 
(A) Any Offi
ce employee in connection with the prosecution of any patent, trademark, or other 
case; 
(B) Any client of the other practitioner, the other practitioner’s law firm, or the client-employer 
of the other practi tione r; or 
(C) Any witness or pote
ntial witness whom the other practitioner, the other practitioner’s law 
firm, or the other practitioner’s client-employe
r may or intends to call as a witness in any 
proceeding before the Office.  The term “witness” includes individuals who will testify orally in a 
proceeding before, or sign an affidavit or any other document to be filed in, the Office. 
(f) When an excluded, suspended or resigned practitioner, or practitioner transferred to 
disability inactive status acts as a paralegal or performs services unde r paragraph (e) of this 
section,  th
e practitioner shall not thereafter be reinstated to practice before the Office unless: 
(1) The practitioner shall have filed with the OED Director an affidavit which:  (i) Explains in detail the precise nature of all paralegal or other services performed by the 
excluded , suspend ed o r resigned practi 
tioner, or practitioner transferred to disability inactive 
status, and  
(ii) Shows by clear and convincing evidence that the excluded, suspended or resigned 
practitioner, or practitioner transfe rred to disability inactive status  has complied with the provisions 
of this
 section and all Mandatory Disciplinary Rules identified in § 10.20(b) of this subchapter; and 
(2) The other practitioner shall have filed with the OED Director a written statement which:  
(i) Shows that the other practitioner has read the affidavit required by paragraph (d)(1) of this 
section and that the other pract itioner believes
 every statement in the affidavit to be true, and  
(ii) States why the other practitioner be lieves that the excluded, suspended or resigned 
practitioner, or practitioner transfe rred to disability inacti
ve status  has complied with paragraph (c) 
of this section. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.59 Dissemination of disciplinary and other information.   
(a) The OED Director shall inform the public of the disposition of each matter in which public 
discipline has been imposed, and of an y
 other changes in a practitioner’s registration status.  
Public discipline includes exclusion, as well as exclusion on consent; suspension; and public reprimand.  Unless otherwise ordered by the USPTO Director, the OED Director shall give notice of public discipline and the reasons for the discipline to disciplinary enforcement agencies in the 
IP/N/1/USA/T/4 
Page 190 -189- January 6, 2012 State where the practitioner is admitted to practice , to courts where the practitioner is known to be 
admitted, and the public.  If public discipline is imposed, the OED Director shall cause a final 
decision of the USPTO Director to be published.  Final decisions of the USPTO Director include default judgments.  See § 11.54(a)(2).  If a private reprimand is imposed, the OED Director shall 
cause a redacted version of the final decision to be published.   
(b) Reco rds available to the public .  Unless the USPTO Direct or ord ers that the p
 roceeding or 
a portion of the record be kept confidential, the OED Director’s records of every disciplinary 
proceeding where a practitioner is reprimanded, suspended, or excluded, including when said sanction is imposed by default judgment, shall be made available to the public upon written request, except that information may be withheld as necessary to protect the privacy of third 
parties or as directed in a protective order issued pursuant to § 11.44(c).  The record of a 
proceeding that results in a practi tioner’s transfer to di sability inactive status shall not be available 
to the public. 
(c) Access to records of exclusion by consent .  Unless the USPT O Director ord ers that th e
  
proceeding or a portion of the record be kept confidential, an order excluding a practitioner on 
consent under § 11.27 and the affidavit required under paragraph (a) of § 11.27 shall be available 
to the public, except that information in the order or affidavit may be withheld as necessary to protect the privacy of third parties or as directed in a protective order under § 11.44(c).  The affidavit required under paragraph (a) of § 11.27 shall not be used in any other proceeding except by order of the USPTO Director or upon written consent of the practitioner.  
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.60 Petition for reinstatement.  
(a) Restrictions on reinstatement.  An excluded, suspended or resigned practitioner shall not 
resume practice of patent, trade m
ark, or other non-patent law before the Office until reinstated by 
order of the OED Director or the USPTO Director. 
(b) Petition for reinstatement.  An excluded or suspend ed practitioner shall be eligible to apply 
for reinstatement only upon expiration of the period of suspension or exclusion and the practitioner’s full compliance with § 11.58.  An excluded practitioner shall be eligible to apply for reinstatement no earlier than at least five years from the effective date of the exclusion.  A resigned practitioner shall be eligible to petition for reinstatement and must show compliance with 
§ 11.58 no earlier than at least five years from the date the practitioner’s resignation is accepted 
and an order is entered excluding the practitioner on consent. 
(c) Review of reinstatement petition.  An excluded, 
 suspended or resigned practitioner shall 
file a petition for reinstatement accompanied by the fee required by § 1.21(a)(10) of this subchapter.  The petition for reinstatement shall be filed with the OED Director.  An excluded or suspended practitioner who has violated any provision of § 11.58 shall not be eligible for 
reinstatement until a continuous period of the time in compliance with § 11.58 that is equal to the 
period of suspension or exclusion has elapsed.  A resigned practitioner shall not be eligible for reinstatement until compliance with § 11.58 is shown.  If the excluded, suspended or resigned practitioner is not eligible for reinstatement, or if the OED Director determines that the petition is insufficient or defective on its face, the OED Director may dismiss the petition.  Otherwise the 
OED Director shall consider the petition for reinstatement.  The excluded, suspended or resigned 
practitioner seeking reinstatement shall have the burden of proof by clear and convincing evidence.  Such proof shall be included in or accompany the petition, and shall establish: 
(1) That the excluded, suspended or resigned practitioner has the good moral character and 
reputation, competency, and le
arning in law required under § 11.7 for admission; 
(2) That the resumption of practice befor e the Office will not be detrimental to the 
administration of j
ustice or subversive to the public interest; and 
(3) That the suspended practitioner has complied with the provisions of § 11.58 for the full 
perio d of suspension , that the e xcluded prac titio
ner has complied with the provisions of § 11.58 
IP/N/1/USA/T/4 
Page 191 -190- January 6, 2012 for at least five continuous years, or that the resigned practitioner has complied with § 11.58 upon 
acceptance of the resignation. 
(d) Petitions for reinstatement - Action by the OED Director granting reinstatement.  (1) If the 
excluded, suspended or resi
gned practitioner is found to have complied with paragraphs (c)(1) 
through (c)(3) of this section, the OED Director shall enter an order of reinstatement, which shall be conditioned on payment of the costs of the disciplinary proceeding to the extent set forth in paragraphs (d)(2) and (3) of this section.  
(2) Payment of costs of disciplinary proceedings .  Prior to re
 instatement to practice, the 
excluded or suspended practitioner shall pay the costs of the disciplinary proceeding.  The costs imposed pursuant to this section include all of the following: 
(i) The actual expense incurred by the OED Director or the Office for the original and copies of 
any repo rter’s transcri pts of the disci plinary p roceedin 
g, and any fee paid for the services of the 
reporter; 
(ii) All expenses paid by the OED Director or the Office which would qualify as taxable costs 
recoverable in civil proceedings; and
 
(iii) The charges determined by the OED Director to be “reasonable costs” of investigation, 
heari ng, a nd review.  These a mo
unts shall serve to defray the costs, other than fees for services 
of attorneys and experts, of the Office of Enrollment and Discipline in the preparation or hearing of the disciplinary proceeding, and costs incurred in the administrative processing of the disciplinary proceeding. 
(3) An excluded or suspended practitioner may be granted relief, in whole or in part, only from 
an ord er ass essing costs  under t his section o r may be gran
ted an extension of time to pay these 
costs, in the discretion of the OED Director, upon grounds of hardship, special circumstances, or other good cause.   
(e) Petitions for reinstatement - Action by the OED Director denying reinstatement .  If the 
excluded, suspended or resigned practitioner is found unfit to resu
me the practice of patent law 
before the Office, the OED Director shall first provide the excluded, suspended or resigned practitioner with an opportunity to show cause in writing why the petition should not be denied.  Failure to comply with § 11.12(c) shall constitute unfitness.  If unpersuaded by the showing, the OED Director shall deny the petition.  The OED Director may require the excluded, suspended or resigned practitioner, in meeting the requirements of § 11.7, to take and pass an examination 
under § 11.7(b), ethics courses, and/or the Multistate Professional Responsibility Examination.  
The OED Director shall provide findings, together with the record.  The findings shall include on the first page, immediately beneath the caption of  the case, a separate section entitled “Prior 
Proceedings” which shall state the docket number of the original disciplinary proceeding in which the exclusion or suspension was ordered. 
(f) Resubmission of petitions for reinstatement.  If a petition for reinstatement is denied,
  no 
further petition for reinstatement may be filed until the expiration of at least one year following the denial unless the order of denial provides otherwise. 
(g) Reinst atement proceedings open to public .  Procee dings on an y peti tion for rei nstatemen
 t 
shall be open to the public.  Before reinstating any excluded or suspended practitioner, the OED Director shall publish a notice of the excluded or suspended practitioner’s petition for 
reinstatement and shall permit the public a reasonable opportunity to comment or submit evidence 
with respect to the petition for reinstatement. 
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.61 Savings clause. 
(a) A disciplinary proceeding based on conduct engaged in prior to [INSERT DATE 30 DAYS 
AFTER DATE OF PUBLIC ATI
ON IN THE FEDERA L REGISTER] may be instituted subsequent 
to such effective date, if such conduct would continue to justify suspension or exclusion under the provisions of this part. 
IP/N/1/USA/T/4 
Page 192 -191- January 6, 2012 (b) No practitioner shall be subject to a di sciplinary proceeding under this part based on 
conduct engaged in before the effective date hereof if such conduct would not have been subject 
to disciplinary action before [INSERT DATE 30 DAYS AFTER DATE OF PUBLICATION IN THE FEDERAL REGISTER]. 
(c) Sections 11.24, 11.25, 11.28 and 11.34 through 11.57 shall apply to all proceedings in 
which  the complaint is filed on  or af 
ter the effective date of these regulations.  Section 11.26 and 
11.27 shall apply to matters pending on or after [INSERT DATE 30 DAYS AFTER DATE OF PUBLICATION IN THE FEDERAL REGISTER]. 
(d) Sections 11.58 through 11.60 shall apply to all cases in which an order of suspension or 
exclusion is entered or resignation is accepted on or afte
r [INSERT DATE 30 DAYS AFTER 
DATE OF PUBLICATION IN THE FEDERAL REGISTER].  
[Added 73 FR 47650, Aug 14. 2008, effective Sept. 15, 2008] 
§ 11.62 – 11.99 [Reserved] 
IP/N/1/USA/T/4 
Page 193IP/N/1/USA/T/4 
Page 194 -193- January 6, 2012 Trademark Act of  1946, as Amended 
PUBLIC LAW 79-489, CHAPTER 540, APPROVED JULY 5, 1946; 60 STAT. 427 
The headings used for sections and subsections or paragraphs in the following reprint of the Act 
are not part of the Act but have been added for co
nvenience in using this reprint.  Prior trademark 
statutes may be found in Title 15, Chapter 3, of the U.S. Code and in the Statutes at Large.  The 
present Act forms Chapter 22 of Title 15 of the U.S. Code and the U.S. Code citations have been 
placed at the beginning of each section and subsection.  Included are an amendment to repeal § 40 by the Act of May 24, 1949, 63 Stat. 109; and amendments made to § 7(a) by the Act of August 17, 1950, Public Law 81-710, 64 Stat. 459; to § 21 by the Act of July 19, 1952, Public Law 82-593, 66 Stat. 792; to §§ 17, 20, 21, 24 and 31 by the Act of August 8, 1958, Public Law 85-
609, 72 Stat. 540; to § 44(d) by the Act of October 3, 1961, Public Law 87-333, 75 Stat. 748; to 
§§ 1(a)(1), 2(d), 6, 7(a), 7(d), 7(e), 7(f), 9, 10, 12(a), 12(c), 13, 14, 15, 16, 21, 23, 24, 29, 30, 32, 33, 35, 44(b), 44(e) and 45 by the Act of October 9, 1962, Public Law 87-772, 76 Stat. 769; to § 31 by the Act of July 24, 1965, Public Law 89-83, 79 Stat. 260; to § 29 and the terms “Patent Office” and “Commissioner of Patents” by the Act of January 2, 1975, Public Law 93-596, 88 Stat. 1949; to §§ 13, 21 and 35 by the Act of January 2, 1975, Public Law 93-600, 88 Stat. 1955; to 
§ 42 by the Act of October 3, 1978, Public Law 95-410, 92 Stat. 903; to § 17 by the Act of October 
15, 1980, Public Law 96-455, 94 Stat. 2024; to § 31 by the Act of December 12, 1980, Public Law 96-517, 94 Stat. 3018; to §§ 21 and 39 by the Act of April 2, 1982, Public Law 97-164, 96 Stat. 25; to §§ 8(a), 8(b), 11, 13, 14, 15, 16 and 31 by the Act of August 27, 1982, Public Law 97-247, 96 Stat. 317; to § 31(a) by the Act of September 8, 1982, Public Law 97-256, 96 Stat. 816; to add 
§ 39(a) by the Act of October 12, 1982, Public Law 97-296, 96 Stat. 1316; to §§ 34, 35 and 36 by 
the Act of October 12, 1984, Public Law 98-473, 98 Stat. 2179; to §§ 14(c), 21 and 45 by the Act of November 8, 1984, Public Law 98-620, 98 Stat. 3335; to §§ 1, 2(d), 2(e), 2(f), 3, 4, 5, 6(b), 7, 8(a), 9(a), 9(c), 10, 12(a), 13, 14, 15, 16, 18, 19, 21, 23, 24, 26, 27, 29, 30, 32(2), 33, 34, 35(a), 36, 39, 43(a), 44 and 45 and to add § 51 by the Act of November 16, 1988, Public Law 100-667, 102 Stat. 3935; to § 31(a) by the Act of December 10, 1991, Public Law 102-204, 105 Stat. 1640; 
to § 32(1), to add § 40, and to §§ 43(a) and 45 by the Act of October 27, 1992, Public Law 102-
542, 106 Stat. 3567; to §§ 2(e), 2(f) and 23(a) by the Act of December 8, 1993, Public Law 103-182, 107 Stat. 2057; to §§ 2(a) and 45 by the Act of December 8, 1994, Public Law 103-465, 108 Stat. 4982; to §§ 43 and 45 by the Act of January 16, 1996, Public Law 104-98, 109 Stat. 985; to §§ 34(d)(9) and 35 by Public Law No. 104-153, 110 Stat. 1386, July 2, 1996; to §§ 1(d)(1), 2, 7(a), 
14, 23(c), 26, 31, 32(1), 33(b), 39(a) and 42 by Public Law 105-330, 112 Stat. 3069, effective 
October 30, 1998; to §§ 2, 10, 13(a), 14, 24, 32, 34(a), 35(a), 36, 40, 43(a), 43(c)(2) and 45 by Public Law 106-43, 113 Stat. 218, effective August 5, 1999; to §§ 1(a), 1(b), 12(b), 8, 9, 10, 44(d) and 44(e) by Public Law 105-330, 112 Stat. 3064, effective October 30, 1999; to §§ 1, 2, 6, 7, 8, 9, 10, 12, 13, 15, 16, 17, 18, 21, 23, 24, 30, 31, 32, 34, 35, 37, 41, 43, 44, 45, and 47(b) by Public 
Law 106-113, 113 Stat. 1501A, Nov. 29, 1999; to add Title XII, by Public Law 107-273, 116 Stat. 
1758, effective Nov. 2, 2003; by Public Law 108-482, 118 Stat. 3916, effective Dec. 23, 2004; by Public Law 109-312, 120 Stat. 1730, Oct. 6, 2006. 
TITLE I - THE PRINCIPAL REGISTER 
§ 1 (15 U.S.C. § 1051).  Application for registration; verification 
(a)(1) The owner of a trademark used in commerce may request registration of its trademark on 
the p rincipal register hereby establis hed b
y paying the prescribed fee and filing in the Patent and 
Trademark Office an application and a verified statement, in such form as may be prescribed by 
IP/N/1/USA/T/4 
Page 195 -194- January 6, 2012 the Director, and such number of specimens or facsimiles of the mark as used as may be required 
by the Director. 
(2) The application shall include specification of the applicant’s domicile and citizenship, the date of the applicant’s first use of t h 
e mark, the date of the applicant’s first use of the mark in 
commerce, the goods in connection with which the mark is used, and a drawing of the mark. 
(3) The statement shall be verified by the applicant and specify that— 
(A) the person making the verification believes that he or she, or the juristic person in 
whose behalf he or she makes the verification , t
o be the owner of the mark sought to be 
registered; 
(B) to the best of the verifier’s knowledge and belief, the facts recited in the application are 
accurate;  
(C) the mark is in use in commerce;  
and 
(D) to the best of the verifier’s knowledge and belief, no other person has the right to use 
such mark in commerce either in the identical f orm th
ereof or in such near resemblance 
thereto as to be likely, when used on or in connection with the goods of such other person, 
to cause confusion, or to cause mistake, or to deceive, except that, in the case of every 
application claiming concurrent use, the applicant shall— 
(i) state exceptions to the claim of exclusive use; and 
(ii) shall specify, to the extent of the verifier’s knowledge—  
(I) any concurrent use by others;  
(II) the goods on or in connection with which and the areas in which each 
concurrent use exists;  
(III) the perio ds of 
each use; and  
(IV) the goods and area for which the applicant desires registration.  
(4) The applicant shall comply with such rules or regulations as may be prescribed by the Direc tor.  The Director shall promulgate rules prescribing the requi 
rements for the application 
and for obtaining a filing date herein.  
(b)(1) A person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce 
 may request registration of its trademark on the 
principal register hereby established by paying the prescribed fee and filing in the Patent and Trademark Office an application and a verified statement, in such form as may be prescribed by 
the Director. 
(2) The application shall include specification of the applicant’s domicile and citizenship, the 
goods in connection with which the applicant has a bona f id 
e intention to use the mark, and a 
drawing of the mark. 
(3) The statement shall be verified by the applicant and specify— 
(A) that the person making the verification believes that he or she, or the juristic person in 
whos e behalf he or she makes the verifica tion
, to be entitled to use the mark in commerce; 
(B) the applicant’s bona fide intention to use the mark in commerce; 
IP/N/1/USA/T/4 
Page 196 -195- January 6, 2012 (C) that, to the best of the verifier’s knowledge and belief, the facts recited in the 
application are accurate; and 
(D) that, to the best of the verifier’s knowledge and belief, no other person has the right to 
use such mark in commerce eit her in t
he identical form thereof or in such near 
resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.  
Except for applications filed pursuant to section 1126 of this title, no mark shall be registered until the applicant has met the  re
quirements of subsections (c) and (d) of this section. 
(4) The applicant shall comply with such rules or regulations as may be prescribed by the Director.  The Director shall promulgate rul es pre 
scribing the requirements for the application 
and for obtaining a filing date herein. 
(c) At any time during examination of an application filed under subsection (b) of this section, an applicant who has made use  of 
 the mark in commerce may claim the benefits of such use for 
purposes of this chapter, by amending his or her application to bring it into conformity with the requirements of subsection (a) of this section. 
(d) (1) Within six months after the date on which the notice of allowance with respect to a mark is 
issued under section 1063(b)(2) of t 
his title to an applicant under subsection (b) of this section, the 
applicant shall file in the Patent and Trademark Office, together with such number of specimens or facsimiles of the mark as used in commerce as may be required by the Director and payment of the prescribed fee, a verified statement that the mark is in use in commerce and specifying the 
date of the applicant’s first use of the mark in commerce and those goods or services specified in 
the notice of allowance on or in connection with which the mark is used in commerce.  Subject to examination and acceptance of the statement of use, the mark shall be registered in the Patent and Trademark Office, a certificate of registration shall be issued for those goods or services recited in the statement of use for which the mark is entitled to registration, and notice of registration shall be published in the Official Gazette of the Patent and Trademark Office.  Such 
examination may include an examination of the factors set forth in subsections (a) through (e) of 
section 1052 of this title.  The notice of registration shall specify the goods or services for which the mark is registered. 
(2) The Director shall extend, for one additional 6-month period, the time for filing the statement of use under paragrap h 
(1), upon written request of the applicant before the 
expiration of the 6-month period provided in par agraph (1).  In addition to an extension under 
the preceding sentence, the Director may, upon a showing of good cause by the applicant, further extend the time for filing the statement of use under paragraph (1) for periods aggregating not more than 24 months, pursuant to written request of the applicant made before the expiration of the last extension granted under this paragraph.  Any request for an extension under this paragraph shall be accompanied by a verified statement that the 
applicant has a continued bona fide intention to use the mark in commerce and specifying 
those goods or services identified in the notice of allowance on or in connection with which the applicant has a continued bona fide intention to use the mark in commerce.  Any request for an extension under this paragraph shall be accompanied by payment of the prescribed fee.  The Director shall issue regulations setting forth guidelines for determining what constitutes 
good cause for purposes of this paragraph. 
(3) The Director shall notify any applicant who files a statement of use of the acceptance or 
refusal thereof and, if the statem e
nt of use is refused, the reasons for the refusal.  An 
applicant may amend the statement of use. 
IP/N/1/USA/T/4 
Page 197 -196- January 6, 2012 (4) The failure to timely file a verified statement of use under paragraph (1) or an extension 
request under paragraph (2) shall result in abandonment of the application, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, in which case the time for filing may be extended, but for a period not to exceed the period 
specified in paragraphs (1) and (2 ) for filing a statement of use. 
(e) If the applicant is not domiciled in the United States the applicant may designate, by a 
document filed in the United States Pat ent and
 Trademark Office, the name and address of a 
person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the 
last designation so filed. If the person so designated cannot be found at the address given in the 
last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director. 
(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3935; Oct. 30, 
1998, 112 Stat. 3064; Nov. 29, 1999, 113 St at. 1501A; Nov. 2, 2002, 116 Stat. 1906.) 
§ 2 (15 U.S.C. § 1052).  Trademarks regist rable on the principal register; concurrent 
registration 
No trademark by which the goods of the applicant may be distinguished from the goods of others 
shall be refused registration on the principal regis t
er on account of its nature unless it— 
(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may 
disparage or falsely suggest a connection with p e
rsons, living or dead, institutions, beliefs, or 
national symbols, or bring them into contempt, or disrepute; or a geographical indication 
which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after one year after the date on which the WTO Agreement (as defined in section 3501(9) of title 19) enters into force with respect to the United States. 
(b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or 
of any State or municipality, or of any forei gn n
ation, or any simulation thereof. 
(c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, o r 
 the name, signature, or portrait of a deceased 
President of the United States during the life of his widow, if any, except by the written consent 
of the widow. 
(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and 
Trademark Office, or a ma
rk or trade name previously used in the United States by another 
and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive:   Provided , That if the 
Director determines that confusion, mistake, or deception is not likely to result from the continued use by more than one person of the same or similar marks under conditions and limitations as to the mode or place of use of the marks or the goods on or in connection with which such marks are used, concurrent regist rations may be issued to such persons when 
they have become entitled to use such marks as a result of their concurrent lawful use in commerce prior to (1) the earliest of the filing dates of the applications pending or of any 
registration issued under this chapter; (2) July 5, 1947, in the case of registrations previously 
issued under the Act of March 3, 1881, or February 20, 1905, and continuing in full force and 
IP/N/1/USA/T/4 
Page 198 -197- January 6, 2012 effect on that date; or (3) July 5, 1947, in the case of applications filed under the Act of 
February 20, 1905, and registered after July 5, 1947.  Use prior to the filing date of any pending application or a registration shall not be required when the owner of such application or registration consents to the grant of a concurrent registration to the applicant.  Concurrent 
registrations may also be issued by the Director when a court of competent jurisdiction has 
finally determined that more than one person is entitled to use the same or similar marks in commerce.  In issuing concurrent registrations, the Director shall prescribe conditions and limitations as to the mode or place of use of the mark or the goods on or in connection with which such mark is registered to the respective persons. 
(e) Consists of a mark which, (1) when used on or in connection with the goods of the 
applicant is merely desc r
iptive or deceptively misdescriptive of them, (2) when used on or in 
connection with the goods of the applicant is primarily geographically descriptive of them, 
except as indications of regional origin may be registrable under section 1054 of this title, (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any 
matter that, as a whole, is functional. 
