justicedao/patent-legal-corpus huggingface dataset:
37 CFR 2.132 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Involuntary dismissal for failure to take testimony.

§ 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 it is clear to the Board from the proceeding record that such party has not taken testimony or offered any other evidence, the Board may grant judgment for the defendant. Also, 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 twenty days from the date of service of the motion to show cause why judgment should not be rendered dismissing the case. In the absence of a showing of excusable neglect, 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 defendant and for rebuttal. (b) If no evidence other than Office records showing the current status and title of plaintiff's pleaded registration(s) is offered by any party in the 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 twenty 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 testimony periods have passed. If judgment is not rendered on the motion to dismiss, 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; 81 FR 69985, Oct. 7, 2016]
37 CFR 2.133 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Amendment of application or registration during proceedings.

§ 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 disclaimed 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 whose application or registration is the subject of the proceeding 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 judgment will be entered against the party. (c) Geographic limitations will be considered and determined by the Trademark Trial and Appeal Board only in the context 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. [54 FR 37597, Sept. 11, 1989, as amended at 72 FR 42263, Aug. 1, 2007]
37 CFR 2.134 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Surrender or voluntary cancellation of registration.

§ 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 section 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 Board that the respondent has permitted its involved registration to be cancelled under section 8 or section 71 of the Act of 1946, or has failed to renew its involved registration under section 9 of the Act of 1946, or has allowed its registered extension of protection to expire under section 70(b) 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, failure to renew, or expiration 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 48100, Sept. 9, 1998; 81 FR 69985, Oct. 7, 2016]
37 CFR 2.135 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Abandonment of application or mark.

§ 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 application 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. [54 FR 34900, Aug. 22, 1989]
37 CFR 2.136 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Status of application or registration on termination of proceeding.

§ 2.136 Status of application or registration on termination of proceeding. After the Board has issued its decision in an opposition, cancellation or concurrent use proceeding, and after the time for filing any appeal of the decision has expired, or any appeal that was filed has been decided and the Board's decision affirmed, the proceeding will be terminated by the Board. On termination of an opposition, cancellation or concurrent use proceeding, if the judgment is not adverse to the applicant or registrant, the subject application returns to the status it had before the institution of the proceeding and the otherwise appropriate status of the subject registration is unaffected by the proceeding. If the judgment is adverse to the applicant or registrant, the application stands refused or the registration will be cancelled in whole or in part without further action and all proceedings thereon are considered terminated. [81 FR 69985, Oct. 7, 2016]
37 CFR 2.141 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Ex parte appeals.

§ 2.141 Ex parte appeals. (a) Appeal from final refusal of application. After final refusal by the trademark examining attorney, an applicant may appeal to the Trademark Trial and Appeal Board, upon payment of the prescribed fee for each class in the application for which an appeal is taken, within the time provided in § 2.142(a)(1). A second refusal on the same grounds may be considered as final by the applicant for the purpose of appeal. (b) Appeal from expungement or reexamination proceeding. After issuance of a final Office action in an expungement or reexamination proceeding under § 2.93, a registrant may appeal to the Trademark Trial and Appeal Board, upon payment of the prescribed fee for each class in the registration for which the appeal is taken, within the time provided in § 2.142(a)(2). (c) Appeal fee required. The applicant or registrant must pay an appeal fee for each class for which the appeal is taken. If an appeal fee is not paid for at least one class of goods or services before the expiration of the time for appeal, when the appeal is from a final refusal of an application, the application will be abandoned or, when the appeal is from an expungement or reexamination proceeding, the Office will terminate the proceeding. When a multiple-class application or registration is involved, if an appeal fee is submitted for fewer than all classes, the applicant or registrant must specify the class(es) for which the appeal is taken. If the applicant or registrant 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 or registrant 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 or registrant may either pay the additional fees or specify the class(es) being appealed. If the applicant or registrant 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. [86 FR 64330, Nov. 17, 2021]
37 CFR 2.144 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Reconsideration of decision on ex parte appeal.

§ 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. [54 FR 29554, July 13, 1989]
37 CFR 2.148 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Director may suspend certain rules.

§ 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 parts 2, 3, 6, and 7 of this chapter that is not a requirement of the Act may be suspended or waived by the Director. [84 FR 37096, July 31, 2019]
37 CFR 2.151 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Certificate.

