justicedao/patent-legal-corpus huggingface dataset:
37 CFR 2.173 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Amendment of registration.

§ 2.173 Amendment of registration. (a) Form of amendment. The owner of a registration may apply to amend a registration 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 for amendment or disclaimer must: (1) Include the fee required by § 2.6; (2) Be verified and signed in accordance with § 2.193(e)(6); and (3) If the amendment involves a change in the mark: one new specimen per class showing the mark as used on or in connection with the goods, services, or collective membership organization; a verified statement that the specimen was in use in commerce at least as early as the filing date of the amendment; and a new drawing of the amended mark. When requested by the Office, additional specimens must be provided. (4) The Office may require the owner to furnish such specimens, information, exhibits, and affidavits or declarations as may be reasonably necessary to the proper examination of the amendment. (c) Registration must still contain registrable matter. The registration as amended must still 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 that materially alters the character of the mark will not be permitted, in accordance with section 7(e) of the Act. (e) Amendment of identification of goods, services, or collective membership organization. No amendment in the identification of goods or services, or description of the nature of the collective membership organization, 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) Amendment of certification statement for certification marks. An amendment of the certification statement specified in § 2.45(a)(4)(i)(A) or (a)(4)(ii)(A) that would materially alter the certification statement will not be permitted, in accordance with section 7(e) of the Act. (g) 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. (h) Elimination of disclaimer. No amendment seeking the elimination of a disclaimer will be permitted, unless deletion of the disclaimed portion of the mark is also sought. (i) No amendment to add or delete section 2(f) claim of acquired distinctiveness. An amendment seeking the addition or deletion of a claim of acquired distinctiveness will not be permitted. [73 FR 67774, Nov. 17, 2008, as amended at 77 FR 30207, May 22, 2012; 80 FR 33189, June 11, 2015]
37 CFR 2.174 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Correction of Office mistake.

§ 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 of 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. [73 FR 67774, Nov. 17, 2008]
37 CFR 2.175 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Correction of mistake by owner.

§ 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 faith through 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 verified; and (3) Be accompanied by the required fee. (Sec. 7, 60 Stat. 430, as amended; 15 U.S.C. 1057) [30 FR 13193, Oct. 16, 1965, as amended at 31 FR 5262, Apr. 1, 1966; 69 FR 51364, Aug. 19, 2004; 73 FR 67774, Nov. 17, 2008; 80 FR 33189, June 11, 2015]
37 CFR 2.176 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Consideration of above matters.

§ 2.176 Consideration of above matters. The matters in §§ 2.171 to 2.175 will be considered in the first instance by the Post Registration 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. [73 FR 67774, Nov. 17, 2008] § 2.176, Nt. Effective Date Note: At 86 FR 64332, Nov. 17, 2021, § 2.176 was revised, effective Dec. 1, 2022. At 87 FR 62032, Oct. 13, 2022, the effective date was delayed to Oct. 7, 2023. At 88 FR 62463, Sept. 12, 2023, the effective date was delayed indefinitely. For the convenience of the user, the revised text is set forth as follows: § 2.176 Consideration of matters in §§ 2.171 through 2.175. The matters in §§ 2.171 through 2.175 will be considered in the first instance by the Post Registration 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 adverse Office action under § 2.146. If the owner does not respond to an adverse Office action within three months of the issue date of the action, the matter will be considered abandoned. Unless notified otherwise in the adverse Office action, the three-month response period may be extended by three months up to a maximum of six months from the adverse Office action issue date, upon timely request and payment of the fee set forth in § 2.6(a)(28). To be considered timely, a request for extension of time must be received by the Office on or before the deadline for response set forth in the adverse Office action.
37 CFR 2.177 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Action on court order under section 37.

§ 2.177 Action on court order under section 37. (a) Requesting USPTO action on an order. If a Federal court has issued an order concerning a registration under section 37 of the Act, a party to the court action who is requesting that the USPTO take action on the order must make the request in writing and include the following: (1) Submit a certified copy of the order to the Director, addressed to the Office of the General Counsel, as provided in § 104.2 of this chapter; and (2) If the party is aware of proceedings concerning the involved registration that are pending or suspended before the Trademark Trial and Appeal Board, file a copy of such order with the Trademark Trial and Appeal Board via ESTTA. (b) Time for submission. A submission under paragraph (a) of this section should not be made until after the court proceeding has been finally determined. A court proceeding is not considered finally determined until an order or ruling that ends the litigation has been rendered and noticed, and the time for any appeal or other further review has expired with no further review sought. (c) Action after submission. After the court proceeding has been finally determined, appropriate action on a court order submitted under this section will normally be taken by the Office without the necessity of any further submission by an interested party. In circumstances where the Director or the Trademark Trial and Appeal Board, if the order under section 37 involves a registration over which the Board has jurisdiction, determines that it would be helpful to aid in understanding the scope or effect of the court's order, a show cause or other order may issue directing the registrant, and if appropriate, the opposing parties to the action from which the order arose, to respond and provide information or arguments regarding the order. The Director may also request clarification of the order from the court that issued the order. [86 FR 64332, Nov. 17, 2021]
37 CFR 2.181 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Term of original registrations and renewals.

§ 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 renewed prior to November 16, 1989, whether 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 continued use or excusable nonuse, registrations 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. (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 48926, Sept. 8, 1999]
37 CFR 2.182 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Time for filing renewal application.