(f) Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this 
section, nothing herein shall p r
event the registration of a mark used by the applicant which 
has become distinctive of the applicant’s goods in commerce.  The Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with 
the applicant’s goods in commerce, proof of substantially exclusive and continuous use 
thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.  Nothing in this section shall prevent the registration of a mark which, when used on or in connection with the goods of the applicant, is primarily geographically deceptively misdescriptive of them, and which became distinctive of the applicant’s goods in commerce before the date of the enactment of the North American Free 
Trade Agreement Implementation Act.  A mark which would be likely to cause dilution by 
blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24. 
(Amended Oct. 9, 1962, 76 Stat. 769; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3037; Dec. 8, 
1993, 107 Stat. 2057; Dec. 8, 1994, 108 Stat. 4982; Oct. 30, 1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat. 
218; Nov. 29, 1999, 113 Stat. 1501A-583 ; Oct. 6, 2006, 120 Stat. 1730.) 
§ 3 (15 U.S.C. § 1053).  Service marks registrable 
Subject to the provisions relating to the registration of trademarks, so far as they are applicable, 
service marks shall be registrable,  in t
he same manner and with the same effect as are 
trademarks, and when registered they shall be entitled to the protection provided herein in the 
case of trademarks.  Applications and procedure under this section shall conform as nearly as 
practicable to those prescribed for the registration of trademarks. 
(Amended Nov. 16, 1988, 102 Stat. 3938.) 
§ 4 (15 U.S.C. § 1054).  Collective marks and certification marks registrable 
Subject to the provisions relating to the registration of trademarks, so far as they are applicable, 
collective and certification marks
, including indications of regional origin, shall be registrable under 
this chapter, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the marks 
IP/N/1/USA/T/4 
Page 199 -198- January 6, 2012 sought to be registered, even though not possessing an industrial or commercial establishment, 
and when registered they shall be entitled to the protection provided in this chapter in the case of trademarks, except in the case of certification marks when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection 
with which such mark is used.  Applications and procedure under this section shall conform as 
nearly as practicable to those prescribed for the registration of trademarks. 
(Amended Nov. 16, 1988, 102 Stat. 3938.) 
§ 5 (15 U.S.C. § 1055).  Use by related companies 
Where a registered mark or a mark sought to be registered is or may be used legitimately by 
related companies, such use shall inure to the benefit of t
he registrant or applicant for registration, 
and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public.  If first use of a mark by a person is controlled 
by the registrant or applicant for registration of the mark with respect to the nature and quality of 
the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be. 
(Amended Nov. 16, 1988, 102 Stat. 3938.) 
§ 6 (15 U.S.C. § 1056).  Disclaimers 
(a) The Director may require the applicant to disclaim an unregistrable component of a mark 
otherwise registrable.  An applicant may volun
tarily disclaim a component of a mark sought to be 
registered. 
(b) No disclaimer, including those made under subsection (e) of section 1057 of this title, shall 
prejudice or affect the applicant’s or registran t
’s rights then existing or thereafter arising in the 
disclaimed matter, or his right of registration on another application if the disclaimed matter be or shall have become distinctive of his goods or services. 
(Amended Oct. 9, 1962, 76 Stat. 769; Nov. 16, 1988, 1 02 Stat. 3938; Nov. 29, 1999, 113 Stat. 1501A-583.) 
§ 7 (15 U.S.C. § 1057).  Certificates of registration  
(a) Issuance and form .  Certificates of registration of marks registered up on the princ ipal register 
shall be issued in the name of the United States of America, under the seal of the United States 
Patent and Trademark Office, and shall be signed by the Director or have his signature placed 
thereon, and a record thereof shall be kept in the United States Patent and Trademark Office.  
The registration shall reproduce the mark, and state that the mark is registered on the principal register under this chapter, the date of the first use of the mark, the date of the first use of the mark in commerce, the particular goods or services for which it is registered, the number and date of the registration, the term thereof, the date on which the application for registration was received 
in the United States Patent and Trademark Office, and any conditions and limitations that may be 
imposed in the registration. 
(b) Certificate as prima facie evidence.  A certificate of registration of a ma rk u
 pon the principal 
register provided by this chapter shall be prima facie evidence of the validity of the registered 
mark and of the registration of the mark, of the owner’s ownership of the mark, and of the owner’s 
exclusive right to use the registered mark in commerce on or in connection with the goods or 
services specified in the certificate, subject to any conditions or limitations stated in the certificate. 
IP/N/1/USA/T/4 
Page 200 -199- January 6, 2012 (c) Application to register mark considered constructive use .  Contingent on the registration of a 
mark on the principal register provided by this chapter, the filing of the application to register such 
mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other 
person except for a person whose mark has not been abandoned and who, prior to such filing— 
(1) has used the mark; 
(2) has filed an application to register the mark which is pending or has resulted in registration 
of the mark; or 
(3) has filed a fo reig
n application to register the mark on the basis of which he or she has 
acquired a right of priorit y
, and timely files an application under section 1126(d) to register the 
125mark which is pending or has resulted in registration of the mark. 
(d) Issuance to assignee .  A certificate of registration of a mark ma y be is sued to the assignee of 
the applicant, but the assignment must first be recorded in the United States Patent and 
Trademark Office.  In case of change of ownership the Director shall, at the request of the owner and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new 
certificate of registration of the said mark in the name of such assignee, and for the unexpired part 
of the original period. 
(e) Surrender, cancellation, or amendment by owner.  Upon application of the  o
 wner the Director 
may permit any registration to be surrendered for cancellation, and upon cancellation appropriate entry shall be made in the records of the United States Patent and Trademark Office.  Upon 
application of the owner and payment of the prescribed fee, the Director for good cause may 
permit any registration to be amended or to be disclaimed in part:   Provided, That the amendment 
or disclaimer does not alter materially the character of the mark.  Appropriate entry shall be made in the records of the United States Patent and Trademark Office and upon the certificate of registration. 
(f) Copies of United States Patent and Trademark Office records as evidence .  Copies of any 
records, b oo
ks, papers, or drawings belonging to the United States Patent and Trademark Office 
relating to marks, and copies of registrations, when authenticated by the seal of the United States 
Patent and Trademark Office and certified by the Director, or in his name by an employee of the Office duly designated by the Director, shall be evidence in all cases wherein the originals would be evidence; and any person making application therefor and paying the prescribed fee shall have 
such copies. 
(g) Correction of Patent and Tradem a
 rk Office mistake .  Whenever a material mistake in a 
registration, incurred through the fault of the United States Patent and Trademark Office, is clearly 
disclosed by the records of the Office a certificate stating the fact and nature of such mistake shall be issued without charge and recorded and a printed copy thereof shall be attached to each printed copy of the registration and such corrected registration shall thereafter have the same 
effect as if the same had been originally issued in such corrected form, or in the discretion of the 
Director a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the rules of the United States Patent and Trademark Office and the registrations to which they are attached shall have the same force and effect as if such certificates and their issue had been specifically authorized by statute. 
(h) Correction of applicant ’
 s mistake.  Whenever a mistake has been made in a registration and a 
showing has been made that such mistake occurred in good faith through the fault of the applicant, the Director is authorized to issue a certificate of correction or, in his discretion, a new certificate upon the payment of the prescribed fee:  Provided , That the correction does not involve 
such changes in the registration as to require republication of the mark. 
IP/N/1/USA/T/4 
Page 201 -200- January 6, 2012 (Amended Aug. 17, 1950, 64 Stat. 459; Oct. 9, 1962, 76 St at. 769; Jan. 2, 1975 , 88 Sta t. 194 9; Nov. 16 , 
1988, 102 Stat. 3938 ; Oct. 30, 1998, 112 Stat. 3069 ; Nov.  29, 199
9, 113 Stat. 1501A-583; Mar. 17, 2010, 
124 Stat. 66.) 
§ 8 (15 U.S.C. § 1058).  Duration, affidavits and fees 
(a) Time Periods for Required Affidavits .  Each registration shall remain in force for 10 ye ars, 
except that the registration of any mark shall be canceled by the Director unless the owner of the 
registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods: 
(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this Act or the da t
e of the publication under section 12(c). 
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive  10 
-year period following the date of registration. 
(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the per iods est 
ablished in paragraphs (1) and (2), 
together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director. 
(b) Requirements for Affidavit.  The affidavit referred to in subsection (a ) 
 shall— 
(1)(A) state that the mark is in use in commerce; 
(B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce; 
(C) be accomp anie
d by such number of specimens or facsimiles showing current use of the 
mark in commerce as may be required b y
 the Director; and 
(D) be accompanied by the fee prescribed by the Director; or  
(2)(A) set forth the goods and services recited in the registration on or in connection with which the mark is not in use in commerce;  
(B) include a showi
ng that any nonuse is due to special circumstances which excuse such 
nonuse and is not due to any intentio n to 
abandon the mark; and  
(C) be accompanied by the fee prescribed by the Director. 
(c) Deficient Affidavit.  If any submission filed within the period se t fo rth in subsection (a) is 
deficient, including that the affidavit was not filed in the name of the owner of the registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency 
surcharge prescribed by the Director. 
(d) Notice of Requirement .  Special notice of the requirement for such a ffi
 davit shall be attached to 
each certificate of registration and notice of publication under section 12(c). 
(e) Notification of Acceptance or Refusal .  The Director shall no tif y any owner who files any 
affidavit required by this section of the Director's acceptance or refusal thereof and, in the case of 
a refusal, the reasons therefor. 
(f) Designation of Resident for Service of Process and Notices.  If the owner is not domiciled in the  
U
nited States, the owner may designate, by a document filed in the United States Patent and 
IP/N/1/USA/T/4 
Page 202 -201- January 6, 2012 Trademark Office, the name and address of a person resident in the United States on whom may 
be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot 
be found at the last designated address, or if the owner does not designate by a document filed in 
the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director. 
(Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 32 0; Nov. 16, 1988, 102 Stat. 3939; Oct. 30, 1998, 112 
Stat. 3066; Nov. 29, 1999, 113 Stat. 1536, 1501A-583; Nov. 2, 2002, 116 Stat. 1906; Mar. 17, 2010, 124 
Stat. 66.) 
§ 9 (15 U.S.C. § 1059).  Renewal of registration 
(a) Subject to the provisions of section 1058 of this title, each registration may be renewed for 
periods of 10 year s a
t the end of each successive 10-year period following the date of registration 
upon payment of the prescribed fee and the filing of a written application, in such form as may be prescribed by the Director.  Such application may be made at any time within 1 year before the 
end of each successive 10-year period for which the registration was issued or renewed, or it may 
be made within a grace period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor.  If any application filed under this section is deficient, the deficiency may be corrected within the time prescribed after notification of the deficiency, upon payment of a surcharge prescribed therefor. 
(b) If the Director refuses to renew the registration, the Director shall notify the registrant of the 
Director’s refusal and the  reas
ons therefor. 
(c) If the registrant is not domiciled in the United States the registrant may designate, by a document filed in the United St ates 
 Patent and Trademark Office, the name and address of a 
person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by 
leaving with that person or mailing to that person a copy thereof at the address specified in the 
last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or 
process may be served on the Director. 
(Amended Oct. 9, 1962, 76 Stat. 770; Nov. 16, 1988, 102 Stat. 3939; Oct. 30, 1998, 112 Stat. 3067; Nov. 
29, 1999, 113 Stat. 1501A-583; No v. 2, 2002, 116 Stat. 1907.) 
§ 10 (15 U.S.C. § 1060).  Assignment 
(a)(1) A registered mark or a mark for which an  application to register has be en filed shall be 
assignable with the good will of the business in wh ich the mark is used, or  with that part of the 
good will of the business connected with the use of and symbolized by the mark.  Notwithstanding 
the preceding sentence, no application to register a mark under section 1051(b) of this title shall 
be assignable prior to the filing of an amendment under section 1051(c) of this title to bring the application into conformity with section 1051(a) of this title or the filing of the verified statement of use under section 1051(d) of this title, except for an assignment to a successor to the business of the applicant, or portion thereof, to which the mark pertains, if that business is ongoing and existing.  
IP/N/1/USA/T/4 
Page 203 -202- January 6, 2012 (2) In any assignment authorized by this section, it shall not be necessary to include the good 
will of the business connected with the use of  and symbolized by any other mark used in the 
business or by the name or style under which the business is conducted.   
(3) Assignments shall be by instruments in writing duly executed.  Acknowledgment shall be 
prima facie evidence of the execut io
n of an assignment, and when the prescribed information 
reporting the assignment is recorded in the United States Patent and Trademark Office, the 
record shall be prima facie evidence of execution.  
(4) An assignment shall be void against any subsequent purchaser for valuable consideration 
without notice, unless the prescribed informati on 
reporting the assignment is recorded in the 
United States Patent and Trademark Office within 3 months after the date of the assignment 
or prior to the subsequent purchase.  
(5) The United States Patent and Trademark Office shall maintain a record of information on 
assignments, in such form as may b e prescrib
ed by the Director.  
(b) An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the  name and 
address of a person resident in the 
United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the assignee does not designate by a document filed in the United States Patent and Trademark 
Office the name and address of a person resident in the United States on whom may be served 
notices or process in proceedings affecting the mark, such notices or process may be served upon the Director. 
(Amended Oct. 9, 1962, 76 Stat. 770; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3937; Aug. 5, 
1999, 113 Stat. 218; Oct. 30, 1998, 112 Stat. 3068, effect ive Oct. 30, 1999; Aug. 5, 1999, 113 Stat. 218; 
Nov. 29, 1999, 113 Stat. 1501A-583; Nov. 2, 2002, 116 Stat. 1907.) 
§ 11 (15 U.S.C. § 1061).  Acknowledgments and verifications 
Acknowledgments and verifications required hereunder may be made before any person within 
the United States authorized by la w to
 administer oaths, or, when made in a foreign country, 
before any diplomatic or consular officer of the United States or before any official authorized to administer oaths in the foreign country concerned whose authority shall be proved by a certificate of a diplomatic or consular officer of the United St ates, or apostille of an official designated by a 
foreign country which, by treaty or convention, accords like effect to apostilles of designated officials in the United States, and shall be valid if they comply with the laws of the state or country where made. 
(Amended Aug. 27, 1982, 96 Stat. 321.) 
§ 12 (15 U.S.C. § 1062).  Publication 
(a) Upon the filing of an application for registration and payment of the prescribed fee, the Director 
shall refer the application to the e x
aminer in charge of the registration of marks, who shall cause 
an examination to be made and, if on such examination it shall appear that the applicant is entitled 
to registration, or would be entitled to registration upon the acceptance of the statement of use 
required by section 1051(d) of this title, the Director shall cause the mark to be published in the Official Gazette of the Patent and Trademark Office:    Provided, That in the case of an applicant 
claiming concurrent use, or in the case of an application to be placed in an interference as 
IP/N/1/USA/T/4 
Page 204 -203- January 6, 2012 provided for in section 1066 of this title, the mark, if otherwise registrable, may be published 
subject to the determination of the rights of the parties to such proceedings. 
(b) If the applicant is found not entitled to registration, the examiner shall advise the applicant 
thereof and of the reason ther efo
r.  The applicant shall have a period of six months in which to 
reply or amend his application, which shall then be reexamined.  This procedure may be repeated until (1) the examiner finally refuses registration of the mark or (2) the applicant fails for a period of six months to reply or amend or appeal, whereupon the application shall be deemed to have been abandoned, unless it can be shown to the satisfaction of the Director that the delay in responding was unintentional, whereupon such time may be extended. 
(c) A registrant of a mark registered under the provision of the Act of March 3, 1881, or the Act of 
February 20, 1905, may, at an y ti
me prior to the expiration of the registration thereof, upon the 
payment of the prescribed fee file with the Director an affidavit setting forth those goods stated in 
the registration on which said mark is in use in commerce and that the registrant claims the benefits of this chapter for said mark.  The Director shall publish notice thereof with a reproduction of said mark in the Official Gazette, and notify the registrant of such publication and of the 
requirement for the affidavit of use or nonuse as provided for in subsection (b) of section 1058 of 
this title.  Marks published under this subsection shall not be subject to the provisions of section 1063 of this chapter. 
(Amended Oct. 9, 1962, 76 Stat. 770; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3940; Oct. 30, 
1998, 112 Stat. 3066; Nov. 29, 1999, 113 Stat. 1501A-583.) 
§ 13 (15 U.S.C. § 1063).  Opposition 
(a) Any person who believes that he would be damaged by the registration of a mark upon the 
principal register, including the registration of an y mark 
which would be likely to cause dilution by 
blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the 
prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.  Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of 
time for filing opposition may be granted by the Director for good cause when requested prior to 
the expiration of an extension.  The Director shall notify the applicant of each extension of the time for filing opposition.  An opposition may be amended under such conditions as may be prescribed by the Director. 
(b) Unless registration is successfully opposed— 
(1) a mark entitled to registration on the principal register based on an application filed under 
section 1051(a) of this title o r
 pursuant to section 1126 shall be registered in the Patent and 
Trademark Office, a certificate of registration shall be issued, and notice of the registration shall be published in the Official Gazette of the Patent and Trademark Office; or 
(2) a notice of allowance shall be issued to the applicant if the applicant applied for registration 
under section 1051(b) o f 
this title. 
(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 St at. 1949; Jan. 2, 1975, 88 Stat. 1955; Aug. 27, 
1982, 96 Stat. 320; Nov. 16, 1988, 102 Stat. 3940; Aug.  5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 
1501A-583; Oct. 6, 2006, 120 Stat. 1730.) 
IP/N/1/USA/T/4 
Page 205 -204- January 6, 2012 § 14 (15 U.S.C. § 1064).  Cancellation 
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment 
of the prescribed fee, be filed as follo ws b
y any person who believes that he is or will be 
damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment 
under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905: 
(1) Within five years from the date of the registration of the mark under this chapter. 
(2) Within five years from the date of publication under section 1062(c) of this title of a mark 
registered under the Act of March 3,  
1881, or the Act of February 20, 1905. 
(3) At any time if the registered mark becomes the generic name for the goods or services, or 
a portion thereof, for which it is registered, or is functional, or has be en aba
ndoned, or its 
registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, 
or contrary to similar prohibitory provisions of such said prior Acts for a registration under such 
Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods 
or services solely because such mark is also used as a name of or to identify a unique product 
or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. 
(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 
20, 1905, and has not been published under t he pro
visions of subsection (c) of section 1062 
of this title. 
(5) At any time in the case of a certification mark on the ground that the registrant (A) does not 
control, or is not able legitimatel y
 to exercise control over, the use of such mark, or (B) 
engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies: 
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section  an
y mark registered on the principal register established by 
this chapter, and the prescribed fee shall not be required.  Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant.  Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, 
or sell any of the certified goods or services to which its identical certification mark is applied. 
(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 St at. 320; Nov. 8, 1984, 98 Stat. 3335; Nov. 16, 
1988, 102 Stat. 3940; Oct. 30, 1998, 112 Stat. 3069; Aug.  5, 1999, 113 Stat. 218; Oct. 6, 2006, 120 Stat. 
1730.) 
IP/N/1/USA/T/4 
Page 206 -205- January 6, 2012 § 15 (15 U.S.C. § 1065).  Incontestability of right to use mark under certain conditions 
Except on a ground for which application to cancel may be filed at anytime under paragraphs (3) 
and (5) of section 1064 of this title, and e
xcept to the extent, if any, to which the use of a mark 
registered on the principal register infringes a valid right acquired under the law of any State or 
Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark, the right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and 
is still in use in commerce , shall be incontestable:  Provided , That— 
(1) there has been no final decision adverse to the owner’s claim of ownership of such mark 
for such goods or services, or to t
he owner’s right to register the same or to keep the same on 
the register; and 
(2) there is no proceeding involving said rights pending in the United States Patent and 
Trademark Offi ce o
r in a court and not finally disposed of; and 
(3) an affidavit is filed with the Director within one year after the expiration of any such five-
year period setting forth those goods or servic es stated in th
e registration on or in connection 
with which such mark has been in continuous use for such five consecutive years and is still in use in commerce, and the other matters specified in paragraphs (1) and (2) of this section; and 
(4) no incontestable right shall be acquired in a mark which is the generic name for the goods 
or services or a portion th ereo
f, for which it is registered. 
Subject to the conditions above specified in this section, the incontestable right with reference to a mark registered under this chapte r 
 shall apply to a mark registered under the Act of March 3, 
1881, or the Act of February 20, 1905, upon the fili ng of the required affidavit with the Director 
within one year after the expiration of any period of five consecutive years after the date of publication of a mark under the provisions of subsection (c) of section 1062 of this title. 
The Director shall notify any registrant who files the above-prescribed affidavit of the filing thereof. 
(Amended Oct. 9, 1962, 76 Stat. 771; Jan. 2, 1975, 88 St at. 1949; Aug. 27, 1982, 96 Stat. 320; Nov. 16, 
1988, 102 Stat. 3941; Nov. 29, 1999, 113 Sta t. 1501A-583; Mar. 17, 2010, 124 Stat. 66.) 
§ 16 (15 U.S.C. § 1066).  Interference 
Upon petition showing extraordinary circumstances, the Director may declare that an interference 
exists when application  
is made for the registration of a mark which so resembles a mark 
previously registered by another, or for the registration of which another has previously made 
application, as to be likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive.  No interference shall be declared between an application and the registration of a mark the right to the use of which has become incontestable. 
(Amended Oct. 9, 1962, 76 Stat. 771; Aug. 27, 1982, 96 Stat. 321; Nov. 16, 1988, 102 Stat. 3941; Nov. 29, 
1999, 113 Stat. 1501A-583.) 
IP/N/1/USA/T/4 
Page 207 -206- January 6, 2012 § 17 (15 U.S.C. § 1067).  Interference, opposition, and proceedings for concurrent use 
registration or for cancellation; noti ce; Trademark Trial and Appeal Board 
(a) In every case of interference, opposition to registration,  application to register as a lawful concurrent user, or application to can c 
el the registration of a mark, the Director shall give notice to 
all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration. 
(b) The Trademark Trial and Appeal Board shall include the Director, Deputy Director of the 
United States Patent and Trademark Office , the 
 Commissioner for Patents, the Commissioner for 
Trademarks, and administrative trademark judges who are appointed by the Director. 
(c) Authority of the Secretary.  The Secretary of Commerce may, in his or her discretion, deem the 
appointment of an administra ti
ve trademark judge who, before the date of the enactment of this 
subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative trademark judge. 
(d) Defense to Challenge of Appointment.  It shall be a defense to a challenge to the appointment 
of an administrative trademark judge on t he 
basis of the judge's having been originally appointed 
by the Director that the administrative trademark judge so appointed was acting as a de facto officer. 
(Amended Aug. 8, 1958, 72 Stat. 540; Jan. 2, 1975, 88 Stat. 1949; 94 Stat. 2024; Nov. 29, 1999, 113 Stat. 
1536, 1501A-580; Nov. 2, 2002, 116 Stat. 1902; Aug. 12, 2008, 122 Stat. 3014.) 
§ 18 (15 U.S.C. § 1068).  Refusal, cancellation, or restriction of registration; concurrent use 
In such proceedings the Director may refuse to register the opposed mark, may cancel the 
registration, in whole or in part, may modif y
 the application or registration by limiting the goods or 
services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties under this chapter may be established in the proceedings:  Provided, That in the case of 
the registration of any mark based on concurrent use, the Director shall determine and fix the 
conditions and limitations provided for in subsection (d) of section 1052 of this title.  However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title. 
(Amended Nov. 16, 1988, 102 Stat. 3941; No v. 29, 1999, 113 Stat. 1501A-583.) 
§ 19 (15 U.S.C. § 1069).  Applicability, in inter partes proceeding, of equitable principles of laches, estoppel and acquiescence 
In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where 
applicable, may be considered and applied. 
(Amended Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3941.) 
§ 20 (15 U.S.C. § 1070).  Appeal from examiner to Trademark Trial and Appeal Board 
An appeal may be taken to the Trademark Trial and Appeal Board from any final decision of the 
examiner in charge of the re gistratio
n of marks upon the payment of the prescribed fee. 