§ 2.151 Certificate. When the Office determines that a mark is registrable, the Office will issue to the owner a certificate of registration on the Principal Register or 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 and will include a reproduction of the mark and pertinent data from the application. A notice of the requirements of sections 8 and 71 of the Act will issue with the certificate. [84 FR 37096, July 31, 2019]
37 CFR 2.153 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Publication requirements.

§ 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 registration 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). [74 FR 54909, Oct. 26, 2009]
37 CFR 2.156 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Not subject to opposition; subject to cancellation.

§ 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 cancellation for failure to file the affidavit or declaration required by section 8 of the Act. [64 FR 48924, Sept. 8, 1999]
37 CFR 2.158 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Reregistration of marks registered under Acts of 1881, 1905, and 1920.

§ 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 the Act of 1946, either 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.
37 CFR 2.160 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration.

§ 2.160 Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration. (a) During the following time periods, the owner of the registration must file an affidavit or declaration of continued use or 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 after the date of publication under section 12(c) of the Act; and (2) For all registrations, within the year before the end of every ten-year 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 paragraphs (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 48924, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]
37 CFR 2.162 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Notice to registrant.

§ 2.162 Notice to registrant. When a certificate of registration is originally issued, the Office issues with the certificate a notice of the requirement for filing the affidavit or declaration of use or excusable nonuse under section 8 or section 71 of the Act. However, the affidavit or declaration must be filed within the time period required by section 8 or section 71 of the Act even if this notice is not received. [84 FR 37096, July 31, 2019]
37 CFR 2.164 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Correcting deficiencies in affidavit or declaration.

§ 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 notification from the Office, as follows: (1) Correcting deficiencies in affidavits or declarations timely filed 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 the 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. [75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]
37 CFR 2.165 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Petition to Director to review refusal.

§ 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 any court. [64 FR 48925, Sept. 8, 1999, as amended at 73 FR 67773, Nov. 17, 2008] § 2.165, Nt. Effective Date Note: At 86 FR 64332, Nov. 17, 2021, § 2.165 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: § 2.165 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) and (c) for the deadline for responding to an examiner's Office action. (b) If the examiner maintains the refusal to accept the affidavit or declaration, the owner may file a petition to the Director to review the action within the time periods specified in § 2.163(b) and (c). (c) If no petition is filed within the time periods set forth in paragraphs (a) and (b) of this section, the registration will be cancelled and a notice of cancellation will issue. (d) A decision by the Director is necessary before filing an appeal or commencing a civil action in any court.
37 CFR 2.166 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Affidavit of continued use or excusable nonuse combined with renewal application.

§ 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 document, provided that the document meets the requirements of both sections 8 and 9 of the Act. [64 FR 48925, Sept. 8, 1999]
37 CFR 2.168 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Affidavit or declaration under section 15 combined with affidavit or declaration under sections 8 or 71, or with renewal application.

§ 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 affidavit 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 application for renewal of a registration under section 9 of the Act, if the requirements of both sections 9 and 15 are met. [64 FR 48925, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]
37 CFR 2.171 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

New certificate on change of ownership.

§ 2.171 New certificate on change of ownership. (a) Full change of ownership. If the ownership of a registered 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 registration resulting from an application based on section 1 or section 44 of the Act, if ownership of a registration has changed 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 registration has been divided as the result of a change of ownership with respect to some but not all of the goods and/or services, the Office will construe the International Bureau's notice as a request to divide. The Office will update Office records to reflect the change in ownership, divide out the assigned goods and/or services from the registered extension of protection (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 information about the new registration in its automated 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 extension of protection unless the International Bureau notifies the Office that the international registration has been divided. [73 FR 67774, Nov. 17, 2008, as amended at 74 FR 54910, Oct. 26, 2009; 80 FR 2312, Jan. 16, 2015]
37 CFR 2.172 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Surrender for cancellation.

§ 2.172 Surrender for cancellation. Upon application by the owner, the Director may permit any registration to be surrendered for cancellation. The application for 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), rather than surrender. A surrender for cancellation may not subsequently be withdrawn. [80 FR 2312, Jan. 16, 2015]