§ 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 period after the expiration date of the registration. If no renewal application is filed within this period, the registration will expire. [64 FR 48926, Sept. 8, 1999]
37 CFR 2.183 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Requirements for a complete renewal application.

§ 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 representative; (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, services, or classes in the registration, then a list specifying the particular goods, services, or classes to be renewed. (e) If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes and the class(es) to which the fee(s) should be applied are not 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. 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 classes 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). [64 FR 48926, Sept. 8, 1999, as amended at 67 FR 79523, Dec. 30, 2002; 73 FR 67775, Nov. 17, 2008; 80 FR 33189, June 11, 2015]
37 CFR 2.185 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Correcting deficiencies in renewal application.

§ 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 after notification from the Office, as follows: (1) Correcting deficiencies in renewal applications filed within one year before the expiration date of the registration. If the renewal 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 48926, Sept. 8, 1999, as amended at 80 FR 2312, Jan. 16, 2015]
37 CFR 2.186 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Petition to Director to review refusal of renewal.

§ 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 the Director, 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 petition 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 any court. [64 FR 48926, Sept. 8, 1999, as amended at 73 FR 67775, Nov. 17, 2008] § 2.186, Nt. Effective Date Note: At 86 FR 64333, Nov. 17, 2021, § 2.186 was amended by revising paragraphs (b) and (c) and adding paragraph (d), effective Dec. 1, 2022. At 87 FR 62032, Oct. 13, 2022, the effective date was delayed to Oct. 7, 2023. At 88 FR 62463, Sept. 12, 2023, the effective date was delayed indefinitely. For the convenience of the user, the added and revised text is set forth as follows: § 2.186 Petition to Director to review refusal of renewal. (b) If the examiner maintains the refusal of the renewal application, a petition to the Director to review the refusal may be filed. The petition must be filed within the time periods specified in § 2.184(b). (c) If no petition is filed within the time periods set forth in paragraphs (a) and (b) of this section, the renewal application will be abandoned and the registration will expire. (d) A decision by the Director is necessary before filing an appeal or commencing a civil action in any court.
37 CFR 2.189 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Requirement to provide domicile address.

§ 2.189 Requirement to provide domicile address. An applicant or registrant must provide and keep current the address of its domicile, as defined in § 2.2(o). [84 FR 31511, July 2, 2019]
37 CFR 2.18 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Correspondence, with whom held.

§ 2.18 Correspondence, with whom held. (a) Establishing the correspondent. The Office will send correspondence as follows: (1) If an attorney is not recognized as a representative pursuant to § 2.17(b)(1), the Office will send correspondence to the applicant, registrant, or party to the proceeding. (2) If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney, except as set forth in paragraphs (a)(2)(i) through (iv) of this section. A request to change the correspondence address does not revoke a power of attorney. The Office will not correspond with another attorney from a different firm and, except for service of a cancellation petition and notices of institution of expungement or reexamination proceedings, will not correspond directly with the applicant, registrant, or a party to a proceeding, unless: (i) 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); (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; (iii) Recognition of the attorney has ended pursuant to §  2.17(g); or (iv) The attorney has been falsely, fraudulently, or mistakenly designated under § 2.17(b)(4). (b) Ex parte matters. Only one correspondence address may be designated in an ex parte matter. (c) Maintaining and changing the correspondence addresses. The applicant, registrant, or party to a proceeding must maintain current and accurate correspondence addresses, as required by § 2.23, for itself and its attorney, if one is designated. If any of these addresses change, a request to change the address, signed in accordance with § 2.193(e)(9), must be promptly filed. (d) Post registration filings under sections 7, 8, 9, 12(c), 15, and 71 of the Act. Even if there 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 Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, if a new address is provided, in accordance with paragraph (a) of this section. [84 FR 37093, July 31, 2019, as amended at 86 FR 64325, Nov. 17, 2021]
37 CFR 2.190 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Addresses for trademark correspondence with the United States Patent and Trademark Office.

§ 2.190 Addresses for trademark correspondence with the United States Patent and Trademark Office. (a) Paper trademark documents. In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. Trademark-related documents to be delivered by hand, private courier, or other delivery service may be delivered during the hours the Office is open to receive correspondence to the Trademark Assistance Center, James Madison Building—East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia 22314. (b) Electronic trademark documents. Trademark documents filed electronically must be submitted through TEAS. Documents that relate to proceedings before the Trademark Trial and Appeal Board must be filed electronically with the Board through ESTTA. (c) Trademark assignment documents. Requests to record documents in the Assignment Recordation Branch may be filed electronically through ETAS. Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be addressed as designated in § 3.27 of this chapter. (d) Requests for certified copies of trademark documents. Paper requests for certified copies of trademark documents must 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 of this chapter, and petitions to the Director to review an action of the Office's Madrid Processing Unit must be addressed to: Madrid Processing Unit, 600 Dulany Street, Alexandria, VA 22314-5796. [84 FR 37096, July 31, 2019]
37 CFR 2.191 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Action of the Office based on the written record.

§ 2.191 Action of the Office based on the written record. All business with the Office must be transacted in writing. The action of the Office will be based exclusively on the written record. No consideration will be given to any alleged oral promise, stipulation, or understanding when there is disagreement or doubt. [84 FR 37096, July 31, 2019]
37 CFR 2.192 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Business to be conducted with decorum and courtesy.

§ 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 their 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.
37 CFR 2.194 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Identification of trademark application or registration.

§ 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 letter 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.