IP/N/1/USA/T/4 
Page 208 -207- January 6, 2012 (Amended Aug. 8, 1958, 72 Stat. 540.) 
§ 21 (15 U.S.C. § 1071).  Appeal to courts 
(a) Persons entitled to appeal; United States Court of Appeals for the Federal Circuit; waiver of 
civil action; election of civil actio n by 
adverse party; procedure .   
(1) An applicant for registration of a mark, party to an interference proceeding, party to an 
opposition proceeding, p art
y to an application to register as a lawful concurrent user, party to a 
cancellation proceeding, a registrant who has filed an affidavit as provided in section 1058 or 
section 71 of this title, or an applicant for renewal, who is dissatisfied with the decision of the 
Director or Trademark Trial and Appeal Board, may appeal to the United States Court of Appeals for the Federal Circuit thereby waiving his right to proceed under subsection (b) of this section:   
Provided, That such appeal shall be dismissed if any adverse party to the proceeding, other than the Director, shall, within twenty days after the appellant has filed notice of appeal according to 
paragraph (2) of this subsection, files notice with the Director that he elects to have all further 
proceedings conducted as provided in subsection (b) of this section.  Thereupon the appellant shall have thirty days thereafter within which to file a civil action under subsection (b) of this section, in default of which the decision appealed from shall govern the further proceedings in the case. 
(2) When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the 
appellant shall file in the Unit ed 
States Patent and Trademark Office a written notice of appeal 
directed to the Director, within such time after the date of the decision from which the appeal is 
taken as the Director prescribes, but in no case less than 60 days after that date. 
(3) The Director shall transmit to the United States Court of Appeals for the Federal Circuit a 
certified list of the documents comprising th e record in
 the United States Patent and 
Trademark Office.  The court may request that the Director forward the original or certified copies of such documents during pendency of the appeal.  In an ex parte case, the Director shall submit to that court a brief explaining the grounds for the decision of the United States Patent and Trademark Office, addressing all the issues involved in the appeal.  The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal. 
(4) The United States Court of Appeals for the Federal Circuit shall review the decision from 
which the appeal is taken o n t
he record before the United States Patent and Trademark 
Office.  Upon its determination the court shall issue its mandate and opinion to the Director, which shall be entered of record in the United States Patent and Trademark Office and shall govern the further proceedings in the case.  However, no final judgment shall be entered in 
favor of an applicant under section 1051(b) of this title before the mark is registered, if such 
applicant cannot prevail without establishing constructive use pursuant to section 1057(c) of this title. 
(b) Civil action; persons entitled to; jurisdiction of court; status of Director; procedure .  
(1) Whenever a pers on 
authorized by subsection (a) of this section to appeal to the United States 
Court of Appeals for th e Fe
deral Circuit is dissatisfied with the decision of the Director or 
Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in subsection (a) of this section.  The court may adjudge that an applicant is entitled to a registration upon the application involved, that a registration involved should be 
canceled, or such other matter as the issues in the proceeding require, as the facts in the case 
IP/N/1/USA/T/4 
Page 209 -208- January 6, 2012 may appear.  Such adjudication shall authorize the Director to take any necessary action, upon 
compliance with the requirements of law.  However, no final judgment shall be entered in favor of an applicant under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive us e pursuant to section 1057(c) of this title. 
(2) The Director shall not be made a party to an inter partes proceeding under this subsection, but he shall be not i
fied of the filing of the complaint by the clerk of the court in which it is filed 
and shall have the right to intervene in the action.  
(3) In any case where there is no adverse party, a copy of the complaint shall be served on 
the Director, and, unless the court finds the ex pe
nses to be unreasonable, all the expenses of 
the proceeding shall be paid by the party bringing the case, whether the final decision is in 
favor of such party or not.  In suits brought hereunder, the record in the United States Patent 
and Trademark Office shall be admitted on motion of any party, upon such terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of any party to take further testimony.  The testimony and exhibits of the record in the United States Patent and Trademark Office, when 
admitted, shall have the same effect as if originally taken and produced in the suit. 
(4) Where there is an adverse party, such suit may be instituted against the party in interest as 
shown by the records of the United States Patent and Trademark Offic
e at the time of the 
decision complained of, but any party in interest may become a party to the action.  If there are adverse parties residing in a plurality of districts not embraced within the same State, or an 
adverse party residing in a foreign country, the United States District Court for the Eastern 
District of Virginia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides.  Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. 
(Amended July 19, 1952, 66 Stat. 814; Aug. 8, 1958, 72 Stat. 540; Oct. 9,  1962, 76 Stat. 771; Jan. 2, 1975, 
88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1955; Apr. 2, 1982,  96 Stat. 49; Nov. 8, 1984, 98 Stat. 3363; Nov. 16, 
1988, 102 Stat. 3942; Nov. 29, 1999, 113 Stat. 1501A-583; Mar. 17, 2010, 124 Stat. 66; Sept. 16, 2011, 125 
Stat. 316.) 
§ 22 (15 U.S.C. § 1072).  Registration as notice 
Registration of a mark on the principal register provided by this chapter or under the Act of March 
3, 1881, or the Act of February 20, 1 905, s
hall be constructive notice of the registrant’s claim of 
ownership thereof. 
TITLE II - THE SUPPLEMENTAL REGISTER 
§ 23 (15 U.S.C. § 1091).  Filing and registration for foreign use 
(a) In addition to the principal register, the Director shall keep a continuation of the register 
provided in paragraph (b) of section 1 of t he 
Act of March 19, 1920, entitled “An Act to give effect 
to certain provisions of the convention for the protection of trademarks and commercial names, made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes,” to be called the supplemental register. All marks capable of distinguishing applicant’s goods or services and not registrable on the principal register herein provided, except those declared to be unregistrable under subsections (a ), (b), (c), (d), and (e)(3) of section 1052 of 
this title, which are in lawful use in commerce by the owner thereof, on or in connection with any goods or services may be registered on the supplemental register upon the payment of the 
IP/N/1/USA/T/4 
Page 210 -209- January 6, 2012 prescribed fee and compliance with the provisions of subsections (a) and (e) of section 1051 of 
this title so far as they are applicable. Nothing in this section shall prevent the registration on the supplemental register of a mark, capable of distinguishing the applicant’s goods or services and not registrable on the principal register under this chapter, that is declared to be unregistrable 
under section 1052(e)(3) of this title, if such mark has been in lawful use in commerce by the 
owner thereof, on or in connection with any goods or services, since before December 8, 1993. 
(b) Upon the filing of an application for registration on the supplemental register and payment of 
the prescribed fee the Director sha ll refer th
e application to the examiner in charge of the 
registration of marks, who shall cause an examination to be made and if on such examination it shall appear that the applicant is entitled to registration, the registration shall be granted. If the 
applicant is found not entitled to registration the provisions of subsection (b) of section 1062 of this 
title shall apply. 
(c) For the purposes of registration on the supplemental register, a mark may consist of any 
trademark, symbol, la bel, 
 package, configuration of goods, name, word, slogan, phrase, surname, 
geographical name, numeral, device, any matter that as a whole is not functional, or any 
combination of any of the foregoing, but such mark must be capable of distinguishing the 
applicant’s goods or services. 
(Amended Oct. 9, 1962, 76 Stat. 773; Nov. 16, 1988, 102 Stat. 3942; Dec. 8, 1993, 107 Stat. 2057; Oct. 30, 
1998, 112 Stat. 3069; Nov. 29, 1999, 113 Sta t. 1501A-583; Nov. 2, 2002, 116 Stat. 1908.) 
§ 24 (15 U.S.C. § 1092).  Cancellation 
Marks for the supplemental register shall not be published for or be subject to opposition, but shall 
be published on registration in the Official Gazette of the Pa ten
t and Trademark Office.  Whenever 
any person believes that such person is or will be  damaged by the registra tion of a mark on the 
supplemental register-- 
(1) for which the effective filing date is after the date on which such person's mark became famous and which would be likely to cause dilut i 
on by blurring or dilution by tarnishment under 
section 1125(c) of this title; or 
(2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at 
any time, upon pay men
t of the prescribed fee and the filing of a petition stating the ground 
therefor, apply to the Director to cancel such registration. 
The Director shall refer such application to the Trademark Trial and Appeal Board, which shall 
give notice thereof to the registrant.  If i t is fo
und after a hearing before the Board that the 
registrant is not entitled to registration, or that the mark has been abandoned, the registration shall 
be canceled by the Director.  However, no final judgment shall be entered in favor of an applicant 
under section 1051(b) of this title before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 1057(c). 
(Amended Aug. 8, 1958, 72 Stat. 540; Oct. 9, 1962, 76 Stat. 773; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 
1988, 102 Stat. 3943; Aug. 5, 1999, 113 Stat. 218; No v. 29, 1999, 113 Stat. 1501A-583; Oct. 6, 2006, 120 
Stat. 1730.) 
§ 25 (15 U.S.C. § 1093).  Supplemental registration certificate 
The certificates of registration for marks registered on the supplemental register shall be 
conspicuously different f r
om certificates issued for marks registered on the principal register. 
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Page 211 -210- January 6, 2012 § 26 (15 U.S.C. § 1094).  General provisions 
The provisions of this chapter shall govern so far as applicable applications for registration and 
registrations on the supplemental register as  well as t
hose on the principal register, but 
applications for and registrations on the supplemental register shall not be subject to or receive 
the advantages of sections 1051(b), 1052(e), 1052(f), 1057(b), 1057(c), 1062(a), 1063 to 1068, inclusive, 1072, 1115 and 1124 of this title. 
(Amended Nov. 16, 1988, 102 Stat. 3943; Oct. 30, 1998, 112 Stat. 3069.) 
§ 27 (15 U.S.C. § 1095).  Principal registration not precluded by supplemental registration 
Registration of a mark on the supplemental register, or under the Act of March 19, 1920, shall not 
preclude registration by the registrant on the principal registe r
 established by this chapter.  
Registration of a mark on the supplemental register shall not constitute an admission that the mark has not acquired distinctiveness. 
(Amended Nov. 16, 1988, 102 Stat. 3943.) 
§ 28 (15 U.S.C. § 1096).  Department of Treasury; supplemental registration not filed 
Registration on the supplemental register or under the Act of March 19, 1920, shall not be filed in 
the Department of the Treasury or be  used 
to stop importations. 
TITLE III - NOTICE OF REGISTRATION 
§ 29 (15 U.S.C. § 1111).  Notice of registration; display with mark; recovery of profits and dama ges in infringement suit 
Notwit hstan
ding the provisions of section 1072 of this title, a registrant of a mark registered in the 
Patent and Trademark Office, may give n otice t
hat his mark is registered by displaying with the 
mark the words "Registered in U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & Tm. Off." or the letter R enclosed within a circle, thus ®; and in any suit for infringement under this chapter by such a registrant failing to gi ve such notice of registration, no profits and no damages shall be 
recovered under the provisions of this chapter unless the defendant had actual notice of the registration. 
(Amended Oct. 9, 1962, 76 Stat. 773; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 1343.) 
*Note:  The amendment of the wording of this term by Public Law 93-596 became effective on January 2, 1975.  However, the amendment provides that any registrant may continue to give notice of his registration in accordance with § 29 of the Trademark Act of 1946, as amended Oct. 
9, 1962, as an alternative to notice in accordance with § 29 of the Trademark Act as amended by 
Public Law 93-596, regardless of whether his mark was registered before or after January 2, 
1975. 
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Page 212 -211- January 6, 2012 TITLE IV - CLASSIFICATION 
§ 30 (15 U.S.C. § 1112).  Classification of goods and services; registration in plurality of 
classes 
The Director may establ i
sh a classification of goods and services, for convenience of Patent and 
Trademark Office ad m
inistration, but not to limit or extend the applicant's or registrant's rights.  
The applicant may apply to register a mark for any or all of the goods or services on or in 
connection with which he or she is using or has a bona fide intention to use the mark in commerce:  Provided, That if the Director by regulation permits the filing of an application for the 
registration of a mark for goods or services which fall within a plurality of classes, a fee equaling 
the sum of the fees for filing an application in each class shall be paid, and the Director may issue a single certificate of registration for such mark. 
(Amended Oct. 9, 1962, 76 Stat. 773; Jan. 2, 1975, 88 Stat. 1949; Nov. 16, 1988, 102 Stat. 3943; Nov. 29, 
1999, 113 Stat. 1501A-583.) 
TITLE V - FEES AND CHARGES 
§ 31 (15 U.S.C. § 1113).  Fees 
(a) The Director shall establish fees for the filing and processing of an application for the 
regist ration of a trade mark o r o
ther mark and for all other services performed by and materials 
furnished by the Patent and Trademark Office related to trademarks and other marks.  Fees established under this subsection may be adjusted by the Director once each year to reflect, in the aggregate, any fluctuations during the preceding 12 months in the Consumer Price Index, as 
determined by the Secretary of Labor.  Changes of less than 1 percent may be ignored.  No fee 
established under this section shall take effect until at least 30 days after notice of the fee has been published in the Federal Register and in the Official Gazette of the Patent and Trademark Office.   
(b) The Director may waive the payment of any fee for any service or material related to 
trademarks or other ma rks in conn
ection with an occasional request made by a department or 
agency of the Government, or any officer thereof.  The Indian Arts and Crafts Board will not be charged any fee to register Government trademarks of genuineness and quality for Indian products or for products of particular Indian tribes and groups. 
(Amended Aug. 8, 1958, 72 Stat. 540; July 24, 1965, 79 St at. 260; Jan. 2, 1975, 88 Stat. 1949; Dec. 12, 
1980, 94 Stat. 3018; Aug. 27, 1982, 96 Stat. 319; Sept. 8, 1982, 96 Stat. 256; Dec. 10, 1991, 105 Stat. 
1640; Oct. 30, 1998, 112 Stat. 3069; Nov. 29, 1999, 113 Stat. 1501A-554.) 
TITLE VI - REMEDIES 
§ 32 (15 U.S.C. § 1114).  Remedies; infringement; innocent infringers 
(1) Any person who shall, without the consent of the registrant— 
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered 
mark in connection with the s
ale, offering for sale, distribution, or advertising of any goods or 
services on or in connection with which such use is likely to cause confusion, or to cause 
mistake, or to deceive; or  
(b) reproduce, counterfeit, copy or colorably imitate a registered mark and apply such 
reproduction, counterfeit, copy  
or colorable imitation to labels, signs, prints, packages, 
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Page 213 -212- January 6, 2012 wrappers, receptacles or advertisements intended to be used in commerce upon or in 
connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive,  
shall be liable in a civil action by the registrant for the remedies hereinafter provided.  Under subsection (b) hereof, the registrant shall not be entitl
ed to recover profits or damages unless the 
acts have been committed with knowledge that such imitation is intended to be used to cause confusion, or to cause mistake, or to deceive.   
As used in this paragraph, the term “any person” includes the United States, all agencies and 
instrumentalities thereof, and all individ uals, 
 firms, corporations, or other persons acting for the 
United States and with the authorization and consent of the United States, and any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity.  The United States, all agencies and instrumentalities thereof, and all individuals, firms, corporations, other persons acting for the United States and with the authorization and consent of the United States, and any State, and any such instrumentality, 
officer, or employee, shall be subject to the provisions of this chapter in the same manner and to 
the same extent as any nongovernmental entity. 
(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right 
infringed under this chapter or to a person bri ng
ing an action under section 1125(a) or (d) of this 
title shall be limited as follows: 
(A) Where an infringer or violator is engaged solely in the business of printing the mark or violating matter for others and  est 
ablishes that he or she was an innocent infringer or innocent 
violator, the owner of the right infringed or person bringing the action under section 1125(a) of this title shall be entitled as against such infringer or violator only to an injunction against future printing. 
(B) Where the infringement or violation complained of is contained in or is part of paid 
advertising matter in a newspaper, magazine, o r
 other similar periodical or in an electronic 
communication as defined in section 2510(12) of title 18, United States Code, the remedies of 
the owner of the right infringed or person bringing the action under section 1125(a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such 
advertising matter in future issues of such newspapers, magazines, or other similar periodicals 
or in future transmissions of such electronic communications.  The limitations of this subparagraph shall apply only to innocent infringers and innocent violators. 
(C) Injunctive relief shall not be available to the owner of the right infringed or person bringing 
the action under section 1125(a) of this title with respec t to an iss
ue of a newspaper, 
magazine, or other similar periodical or an electronic communication containing infringing 
matter or violating matter where restraining the dissemination of such infringing matter or 
violating matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication after the regular time for such delivery or transmission, and such delay would be due to the method by which publication and distribution of such periodical or transmission of such electronic 
communication is customarily conducted in accordance with sound business practice, and not 
due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter or violating matter. 
(D)(i)(I) A domain name registrar, a domain name registry, or other domain name registration authority that takes any action descr ibed und
er clause (ii) affecting a domain 
name shall not be liable for monetary relief or, except as provided in subclause (II), for 
IP/N/1/USA/T/4 
Page 214 -213- January 6, 2012 injunctive relief, to any person for such action, regardless of whether the domain name is 
finally determined to infringe or dilute the mark. 
(II) A domain name registrar, domain name registry, or other domain name registration authority de scribed 
 in subclause (I) may be subject to injunctive relief 
only if such registrar, registry, or other registration authority has— 
(aa) not expeditiously deposited with a court, in which an action has been filed regarding the disposition of the  do 
main name, documents sufficient for the 
court to establish the court’s control and authority regarding the disposition of the registration and use of the domain name; 
(bb) transferred, suspended, or otherwise modified the domain name during 
the pendency of the actio n, e 
xcept upon order of the court; or 
(cc) willfully failed to comply with any such court order. 
(ii) An action referred to under clause (i)(I) is any action of refusing to register, 
removing from registration, transferrin g, te
mporarily disabling, or permanently 
canceling a domain name— 
(I) in compliance with a court order under section 43(d); or 
(II) in the implementation of a reasonable policy by such registrar, registry, or 
authority prohibiting the registration of a domai n na
me that is identical to, 
confusingly similar to, or dilutive of another’s mark. 
(iii) A domain name registrar, a domain  name registry, or other domain name 
registration authority sh all not 
be liable for damages under this section for the 
registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name. 
(iv) If a registrar, registry, or other registration authority takes an action described 
under clause (ii) based on a know i 
ng and material misrepresentation by any other 
person that a domain name is identical to, confusingly similar to, or dilutive of a mark, 
the person making the knowing and material misrepresentation shall be liable for any 
damages, including costs and attorney’s fees, incurred by the domain name registrant as a result of such action. The court may also grant injunctive relief to the domain name registrant, including the reactivation of the domain name or the transfer of the domain name to the domain name registrant. 
(v) A domain name registrant whose domain name has been suspended, disabled, or 
transferred under a policy describ ed
 under clause (ii)(II) may, upon notice to the mark 
owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant. 
(E) As used in this paragraph—(i) the term “violator” means a person who violates section 1125(a) of this title; and 
(ii) the te
rm “violating matter” means matter that is the subject of a violation under section 
1125(a) of this title. 
(Amended Oct. 9, 1962, 76 Stat. 773; Nov. 16, 1988, 102 Stat. 3943; Oct. 27, 1992, 106 Stat. 3567; Oct. 30, 
1998, 112 Stat. 3069; Aug. 5, 1999, 113 Stat . 218; Nov. 29, 1999, 113 Stat. 1501A-549.) 
IP/N/1/USA/T/4 
Page 215 -214- January 6, 2012 § 33 (15 U.S.C. § 1115).  Registration as evidence of right to exclusive use; defenses 
(a) Any registration issued under the Act of March 3, 1881, or the Act of February 20, 1905, or of a 
mark registered on the principal register pro
vided by this chapter and owned by a party to an 
action shall be admissible in evidence and shall be prima facie evidence of the validity of the 
registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration subject to any conditions or limitations stated therein, but shall not preclude another person from proving any legal or equitable defense or 
defect, including those set forth in subsection (b) of this section, which might have been asserted 
if such mark had not been registered. 
(b) To the extent that the right to use the registered mark has become incontestable under section 
1065 of this title, the registration shall  be concl
usive evidence of the validity of the registered mark 
and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s 
exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to 
the exclusive right to use the mark on or in connection with the goods or services specified in the affidavit filed under the provisions of section 1065 of this title, or in the renewal application filed under the provisions of section 1059 of this title if the goods or services specified in the renewal are fewer in number, subject to any conditions or limitations in the registration or in such affidavit or renewal application. Such conclusive evidence of the right to use the registered mark shall be 
subject to proof of infringement as defined in section 1114 of this title, and shall be subject to the 
following defenses or defects: 
(1) That the registration or the incontestable right to use the mark was obtained fraudulently; or 
(2) That the mark has been abandoned by the registrant; or (3) That the registered mark is being used, by or with the permission of the registrant or a person 
in pri vity with the registrant, so as to misr ep
resent the source of the goods or services on or in 
connection with which the mark is used; or 
(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise 
than as a mark, of the party’s indi vid
ual name in his own business, or of the individual name of 
anyone in privity with such party, or of a term or device which is descriptive of and used fairly and 
in good faith only to describe the goods or services of such party, or their geographic origin; or 
(5) That the mark whose use by a party is charged as an infringement was adopted without 
knowledge of the registrant’s prior use and has been continuously  used 
by such party or those in 
privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 1057(c) of this title, (B) the registration of the mark under this Act if the application for registration is filed before the effective date of the Trademark Law Revision Act of 
1988, or (C) publication of the registered mark under subsection (c) of section 1062 of this 
title: Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved; or 
(6) That the mark whose use is charged as an infringement was registered and used prior to the 
registration under this Act or publication un der s
ubsection (c) of section 1062 of this title of the 
registered mark of the registrant, and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark was used prior to such registration or such publication of the registrant’s mark; or 
(7) That the mark has been or is being used to violate the antitrust laws of the United States; or (8) That the mark is functional; or 
IP/N/1/USA/T/4 
Page 216 -215- January 6, 2012 (9) That equitable principles, including laches, estoppel, and acquiescence, are applicable. 
(Amended Oct. 9, 1962, 76 Stat. 774; Nov. 16, 1988, 102 Stat. 3944; Oct. 30, 1998, 112 Stat. 3069; Nov. 2, 
2002, 116 Stat. 1908.) 
§ 34 (15 U.S.C. § 1116).  Injunctions; enforcement; notice of filing suit given Director 
(a) The several courts vested with jurisdiction of civil actions arising under this chapter shall have 
power to grant injunction s
, according to the principles of equity and upon such terms as the court 
may deem reasonable, to prevent the violation of any right of the registrant of a mark registered in 
the Patent and Trademark Office or to prevent a violation under subsection (a), (c), or (d) of section 1125 of this title.  Any such injunction may include a provision directing the defendant to file with the court and serve on the plaintiff within thirty days after the service on the defendant of such injunction, or such extended period as the court may direct, a report in writing under oath 
setting forth in detail the manner and form in which the defendant has complied with the 
injunction.  Any such injunction granted upon hearing, after notice to the defendant, by any district court of the United States, may be served on the parties against whom such injunction is granted anywhere in the United States where they ma y be found, and shall be operative and may be 
enforced by proceedings to punish for contempt, or otherwise, by the court by which such injunction was granted, or by any other United States district court in whose jurisdiction the 
defendant may be found. 
(b) The said courts shall have jurisdiction to enforce said injunction, as herein provided, as fully as 
if the injunction had been granted b y
 the district court in which it is sought to be enforced.  The 
clerk of the court or judge granting the injunction s hall, when required to do so by the court before 
which application to enforce said injunction is made, transfer without delay to said court a certified 
copy of all papers on file in his office upon which said injunction was granted. 
(c) It shall be the duty of the clerks of such courts within one month after the filing of any action, 
suit, or proceeding in vol
ving a mark registered under the provisions of this chapter to give notice 
thereof in writing to the Director setting forth in order so far as known the names and addresses of the litigants and the designating number or numbers of the registration or registrations upon which the action, suit, or proceeding has been brought, and in the event any other registration be 
subsequently included in the action, suit, or proceeding by amendment, answer, or other pleading, 
the clerk shall give like notice thereof to the Director, and within one month after the judgment is entered or an appeal is taken, the clerk of the court shall give notice thereof to the Director, and it shall be the duty of the Director on receipt of such notice forthwith to endorse the same upon the file wrapper of the said registration or registrations and to incorporate the same as a part of the 
contents of said file wrapper. 
