justicedao/patent-legal-corpus huggingface dataset:
37 CFR 2.27 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Pending trademark application index; access to applications.

§ 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 which the mark is 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 pending application will be permitted prior to publication 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 published or available for inspection or publication. (d) Except as provided in paragraph (e) of this section, the official records of applications and all proceedings relating thereto are available for public inspection 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 Trial and Appeal Board in any proceeding involving an application or a 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. [36 FR 25406, Dec. 31, 1971, as amended at 48 FR 23134, May 23, 1983; 48 FR 27225, June 14, 1983; 73 FR 67768, Nov. 17, 2008]
37 CFR 2.32 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Requirements for a complete trademark or service mark application.

§ 2.32 Requirements for a complete trademark or service mark application. (a) The application must be in English and include the following: (1) A request for registration; (2) The name, domicile address, and email address of each applicant. If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide an email address does not apply; (3)(i) The legal entity type and citizenship of the applicant(s); and (ii) If the applicant is a corporation, association, partnership or other juristic person, the jurisdiction (usually state or nation) under the laws of which the applicant is organized; (iii) If the applicant is a domestic partnership, the names and citizenship of the general partners; (iv) If the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture; or (v) If the applicant is a sole proprietorship, the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor. (4) When the applicant is, or must be, represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter, the attorney's name, postal address, email address, and bar information; (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 intends to use the mark. In a U.S. application filed under section 44 of the Act, the scope of the goods or services covered by the section 44 basis may not exceed the scope of the goods 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 services. (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 term 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 the fee required by § 2.6 for each class of goods or services. (e) For the requirements of a multiple-class application, see § 2.86. (f) For the requirements of all collective mark applications, see § 2.44. (g) For the requirements of a certification mark application, see § 2.45. [64 FR 48918, Sept. 8, 1999, as amended at 73 FR 13784, Mar. 14, 2008; 73 FR 67768, Nov. 17, 2008; 80 FR 33178, June 11, 2015; 84 FR 31511, July 2, 2019; 84 FR 37094, July 31, 2019]
37 CFR 2.35 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Adding, deleting, or substituting bases.

§ 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 requirements 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 applicant meets all requirements for the new basis, as stated in § 2.34, § 2.44, or § 2.45. 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 proceeding 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 continuing valid basis, unless there is contradictory evidence 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 section 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 the foreign application. (6) When the applicant adds or substitutes a basis, the applicant must list each basis and specify the goods, services, or collective membership organization to which that basis applies. (7) When the applicant deletes a basis, the applicant must also delete any goods, services, or collective membership organization 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, or a collective membership organization, the applicant may not amend the application to seek registration under section 1(a) of the Act for identical goods or services or the same collective membership organization, unless the applicant files an allegation of use under section 1(c) or section 1(d) of the Act. [68 FR 55763, Sept. 26, 2003, as amended at 80 FR 33180, June 11, 2015]
37 CFR 2.36 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Identification of prior registrations.

§ 2.36 Identification of prior registrations. Prior registrations of the same or similar marks owned by the applicant should be identified in the application if the owner(s) last listed in Office records of the prior registrations differs from the owner(s) listed in the application. [80 FR 2310, Jan. 16, 2015]
37 CFR 2.37 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Description of mark.

§ 2.37 Description of 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 characters, a description may be included and must be included if required by the trademark examining attorney. [73 FR 13784, Mar. 14, 2008]
37 CFR 2.38 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Use by predecessor or by related companies.

§ 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) The Office may require such details concerning the nature of the relationship and such proofs as may be necessary and appropriate 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. (Sec. 5, 60 Stat. 429; 15 U.S.C. 1055) [30 FR 13193, Oct. 16, 1965, as amended at 54 FR 37589, Sept. 11, 1989; 64 FR 48920, Sept. 8, 1999; 80 FR 2310, Jan. 16, 2015]
37 CFR 2.42 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Concurrent use.

§ 2.42 Concurrent use. (a) Prior to seeking concurrent use, an application for registration on the Principal Register under the Act must assert use in commerce and include all the application elements required by the preceding sections, in addition to § 2.44 or § 2.45, if applicable. (b) The applicant must also include a verified statement that indicates the following, to the extent of the applicant's knowledge: (1) For a trademark or service mark, the geographic area in which the applicant is using the mark in commerce; for a collective mark or certification mark, the geographic area in which the applicant's members or authorized users are using the mark in commerce; (2) For a trademark or service mark, the applicant's goods or services; for a collective trademark, collective service mark, or certification mark, the applicant's members' or authorized users' goods or services; for a collective membership mark, the nature of the applicant's collective membership organization; (3) The mode of use for which the applicant seeks registration; (4) The concurrent users' names and addresses; (5) The registrations issued to or applications filed by such concurrent users, if any; (6) For a trademark or service mark, the geographic areas in which the concurrent user is using the mark in commerce; for a collective mark or certification mark, the geographic areas in which the concurrent user's members or authorized users are using the mark in commerce; (7) For a trademark or service mark, the concurrent user's goods or services; for a collective trademark, collective service mark, or certification mark, the concurrent user's members' or authorized users' goods or services; for a collective membership mark, the nature of the concurrent user's collective membership organization; (8) The mode of use by the concurrent users or the concurrent users' members or authorized users; and (9) The time periods of such use by the concurrent users or the concurrent users' members or authorized users. (c) For the requirements to amend an application to concurrent use, see § 2.73. (d) For the requirements of a concurrent use proceeding, see § 2.99. [80 FR 33181, June 11, 2015]
37 CFR 2.43 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Service mark.