(d) (1) (A) In the case of a civil action arising under section 1114(1)(a) of this title or section 
220506 of title 36, United St ates 
Code, with respect to a violation that consists of using a 
counterfeit mark in connection with the sale, offering for sale, or distribution of goods or services, the court may, upon ex parte application, grant an order under subsection (a) of this section 
pursuant to this subsection providing for the seizure of goods and counterfeit marks involved in 
such violation and the means of making such marks, and records documenting the manufacture, sale, or receipt of things involved in such violation. 
(B) As used in this subsection the term “counterfeit mark” means— 
(i) a counterfeit of a mark that is registered on the principal register in the United States Patent and Trademark Off i
ce for such goods or services sold, offered for sale, or 
distributed and that is in use, whether or not the person against whom relief is sought knew such mark was so registered; or 
IP/N/1/USA/T/4 
Page 217 -216- January 6, 2012 (ii) a spurious designation that is identical with, or substantially indistinguishable from, 
a designation as to which the remedies of this Act are made available by reason of section 220506 of title 36, United States Code; 
but such term does not include any mark or designation used on or in connection with 
goods or services of which the manufacturer or produc er was 
, at the time of the 
manufacture or production in question authorized to use the mark or designation for the 
type of goods or services so manufactured or produced, by the holder of the right to use such mark or designation. 
(2) The court shall not receive an application under this subsection unless the applicant has given such notice of the application as is reasonable under the circu m
stances to the United 
States attorney for the judicial district in which such order is sought.  Such attorney may participate in the proceedings arising under such application if such proceedings may affect evidence of an offense against the United States.  The court may deny such application if the court determines that the public interest in a potential prosecution so requires. 
(3) The application for an order under this subsection shall— 
(A) be based on an affidavit or the verified complaint establishing facts sufficient to support 
the findings of fact and conclusions of  la
w required for such order; and 
(B) contain the additional information required by paragraph (5) of this subsection to be set forth in such order. 
(4) The court shall not grant such a n 
application unless— 
(A) the person obtaining an order under this subsection provides the security determined adequate by the court for the payme nt of 
 such damages as any person may be entitled to 
recover as a result of a wrongful seizure or wrongful attempted seizure under this subsection; and 
(B) the court finds that it clearly appears from specific facts that— 
(i) an order other than an ex parte seizure order is not adequate to achieve the 
purposes of section 1114 of this title; 
(ii) the 
applicant has not publicized the requested seizure; 
(iii) the applicant is likely to succeed in showing that the person against whom seizure 
would be ordered used a counterfeit mark in connection with the sale, off ering fo
r sale, 
or distribution of goods or services; 
(iv) an immediate and irreparable injury will occur if such seizure is not ordered; 
(v) the matter to be seized will be located at the place identified in the application; (vi) the harm to the applicant of denying the application outweighs the harm to the 
legitimate interests of the person agai nst 
whom seizure would be ordered of granting 
the application; and 
(vii) the person against whom seizure would be ordered, or persons acting in concert 
with such person, would destroy, move , hid
e, or otherwise make such matter 
inaccessible to the court, if the applicant were to proceed on notice to such person. 
(5) An order under this subsection shall set forth— 
(A) the findings of fact and conclusions of law required for the order; 
IP/N/1/USA/T/4 
Page 218 -217- January 6, 2012 (B) a particular description of the matter to be seized, and a description of each place at 
which such matter is to be seized; 
(C) the time period, which shall end not later than seven days after the date on which such 
order is issued, during which th e seiz
ure is to be made; 
(D) the amount of security required to be provided under this subsection; and 
(E) a date for the hearing required under paragraph (10) of this subsection. 
(6) The court shall take appropriate action to protect the person against whom an order under 
this subsection is directed fro m
 publicity, by or at the behest of the plaintiff, about such order 
and any seizure under such order. 
(7) Any materials seized under this subsection shall be taken into the custody of the court.  
For seizures made under this section,  the court sh
all enter an appropriate protective order with 
respect to discovery and use of any records or information that has been seized.  The 
protective order shall provide for appropriate procedures to ensure that confidential, private, proprietary, or privileged information contained in such records is not improperly disclosed or used. 
(8) An order under this subsection, together with the supporting documents, shall be sealed 
until the person against whom the o
rder is directed has an opportunity to contest such order, 
except that any person against whom such order is issued shall have access to such order and supporting documents after the seizure has been carried out. 
(9) The court shall order that service of a copy of the order under this subsection shall be 
made by a Federal l aw enfo 
rcement officer (such as a United States marshal or an officer or 
agent of the United States Customs Service, Secret Service, Federal Bureau of Investigation, 
or Post Office) or may be made by a State or local law enforcement officer, who, upon making service, shall carry out the seizure under th e order.  The court shall issue orders, when 
appropriate, to protect the defendant from undue damage from the disclosure of trade secrets or other confidential information during the course of the seizure, including, when appropriate, 
orders restricting the access of the applicant (or any agent or employee of the applicant) to 
such secrets or information. 
(10) (A) The court shall hold a hearing, unless waived by all the parties, on the date set by the 
court in the order of seiz ure. 
 That date shall be not sooner than ten days after the order is 
issued and not later than fifteen days after the order is issued, unless the applicant for the 
order shows good cause for another date or unless the party against whom such order is 
directed consents to another date for such hearing.  At such hearing the party obtaining the order shall have the burden to prove that the facts supporting findings of fact and conclusions of law necessary to support such order are still in effect.  If that party fails to meet that burden, the seizure order shall be dissolved or modified appropriately. 
(B) In connection with a hearing under this paragraph, the court may make such orders 
modifying the time limit s
 for discovery under the Rules of Civil Procedure as may be 
necessary to prevent the frustration of the purposes of such hearing. 
(11) A person who suffers damage by reason of wrongful seizure under this subsection has a 
cause of action against the applicant  for th
e order under which such seizure was made, and 
shall be entitled to recover such relief as may be appropriate, including damages for lost 
profits, cost of materials, loss of goodwill, and punitive damages in instances where the 
seizure was sought in bad faith, and, unless the court finds extenuating circumstances, to recover a reasonable attorney’s fee.  The court in its discretion may award prejudgment interest on relief recovered under this paragraph, at an annual interest rate established under 
IP/N/1/USA/T/4 
Page 219 -218- January 6, 2012 section 6621(a)(2) of the Internal Revenue Code of 1986, commencing on the date of service 
of the claimant’s pleading setting forth the claim under this paragraph and ending on the date such recovery is granted, or for such shorter time as the court deems appropriate. 
(Amended Jan. 2, 1975, 88 Stat. 1949; Oct. 12, 1984, 98 Stat. 2179; Nov. 16, 1988, 102 Stat. 3945; July 2, 
1996, 110 Stat. 1386; Aug. 5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-548; Nov. 2, 2002, 116 
Stat. 1908; Oct. 13, 2008, 122 Stat. 4258) 
§ 35 (15 U.S.C. § 1117).  Recovery of profits, damages, and costs 
(a) When a violation of any right of the registrant of a mark registered in the Patent and 
Trademark Office, a violation under section 1 12
5(a) or (d) of this title or a willful violation under 
section 1125(c) of this title, shall have been established in any civil action arising under this Act, 
the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 and subject to 
the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. In assessing profits the plaintiff shall be required to prove defendant’s sale only; defendant must prove all elements of cost or deduction claimed. In assessing damages the court may enter judgment, according to the circumstances of the case, for 
any sum above the amount found as actual damages, not exceeding three times such amount. If 
the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. Such sum in either of the above circumstances shall constitute compensation and not a penalty. The court in exceptional cases may award 
reasonable attorney fees to the prevailing party. 
(b) In assessing damages under subsection (a) for any violation of section 32(1)(a) of this Act or 
section 220506 of title 36, United States Code, in a case involving us e
 of a counterfeit mark or 
designation (as defined in section 34(d) of this Act), the court shall, unless the court finds extenuating circumstances, enter judgment for three times such profits or damages, whichever amount is greater, together with a reasonable attorney's fee, if the violation consists of-- 
(1) intentionally using a mark or designation, knowing such mark or designation is a counterfeit mark (as defined in section 34(d) of t his Act), in connecti
on with the sale, offering 
for sale, or distribution of goods or services; or 
(2) providing goods or services necessary to the commission of a violation specified in 
paragraph (1), with the intent that the recipient of the goo ds or services 
would put the goods or 
services to use in committing the violation. 
In such a case, the court may award prejudgment interest on such amount at an annual interest rate established under section 6621(a)(2) of  the 
 Internal Revenue Code of 1986, beginning on the 
date of the service of the claimant's pleadings setting forth the claim for such entry of judgment and ending on the date such entry is made, or for such shorter time as the court considers appropriate. 
(c) In a case involving the use of a counterfeit mark (as defined in section 1116(d) of this title) in 
connection with the sale, offering for sale, or distribution of goods or s ervices, th
e plaintiff may 
elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits under subsection (a) of this section, an award of statutory damages for any such use in connection with the sale, offering for sale, or distribution of goods or services in the 
amount of - 
(1) not less than $1,000 or more than $200,000 per counterfeit mark per type of goods or 
services sold, offered for sale, or distributed, as t he cou
rt considers just; or 
IP/N/1/USA/T/4 
Page 220 -219- January 6, 2012 (2) if the court finds that the use of the counterfeit mark was willful, not more than $2,000,000 
per counterfeit mark per type of goods or services sold, offered for sale, or distributed, as the court considers just. 
(d) In a case involving a violation of section 1125(d)(1) of this title, the plaintiff may elect, at any 
time before final judg me 
nt is rendered by the trial court, to recover, instead of actual damages and 
profits, an award of statutory damages in the amount of not less than $1,000 and not more than 
$100,000 per domain name, as the court considers just. 
(e) In the case of a violation referred to in this section, it shall be a rebuttable presumption that the 
violation is willful for purposes of determining relief if the violator, or  a pers
on acting in concert with 
the violator, knowingly provided or knowingly c aused to be provided materially false contact 
information to a domain name registrar, domain name registry, or other domain name registration authority in registering, maintaining, or renewing a domain name used in connection with the violation.  Nothing in this subsection limits what may be considered a willful violation under this section. 
(Amended Oct. 9, 1962, 76 Stat. 774; Jan. 2, 1975, 88 St at. 1949; Jan. 2, 1975, 88 Stat. 1955; Oct. 12, 
1984, 98 Stat. 2182; Nov. 16, 1988, 102 Stat. 3945; July 2, 1996, 110 Stat. 1386; Aug. 5, 1999, 113 Stat. 
218; Nov. 29, 1999, 113 Stat. 1501A-549; Nov. 2, 2002, 116 Stat. 1906, 1908; Dec. 23, 2004, 118 Stat. 
3916; Oct. 13, 2008, 122 Stat. 4259.) 
§ 36 (15 U.S.C. § 1118).  Destruction of infringing articles 
In any action arising under this chapter, in which a violation of any right of the registrant of a mark 
registered in the Patent and T
rademark Office, a violation under section 1125(a) of this title, or a 
willful violation under section 1125(c) of this title, shall have been established, the court may order 
that all labels, signs, prints, packages, wrappers, receptacles, and advertisements in the possession of the defendant, bearing the registered mark or, in the case of a violation of section 1125(a) of this title or a willful violation under section 1125(c) of this title, the word, term, name, symbol, device, combination thereof, designation, description, or representation that is the subject 
of the violation, or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, 
molds, matrices, and other means of making the same, shall be delivered up and destroyed. The party seeking an order under this section for destruction of articles seized under section 1161(d) of this title shall give ten days’ notice to the United States attorney for the judicial district in which such order is sought (unless good cause is shown for lesser notice) and such United States 
attorney may, if such destruction may affect evidence of an offense against the United States, 
seek a hearing on such destruction or participate in any hearing otherwise to be held with respect to such destruction. 
(Amended Jan. 2, 1975, 88 Stat. 1949; Oct. 12, 1984, 98 Stat. 2182; Nov. 16, 1988, 102 Stat. 3945; Aug. 5, 
1999, 113 Stat. 218.) 
§ 37 (15 U.S.C. § 1119).  Power of court over registration; certification of decrees and 
orders  
In any action involving a registered mark the court may determine the right to registration, order 
the cancellation of registrations, in wh
ole or in part, restore cancelled registrations, and otherwise 
rectify the register with respect to the registrations of any party to the action.  Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby. 
(Amended Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-583.) 
IP/N/1/USA/T/4 
Page 221 -220- January 6, 2012 § 38 (15 U.S.C. § 1120).  Fraud; civil liability 
Any person who shall procure registration in the Patent and Trademark Office of a mark by a false 
or fraudulent declaration or represent ation, o
ral or in writing, or by any false means, shall be liable 
in a civil action by any person injured thereby for any damages sustained in consequence thereof. 
(Amended Jan. 2, 1975, 88 Stat. 1949.) 
§ 39 (15 U.S.C. § 1121).  Jurisdiction of Federal courts; State, local, and other agency 
requirements 
(a) The district and territorial courts of the United States shall have original jurisdiction, the courts 
of appeal of the United States (other than the United St ate
s Court of Appeals for the Federal 
Circuit) and the United States Court of Appeals for the District of Columbia shall have appellate 
jurisdiction, of all actions arising under this chapter, without regard to the amount in controversy or 
to diversity or lack of diversity of the citizenship of the parties. 
(b) No State or other jurisdiction of the United States or any political subdivision or any agency 
thereof may require alteration of a registered mark, or require that additional trad e
marks, service 
marks, trade names, or corporate names that may be associated with or incorporated into the registered mark be displayed in the mark in a manner differing from the display of such additional 
trademarks, service marks, trade names, or corporate names contemplated by the registered 
mark as exhibited in the certificate of registration issued by the United States Patent and Trademark Office. 
(Amended Apr. 2, 1982, 96 Stat. 46; Nov. 16, 1988, 102 Stat. 3946; Oct. 30, 1998, 112 Stat. 3069.) 
§ 40 (15 U.S.C. § 1122).  Liability of States, instrumentalities of States and State officials 
(a) WAIVER OF SOVEREIGN IMMUNITY BY THE UNITED STATES- The United States, all 
agencies and instru men
talities thereof, and all individuals, firms, corporations, other persons 
acting for the United States and with the authorization and consent of the United States, shall not 
be immune from suit in Federal or State court by any person, including any governmental or 
nongovernmental entity, for any violation under this chapter. 
(b) WAIVER OF SOVEREIGN IMMUNITY BY STATES- Any State, instrumentality of a State or 
any officer or employee  
of a State or instrumentality of a State acting in his or her official capacity, 
shall not be immune, under the eleventh amendment of the Constitution of the United States or 
under any other doctrine of sovereign immunity, from suit in Federal court by any person, 
including any governmental or nongovernmental entity for any violation under this chapter. 
(c) In a suit described in subsection (a) or (b) for a violation described therein, remedies (including 
remedies both at law and in equity) are a v
ailable for the violation to the same extent as such 
remedies are available for such a violation in a suit against any person other than the United States or any agency or instrumentality thereof, or any individual, firm, corporation, or other 
person acting for the United States and with authorization and consent of the United States, or a 
State, instrumentality of a State, or officer or employee of a State or instrumentality of a State acting in his or her official capacity. Such remedies include injunctive relief under section 1116 of this title, actual damages, profits, costs and attorney’s fees under section 1117 f this title, destruction of infringing articles under section 1118 f this title, the remedies provided for under 
sections 1114, 1119, 1120, 1124 and 1125 of this title, and for any other remedies provided under 
this chapter. 
(Added Oct. 27, 1992, 106 Stat. 3567; amended Aug. 5, 1999, 113 Stat. 218.) 
IP/N/1/USA/T/4 
Page 222 -221- January 6, 2012 § 41 (15 U.S.C. § 1123).  Rules and regulations 
The Director shall make rules and regulations, not inconsistent with law, for the conduct of 
proceedings in the Patent and  Trade
mark Office under this chapter. 
(Amended Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-583.) 
TITLE VII - IMPORTATION FORBIDDEN OF  GOODS BEARING INFR INGING MARKS OR 
NAMES 
§ 42 (15 U.S.C. § 1124).  Importation of goods bearing infringing marks or names forbidden 
Except as provided in subsection (d) of section 526 of the Tariff Act of 1930, no article of imported 
merchandise wh ich s hall cop y 
or simulate the name of any domestic manufacture, or 
manufacturer, or trader, or of any manufacturer or trader located in any foreign country which, by 
treaty, convention, or law affords similar privileges to citizens of the United States, or which shall 
copy or simulate a trademark registered in accordance with the provisions of this chapter or shall bear a name or mark calculated to induce the public to believe that the article is manufactured in the United States, or that it is manufactured in any foreign country or locality other than the country or locality in which it is in fact manufactured, shall be admitted to entry at any customhouse of the United States; and, in order to aid the officers of the customs in enforcing this 
prohibition, any domestic manufacturer or trader, and any foreign manufacturer or trader, who is 
entitled under the provisions of a treaty, convention, declaration, or agreement between the United States and any foreign country to the advantages afforded by law to citizens of the United States in respect to trademarks and commercial names, may require his name and residence, and the name of the locality in which his goods are manufactured, and a copy of the certificate of 
registration of his trademark, issued in accordance with the provisions of this chapter, to be 
recorded in books which shall be kept for this purpose in the Department of the Treasury, under such regulations as the Secretary of the Treasury shall prescribe, and may furnish to the Department facsimiles of his name, the name of the locality in which his goods are manufactured, or of his registered trademark, and thereupon th e Secretary of the Treasury shall cause one or 
more copies of the same to be transmitted to each collector or other proper officer of customs. 
(Amended Oct. 3, 1978, 92 Stat. 903; Oct. 30, 1998, 112 Stat. 3069.) 
Note:  Copies of regulations referred to in this  section may be obtained from the Department of the  
Treasury.   
TITLE VIII - FALSE DESIGNATIONS OF ORIGIN, FALSE DESCRIPTIONS. AND DILUTION 
FORBIDDEN 
§ 43 (15 U.S.C. § 1125).  False designations of origin; false description or representation 
(a) (1) Any person who, on or in connection with any goods or services, or any container for 
goods, us es in commerc e any wo rd, term, n a
me, symbol, or device, or any combination thereof, 
or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which— 
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, 
connection, or association of such person with ano ther 
person, or as to the origin, 
sponsorship, or approval of his or her goods, services, or commercial activities by another 
person, or 
IP/N/1/USA/T/4 
Page 223 -222- January 6, 2012 (B) in commercial advertising or promotion,  misrepresents the nature, characteristics, 
qualities, or geographic origin of his or her or another person’s goods, services, or 
commercial activities,  
shall be liable in a civil action by any person who believes that he or she is or is likely to be 
damaged by such act. 
(2) As used in this subsection, the t erm “an
y person” includes any State, instrumentality of a 
State or employee of a State or inst ru
mentality of a State acting in his or her official capacity.  
Any State, and any such instrumentality, officer, or employee, shall be subject to the 
provisions of this chapter in the same manner and to the same extent as any nongovernmental entity. 
(3) In a civil action for trade dress infringement under this chapter for trade dress not 
registered on the principal register, the person who asserts trade dress protection  has th 
e 
burden of proving that the matter sought to be protected is not functional. 
(b) Any goods marked or labeled in contravention of the provisions of this section shall not be imported into the United States or a dmi 
tted to entry at any customhouse of the United States.  
The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any recourse by protest or appeal that is given under the customs revenue laws or may have the remedy given by this chapter in cases involving goods refused entry or seized. 
(c) Dilution by Blurring; Dilution by Tarnishment.-- 
(1) Injunctive relief.--Subject to the principles of equity, the owner of a famous mark that is 
distinctive, inherently or through acquire d distin
ctiveness, shall be entitled to an injunction 
against another person who, at any time after the owner's mark has become famous, 
commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. 
(2) Definitions.--(A) For purposes of paragraph (1), a mark is famous if it is widely recognized 
by the general consuming public of the Unite d 
States as a designation of source of the goods 
or services of the mark's owner. In determining whether a mark possesses the requisite 
degree of recognition, the court may consider all relevant factors, including the following: 
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by  t 
he owner or third parties. 
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. 
(iii) The extent of actual recognition of the 
mark. 
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of 
February 20, 1905, or on the princip al 
register. 
(B) For purposes of paragraph (1), `dilution by  blurring' is association arising from the 
similarit y
 between a mark or trade name and a famous mark that impairs the 
distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following: 
(i) The degree of similarity between the ma rk or trade name and the famous mark
 . 
(ii) The degree of inherent or acquired distinctiveness of the famous mark. 
IP/N/1/USA/T/4 
Page 224 -223- January 6, 2012 (iii) The extent to which the owner of the famous mark is engaging in substantially 
exclusive use of the mark. 
(iv) The degree of recognition of the famous mark. (v) Whether the user of the mark or trade name intended to create an association with 
the famous mark. 
(vi) 
Any actual association between the mark or trade name and the famous mark. 
(C) For purposes of paragraph (1), `dilution by tarnishment' is association arising from the 
similarity betwee n a ma
rk or trade name and a famous mark that harms the reputation of 
the famous mark. 
(3) Exclusions.--The following shall not be actionable as dilution by blurring or dilution by 
tarnishment under this  s
ubsection: 
(A) Any fair use, including a nominative or descrip tive fair use, or facilitation of such fair 
use, of a f a
mous mark by another person other than as a designation of source for the 
person's own goods or services, including use in connection with-- 
(i) advertising or promotion that permits c onsumers to compare goods or s e rvices; or 
(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner 
or the goods or services of the fa mou
s mark owner. 
(B) All forms of news reporting and news commentary. 
(C) Any noncommercial use of a mark. 
(4) Burden of proof.--In a civil action for trade dress dilution under this Act for trade dress not 
regist ered on the principal register, the person who assert s trade dres
s protection has the 
burden of proving that-- 
(A) the claimed trade dress, taken as a w hole, is not functional and is fa mo us; and 
(B) if the claimed trade dress includes any mark or marks registered on the principal 
register, the unregistered ma tter, take
n as a whole, is famous separate and apart from any 
fame of such registered marks. 
(5) Additional remedies.--In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive reli ef as set forth in section 
 34.  The owner of the famous 
mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity if-- 
(A) the mark or trade name that is likely to cause dilution by blurring or dilution by 
tarnishment was first used in co mmerce b 
y the person against whom the injunction is 
sought after the date of enactment of the Trademark Dilution Revision Act of 2006; and 
(B) in a claim arising under this subsection-- 
(i) by reason of dilution by blurring, the person against whom the injunction is sought 
willfully intended to trade on th e recog
nition of the famous mark; or 
(ii) by reason of dilution by tarnishment, the person against whom the injunction is 
sought willfully intended t o ha
rm the reputation of the famous mark. 
IP/N/1/USA/T/4 
Page 225 -224- January 6, 2012 (6) Ownership of valid registration a complete bar to action.--The ownership by a person of a 
valid registration under the Act of March 3, 18 81, or the Act of February 20, 1905, or on the 
principal register under this Act shall be a complete bar to an action against that person, with respect to that mark, that-- 
(A)(i) is brought by another person under the common law or a statute of a State; and 
(ii) seeks to prevent dilution by blurring or dilution by tarnishment; or 
(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or  fo
rm of advertisement. 
(7) Savings clause.--Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the pat 
ent laws of the United States.'' 
(d)(1)(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this  s 
ection, if, without regard to the goods or services 
of the parties, that person— 
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this sectio n; an 
d 
(ii) registers, traffics in, or uses a domain name that— 
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to  th 
at mark; 
(II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusin gly si 
milar to or dilutive of that mark; or 
(III) is a trademark, word, or name protected by reason of section 706 of title 18, United States Code, or section 220 5 
06 of title 36. 
(B)(i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors  su 
ch as, but not limited to— 
(I) the trademark or other intellectual property rights of the person, if any, in the domain name; 
(II) the extent to which the domai n n
ame consists of the legal name of the person 
or a name that is otherwise common l
y used to identify that person; 
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services; 
(IV) the p erson’s bon
a fide noncommercial or fair use of the mark in a site 
accessible under the domain name; 
(V) the pers
on’s intent to divert consumers from the mark owner’s online location to 
a site accessible under the domain  n
ame that could harm the goodwill represented 
by the mark, either for commercial gain or with the intent to tarnish or disparage 
the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; 
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the 
mark owner or any third  
party for financial gain without having used, or having an 
intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct; 
IP/N/1/USA/T/4 
Page 226 -225- January 6, 2012 (VII) the person’s provision of material and misleading false contact information 
when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct; 
(VIII) the person’s registration or acquisition of multiple domain names which the 
person knows are identical or confusingl y si
milar to marks of others that are 
distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and 
(IX) the extent to which the mark incorporated in the person’s domain name 
registration is or is not distinctiv e a
nd famous within the meaning of subsection 
(c)(1) of this section. 
(ii) Bad faith intent described under subparagraph (A) shall not be found in any case in 
which the court determines that the  person 
believed and had reasonable grounds to 
believe that the use of the domain name was a fair use or otherwise lawful. 
(C) In any civil action involving the registration, trafficking, or use of a domain name under this paragraph, a cour t 
may order the forfeiture or cancellation of the domain name or the 
transfer of the domain name to the owner of the mark. 
(D) A person shall be liable for using a domain name under subparagraph (A) only if that 
person is the domain na m
e registrant or that registrant’s authorized licensee. 
(E) As used in this paragraph, the term “traffics in” refers to transactions that include, but are not limited to, sales, purchases, loans, pl 
edges, licenses, exchanges of currency, and 
any other transfer for consideration or receipt in exchange for consideration. 
(2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name re gist 
rar, domain name registry, or other domain 
name authority that registered or assigned the domain name is located if— 
(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Offic e, o 
r protected under subsection (a) or (c) of this section; and 
(ii) the court finds that the owner— 
(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil actio 
n under paragraph (1); or 
(II) through due diligence was not able to find a person who would have been a defendant in a civil action und er 
paragraph (1) by— 
(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the do 
main name at the postal and e-mail 
address provided by the registrant to the registrar; and 
(bb) publishing notice of the action as the court may direct promptly after filing 
the action. 
(B) The actions under subpa ragraph
 (A)(ii) shall constitute service o f  process. 
(C) In an in rem action under this paragraph, a domain name shall be deemed to have its 
situs in the judicial district in which— 
IP/N/1/USA/T/4 
Page 227 -226- January 6, 2012 (i) the domain name registrar, registry, or other domain name authority that registered 
or assigned the domain name is located; or 
(ii) documents sufficient to establish control and authority regarding the disposition of 
the registration and use of the domai n na
me are deposited with the court. 
(D)(i) The remedies in an in rem action under this paragraph shall be limited to a court order for the forfeiture or cancellation of the 
 domain name or the transfer of the domain 
name to the owner of the mark. Upon receipt of written notification of a filed, stamped copy of a complaint filed by the owner of a mark in a United States district court under this paragraph, the domain name registrar, domain name registry, or other domain name authority shall— 
(I) expeditiously deposit with the court documents sufficient to establish the court’s control and authority regarding the dispositi
on of the registration and use of the 
domain name to the court; and 
(II) not transfer, suspend, or otherwise modify the domain name during the 
pendency of the action, except upo n
 order of the court. 
(ii) The domain name registrar or registry or other domain name authority shall not be liable for injunctive or monetary relief under this paragraph e x 
cept in the case of bad 
faith or reckless disregard, which includes a willful failure to comply with any such court order. 
(3) The civil action established under paragraph (1) and the in rem action established under 
paragraph (2), and any remedy av ai 
lable under either such action, shall be in addition to any 
other civil action or remedy otherwise applicable. 
(4) The in rem jurisdiction established under paragraph (2) shall be in addition to any other 
jurisdiction that otherwise exists, wh ethe
r in rem or in personam. 
(Amended Nov. 16, 1988, 102 Stat. 3946; Oct. 27, 1992, 106 Stat. 3567; Jan. 16, 1996, 109 Stat. 985; Aug. 
5, 1999, 113 Stat. 218; Nov. 29, 1999, 113 Stat. 1501A-545; Oct. 6, 2006, 120 Stat. 1730.) 
TITLE IX - INTERNATIONAL CONVENTIONS 
§ 44 (15 U.S.C. § 1126).  International conventions; register of marks  
(a) The Director shall keep a register of all marks communicated to him by the international 
bureaus provided for by the c on
ventions for the protection of industrial property, trademarks, trade 
and commercial names, and the repression of unfair competition to which the United States is or may become a party, and upon the payment of the fees required by such conventions and the fees required in this Act may place the marks so communicated upon such register.  This register 
shall show a facsimile of the mark or trade or commercial name; the name, citizenship, and address of the registrant; the number, date, and place of the first registration of the mark, including the dates on which application for such registration was filed and granted and the term of such registration; a list of goods or services to which the mark is applied as shown by the registration in the country of origin, and such other data as may be useful concerning the mark.  This register 
shall be a continuation of the register provided in section 1(a) of the Act of March 19, 1920. 
Note:  The United States is not at present a party to the parts of the international conventions 
providing for international bureaus for the registra t
ion or communication of trademarks. 
IP/N/1/USA/T/4 
Page 228 -227- January 6, 2012 (b) Any person whose country of origin is a party to any convention or treaty relating to 
trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent 
necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to 
the rights to which any owner of a mark is otherwise entitled by this chapter. 
Notes:  International Convention for the Protection of Industrial Property of 1883 (Paris); revised at 
Washington in 1911, 204 O.G. 1 0
11, July 21, 1914 (37 Stat. 1645; Treaty Series 579); at the 
Hague in 1925, 407 O.G. 298, June 9, 1931 (47 Stat. 1789; Treaty Series 834; 2 Bevans 524); at London in 1934, 613 O.G. 23, August 3, 1948 (53 Stat. 1748; Treaty Series 941; 3 Bevans 223); 
at Lisbon in 1958, 775 O.G. 321, February 13, 1962 (53 Stat. 1748; 13 U.S.T. 1; TIAS 9431); and 
at Stockholm July 14, 1967, 852 O.G. 511, July 16, 1968 (21 U.S.T. 1583; TIAS 6923).  A list of the member countries together with an indication of the latest Act by which each country is bound and the date from which each is considered to be bound appears annually (January issue) in “Industrial Property,” a monthly review of the World Intellectual Property Organization (WIPO), 
Geneva, Switzerland. 
General Inter-American Convention for Trade-Mark  and Commercial Protection (Pa
 n-American 
Trade-Mark Convention) of 1929, 46 Stat. 2907; Pan-American Trade-Mark Convention of 1923, 
44 Stat. 2494; Pan-American Trade-Mark Convention of 1910, 39 Stat. 1675. 
List of the States which are parties to the above conventions may be found in “Treaties in Force,” 
a list of treaties and oth er int
ernational agreements in force on the first day of January of each 
year, compiled annually by the Office of the Legal Adviser, U.S. Department of State. 
(c) No registration of a mark in the United States by a person described in subsection (b) of this 
section shall be granted until such ma rk has 
been registered in the country of origin of the 
applicant, unless the applicant alleges use in commerce.  For the purposes of this section, the country of origin of the applicant is the country in which he has a bona fide and effective industrial 
or commercial establishment, or if he has not such an establishment the country in which he is 
domiciled, or if he has not a domicile in any of the countries described in subsection (b) of this section, the country of which he is a national. 
(d) An application for registration of a mark under sections 1051, 1053, 1054, or 1091 of this title 
or under subsection (e) of this s e
ction filed by a person described in subsection (b) of this section 
who has previously duly filed an application for registration of the same mark in one of the countries described in subsection (b) of this section shall be accorded the same force and effect as would be accorded to the same application if filed in the United States on the same date on which the application was first filed in such foreign country:   Provided , That— 
(1) the application in the United States is filed within 6 months from the date on which the application was first filed in t he 
foreign country; 
(2) the application conforms as nearly as prac ticable to the requirements of this chapte r , 
including a statement that the applicant has a bona fide intention to use the mark in commerce; 
(3) the rights acquired by third parties before the date of the filing of the first application in the 
foreign country shall in no way be af 
fected by a registration obtained on an application filed 
under this subsection; 
(4) nothing in this subsection shall entitle the owner of a registration granted under this section 
to sue for acts committed prior to the date on which his mark was re
gistered in this country 
unless the registration is based on use in commerce. 
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Page 229 -228- January 6, 2012 In like manner and subject to the same conditions and requirements, the right provided in this 
section may be based upon a subsequent regularly filed application in the same foreign country, instead of the first filed foreign application:   Provided , That any foreign application filed prior to 
such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without 
having been laid open to public inspection and without leaving any rights outstanding, and has not 
served, nor thereafter shall serve, as a basis for claiming a right of priority. 
Note:   Section 3 of Public Law 333, 87th Cong., approved October 3, 1961, 75 Stat. 748, the 
provision which added the last paragraph above provid ed th 
at “This Act shall take effect on the 
date when the Convention of Paris for the Protection of Industrial Property of March 20, 1883, as revised at Lisbon October 31, 1958, comes into force with respect to the United States and is 
applied only to applications thereafter filed in the United States by persons entitled to the benefit 
of said convention, as revised at the time of such filing.”  This provision became effective Jan. 4, 1962. 
(e) A mark duly registered in the country of origin of the foreign applicant may be registered on the 
principal register if eligible, otherwise on the  
supplemental register herein provided.  Such 
applicant shall submit, within such time period as may be prescribed by the Director, a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant.  The application must state the applicant’s bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration. 
(f) The registration of a mark under the provisions of subsections (c), (d), and (e) of this section by 
a person described in subsection (b) of this  sect
ion shall be independent of the registration in the 
country of origin and the duration, validity, or transfer in the United States of such registration shall 
be governed by the provisions of this chapter. 
(g) Trade names or commercial names of persons described in subsection (b) of this section shall 
be protected without the obligat ion of filing or regis
tration whether or not they form parts of marks. 
(h) Any person designated in subsection (b) of this section as entitled to the benefits and subject 
to the provisions of this chapter shall be en
titled to effective protection against unfair competition, 
and the remedies provided herein for infringement of marks shall be available so far as they may 
be appropriate in repressing acts of unfair competition. 
(i) Citizens or residents of the United States shall have the same benefits as are granted by this 
section to persons described in subsection (b) of this secti
on. 
(Amended Oct. 3, 1961, 75 Stat. 748; Oct. 9, 1962, 76 Stat. 774; Nov. 16, 1988, 102 Stat. 3946; Oct. 30, 
1998, 112 Stat. 3068; Nov. 29, 1999, 113 Sta t. 1501A-583; Nov. 2, 2002, 116 Stat. 1908.) 
TITLE X - CONSTRUCTION AND DEFINITIONS 
§ 45 (15 U.S.C. § 1127).   
In the construction of this chapter, unless the contrary is plainly apparent from the context— 
United States.   The United States includes and embraces all territo r y which is under its jurisdiction 
and control. 
Commerce.  The word “commerce” means all commerce which may lawfully be re gulate d by 
Congress. 
IP/N/1/USA/T/4 
Page 230 -229- January 6, 2012 Principal Register, Supplemental Register .  The term “principal register” refers to the register 
provided for by sections 1051 to 1072 of this title, and the term “supplemental register” refers to 
the register provided for by sections 1091 to 1096 of this title. 
Person, juristic person.   The term “person” and any othe r word or term used to designate the 
applicant or other entitled to a benefit or privilege or rendered liable under the provisions of this 
Act includes a juristic person as well as a natural person.  The term “juristic person” includes a firm, corporation, union, association, or other organization capable of suing and being sued in a court of law.   
The term “person” also includes the United States, any agency or instrumentality thereof, or any 
individual, firm, or corpor ation 
acting for the United States and with the authorization and consent 
of the United States.  The United States, any agency or instrumentality thereof, and any individual, firm, or corporation acting for the United States and with the authorization and consent of the United States, shall be subject to the provisions of this chapter in the same manner and to the same extent as any nongovernmental entity.   
The term “person” also includes any State, any instrumentality of a State, and any officer or 
employee of a State or i nstru
mentality of a State acting in his or her official capacity.  Any State, 
and any such instrumentality, officer, or employee, shall be subject to the provisions of this 
chapter in the same manner and to the same extent as any non-governmental entity. 
Applicant, registrant.  The terms “applicant” and “registrant” embrace the legal representatives, 
predecessors, successors and assigns of such applicant  or 
registrant. 
Director .  The term “Director” means the Un der Secr etary of Commerce for Intellectual Property 
and Director of the United States Patent and Trademark Office. 
Related company .  The term “related company” means  any person whose use of a mark is 
controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used. 
Trade name, commercial name .  The terms “trade name” a nd “co
 mmercial name” mean any 
name used by a person to identify his or her business or vocation. Trademark .  The term “trademark” incl udes
  any word, name, symbol, or device, or any 
combination thereof— 
(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the 
princip al register established by this  c
hapter, 
to identify and distinguish his or her goods, including a unique product, from those manufactured 
or sold by others and to i
ndicate the source of the goods, even if that source is unknown. 
Service mark.  The term “service mark” means any word, name, symbol, or device, or any combination thereof— 
(1) used by a pe rson,
 or  
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this  c 
hapter, 
to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the servic es, even if t 
hat source is unknown.  
Titles, character names, and other distinctive features of radio or television programs may be 
IP/N/1/USA/T/4 
Page 231 -230- January 6, 2012 registered as service marks notwithstanding that they, or the programs, may advertise the goods 
of the sponsor. 
Certification mark .  The term “certification mark” means any word, n ame, symbol, or device, or 
any combination thereof— 
(1) used by a person other than its owner, or  (2) which its owner has a bona fide intention to permit a person other than the owner to use in 
commerce and files an application to register on the principal regist er establishe
d by this 
chapter, 
to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on th e goods or 
services 
was performed by members of a union or other organization. 
Collective mark .  The term “collective mark” mea ns a trademark or service mark— 
(1) used by the members of a cooperative, an association, or other collective group or organization, or 
(2) which such cooperative, associati on, or o
ther collective group or organization has a bona 
fide intention to use in commerce and applies to regist er o
n the principal register established 
by this chapter,  
and includes marks indicating membership in a union, an association, or other organization. Mark .  The term “mark” includes any trademark, service mark, collective mark, or certification 
mark. 
Use in commerce.   Th e te
rm “use in commerce” means t he b ona fide use of a mark in the 
ordinary course of trade, and not made merely to reserve a right in a mark.  For purposes of this 
chapter, a mark shall be deemed to be in use in commerce— 
(1) on goods when— 
(A) it is placed in any manner on the goods or their containers or the displays associated therewi th or on the tags or labels affixed thereto, or if the natur e of the go 
ods makes such 
placement impracticable, then on documents associated with the goods or their sale, and 
(B) the goods are sold or transported in commerce, and 
(2) on services when it is used or displayed in the sale or advertising of services and the 
services are rendered in commerce, or the services are rendered in mo
re than one State or in 
the United States and a foreign country and the person rendering the services is engaged in 
commerce in connection with the services. 
Abandonment of mark .  A mark shall be deemed to be “abando ned ” if either of the following 
occurs: 
(1) When its use has been discontinued with intent not to resume such use.  Intent not to 
resume may be inferred from circu mstances.  No nuse for 3 c onsecuti
ve years shall be prima 
facie evidence of abandonment.  “Use” of a mark means the bona fide use of such mark made 
in the ordinary course of trade, and not made merely to reserve a right in a mark. 
(2) When any course of conduct of the owner, including acts of omission as well as 
commission, causes the mark to become the generic name fo r the g
oods or services on or in 
connection with which it is used or otherwise to lose its significance as a mark.  Purchaser motivation shall not be a test for determining abandonment under this paragraph. 
IP/N/1/USA/T/4 
Page 232 -231- January 6, 2012 Colorable imitation.  The term “colorable imitation” includes any mark which so resembles a 
registered mark as to be likely to cause confusion or mistake or to deceive. 
Registered mark .  The term “registered mark” me ans a mark registered in the United States 
Patent and Trademark Office under this chapter or under the Act of March 3, 1881, or the Act of 
February 20, 1905, or the Act of Ma rch 19, 1920.  The phrase “marks registered in the Patent and 
Trademark Office” means registered marks. 
Prior acts .  The term “Act of March 3, 1881,” “Act of February 20, 1905,” or “Act of March 19, 
1920,” means the resp ec
tive Act as amended. 
Counterfeit .  A “counterfeit” is a spurious mark which  is identica l with, or substantially 
indistinguishable from, a registered mark. 
Domain name.  The term “domain name” means any al phan umeric designation which is 
registered with or assigned by any domain name registrar, domain name registry, or other domain 
name registration authority as part of an electronic address on the Internet. 
Internet .  The term “Internet” has the meaning given that term in section 230(f)(1) of the 
Communications Act of 1
934 (47 U.S.C. 230(f)(1)). 
Singular and plural .  Words used in the singular in clude t he plural and vice versa. 
Intent of Chapter.  The intent of this chapter is to reg ul ate commerce within the control of 
Congress by making actionable the deceptive and misleading use of marks in such commerce; to 
protect registered marks used in such commerce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent 
fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or 
colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trademarks, trade names, and unfair competition entered into between the United States and foreign nations. 
(Amended Oct. 9, 1962, 76 Stat. 774; Jan. 2, 1975, 88 St at. 1949; Nov. 8, 1984, 98 Stat. 3335, Nov. 16, 
1988, 102 Stat. 3946; Oct. 27, 1992, 106 Stat. 3568; Dec. 8, 1994, 108 Stat. 4981; Jan. 16, 1996, 109 Stat. 
986; Aug. 5, 1999, 113 Stat. 219-220; Nov. 29, 1999,  113 Stat. 1501A-550, 1501A-583; Oct. 6, 2006, 120 
Stat. 1730.) 
TITLE XI - REPEAL OF PREVIOUS ACTS 
§ 46(a) (15 U.S.C. § 1051 note).  Time of taking effect - Repeal of prior acts 
This Act shall be in force and take effect one year from its enactment, but except as otherwise 
herein specifically provided shall 
not affect any suit, proceeding, or appeal then pending.  All Acts 
and parts of Acts inconsistent herewith are hereby repealed effective one year from the enactment 
hereof, including the following Acts insofar as they are inconsistent herewith: The Act of Congress approved March 3, 1881, entitled “An Act to authorize the registration of trademarks and protect the same”; the Act approved August 5, 1882, entitled “An Act relating to the registration of trademarks”; the Act of February 20, 1905 (U.S.C., title 15, secs. 81 to 109, inclusive), entitled “An 
Act to authorize the registration of trademarks used in commerce with foreign nations or among 
the several States or with Indian tribes, and to protect the same”, and the amendments thereto by the Acts of May 4, 1906 (U.S.C., title 15, secs. 131 and 132; 34 Stat. 169), March 2, 1907 (34 Stat. 1251, 1252), February 18, 1909 (35 Stat . 627, 628), February 18, 1911 (36 Stat. 918), 
January 8, 1913 (37 Stat. 649), June 7, 1924 (43 Stat. 647), March 4, 1925 (43 Stat. 1268, 1269), 
April 11, 1930 (46 Stat. 155), June 10, 1938 (Public, Numbered 586, Seventy-fifth Congress, ch. 
332, third session); the Act of March 19, 1920 (U.S.C., title 15, secs. 121 to 128, inclusive), 
IP/N/1/USA/T/4 
Page 233 -232- January 6, 2012 entitled “an Act to give effect to certain provisions of the convention for the protection of 
trademarks and commercial names made and signed in the city of Buenos Aires, in the Argentine Republic, August 20, 1910, and for other purposes”, and the amendments thereto, including the Act of June 10, 1938 (Public, Numbered 586, Seventy-fifth Congress, ch. 332, third session):   
Provided, That this repeal shall not affect the validity of registrations granted or applied for under any of said Acts prior to the effective date of this Act, or rights or remedies thereunder except as provided in sections 8, 12, 14, 15, and 47 of this Act; but nothing contained in this Act shall be construed as limiting, restricting, modifying, or repealing any statute in force on the effective date of this Act which does not relate to trademarks, or as restricting or increasing the authority of any Federal departments or regulatory agency except as  may be specifically provided in this Act. 
§ 46(b) (15 U.S.C. § 1051 note).  Existing registrations under prior acts 
Acts of 1881 and 1905 .  Registrations now existing under t h
 e Act of March 3, 1881, or the Act of 
February 20, 1905, shall continue in full force and effect for the unexpired terms thereof and may 
be renewed under the provisions of section 9 of this Act.  Such registrations and the renewals 
thereof shall be subject to and shall be entitled to the benefits of the provisions of this Act to the same extent and with the same force and effect as though registered on the principal register established by this Act except as limited in sections 8, 12, 14, and 15 of this Act.  Marks registered under the “10-year proviso” of section 5 of the Act of February 20, 1905, as amended, shall be deemed to have become distinctive of the registrant’s goods in commerce under paragraph (f) of 
section 2 of this Act and may be renewed under section 9 hereof as marks coming within said 
paragraph. 
Act of 1920.  Registrations now existing under the Act of March 19, 1920, shall expire 6 months 
after the effective date of this Ac t, o
r twenty years from the dates of their registrations, whichever 
date is later.  Such registrations shall be subject to and entitled to the benefits of the provisions of 
this Act relating to marks registered on the supplemental register established by this Act, and may 
not be renewed unless renewal is required to support foreign registrations.  In that event renewal may be effected on the supplemental register under the provisions of section 9 of this Act. 
Subject to registration under this Act .  Marks registered under previ ous Ac
 ts may, if eligible, also 
be registered under this Act. 
§ 47(a) (15 U.S.C. § 1051 note).  Applications pending on effective date of Act 
All applications for registration pending in the Patent and Trademark Office at the effective date of 
this Act may be amended, if pract i
cable, to bring them under the provisions of this Act.  The 
prosecution of such applications so amended and the grant of registrations thereon shall be 
proceeded with in accordance with the provisions of this Act.  If such amendments are not made, 
the prosecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued in force to this extent for this purpose only, notwithstanding the foregoing general repeal thereof. 
§ 47(b) (15 U.S.C. § 1051 note).  Appeals pending on effective date of Act 
In any case in which an appeal is pending before the United States Court of Customs and Patent 
Appeals or any United States Circuit Cou r
t of Appeals or the United States Court of Appeals for 
the District of Columbia or the United States Supreme Court at the effective date of this Act, the 
court, if it be of the opinion that the provisions of this Act are applicable to the subject matter of the 
appeal, may apply such provision or may remand the case to the Director or to the district court 
IP/N/1/USA/T/4 
Page 234 -233- January 6, 2012 for the taking of additional evidence or a new trial or for reconsideration of the decision on the 
record as made, as the appellate court may deem proper. 
(Amended Nov. 29, 1999, 113 Stat. 1501A-583) 
§ 48 (15 U.S.C. § 1051 note).  Prior acts not repealed 
Section 4 of the Act of January 5, 1905 (U.S.C., title 36, section 4), as amended, entitled “An Act 
to incorp orate the National Red Cros s,” and secti
on 7 of the Act of June 15, 1916 (U.S.C., title 36, 
section 27), entitled “An Act to incorporate the Boy Scouts of America, and for other purposes,” and the Act of June 20, 1936 (U.S.C., title 22, section 248), entitled “An Act to prohibit the 
commercial use of the coat of arms of the Swiss Confederation,” are not repealed or affected by 
this Act. 
Note:  The first and third of the laws referred to in this section have been repealed and replaced 
by §§ 706 and 708, respectively , of 
 U.S.C., Title 18, Crimes and Criminal Procedure, enacted 
June 25, 1948, effective September 1, 1948. 
§ 49 (15 U.S.C. § 1051 note).  Preservation of existing rights 
Nothing herein shall adversely affect the rights or the enforcement of rights in marks acquired in 
good faith prior to the eff
ective date of this Act. 
§ 50 (15 U.S.C. § 1051 note).  Severability 
If any provision of this Act or the application of such provision to any person or circumstance is 
held invalid, the remaind er of
 the Act shall not be affected thereby. 