§ 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 for trademarks, but shall be modified to relate to services instead of to goods wherever necessary. (Sec. 3, 60 Stat. 429; 15 U.S.C. 1052)
37 CFR 2.47 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Supplemental Register.

§ 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 shall 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 application shall so indicate. The statement 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 application to register on the Principal Register under section 1(b) of the Act is eligible for registration on the Supplemental 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 the Principal Register under section 1(a) of the Act, so far as applicable. [54 FR 37590, Sept. 11, 1989, as amended at 68 FR 55763, Sept. 26, 2003; 73 FR 67769, Nov. 17, 2008]
37 CFR 2.48 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Office does not issue duplicate registrations.

§ 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 mature into registration, and will refuse registration in the other application. [73 FR 67769, Nov. 17, 2008]
37 CFR 2.51 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Drawing required.

§ 2.51 Drawing required. (a) In an application under section 1(a) of the Act, 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. (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 substantially exact representation 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 substantially exact representation of the mark as it appears in the international registration. [68 FR 55763, Sept. 26, 2003]
37 CFR 2.53 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Requirements for drawings filed through the TEAS.

§ 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 following requirements: (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 drawing, 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 scanned 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. [68 FR 55764, Sept. 26, 2003, as amended at 70 FR 38774, July 6, 2005; 73 FR 67769, Nov. 17, 2008]
37 CFR 2.54 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Requirements for drawings submitted on paper.

§ 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 the 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 proof 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. [68 FR 55764, Sept. 26, 2003]
37 CFR 2.59 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Filing substitute specimen(s).

§ 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 the goods or in the sale or advertising of the services, or as used to indicate membership in the collective organization. The applicant must submit a verified statement that the substitute specimen was in use in commerce at least as early as the filing date of the application. The verified statement 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 under § 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, or as used to indicate membership in the collective organization. If the applicant submits substitute specimen(s), the applicant must: (1) For an amendment to allege use under § 2.76, submit a verified statement that the substitute specimen(s) was in use in commerce prior to filing the amendment to allege use. (2) For a statement of use under § 2.88, submit a verified statement that the substitute specimen(s) was in use in commerce either prior to filing the statement of use or prior to the expiration of the deadline for filing the statement of use. [80 FR 33183, June 11, 2015]
37 CFR 2.61 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Action by examiner.

§ 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 Office may require the applicant to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the application. [30 FR 13193, Oct. 16, 1965, as amended at 37 FR 2880, Feb. 9, 1972; 54 FR 37592, Sept. 11, 1989; 77 FR 30207, May 22, 2012; 86 FR 64326, Nov. 17, 2021]
37 CFR 2.62 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Procedure for submitting response.

§ 2.62 Procedure for submitting response. (a) Deadline. Each Office action shall set forth the deadline for response. (1) Response periods. Unless the applicant is notified otherwise in an Office action, the response periods for an Office action are as follows: (i) Three months from the issue date, for an Office action in an application under section 1 and/or section 44 of the Act; and (ii) Six months from the issue date, for an Office action in an application under section 66(a) of the Act. (2) Extensions of time. Unless the applicant is notified otherwise in an Office action, the time for response designated in paragraph (a)(1)(i) of this section may be extended by three months up to a maximum of six months from the 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 Office action. (b) Signature. The response 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). (c) Form. Responses and requests for extensions of time to respond must be submitted through TEAS pursuant to § 2.23(a). Responses and requests for extensions of time to respond sent via email or facsimile will not be accorded a date of receipt. [84 FR 37095, July 31, 2019, as amended at 86 FR 64326, Nov. 17, 2021]
37 CFR 2.65 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Abandonment.

§ 2.65 Abandonment. (a) An application will be abandoned if an applicant fails to respond to an Office action, or to respond completely, within the relevant time period for response under § 2.62(a)(1), including any granted extension of time to respond under § 2.62(a)(2). A timely petition to the Director pursuant to §§ 2.63(a) and (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 (see § 2.63(b)(4)). (1) If all refusals and/or requirements are expressly limited to certain goods and/or services, the application will be abandoned only as to those goods and/or services. (2) When a timely response by the applicant is a bona fide attempt to advance the examination of the application and is a substantially complete response to the examining attorney's action, but consideration of some matter or compliance with a requirement has been omitted, the examining attorney may grant the applicant 30 days, or to the end of the time period for response to the action to which the substantially complete response was submitted, whichever is longer, to explain and supply the omission before the examining attorney considers the question of abandonment. (b) An application will be abandoned if an applicant expressly abandons the application pursuant to § 2.68. (c) An application will be abandoned if an applicant in an application under section 1(b) of the Act fails to timely file either a statement of use under § 2.88 or a request for an extension of time for filing a statement of use under § 2.89. [80 FR 2311, Jan. 16, 2015, as amended at 86 FR 64326, Nov. 17, 2021]