§ 51 (15 U.S.C. § 1058 note).  Applications pending on effective date of the Trademark Law 
Revision Act of 1988 
All certificates of re
gistration based upon applications for registration pending in the Patent and 
Trademark Office on t he
 effective date of the Trademark Law Revision Act of 1988 shall remain in 
force for a period of 10 years. 
TITLE XII—THE MADRID PROTOCOL  
Sec. 60 (15 U.S.C. § 1141).  Definitions 
In this subchapter:  
(1) Basic ap plicatio n.—The term ‘basic applica tion’ means the application for the registration of a 
mark that has been filed with an Office of a Contracting Party and that constitutes the basis for an 
application for the international registration of that mark.   
(2) Basic registration .—The term ‘basic registration’ mea ns the registration of a mark that has 
been granted by an Office of a Contracting Party and that constitutes the basis for an application 
for the international registration of that mark.  
(3) Contracting party .—The term ‘Contracting Party’ means  any country or inter-governmental 
organization that is a party to the Madrid Protocol.  
IP/N/1/USA/T/4 
Page 235 -234- January 6, 2012 (4) Date of recordal .—The term ‘date of recordal’ means the date on which a request for extension 
of protection, filed after an international registration is granted, is recorded on the International 
Register.  
(5) Declaration of bona fide intention to use  th e mark in commerce .—The term ‘declaration of 
bona fide intention to use the mark in commerce’ means a declaration that is signed by the 
applicant for, or holder of, an international registra tion who is seeking extension of protection of a 
mark to the United States and that contains a statement that—  
(A) the applicant or holder has a bona fide intention to use the mark in commerce;  
(B) the person making the declaration believes himself or herself, or the firm, corporation, or 
association in whose behalf he or she makes the declara tion
, to be entitled to use the mark in 
commerce; and  
(C) no other person, firm, corporation, or association, to the best of his or her knowledge and 
belief, has the right to use such mark
 in commerce either in the identical form of the mark or in 
such near resemblance to the mark as to be likely, when used on or in connection with the goods of such other person, firm, corporation, or association, to cause confusion, mistake, or 
deception.  
(6) Extension of protection .—The term ‘extension of protec ti
 on’ means the protection resulting 
from an international registration that extends to the United States at the request of the holder of 
the international registration, in accordance with the Madrid Protocol.   
(7) Holder of an international registration.—A ‘holder’ of an international registration is the natural 
or juristic person in whose name the internatio nal re
gistration is recorded on the International 
Register.  (8) International application .—The term ‘internationa l a
 pplication’ means an application for 
international registration that is filed under the Madrid Protocol.  (9) International bureau .—The term ‘International Bureau’ me ans the I
 nternational Bureau of the 
World Intellectual Property Organization.  
(10) International register.—The term ‘International Register’ means the official collection of data 
concerning international registrations maintaine d by t
he International Bureau that the Madrid 
Protocol or its implementing regulations require or permit to be recorded.  
(11) International registration .—The term ‘internationa l regis tration’ means the registration of a 
mark granted under the Madrid Protocol.  
(12) International registration date .—The term ‘international registra tio n date’ means the date 
assigned to the international registration by the International Bureau.  
(13) Madrid protocol .—The term ‘Madrid Prot ocol’ means the Protocol Relating to the Madrid 
Agreement Concerning the International Registration of Marks, adopted at Madrid, Spain, on June 
27, 1989.   
(14) Notification of refusal.—The term ‘notification of refusal’ means the notice sent by the United 
States Patent and Trademark Office to the Int erna
tional Bureau declaring that an extension of 
protection cannot be granted.  
(15) Office of a contracting party .—The term ‘Offic e of a Contracting Party’ means—  
(A) the office, or governmental entity, of a Contracting Party that is responsible for the 
registration of marks; or  
IP/N/1/USA/T/4 
Page 236 -235- January 6, 2012 (B) the common office, or governmental entity, of more than 1 Contracting Party that is 
responsible for the registration of marks and is so recognized by the International Bureau.  
(16) Office of origin .—The term ‘office of origin’ me ans th e Office of a Contracting Party with which 
a basic application was filed or by which a basic registration was granted.  
(17) Opposition period .—The term ‘opposition period’ means the ti me allowed for filing a n 
opposition in the United States Patent and Trademark Office, including any extension of time 
granted under section 13.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1913] 
Sec. 61 (15 U.S.C. § 1141a).  International applications based on United States applications or registrations  
(a) In General .—The owner of a basic applicat io
 n pending before the United States Patent and 
Trademark Office, or the owner of a basic registration granted by the United States Patent and 
Trademark Office may file an international application by submitting to the United States Patent and Trademark Office a written application in such form, together with such fees, as may be 
prescribed by the Director.   
(b) Qualified Owners .—A qualified owner, und
 er subsection (a) of this section, shall—  
(1) be a national of the United States;  (2) be domiciled in the United States; or  (3) have a real and effective industrial or commercial establishment in the United States.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1915] 
Sec. 62 (15 U.S.C. § 1141b).  Certification of the international application  
(a) Certification Procedure .—Upon the filing of an application for international registrati on an d 
payment of the prescribed fees, the Director shall examine the international application for the 
purpose of certifying that the information contained in the international application corresponds to 
the information contained in the basic application or basic registration at the time of the 
certification.   
(b) Transmittal .—Upon exam i nation and certification of the international application, the Director 
shall transmit the international application to the International Bureau.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1915] 
Sec. 63 (15 U.S.C. § 1141c).  Restriction, abandonment, cancellation, or expiration of a 
basic application or basic registration   
With respect to an international application transmitted to the International Bureau under section 
1141b of this title, the Di recto
r shall notify the International Bureau whenever the basic application 
or basic registration which is the basis for the international application has been restricted, 
abandoned, or canceled, or has expired, with respect to some or all of the goods and services 
listed in the international registration—  
IP/N/1/USA/T/4 
Page 237 -236- January 6, 2012 (1) within 5 years after the international registration date; or  
(2) more than 5 years after the international registration date if the restriction, abandonment, 
or cancellation  o
f the basic application or basic registration resulted from an action that began 
before the end of that 5-year period.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1915] 
Sec. 64 (15 U.S.C. § 1141d). Request for extension of protection subsequent to International registration  
The holder of an international registration that is based upon a basic application filed with the 
United States Patent and Trademark Office o r 
 a basic registration granted by the Patent and 
Trademark Office may request an extension of protec tion of its international registration by filing 
such a request—  
(1) directly with the International Bureau; or  
(2) with the United States Patent and Trademark Office for transmittal to the International 
Bureau, if the request is in such form, and contains such transmittal fee, as may be pre scribe
d 
by the Director.   
[Added Nov. 2, 2003, 116 Stat. 1758, 1916] 
Sec. 65 (15 U.S.C. § 1141e).  Extension of prot ection of an international registration to the 
United States under the Madrid Protocol   
(a) In General.—Subject to the provisions of section 68, the holder of an international registration 
shall be entitled to the benefits of  e
xtension of protection of that international registration to the 
United States to the extent necessary to give effect to any provision of the Madrid Protocol.  
(b) If the United States Is Office of Origin.— Wh ere the United States Patent and Trademark Office 
is the office of origin for a trademark application or registration, any international registration 
based on such application or registration cannot be used to obtain the benefits of the Madrid 
Protocol in the United States.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1916] 
Sec. 66 (15 U.S.C. § 1141f).  Effect of f iling a request for extension of protection of an 
international registration to the United States  
(a) Requirement for Request for Extension of Protection.—A request for extension of protection of 
an international registration to the United States that the Int erna
tional Bureau transmits to the 
United States Patent and Trademark Office shall be deemed to be properly filed in the United 
States if such request, when received by the International Bureau, has attached to it a declaration of bona fide intention to use the mark in commerce that is verified by the applicant for, or holder of, the international registration.  
(b) Effect of Proper Filing .—Unless extension of protection is refused und er section 6
 8, the proper 
filing of the request for extension of protection under subsection (a) shall constitute constructive use of the mark, conferring the same rights as those specified in section 7(c), as of the earliest of the following:  
IP/N/1/USA/T/4 
Page 238 -237- January 6, 2012 (1) The international registration date, if the request for extension of protection was filed in the 
international application.   
(2) The date of recordal of the request for extension of protection, if the request for extension 
of protection was made after the
 international registration date.  
(3) The date of priority claimed pursuant to section 1141g of this title.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1916] 
Sec. 67 (15 U.S.C. § 1141g).  Right of priority  for request for extension of protection to the 
United States.  
The holder of an international registration with a request for an extension of protection to the 
United States shall be entitled to clai m a d
ate of priority based on a right of priority within the 
meaning of Article 4 of the Paris Convention for the Protection of Industrial Property if—  
(1) the request for extension of protection contains a claim of priority; and  (2) the date of international registration or the date of the recordal of the request for extension of 
protection to the United Stat
es is not later than 6 months after the date of the first regular national 
filing (within the meaning of Article 4(A)(3) of the Paris Convention for the Protection of Industrial Property) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention for the Protection of Industrial Property).  
[Added Nov. 2, 2003, 116 Stat. 1758, 1917] 
Sec. 68 (15 U.S.C. § 1141h).  Examination of and opposition to request for extension of protection; notification of refusal   
(a) Examination and Opposition .— 
(1) A request for ex t
ension of protection described in section 1141f(a) of this title shall be 
examined as an applica tion fo
r registration on the Principal Register under this Act, and if on 
such examination it appears that the applicant is entitled to extension of protection under this 
title, the Director shall cause the mark to be published in the Official Gazette of the United 
States Patent and Trademark Office.  
(2) Subject to the provisions of subsection (c) of this section, a request for extension of 
protection under this title shall be su b
ject to opposition under section 1063 of this title.  
(3) Extension of protection shall not be refused on the ground that the mark has not been used 
in commerce.  
(4) Extensio n of p
rotection shall be refused to any mark not registrable on the Principal 
Register.  
(b) Notification of Ref us
al.—If, a request for ex t ension of protection is refused under subsection 
(a) of this section, the Director shall declare in a notification of refusal (as provided in subsection 
(c) of this section) that the extension of protection cannot be granted, together with a statement of 
all grounds on which the refusal was based.  
(c) Notice to International Bureau .— 
IP/N/1/USA/T/4 
Page 239 -238- January 6, 2012 (1) Within 18 months after the date on which the International Bureau transmits to the Patent 
and Trademark Office a notification of a request for extension of protection, the Director shall transmit to the International Bureau any of the following that applies to such request:  
(A) A notification of refusal based on an examination of the request for extension of 
protection.  
(B) A notification of refusal based on the filing of an oppositi o
n to the request.  
(C) A notification of the possibility that an oppos i
tion to the request may be filed after the 
end of that 18-month period.   
(2) If the Director has sent a notifica t
ion of the possibility of opposition under paragraph (1)(C), 
the Director shall, if applicable, transmit to the Internat iona
l Bureau a notification of refusal on 
the basis of the opposition, together with a statement of all the grounds for the opposition, 
within 7 months after the beginning of the opposition period or within 1 month after the end of the opposition period, whichever is earlier.  
(3) If a notification of refusal of a request for extension of protection is transmitted under 
paragraph (1) or (2), no grounds for refusal of such requ est o 
ther than those set forth in such 
notification may be transmitted to the International Bureau by the Director after the expiration of the time periods set forth in paragraph (1) or (2), as the case may be.  
(4) If a notification specified in paragraph (1) or  (2) is not sent to the International Bureau 
within the time pe riod 
 set forth in such paragraph, with respect to a request for extension of 
protection, the request for extension of protection shall not be refused and the Director shall 
issue a certificate of extension of protection pursuant to the request.  
(d) Designation of Agent for Service of Process .—In responding to a notification of refusal with 
respec t to
 a mark, the holder of the international registration of the mark may designate, by a 
document filed in the United States Patent and Trademark Office, the name and address of a 
person residing in the United States on whom notices or process in proceedings affecting the mark may be served.  Such notices or process may be served upon the person designated by 
leaving with that person, or mailing to that person, a copy thereof at the address specified in the 
last designation filed. If the person designated cannot be found at the address given in the last designation, or if the holder does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person residing in the United States for service of notices or process in proceedings affecting the mark, the notice or process may be served on 
the Director.   
[Added Nov. 2, 2003, 116 Stat. 1758, 1917] 
Sec. 69 (15 U.S.C. § 1141i).  Eff ect of extension of protection.  
(a) Issuance of Extension of Protection .—Unless a request for ext ensio n of protection is refused 
under section 1141h of this title, the Director shall issue a certificate of extension of protection pursuant to the request and shall cause notice of such certificate of extension of protection to be 
published in the Official Gazette of the United States Patent and Trademark Office.  
(b) Effect of Extension of Protection.—From the date on which a certificate of extension of 
protection is issued under subsection (a) of t 
his section—  
(1) such extension of protection shall have the same effect and validity as a registration on the 
Principal Register; and  
IP/N/1/USA/T/4 
Page 240 -239- January 6, 2012 (2) the holder of the international registration shall have the same rights and remedies as the 
owner of a registration on the Principal Register.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1918] 
Sec. 70 (15 U.S.C. § 1141j).  Dependence of extension of protection to the United States on the underlying international registration   
(a) Effect of Cancellation of International Registration .—If the International Bu rea
 u notifies the 
United States Patent and Trademark Office of the cancellation of an international registration with 
respect to some or all of the goods and services listed in the international registration, the Director shall cancel any extension of protection to the United States with respect to such goods and 
services as of the date on which the international registration was canceled.   
(b) Effect of Failure To Renew International Registration .—If the In terna
 tional Bureau does not 
renew an international registration, the corresponding extension of protection to the United States 
shall cease to be valid as of the date of the expiration of the international registration.  
(c) Transformation of an Extension of Protection Into a United States Application .—The holder  of  
an international registration canceled in whole or in part by the International Bureau at the request 
of the office of origin, under article 6(4) of the Madrid Protocol, may file an application, under section 1051 or 1126 of this title, for the registration of the same mark for any of the goods and services to which the cancellation applies that were covered by an extension of protection to the United States based on that international registration.  Such an application shall be treated as if it 
had been filed on the international registration date or the date of recordal of the request for 
extension of protection with the International Bureau, whichever date applies, and, if the extension of protection enjoyed priority under section 1141g of this title, shall enjoy the same priority. Such an application shall be entitled to the benefits conferred by this subsection only if the application is filed not later than 3 months after the date on which the international registration was canceled, in whole or in part, and only if the application complies with all the requirements of this Act which 
apply to any application filed pursuant to section 1051 or 1126 of this title.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1918] 
Sec. 71 (15 U.S.C. § 1141k).  Duration, affidavits and fees  
(a) Time Periods for Required Affidavits.   Each extension of protection for which a certi ficate has 
been issued under section 69 shall remain in force for the term of the international registration 
upon which it is based, except that the extension of protection of any mark shall be canceled by the Director unless the holder of the international registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods: 
(1) Within the 1-year period immediately preceding the expiration of 6 years following the date 
of issuance of the certificate of  e
xtension of protection. 
(2) Within the 1-year period immediately preceding the expiration of 10 years following the 
date of issuance of the certificate of e x
tension of protection, and each successive 10-year 
period following the date of issuance of the certificate of extension of protection. 
(3) The holder may file the affidavit required under this section within a grace period of 6 
months after the end of the applicable time peri o
d established in paragraph (1) or (2), together 
IP/N/1/USA/T/4 
Page 241 -240- January 6, 2012 with the fee described in subsection (b) and the additional grace period surcharge prescribed 
by the Director. 
(b) Requirements for Affidavit.  The affidavit referred to in subsection (a ) shall— 
(1)(A) state that the mark is in use in commerce; 
(B) set forth the goods and services recited in the extension of protection on or in connection with which the mark is in use in comme r 
ce; 
(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be re quire 
d by the Director; and 
(D) be accompanied by the fee prescribed by the Director; or 
(2)(A) set forth the goods and services recited in the extension of protection on or in 
connecti on with which the mark is not in use in c ommerce
; 
(B) include a showing that any nonuse is due to special circumstances which excuse 
such nonuse and is not due to any intention to  ab
andon the mark; and 
(C) be accompanied by the fee prescribed by the Director. 
(c) Deficient Affidavit.  If any submission filed within the period se t fo rth in subsection (a) is 
deficient, including that the affidavit was not filed in the name of the holder of the international registration, the deficiency may be corrected after the statutory time period, within the time prescribed after notification of the deficiency. Such submission shall be accompanied by the additional deficiency surcharge prescribed by the Director.  
(d) Notice of Requirement.  Special notice of the requirement for such affidavit shall be attached to 
each certificate of extens ion of
 protection. 
(e) Notification of Acceptance or Refusal.   The Director shall notify the  h older of the international 
registration who files any affidavit required by this section of the Director's acceptance or refusal 
thereof and, in the case of a refusal, the reasons therefor. 
(f) Designation of Resident for Service of Process and Notices.   If the holder of the international 
registrati on 
of the mark is not domiciled in the United States, the holder may designate, by a 
document filed in the United States Patent and Trademark Office, the name and address of a 
person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the last designated 
address, or if the holder does not designate by a document filed in the United States Patent and 
Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director. 
(Amended Mar. 17, 2010, 124 Stat. 66.) 
Sec. 72 (15 U.S.C. § 1141l ).  Assignment of an extension of protection   
An extension of protection may be assigned, together with the goodwill associated with the mark, only to a person who is a national of, is domiciled in, or has a bona fi de an 
d effective industrial or 
IP/N/1/USA/T/4 
Page 242 -241- January 6, 2012 commercial establishment either in a country that is a Contracting Party or in a country that is a 
member of an intergovernmental organization that is a Contracting Party.   
[Added Nov. 2, 2003, 116 Stat. 1758, 1920] 
Sec. 73 (15 U.S.C. § 1141m).  Incontestability 
The period of continuous use prescribed under section 1065 of this title for a mark covered by an 
extension of protection issued under this title may begin 
no earlier than the date on which the 
Director issues the certificate of the extension of protection under section 1141i of this title, except as provided in section 1141n of this title.   
[Added Nov. 2, 2003, 116 Stat. 1758, 1920] 
Sec. 74 (15 U.S.C. § 1141n).  Rights of extension of protection  
When a United States registration and a subsequently issued certificate of extension of protection 
to the United States are  owned
 by the same person, identify the same mark, and list the same 
goods or services, the extension of protection shall have the same rights that accrued to the 
registration prior to issuance of the certificate of extension of protection.  
[Added Nov. 2, 2003, 116 Stat. 1758, 1920] 
Sec. 13403 (15 U.S.C. § 1141 note).  Effective date  
This subtitle and the amendments made by this subtitle shall take effect on the later of—  
(1) the date on which the Madrid Protocol (as defined in section 60 of the Trademark Act of 
1946) enters into force wi th res
pect to the United States; or  
(2) the date occurring 1 year after the date of enactment of this Act. 
[Added Nov. 2, 2003, 116 Stat. 1758, 1920] 
IP/N/1/USA/T/4 
Page 243IP/N/1/USA/T/4 
Page 244 -243- January 6, 2012  
UNITED STATES CODE, TITLE 35, PATENTS 
PART 1-UNITED STATES PATENT AND TRADEMARK OFFICE 
CHAPTER 1-ESTABLISHMENT, OFFICE RS AND EMPLOYEES, FUNCTIONS 
35 U.S.C. § 1.  Establi s
hment.  
(a) ESTABLISHMENT—The United States Patent and Trademark Office is established as an 
agenc y of the United  States, wit
hin the Department of Commerce.  In carrying out its functions, 
the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its 
budget allocations and expenditures, personnel decisions and processes, procurements, and 
other administrative and management functions in accordance with this title and applicable provisions of law.  Those operations designed to grant and issue patents and those operations which are designed to facilitate the registration  of trademarks shall be treated as separate 
operating units within the Office. 
(b) OFFICES—The United States Patent and Trademark Office shall maintain its principal office in 
the metropolitan Washington, D. C.,
 area, for the service of process and papers and for the 
purpose of carrying out its functions.  The United States Patent and Trademark Office shall be 
deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law.  The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it 
considers necessary and appropriate in the conduct of its business. 
(c) REFERENCE—For purposes of this title, the United States Patent and Trademark Office shall 
also be referred to as the “Office” a nd
 the “Patent and Trademark Office.” 
(July 19, 1952, ch. 950, § 1, 66 Stat. 792; Jan. 2, 197 5, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-572.) 
35 U.S.C. § 2.  Powers and duties. 
(a) IN GENERAL—The United States Patent and Trademark Office, subject to the policy direction 
of the Secretary of Comme r
ce— 
(1) shall be responsible for the granting and issuing of patents and the registration of 
trademarks; and 
(2) shall be responsible for disse min
ating to the public information with respect to patents and 
trademarks. 
(b) SP EC
IFIC POWERS—The Office— 
(1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which 
letters patent, certificates  of 
trademark registrations, and papers issued by the Office shall be 
authenticated; 
(2) may establish regulations, not inconsistent with law, which— 
(A) shall govern the conduct of proceedings in the Office; 
IP/N/1/USA/T/4 
Page 245 -244- January 6, 2012 (B) shall be made in accordance with section 553 of title 5; 
(C) shall facilitate and expedite the processing of patent applications, particularly those 
which can be filed, stored, processed, searched,  and re
trieved electronically, subject to the 
provisions of section 122 relating to the confidential status of applications; 
(D) may govern the recognition and conduct of agents, attorneys, or other persons 
representing applicants or other part ies be
fore the Office, and may require them, before 
being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office; 
(E) shall recognize the public interest in continuing to safeguard broad access to the 
United States patent system th roug
h the reduced fee structure for small entities under 
section 41(h)(1);  
(F) provide for the development of a performance-based process that includes quantitative 
and qualitative measures and standards for e v
aluating cost-effectiveness and is consistent 
with the principles of impartiality and competitiveness; and 
(G) may, subject to any conditions prescribed by the Director and at the request of the 
patent applicant, provide fo r priori
tization of examination of applications for products, 
processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such 
prioritization, notwithstanding section 41 or any other provision of law; 
(3) may acquire, construct, purchase, lease, hold, manage, operate, improve, alter, and 
renovate any real, personal, or mixe d pro 
perty, or any interest therein, as it considers 
necessary to carry out its functions; 
(4)(A) may make such purchases, contracts for the construction, maintenance, or 
management and operation of facilities, and contracts for sup plies or se
rvices, without regard 
to the  provisions of subtitle I and chapter 33 of title 40, ti tle III of the Federal Property and 
Administrative Services Act of 1949 (41 U.S.C. 251 et seq.), and the McKinney-Vento 
Homeless Assistance Act (42 U.S.C. 11301 et seq.); and 
(B) may enter into and perform such purchases and contracts for printing services, including the process of composition, plate m 
aking, presswork, silk screen processes, 
binding, microform, and the products of such processes, as it considers necessary to carry out the functions of the Office, without regard to sections 501 through 517 and 1101 
through 1123 of title 44; 
(5) may use, with their consent, services, equipment, personnel, and facilities of other departments, agencies, and instrumentalities o f 
the Federal Government, on a reimbursable 
basis, and cooperate with such other departments, agencies, and instrumentalities in the 
establishment and use of services, equipment, and facilities of the Office; 
(6) may, when the Director determines that it is practicable, efficient, and cost-effective to do 
so, use, with the consent of the United States and the agency,  instrumentality, Patent and 
Trademark Off
ice, or international organization concerned, the services, records, facilities, or 
personnel of any State or local government agency or instrumentality or foreign patent and 
trademark office or international organization to perform functions on its behalf; 
IP/N/1/USA/T/4 
Page 246 -245- January 6, 2012 (7) may retain and use all of its revenues and receipts, including revenues from the sale, 
lease, or disposal of any real, personal, or mixed property, or any interest therein, of the Office; 
(8) shall advise the President, through the Secretary of Commerce, on national and certain 
international intellectual propert y 
 policy issues; 
(9) shall advise Federal departments and agencies on matters of intellectual property policy in 
the United States and intellectual p r
operty protection in other countries; 
(10) shall provide guidance, as appropriate, with respect to proposals by agencies to assist foreign governments and internat i 
onal intergovernmental organizations on matters of 
intellectual property protection; 
(11) may conduct programs, studies, or exchanges  of items or services regarding domesti c  
and international intellectual property law and the effectiveness of intellectual property 
protection domestically and throug hout the world, and the Office is authorized to expend funds 
to cover the subsistence expenses and travel-related expenses, including per diem, lodging costs, and transportation costs, of persons attending such programs who are not Federal 
employees; 
(12)(A) shall advise the Secretary of Comme rce on programs and studies rel ating 
 to 
intellectual property policy that are conducted, or authorized to be conducted, cooperatively 
with foreign intellectual property offices and international intergovernmental organizations; and 
(B) may conduct programs and studies described in subparagraph (A); and 
(13)(A) in coordination with the Department of State, may conduct programs and studies cooperatively with foreign int ellectu 
al property offices and international intergovernmental 
organizations; and 
(B) with the concurrence of the Secretary of State, may authorize the transfer of not to exceed $100,000 in any year  to t 
he Department of State for the purpose of making special 
payments to international intergovernmental organizations for studies and programs for 
advancing international cooperation concerning patents, trademarks, and other matters. 
(c) CLARIFICATION OF SPECIFIC POWERS—(1) The special payments under subsection 
(b)(13)(B) shall be in addition to an y
 other payments or contributions to international organizations 
described in subsection (b)(13)(B) and shall not be subject to any limitations imposed by law on 
the amounts of such other payments or contributions by the United States Government. 
(2) Nothing in subsection (b) shall derogate from  the duties of the Secretary of State or from 
the duties of
 the United States Trade Representative as set forth in section 141 of the Trade 
Act of 1974 (19 U.S.C. 2171). 
(3) Nothing in subsection (b) shall derogate from the duties and functions of the Register of 
Copyrights or otherwise alter current
 authorities relating to copyright matters. 
(4) In exercising the Director’s powers under paragraphs (3) and (4)(A) of subsection (b), the 
Director shall consult with the Ad mini
strator of General Services. 
(5) In exercising the Director’s powers and duties under this section, the Director shall consult 
with the Re gist
er of Copyrights on all copyright and related matters. 
(d) CONSTRUCTION—Nothing in this section shall be construed to nullify, void, cancel, or 
interrupt any pending requ est-f
or-proposal let or contract issued by the General Services 
IP/N/1/USA/T/4 
Page 247 -246- January 6, 2012 Administration for the specific purpose of relocating or leasing space to the United States Patent 
and Trademark Office. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 792; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-573; 
Nov. 2, 2002, 116 Stat. 1758; Sept. 16, 2011, 125 Stat. 335, 337-338.) 
35 U.S.C. § 3. Officers and employees. 
(a) UNDER SECRETARY AND DIRECTOR—(1) IN GENERAL- The powers and duties of the 
United States Patent and Trademark Office shall be vest ed i
n an Under Secretary of Commerce 
for Intellectual Property and Director of the United States Patent and Trademark Office (in this title 
referred to as the “Director”), who shall be a citizen of the United States and who shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law. 
(2) DUTIES— 
(A) IN GENERAL—The Director shall be responsible for providing policy direction and management supervision for the Office and for t he
 issuance of patents and the registration 
of trademarks. The Director shall perform these duties in a fair, impartial, and equitable manner. 
(B) CONSULTING WITH THE PUBLIC ADVI SORY COMMITTEES—The Director shall 
consult wit h 
 the Patent Public Advisory Committee established in section 5 on a regular 
basis on matters relating to the patent operations of the Office, shall consult with the 
Trademark Public Advisory Committee established in section 5 on a regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective Public Advisory Committee before submitting budgetary proposals to the Office 
of Management and Budget or changing or proposing to change patent or trademark user 
fees or patent or trademark regulations whic h are subject to the requirement to provide 
notice and opportunity for public comment under section 553 of title 5, as the case may be. 
(3) OATH—The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office. 
(4) REMOVAL—The Director ma y b 
e removed from office by the President. The President 
shall provide notificatio n of 
any such removal to both Houses of Congress. 
(b) OFFICERS AND EMPLOYEES OF THE OFFICE— 
(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR—The Secretary of 
Commerce, upon nomination by  th
e Director, shall appoint a Deputy Under Secretary of 
Commerce for Intellectual Property and Deputy Director of the United States Patent and 
Trademark Office who shall be vested with the authority to act in the capacity of the Director in 
the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law. 
(2) COMMISSIONERS— 
(A) APPOINTMENT AND DUTIES—The Secr etary of Commerce shall appoint a 
Commissioner for Pat ent
s and a Commissioner for Trademarks, without regard to chapter 33, 
51, or 53 of title 5.  The Commissioner for Patents shall be a citizen of the United States with 
demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years.  The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability and professional background and 
IP/N/1/USA/T/4 
Page 248 -247- January 6, 2012 experience in trademark law and serve for a term of 5 years.  The Commissioner for Patents 
and the Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to patents and trademarks, respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that 
affect the administration of patent and trademark operations, respectively.  The Secretary may 
reappoint a Commissioner to subsequent terms of 5 years as long as the performance of the Commissioner as set forth in the performance agreement in subparagraph (B) is satisfactory. 
(B) SALARY AND PERFORMANCE AGREEMENT— The Commissioners shall be paid an  
annua
l rate of basic pay not to exceed the maximum rate of basic pay for the Senior 
Executive Service established under section 5382 of title 5, including any applicable 
locality-based comparability payment that may be authorized under section 5304(h)(2)(C) 
of title 5. The compensation of the Commissioners shall be considered, for purposes of 
section 207(c)(2)(A) of title 18, to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners may receive a bonus in an amount of up to, but not in excess of, 50 percent of the Commissioners’ annual rate of 
basic pay, based upon an evaluation by the Secretary of Commerce, acting through the 
Director, of the Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the 
Commissioners and the Secretary. Payment of a bonus under this subparagraph may be 
made to the Commissioners only to the extent that such payment does not cause the Commissioners’ total aggregate compensation in a calendar year to equal or exceed the amount of the salary of the Vice President under section 104 of title 3. 
(C) REMOVAL- The Commissioners may be removed from office by the Secretary for 
misconduct or nonsatisfactory perfo r
mance under the performance agreement described 
in subparagraph (B), without regard to the provisions of title 5. The Secretary shall provide notification of any such removal to both Houses of Congress. 
(3) OTHER OFFICERS AND EMPLOYEES—The Director shall— 
(A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to  carry out 
the functions of the Office; and 
(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powe rs 
 vested in the Office as the Director may determine. 
The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no posi tions o 
r personnel of the Office shall be taken into 
account for purposes of applying any such limitation. 
(4) TRAINING OF EXAMINERS—The Office shall submit to the Congress a proposal to 
provide an i ncenti
ve program to retain as employees patent and trademark examiners of the 
primary examiner grade or higher who are eligible for retirement, for the sole purpose of training patent and trademark examiners. 
(5) NATIONAL SECURITY POSITIONS—The Director, in consultation with the Director of the 
Office of Personnel Manage men 
t, shall maintain a program for identifying national security 
positions and providing for appropriate security clearances, in order to maintain the secrecy of certain inventions, as described in section 181, and to prevent disclosure of sensitive and strategic information in the interest of national security. 
(6) ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE TRADEMARK JUDGES—
The Director may fi x th
e rate of basic pay for the administrative patent judges appointed 
IP/N/1/USA/T/4 
Page 249 -248- January 6, 2012 pursuant to section 6 and the administrative trademark judges appointed pursuant to section 
17 of the Trademark Act of 1946 (15 U.S.C. 1067) at not greater than the rate of basic pay payable for level III of the Executive Schedule under section 5314 of title 5. The payment of a rate of basic pay under this paragraph shall not be subject to the pay limitation under section 
5306(e) or 5373 of title 5.  
(c) CONTINUED APPLICABILITY OF TITLE 5—Officers and employees of the Office shall be 
subject to the provisions of title 5, rela ting t
o Federal employees. 
(d) ADOPTION OF EXISTING LABOR AGREEMENTS—The Office shall adopt all labor agreements which  
are in effect, as of the day before the effective date of the Patent and 
Trademark Office Efficiency Act, with respect to such Office (as then in effect). 
(e) CARRYOVER OF PERSONNEL— 
(1) FROM PTO- Effective as of the effective date of the Patent and Trademark Office 
Efficiency Act, all officers and empl oyees o
f the Patent and Trademark Office on the day 
before such effective date shall become officers and employees of the Office, without a break in service. 
(2) OTHER PERSONNEL- Any individual who, on the day before the effective date of the 
Patent and Trademark Office Efficienc y Act, is 
 an officer or employee of the Department of 
Commerce (other than an officer or employee under paragraph (1)) shall be transferred to the Office, as necessary to carry out the purposes of that Act, if— 
(A) such individual serves in a position for which a major function is the performance of 
work reimbursed by the Pate 
nt and Trademark Office, as determined by the Secretary of 
Commerce; 
(B) such individual serves in a position that performed work in support of the Patent and 
Trademark Office during at least h a
lf of the incumbent’s work time, as determined by the 
Secretary of Commerce; or 
(C) such transfer would be in the interest of the Office, as determined by the Secretary of 
Commerce in consultation with the Di
rector.   
Any transfer under this paragraph shall be effective as of the same effective date as referred 
to in paragraph (1), and shall be made withou t a
 break in service. 
(f) TRANSITION PROVISIONS— 
(1) INTERIM APPOINTMENT OF DIRECTOR—On or after the effectiv e date of the Patent 
and Trademark Office Efficiency Act, the Preside n
t shall appoint an individual to serve as the 
Director until the date on which a Director qualifies under subsection (a). The President shall not make more than one such appointment under this subsection. 
(2) CONTINUATION IN OFFICE OF CERTAIN OF FICERS—(A) The individual serving as the 
Assistant Commissi one 
r for Patents on the day before the effective date of the Patent and 
Trademark Office Efficiency Act may serve as the Commissioner for Patents until the date on 
which a Commissioner for Patents is appointed under subsection (b). 
(B) The individual serving as the Assistant Commissioner for Trademarks on the day 
before the effective date of the Patent and Trad emark 
Office Efficiency Act may serve as 
the Commissioner for Trademarks until the date on which a Commissioner for Trademarks is appointed under subsection (b). 
IP/N/1/USA/T/4 
Page 250 -249- January 6, 2012 (July 19, 1952, ch. 950, § 1, 66 Stat. 792; Sept. 6, 19 58, 72  Stat. 1793; Sept. 23 , 1959 , 73 Stat. 650; Aug . 
14, 1964, 78 Stat. 425; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1956; Aug. 27, 1982, 96 Stat. 
319; Oct. 15, 1982, 96 Stat. 1760; No v. 8, 1984, 98 Stat. 3392; Oct. 28, 1998, 112 Stat. 2860; Aug. 5, 1999, 
113 Stat. 221; Nov. 29, 1999, 113 Stat. 1501A-575; Nov.  2, 2002, 116 Stat. 1904; Sept. 16, 2011, 125 Stat. 
334, 336.) 
35 U.S.C. § 4.  Restrictions on officers and employees as to interest in patents 
Officers and employees of the Patent and Trademark Office shall be incapable, during the period 
of their appointments an d for on
e year thereafter, of applying for a patent and of acquiring, directly 
or indirectly, except by inheritance or bequest, any patent or any right or interest in a patent, 
issued or to be issued by the Office.  In patents applied for thereafter they shall not be entitled to 
any priority date earlier than one year after the termination of their appointment.  
(July 19, 1952, ch. 950, § 1, 66 Stat. 793; Jan. 2, 1975, 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1949.) 
35 U.S.C. § 5.  Patent and Trademark Office Public Advisory Committees. 
(a) ESTABLISHMENT OF PUBLIC ADVISORY COMMITTEES— 
(1) APPOINTMENT—The United States Patent and Trademark Office shall have a Patent 
Public Advisory Committee and a Trade ma
rk Public Advisory Committee, each of which shall 
have nine voting members who shall be appointed by the Secretary of Commerce and serve 
at the pleasure of the Secretary of Commerce. Members of each Public Advisory Committee shall be appointed for a term of 3 years, except that of the members first appointed, three shall be appointed for a term of 1 year, and three shall be appointed for a term of 2 years. In 
making appointments to each Committee, the Secretary of Commerce shall consider the risk 
of loss of competitive advantage in international commerce or other harm to United States companies as a result of such appointments. 
(2) CHAIR—The Secretary shall designate a chair of each Advisory Committee, whose term 
as chair shall be for 3 years. 
(3) TI MI 
NG OF APPOINTMENTS—Initial appointments to each Advisory Committee shall be 
made within 3 months  a
fter the effective date of the Patent and Trademark Office Efficiency 
Act. Vacancies shall be filled within 3 months after they occur. 
(b) BASIS FOR APPOINTMENTS- Member s of each Advi so ry Committee— 
(1) shall be citizens of the United States who s hall be chosen so as to represent the int e rests 
of diverse users of the United States Patent and Trademark Office with respect to patents, in 
the case of the Patent Public Advisory Committee, and with respect to trademarks, in the case 
of the Trademark Public Advisory Committee; 
(2) shall include members who represent small and large entity applicants located in the 
United States in proportion to the 
number of applications filed by such applicants, but in no 
case shall members who represent small entity patent applicants, including small business concerns, independent inventors, and nonprofit organizations, constitute less than 25 percent 
of the members of the Patent Public Advisory Committee, and such members shall include at 
least one independent inventor; and 
(3) shall include individuals with substantial background and achievement in finance, 
management, labor relati ons, scie 
nce, technology, and office automation. 
IP/N/1/USA/T/4 
Page 251 -250- January 6, 2012 In addition to the voting members, each Advisory Committee shall include a representative of 
each labor organization recognized by the United States Patent and Trademark Office. Such representatives shall be nonvoting members of the Advisory Committee to which they are appointed. 
(c) MEETINGS—Each Advisory Committee shall meet at the call of the chair to consider an 
agenda set by the chair. 
(d) DUTIES—Each Advisory Comm ittee 
shall— 
(1) review the policies, goals, performance, budget, and user fees of the United States Patent 
and Trademark Office with respect  to 
patents, in the case of the Patent Public Advisory 
Committee, and with respect to Trademarks, in the case of the Trademark Public Advisory 
Committee, and advise the Director on these matters; 
(2) within 60 days after the end of each fiscal year— 
(A) prepare an annual report on the matters referred to in paragraph (1); (B) transmit the report to the Secretary of Commerce, the President, and the Committees 
on the Judiciary of the Senate and the Ho use o
f Representatives; and 
(C) publish the report in the Official Gazette of the United States Patent and Trademark Office. 
(e) COMPENSATION—Each member of each Advi sory Co
mmittee shall be compensated for 
each da y
 (including travel time) during which such member is attending meetings or conferences 
of that Advisory Committee or otherwise engaged in the business of that Advisory Committee, at 
the rate which is the daily equivalent of the annual rate of basic pay in effect for level III of the 
Executive Schedule under section 5314 of title 5. While away from such member’s home or regular place of business such member shall be allowed travel expenses, including per diem in lieu of subsistence, as authorized by section 5703 of title 5. 
(f) ACCESS TO INFORMATION—Members of each Advisory Committee shall be provided 
access to records and information in the United States Pate nt and Trad
emark Office, except for 
personnel or other privileged information and information concerning patent applications required to be kept in confidence by section 122. 
(g) APPLICABILITY OF CERTAIN ETHICS LAWS—Members of each Advisory Committee shall 
be special Government employees  wi 
thin the meaning of section 202 of title 18. 
(h) INAPPLICABILITY OF FEDERAL ADVISORY COMMITTEE ACT—The Federal Advisory 
Committee Act (5 U.S.C. App.) shall not a
pply to each Advisory Committee. 
(i) OPEN MEETINGS—The meetings of each Advisory Committee shall be open to the public, 
except that each Advisory Committee ma y b
y majority vote meet in executive session when 
considering personnel, privileged, or other confidential information. 
(j) INAPPLICABILITY OF PATENT PROHIBITION—Section 4 shall not apply to voting members 
of the Advisory Committees. 
(Added Nov. 29, 1999, 113 Stat. 1501A-578; amended Nov. 2, 2002, 116 Stat. 1904.)  
IP/N/1/USA/T/4 
Page 252 -251- January 6, 2012 35 U.S.C. § 6.  Patent Trial and Appeal Board.  (35 U.S.C. § 6 pertains to patents.)  
35 U.S.C. § 7.  Library. 
The Director shall maintain a library of scientific and other works and periodicals, both foreign and 
domestic,  in the Patent and T
rademark Office to aid the officers in the discharge of their duties. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 793; Jan. 2, 1975 , 88 Stat. 1949; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 
1999, 113 Stat. 1501A-580.) 
35 U.S.C. § 8.  Classification of patents.  (35 U.S.C. § 8 pertains to patents.)  
35 U.S.C. § 9.  Certified copies of records. 
The Director may furnish certified copies of specifications and drawings of patents issued by the 
Patent and Trademark Off
ice, and of other records available either to the public or to the person 
applying therefor. 
(July 19, 1952, ch. 950, 66 Stat. 794; Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 
113 Stat. 1501A-580.) 
35 U.S.C. § 10.  Publications. 
(a) The Director may publish in printed, typewritten, or electronic form, the following: 
1.  Patents, including specifications and drawings, together with copies of the same.  The 
Patent and Trademark Offi ce ma
y print the headings of the drawings for patents for the 
purpose of photolithography. 
2.  Certificates of trademark registrations, including statements and drawings, together with 
copies of the same. 
3.  The Of
ficial Gazette of the United States Patent and Trademark Office. 
4.  Annual indexes of patents and patentees, and of trademarks and registrants. 
5.  Annual volumes of decisions in patent and trademark cases. 6.  Pamphlet copies of the patent laws and rules of practice, laws and rules relating to 
trademarks, and circula r
s or other publications relating to the business of the Office. 
(b) The Director may exchange any of the publications specified in items 3, 4, 5, and 6 of 
subsection (a) of this section for publications desira
ble for use of the Patent and Trademark 
Office. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 794; Jan. 2, 197 5, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-580.) 
IP/N/1/USA/T/4 
Page 253 -252- January 6, 2012 35 U.S.C. § 11.  Exchange of copies of patents.  (35 U.S.C. § 11 pertains to patents.) 
35 U.S.C. § 12.  Copies of patents and applications for public libraries.  (35 U.S.C. § 12 
pertains t o patents .) 
35 U.S.C. § 13. 
 Annual report to Congress. 
The Director shall report to the Congress, not later than 180 days after the end of each fiscal year, 
the moneys received and expen
ded by the Office, the purposes for which the moneys were spent, 
the quality and quantity of the work of the Office, the nature of training provided to examiners, the evaluation of the Commissioner of Patents and the Commissioner of Trademarks by the Secretary of Commerce, the compensation of the Commissioners, and other information relating to the Office. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 794; Nov. 29, 1999, 113 Stat. 1501A-581.) 
CHAPTER 2—PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE 
35 U.S.C. § 21.  Filing date and day for taking action. 
(a) The Director may by rule prescribe that any paper or fee required to be filed in the Patent and 
Trademark Office will be consi dere
d filed in the Office on the date on which it was deposited with 
the United States Postal Service or would have been deposited with the United States Postal Service but for postal service interruptions or emergencies designated by the Director. 
(b) When the day, or the last day, for taking any action or paying any fee in the United States 
Patent and Trademark Office falls on Satu 
rday, Sunday, or a federal holiday within the District of 
Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business 
day.  
(July 19, 1952, ch. 950, § 1, 66 Stat. 794; Jan. 2, 1975, 88 Stat. 1949; Aug. 27, 1982, 96 Stat. 321; Nov. 29, 
1999, 113 Stat. 1501A-582.) 
Note—For holidays, see 5 U.S.C. § 6103 and District of Columbia Code, sec. 28-2701:  
5 U.S.C. § 6103.  Holidays. 
(a) The following are legal public holidays: 
New Year’s Day, January 1. 
Birthday of Martin Luther King, Jr., the third Monday in January. Washington’s Birthday, the third Monday in February. Memorial Day, the last Monday in May. 
Independence Day, July 4. 
Labor Day, the first Monday in September. Columbus Day, the second Monday in October. Veterans Day, November 11. Thanksgiving Day, the fourth Thursday in November. Christmas Day, December 25. 
(b) For the purpose of statutes relating to pay and leave of employees, with respect to a legal public holid ay and any other da y decl
ared to be a holiday by Federal statute or Executive order, 
the following rules apply: 
IP/N/1/USA/T/4 
Page 254 -253- January 6, 2012 (1) Instead of a holiday that occurs on a Saturday, the Friday immediately before is a legal 
public holiday for— 
(A) Employees whose basic workweek is Monday through Friday; and 
(B) the purpose of section 6309 (Leave of Absence, etc.) of this title. 
(2) Instead of a holiday that occurs on a regular weekly nonworkday of an employee whose 
basic workweek is other than Monday th roug
h Friday, except the regular weekly nonworkday 
administratively scheduled for the employee instead of Sunday, the workday immediately before that regular weekly nonworkday is a legal public holiday for the employee. 
This subsection, except subparagraph (B) of paragraph (1), does not apply to an employee whose basic workweek is Monday through Saturda y
. 
(c) January 20 of each fourth year after 1965, Inauguration Day, is a legal public holiday for the purpose of statutes relating to pay an d lea 
ve of employees as defined by section 2105 of this title 
and individuals employed by the government of the District of Columbia employed in the District of Columbia, Montgomery and Prince Georges Counties in Maryland, Arlington and Fairfax Counties in Virginia, and the cities of Alexandria and Falls Church in Virginia.  When January 20 of any 
fourth year after 1965 falls on Sunday, the next succeeding day selected for the public 
observance of the inauguration of the President is a legal public holiday for the purpose of this subsection. 
(Amended June 28, 1968, 82 Stat. 250; Sept. 18, 1975, 89  Stat. 479; Nov. 2, 1983, 97 Stat. 917.) 
District of Columbia Code—Section 28-2701.   
Holidays designated—Time for performing acts extended.  The following days in each year, 
namely, New Year’s Da y, Ja
nuary 1; Dr. Martin Luther King, Jr.’s Birthday, the third Monday in 
January; Washington’s Birthday, the third Monday in February; Memorial Day, the last Monday in 
May; Independence Day, July 4; Labor Day, the first Monday in September; Columbus Day, the 
second Monday in October; Veteran’s Day, November 11; Thanksgiving Day, the fourth Thursday in November; Christmas Day, December 25; every Saturday, after twelve o’clock noon; any day appointed by the President of the United States as a day of public feasting or thanksgiving; and the day of the inauguration of the President, in every fourth year, are holidays in the District for all purposes.  When a day set apart as a legal holiday, other than the day of the inauguration of a 
President, falls on a Saturday, the next preceding day is a holiday.  When a day set apart as a 
legal holiday falls on a Sunday, the next succeeding day is a holiday.  In such cases, when a Sunday and a holiday or holidays fall on successive days, all commercial papers falling due on any of these days shall, for all purposes of presenting for payment or acceptance, be deemed to mature and be presentable for payment or acceptance on the next secular business day 
succeeding.  Every Saturday is a holiday in the District for (1) every bank or banking institution 
having an office or banking house located within the District, (2) every Federal savings and loan association whose main office is in the District, and (3) every building association, building and loan association, or savings and loan association, incorporated or unincorporated, organized and operating under the laws of and having an office located within the District.  An act which would 
otherwise be required, authorized, or permitted to be performed on Saturday in the District at the 
office or banking house of, or by, any such bank or bank institution, Federal savings and loan association, building association, building and loan association, or savings and loan association, if Saturday were not a holiday, shall or may be so performed on the next succeeding business day, and liability or loss of rights of any kind may not result from such delay. 
Note.—As to the observance of holidays which fall on Saturday, see 5 U.S.C. § 6103, which 
provides: 
IP/N/1/USA/T/4 
Page 255 -254- January 6, 2012 “(b)(1) Instead of a holiday that occurs on a Saturday, the Friday immediately before is a legal 
public holiday....” 
35 U.S.C. § 22.  Printing of papers filed.   
The Director may require papers filed in the Patent and Trademark Office to be printed, 
typewritten, or on an electronic medi
um. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 197 5, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-582.) 
35 U.S.C. § 23.  Testimony in Patent and Trademark Office cases.   
The Director may establish rules for taking affida vits and depositions required in cases in the 
Patent and Tradem ark 
Office.  Any officer authorized by law to take depositions to be used in the 
courts of the United States, or of the State where he resides, may take such affidavits and 
depositions. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 197 5, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-582.) 
35 U.S.C. § 24.  Subpoenas, witnesses.   
The clerk of any United States court for the district wherein testimony is to be taken for use in any 
contested case in the Patent and Tradem ark 
Office, shall, upon the application of any party 
thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena.  The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things 
shall apply to contested cases in the Patent and Trademark Office. 
Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses 
allowed to witnesses attending the United States district c
ourts. 
A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a wi tness, se 
rved with such subpoena, 
neglected or refused to appear or to testify.  No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day’s attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 1975, 88 Stat. 1949.) 
35 U.S.C. § 25.  Declaration in lieu of oath. 
(a) The Director may by rule prescribe that any document to be filed in the Patent and Trademark 
Office and which is required by  a
ny law, rule, or other regulation to be under oath may be 
subscribed to by a written declaration in such form as the Director may prescribe, such declaration 
to be in lieu of the oath otherwise required. 
(b) Whenever such written declaration is used, the document must warn the declarant that willful 
false statements and the like are punishable by fine or i m
prisonment, or both (18 U.S.C. section 
1001).  
IP/N/1/USA/T/4 
Page 256 -255- January 6, 2012 (Added Mar. 26, 1964, 78 Stat. 171; amended Jan. 2, 1975, 88 Sta t. 1949 ; Nov. 29, 1999, 113  Stat. 1501 A-
582.) 
Note—18 U.S.C. § 1001 provides:  “Whoever in any matter within the jurisdiction of any 
department or agency of the United States knowingly and willfully falsifies, conceals or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statements or entry, shall be fined not more than $10,000 or imprisoned not more than five years, or both.”  (June 25, 1948, 62 Stat. 749.)  
35 U.S.C. § 26.  Effect of defective execution.   
Any document to be filed in the Patent and Trademark Office and which is required by any law, 
rule, or other regulation to be e
xecuted in a specified manner may be provisionally accepted by 
the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed.  
(Added Mar. 26, 1964, 78 Stat. 171; amended Jan. 2, 1975, 88 Stat. 1949.) 
CHAPTER 3—PRACTICE BEFORE PA TENT AND TRADEMARK OFFICE 
35 U.S.C. § 31.  [Repealed] 
(Nov. 29, 1999, 113 Stat. 1501A-580.) 
35 U.S.C. § 32.  Suspension or exclusion from practice.   
The Director may, after notice and opportunity for a hearing, suspend or exclude, either generally 
or in any particular case, from  fu
rther practice before the Patent and Trademark Office, any 
person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D), or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office.  The reasons for any such suspension or exclusion shall be duly recorded.  The Director shall have the discretion to designate any attorney who is an officer or 
employee of the United States Patent and Trademark Office to conduct the hearing required by 
this section.  A proceeding under this section shall be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis for the proceeding occurred, or 1 year after the date on which the misconduct forming the basis for the proceeding is made known to an officer or employee of the Office as prescribed in the regulations 
established under section 2(b)(2)(D).  The United States District Court for the Eastern District of 
Virginia, under such conditions and upon such proceedings as it by its rules determines, may review the action of the Director upon the petition of the person so refused recognition or so suspended or excluded.  
(July 19, 1952, ch. 950, § 1, 66 Stat. 795; Jan. 2, 1975, 88 Stat. 1949; Nov. 29, 1999, 113 Stat. 1501A-581; 
Sept. 16, 2011, 125 Stat. 291, 316, 335.) 
IP/N/1/USA/T/4 
Page 257 -256- January 6, 2012 35 U.S.C. § 33.  Unauthorized representation as practitioner. 
Whoever, not being recognized to practice before the Patent and Trademark Office, holds himself 
out or permits himself to be held out as so recognized, or as being qualified to p r
epare or 
prosecute applications for patent, shall be fined not more than $1,000 for each offense. 
(July 19, 1952, ch. 950, § 1, 66 Stat. 796; Jan. 2, 1975, 88 Stat. 1949.) 
CHAPTER 4—PATENT FEES, FUNDING, SEARCH SYSTEMS 
35 U.S.C. § 41(i).  Patent and trademark search systems. 
(i) ELECTRONIC PATENT AND TRADEMARK DATA.— 
(1) MAINTENANCE OF COLLECTIONS.—The Director shall maintain, for use by the public, 
pape r, microform, or electronic collections of United States  paten
ts, foreign patent documents, 
and United States trademark registrations arranged to permit search for and retrieval of 
information.  The Director may not impose fees directly for the use of such collections, or for the use of the public patent or trademark search rooms or libraries. 
(2) AVAILABILITY OF AUTOMATED SEARCH SYSTEMS.—The Director shall provide for the full 
deployment of the automa ted 
 search systems of the Patent and Trademark Office so that such 
systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval 
systems. 
(3) ACCESS FEES.—The Director may establish reasonable fees for access by the public to the 
automated search systems of t he Patent a
nd Trademark Office.  If such fees are established, a 
limited amount of free access shall be made available to users of the systems for purposes of education and training.  The Director may waive the payment by an individual of fees authorized by this subsection upon a showing of need or hardship, and if such a waiver is in the public interest. 
(4) ANNUAL REPORT TO CONGRESS.—The Director shall submit to the Congress an annual 
report on the automated search s y
stems of the Patent and Trademark Office and the access by 
the public to such systems.  The Director shall also publish such report in the Federal Register.  The Director shall provide an opportunity for the submission of comments by interested persons on each such report.   
(Added Pub. L. 102-204, § 5(d)(1), 105 Stat. 1637, Dec.  10, 1991; Pub. L. 112-29, 125 Stat. 323, 324, Sept. 
16, 2011.) 
35 U.S.C. § 41 note.  Adjustment of trademark fees. 
(a) FEE FOR FILING APPLICATION.  Until such time as the Director sets or adjusts the fees 
otherwise, under such conditions as ma y 
be prescribed by the Director, the fee under section 
31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)) for: (1) the filing of a paper application for the registration of a trademark shall be $375; (2) the filing of an electronic application shall be $325; and (3) the filing of an electronic application meeting certain additional requirements 
prescribed by the Director shall be $275. The provisions of the second and third sentences of 
section 31(a) of the Trademark Act of 1946 shall apply to the fees established under this section. 
IP/N/1/USA/T/4 
Page 258 -257- January 6, 2012 (b) REFERENCE TO TRADEMARK ACT OF 1946.  Fo r purposes of this section, the “Trademark 
Act of 1946” refers to the Act entitled “An Act to provide for the registration and protection of 
trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.” 
(Pub. L. 108-447, Sec. 2, Div. B, Title VIII, Sec. 802, 118 Stat. 2809, 2929, Dec. 8, 2004; Pub. L. 112-29, 
125 Stat. 324, Sept. 16, 2011.)   
35 U.S.C. § 42.  Patent and Trademark Office funding. 
(a) All fees for services performed by or materials furnished by the Patent and Trademark Office 
will be payable to the Director. 
(b) All fees paid to the Di recto
r and all appropriations for defraying the costs of the activities of the 
Patent and Trademark Office will b
e credited to the Patent and Trademark Office Appropriation 
Account in the Treasury of the United States. (c)(1) To the extent and in the amounts provided in advance in appropriations Acts, fees 
authorized in this title or any other Act to be c harg
ed or established by the Director shall be 
collected by and shall, subject to paragraph (3), be available to the Director to carry out the 
activities of the Patent and Trademark Office.   
(2) There is established in the Treasury a Patent and Trademark Fee Reserve Fund. If fee 
collections by the Patent and Trade ma
rk Office for a fiscal year exceed the amount appropriated 
to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be 
deposited in the Patent and Trademark Fee Reserve Fund. To the extent and in the amounts provided in appropriations Acts, amounts in the Fund shall be made available until expended only for obligation and expenditure by the Office in accordance with paragraph (3). 
(3)(A) Any fees that are collected under sections 41, 42, and 376, and any surcharges on such 
fees, may only be used for ex p
enses of the Office relating to the processing of patent applications 
and for other activities, services, and materials relating to patents and to cover a share of the administrative costs of the Office relating to patents. 
(B) Any fees that are collected under section 31 of the Trademark Act of 1946, and any 
surcharges on such fees, may onl y 
 be used for expenses of the Office relating to the processing 
of trademark registrations and for other activities, services, and materials relating to trademarks 
and to cover a share of the administrative costs of the Office relating to trademarks. 
(d) The Director may refund any fee paid by mistake or any amount paid in excess of that 
required. 
(e) The Secreta r
y of Commerce shall, on the day each year on which the President submits the 
annual budget to the Congress, prov ide to the 
Committees on the Judiciary of the Senate and the 
House of Representatives— (1) a list of patent and trademark fee collections by the Patent and Trademark Office during the 
preceding fiscal year; 
(2) a list  of
 activities of the Patent and Trademark Office during the preceding fiscal year which 
were supported by patent fee  e
xpenditures, trademark fee expenditures, and appropriations; 
(3) budget plans for significant programs, projects , and activities of the Office, includi ng ou t-year 
funding estimates; 
IP/N/1/USA/T/4 
Page 259 -258- January 6, 2012 (4) any proposed disposition of surplus fees by the Office; and 
(5) such other information as the committees consider necessary. 
(July 19, 1952, c. 950, 66 Stat. 796; Nov. 14, 1975, Pub.  L. 94-131, § 4, 89 Stat. 690; Dec. 12, 1980, Pub. L. 
96-517, § 3, 94 Stat. 3018; Aug. 27, 1982, Pub. L. 97-247, § 3(g), 96 Stat. 319; Sept. 13, 1982, Pub. L. 97-
258, § 3(i), 96 Stat. 1065; Nov. 10, 1998, Pub. L. 105- 358, 112 Stat. 3272; Sept. 16, 2011, Pub. L. 112-29, 
125 Stat. 336.) 
IP/N/1/USA/T/4 
Page 260 -259- January 6, 2012 NOTES OF OTHER STATUTES 
SOME U.S. CODE (AND C.F.R.) SECTIONS  PROTECTING SPECIFIC NAMES, TERMS AND 
MARKS 
(This is a partial listing of some of the names, terms, initials and marks which are protected under 
the United States Code (and Code of Federal Regulations).  Al most all of
 these sections protect 
symbols, emblems, seals, insignia and badges, as well as the referenced name.  Many sections also protect other names and initials.  Some sections protect characters in addition to names.  
See the sections for specific information.  See also the next listing which provides other important 
Code sections, many of which also protect certain names, terms, initials and marks, e.g. 18 U.S.C. § 709.  For further information on other sections, see the Index to the United States Code, and the Index to the Code of Federal Regulations, especially under the terms “decorations, medals and badges,” “coats of arms,” “character,” “insignia,” “names,” “seals” and “symbols.”  
Other sections also exist which are not indexed under these terms.) 
• American Ex-Prisoners of War, 36 U.S.C. § 20907 
• American Legion, 36 U.S.C. § 21705 
• The American National Theater and Academy, 36 U.S.C. § 21904 
• American Symphony Orchestra League, 36 U.S.C. § 22306 • American Veterans, 36 U.S.C. § 22706 • American War Mothers, 36 U.S.C. § 22505 • AMVETS ( see American Veterans) 
• Big Brothers [and other names], 36 U.S.C. § 30106 
• Big Sisters [and other names], 36 U.S.C. § 30106 
• Blinded Veterans Association, 36 U.S.C. § 30306 • Blue Star Mothers of America, Inc., 36 U.S.C. § 30507 • Board for Fundamental Education, 36 U.S.C. § 30706 • Boy Scouts of America, 36 U.S.C. § 30905 
• Centers for Medicare and Medicaid Services (see Social Security) 
• Central Intelligence Agency, 50 U.S.C. § 403m • Central Liquidity Facility, 18 U.S.C. § 709 • CIA (see Central Intelligence Agency) • Citius Altius Fortius (see Olympic) • Civil Air Patrol, 36 U.S.C. § 40306 
• CMS (see Social Security) 
• Coast Guard [and other names], 14 U.S.C. § 639 • Commodity Credit Corporation, 15 U.S.C. § 714m • DEA (see Drug Enforcement Administration) • Department of Housing & Urban Development [and other names], 18 U.S.C. § 709 • Disabled American Veterans, 36 U.S.C. § 50305 • Drug Enforcement Administration, 18 U.S.C. § 709 
• Fastener Quality Act, 15 U.S.C. §§ 5401 et seq . 
• FFA (see Future Farmers of America) 
• The Foundation of the Federal Bar Associat ion, 3
6 U.S.C. § 70506 
• 4-H Club [also specific reference to emblem co nsisting of a green four-leaf clover with stem 
and the letter H in white or gold on each leaflet], 18 U.S.C. § 
707 
• F.B.I. (see Federal Bureau of Investigation) • Federal Bureau of Investigation, 18 U.S.C. § 709 • Federal Deposit Insurance Corporation [and other names], 18 U.S.C. § 709 
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Page 261 -260- January 6, 2012 • Federal Home Loan Mortgage Corporation, 12 U.S.C. § 1457 
• Future Farmers of America, 36 U.S.C. § 70907  
• Geneva Cross (see Red Cross) 
• Girl Scouts of America, 36 U.S.C. § 80305 • Give a Hoot, Don’t Pollute (see Woodsy Owl) • The Golden Eagle [also specific reference to insignia of an American Golden Eagle (colored 
gold) and a f amily group (colored midnight blue) enclosed within a circle (colored white with 
a midnight blue border)], 18 U.S.C. § 715 
• Government  National Mortgage Association, 12 
U.S.C. § 1723a; 18 U.S.C. § 709 
• HUD (See Department of Housing & Urban Development) • Ladies of the Grand Army of the Republic, 36 U.S.C. § 130106 • Life Saving Service (see Coast Guard),  • Lighthouse Service (see Coast Guard),  
• Little League; Little Leaguer, 36 U.S.C. § 130506  
• Marine Corps, 10 U.S.C. § 7881  • Medicaid (see Social Security) • Medicare (see Social Security) • The Military Chaplains Association of the United States of America, 36 U.S.C. § 140304 
• NASA (see National Aeronautics and Space Administration) 
• National Aeronautics and Space Administration [also flags, logo, seal], 42 U.S.C. § 2459b; 
14 C.F.R. §§ 1221.101, 1221.107 
• National Conference of State Societies, Washington, District of Columbia, 36 U.S.C. 
§ 150507 
• National Conference on Citizenship, 
36 U.S.C. § 150707  
• National Credit Union [and other names and acronyms], 18 U.S.C. § 709 • National Music Council, 36 U.S.C. § 152306  • National Safety Council, 36 U.S.C. § 152506  • National Society, Daughters of the American Colonists, 36 U.S.C. § 152907 • National Society of the Daughters of the American Revolution, 36 U.S.C. § 153104 
• National Women’s Relief Corps, Auxiliary of the Grand Army of the Republic, 36 U.S.C. 
§ 153706 
• Naval Sea Cadet Corps, 36 U.S.C. § 154106,  
• NCOA (see Non Commissioned Officers Associat ion of the United States of America) 
• Non Commissioned Officers Association of the United States of America [and other names], 
36 U.S.C. § 154707 
• 
Olympiad (see Olympic) 
• Olympic [and other names] [also specific refere nce to (1) the symbol of the International 
Olympic Committee, consisting of five interlocking rings, an d (2) the emblem consist
ing of an 
escutcheon having a blue chief and vertically extending red and white bars on the base with 
five interlocked rings displayed on the chief], 36 U.S.C. § 22
0506 
• OPIC (see Overseas Private Investment) 
• Overseas Private Investment, 18 U.S.C. § 709 • Paralyzed Veterans of America, 36 U.S.C. § 170105  • Pearl Harbor Survivors Association, 36 U.S.C. § 170307 • Peace Corps, 22 U.S.C. § 2518 
• Red Crescent emblem, or the designation “Red Crescent,” 18 U.S.C. § 706a 
• Red Cross [and other names] [also specific reference to the emblem of the Greek red cross 
on a white ground], 18 U.S.C. § 706  
• Reserve Officers Association of the United States, 36 U.S.C. § 190106 • SSA (see Social Security) • Secret Service [and other names], 18 U.S.C. § 709 
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Page 262 -261- January 6, 2012 • Smokey Bear, 18 U.S.C. § 711; 16 U.S.C. § 580p; 36 C.F.R. § 261.22 
• Social Security [and other names, sy mbols and emblems], 42 U.S.C. § 1320b-10 
• Sons of Union Veterans of the Civil War, 36 U.S.C. § 200306  • Swiss Confederation [with specific re ference to th
e coat of arms, consisting of an upright 
white cross with equal arms and lines on a red ground], 18 U.S.C. § 708 
• Third Protocol Emblem, 
18 U.S.C. § 706a 
• U.D. (see Secret Service) • USCG (see Coast Guard) • USCGR (see Coast Guard) • USMC (see Marine Corps) 
• USO (see United Service Organizations, Incorporated)  
• U.S.S.S. (see Secret Service) • United Service Organizations, Incorporated, 36 U.S.C. § 220106 • United States Capitol Historical Society, 36 U.S.C. § 220306  • United States Mint, 18 U.S.C. § 709 • United States Railway Association, 45 U.S.C. § 711 
• United States Coast Guard (see Coast Guard) 
• United States Olympic Committee (see Olympic) • 369th Veterans Association, 36 U.S.C. § 210307  • Veterans of Foreign Wars of the United States, 36 U.S.C. § 230105 • Veterans of World War I of the United States of America, Incorporated, 36 U.S.C. § 230306 • Vietnam Veterans of America [and other names], 36 U.S.C. § 230507 
• Woodsy Owl, 18 U.S.C. § 711a, 16 U.S.C. § 580p; 36 C.F.R. § 261.22 
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Page 263 -262- January 6, 2012 SOME SECTIONS OF THE UNITED STATES CODE WHICH RELATE TO TRADEMARKS 
(This is a partial listing of sections relating to trademarks. ) 
• 7 U.S.C. § 136, The Federal Insecticide, Fungicide and Rodenticide Act, relating to the 
requirements for labeling of economic poison s
. 
• 7 U.S.C. §§ 1551-1610, The Federal Seed Act, relating to requirements for labeling of seeds 
in interstate commerce. 
• 15 U.S.C. § 1, Sherman Act (Sec. 1), as amended by Miller-Tydings Act, relating to re straint 
of trade. 
• 15 U.S.C. § 45, relating t o unfair methods of competition. 
•
 15 U.S.C. § 52, relating to false advertisements. 
• 15 U.S.C. § 68, The Wool Products Labeling Act, relating to the labeling of wool products. 
• 15 U.S.C. § 69, The Fur Products Labeling Act, relating to the labeling of fur and fur 
products. 
• 15 U.S.C. § 70, the Textile Fiber Products Identification Act, relating to the use of 
trademarks and names in the advertising or  labeling of textile  fiber products. 
• 15 U.S.C. § 297, relating to use of marks, trade names, words and labeling in connection 
with the importation, exportation or carriage in int erstate commerce of me rchandise made of 
gold or silve r or their allo ys. 
• 15 U.S.C. § § 1261-1273, relating to  the labeling  of hazardou
s substances. 
• 15 U.S.C. § 1511, relating to jurisdiction of Department of Commerce over Patent and 
Trademark Office. 
• 15 U.S.C. §§ 5401 et se q., relating to the recordation of insignia of manufacturers and 
private label distributors to ensure the traceability  of a fastener to its manufacturer or private 
label distr i
butor.  (See notice at 1192 TMOG 19 (Nov. 5, 1996)). 
• 18 U.S.C. § 701, relating to use of insignia of departments and independent offices of the 
United States. 
• 18 U.S.C. § 704, relating to decorations or medals authorized by Congress for the armed 
forces of the  United States. 
• 18 U.S.C. § 705, relating to the unauthorized use on merchandise of any badge, medal, 
emblem, or other insignia or any colorable im itation thereof o f any vetera n’s organiza tion 
incorporated  by enactme nt of Congress or of any organization  formally recognized by any 
such veteran’s organiza tion as an a uxiliary thereof. 
• 
18 U.S.C. § 709, relating to false advertising or misuse of names to indicate Federal agency.  
Also, prohibitions again st using certa in terms and initials within the financial, insuran ce, 
agricultural, housing, pro tection, inve stigatory and other field s
. 
• 18 U.S.C. § 712, relating to misuse by collecting agencies or private detective agencies of 
names, emblems, and insignia to indicate Federal agency. 
• 18 U.S.C. § 713, relating to the use of likenesses of the great 
seal of the United States, and 
of the seals of the President and Vice President. 
• 18 U.S.C. § 1001, relating to statements, representations, writings or documents made to 
any department or agency of the United States. 
• 18 U.S.C. § 
1158, relating to counterfeiting or imitating Government trademarks for Indian 
products. 
• 18 U.S.C. § 2320, relating to criminal penalties for trafficking in counterfeit goods and 
services. 
• 19 U.S.C. § 1337(a), Tariff Act of 1930, relating to unfair practices in import trade.  • 19 U.S.C. § 1526(a), Tariff Act of 193
0, barring importation into the United States of 
merchandise of foreign manufacture bearing a trademark registered in the Patent and 
Trademark Office by a person domiciled in the United States if copy of the registration 
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Page 264 -263- January 6, 2012 certificate has been filed with the Secretary of the Treasury unless written consent of the 
trademark owner has been secured. 
• 19 U.S.C. § 2111  et seq ., providing authority for trade agreements and also annual reports 
to Congress on barriers to trade include the trea tment of intellectual property rights among 
acts, policies, and practices that constitute barrie
rs to trade. 
• 19 U.S.C. § 2411, relating to foreign countries’ provision for adequate and effective 
protection of  the intelle ctual property rights of U.S. nationals. 
• 19 U.S.C. § 2462(c), relating to the consideratio
n of intellectual property rights as a factor for 
foreign countries to receive benefits under the Generalized System of Preferences (GSP). 
• 
21 U.S.C. §§ 603-623, The Meat Inspecting Act, relating to the inspection and labeling of 
meat and products. 
• 21 U.S.C. §§ 301, 321-392, The Federal Food, Drug, and Cosmetic Act, relating to the 
requirements for labeling of food, drugs, and co smetics; avoiding trademarks in establishing 
official names. 
• 21 U.S.C. § 457, Poultry Products Inspec tion Act, relating to requirements for 
labeling of poultry products in interstate commerce. 
• 27 U.S.C. §§ 201-219a, The Federal Alcohol Administration Act, relating to certificates of 
label approval of alcoholic beverages. 
• 28 U.S.C. § 1254, relating to review of cases by the Supreme Court. 
• 
28 U.S.C. § 1295, relating to jurisdiction of United States Court of Appeals for the Federal 
Circuit. 
• 28 U.S.C. § 1338, relating to jurisdiction of District Courts in trademark suits. • 29 U.S.C. §§ 655, 657, 665, Williams-Steiger Occupational Safety and Health Act of 1970, 
relating to letters OSHA. 
• 42 U.S.C. § 1320b-10, relating to misuse of So cial Security or Medicare names, symbols, 
emblems. 
• 
48 U.S.C. § 734, Puerto Rico, relating to statutes applicable t o. 
•
 48 U.S.C. §§ 1405(q), 1574(c) and 1643, Virgin Islands, relating to statutes applicable to, 
and to the non-applicability of certain provisions of the Trademark Act to the Virgin Islands. 
• 48 U.S.C. § 1421(c), Guam, relating to statutes a pplicable t
o (see also Public Law 87-845, 
October 18, 1962, 4-CZC-471, Canal Zone Code, relating to the application of U.S. patent, 
trademark and copyright laws in the Canal Zone.) 
• 50 U.S.C. Appendix 43, Trading with the Enemy Act, amending, providing for disposition of 
vested trademarks. 
 
Dist
rict of Columbia Code 
Section 22-3401, relating to use of District of Columbia and other related names and initials 
used in connection with investiga t
ory or collection services. (Oct. 16, 1962, 76 Stat. 1071) 
  
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