Trademark Examination Guides, Notes and Announcements - Examination Guide 1-90

Examination Guide 1-90

MEMORANDUM

DATE: March 21, 1990

Examination Guide No. 1-90: Supplemental Guidelines Concerning the Trademark Law Revision Act of 1988 and the Revised Rules of Practice in Trademark

 

TO: All Trademark Personnel

VIA: David E. Bucher, Director

Trademark Examining Operation

FROM: James T. Walsh

Administrator for Trademark Policy and Procedure

SUBJECT: Examination Guide No. 1-90: Supplemental Guidelines Concerning the Trademark Law Revision Act of 1988 and the Revised Rules of Practice in Trademark Cases

 

The purpose of this examination guide is to provide additional information

concerning policies related to the implementation of the Trademark Law Revision Act

of 1988, Public Law 100-667, and the Revised Rules of Practice in Trademark Cases,

37 C.F.R. Part 2. This guide supplements Examination Guide 3-89 and reflects all

policy decisions reached after issuance of that guide. The major subject divisions

correspond to those in Examination Guide 3-89.

 

A. Intent-to-Use Applications

 

1. Filing-Date Requirements

 

The Trademark Rules specify that intent-to-use applications under Trademark Act

Section 1(b), 15 U.S.C. Section 1051(b), must include "a claim of a bona fide

intention to use the mark in commerce" to receive a filing date. Trademark Rule

2.21(a)(5)(iv), 37 C.F.R. Section 2.21(a)(5)(iv). This requirement also applies to

all applications under Trademark Act Section 44, 15 U.S.C. Section 1126.

Reasonable variations in the wording of the statement may be acceptable. The

wording "in commerce" is essential to receive a filing date. However, the applicant

may state that it has "a bona fide intention to use in commerce the mark on or in

connection with...." The applicant may use the words "good faith" instead of "bona

fide."

This statement may appear anywhere in the written application. However, applicants

are encouraged to insert the statement prominently in the opening of the application

to ensure that Office personnel responsible for determining entitlement to a filing

date can locate the statement. If it only appears somewhere other than in the

written application, such as in the [p.2] drawing heading, the application will be

denied a filing date. If the necessary statement does not appear in the written

application, and the file reaches the examining attorney in this condition, the

examining attorney should return the application papers to the application section

in the Trademark Examining Operation with instructions to cancel the filing date and

to return the papers to the applicant for failure to comply with the requirements of

Trademark Rule 2.21, 37 C.F.R. Section 2.21.

 

2. Statutory Averments

 

The Trademark Act requires that an intent-to-use applicant provide a verification

with an averment that it is "...entitled to use the mark in commerce...." Trademark

Act Section 1(b), 15 U.S.C. Section 1051(b). The Trademark Rules erroneously require

an averment that the intent-to-use applicant is "owner" of the mark. Trademark Rule

2.33(b)(2), 37 C.F.R. Section 2.33(b)(2). The rule is being amended to insert the

correct statutory language, "entitled to use." However, for the purpose of examining

intent-to- use applications, examining attorneys should accept a verification

including either averment at least until the rule is amended.

 

3. Identifications of Goods and Services

 

Applications for House Marks

Under certain limited circumstances, an applicant, including an intent-to-use

applicant, may apply to register a mark as a house mark. In the case of applications

for house marks, the Office has permitted and will permit the use of somewhat

broader terms than might otherwise be accepted in an identification of goods. In

such a case, the identification of goods may include wording such as "a house mark

for..." or "a full line of...." All such applications must define the type of goods

with sufficient particularity to permit proper classification and to enable the

Office to make necessary determinations under Trademark Act Section 2(d), 15 U.S.C.

Section 1052(d).

In an application to register a mark as a house mark based on use, over the years

the Office has required that the applicant demonstrate that the mark is, in fact,

used as a house mark, in addition to requiring the usual specimens of use. The

applicant has been required to provide catalogues showing broad use of the mark or

similar evidence to substantiate this claim.

Likewise, an intent-to-use applicant who wishes to register a mark as a house mark

must clearly indicate its intention to register the mark as a house mark during

initial examination, and the circumstances must establish that the applicant's

proposed use of the mark as a house mark is credible. The nature of the mark and the

capacity of the applicant to use the mark as asserted should be considered in

determining whether the claim that the mark is to be used as a house mark is

credible. If the applicant [p.3]indicates such an intention, the examining attorney

should also advise the applicant that, upon filing of the amendment to allege use or

the statement of use, the applicant will be required to provide appropriate evidence

to substantiate use as a house mark. If the applicant cannot do so, the applicant

will be required to amend the identification of goods to conform to the usual

standards for specificity.

 

4. Assertion of Dates of First Use Before the Filing Date

 

Although an applicant may not file an application under both Trademark Act Section

1(a), 15 U.S.C. Section 1051(a), based on use in commerce, and Trademark Act Section

1(b), 15 U.S.C. Section 1051(b), based on a bona fide intention to use the mark in

commerce, an applicant may assert dates of use which are earlier than the filing

date of the application in an amendment to allege use or a statement of use.

 

5. Related Company Use

 

If an intent-to-use applicant asserts a bona fide intention to use the mark in

commerce through a related company, or otherwise refers to proposed use by a

licensee or other party, the examining attorney should not require explanation or

evidence as to the status of the other party and control of the nature and quality

of the goods or services until the applicant files either an amendment to allege use

or a statement of use. If the applicant refers to a related company at filing, and

the examining attorney must take action in the case with respect to another issue,

the examining attorney should advise the applicant that appropriate explanation or

evidence as to the use by another party will be required in conjunction with the

examination of the amendment to allege use or the statement of use.

 

6. Claims of Acquired Distinctiveness

Examination Guide 3-89 states that an intent-to-use applicant may not assert that

a nondistinctive designation has acquired distinctiveness under Trademark Act

Section 2(f), 15 U.S.C. Section 1052(f), until the applicant has filed an amendment

to allege use or a statement of use. This policy applies even if the applicant

wishes to rely on a prior registration as proof of acquired distinctiveness.

 

B. Provisions Affecting All Applications

 

1. Filing-Date Requirements

 

In the written application, the applicant must state the basis for the

application, among other things, to receive a filing date. Trademark Rule 2.21, 37

C.F.R. Section 2.21. The Office will disregard any statements in the drawing heading

or elsewhere for purposes of determining entitlement to a filing date. If the

[p.4]application does not include one of the elements required to receive a filing

date, and the application reaches the examining attorney, the examining attorney

should return the file to the application section in the Trademark Examining

Operation with instructions to cancel the filing date and to return the papers to

the applicant for failure to comply with Trademark Rule 2.21, 37 C.F.R. Section 2.21

If the applicant is not entitled to a filing date, and the examining attorney

issues an action in the case and later determines that the applicant was not

entitled to a filing date, the examining attorney must issue a new action in the

case stating that the applicant was not entitled to a filing date. If the applicant

establishes entitlement to a filing date within the six- month response period, the

examining attorney should change the filing date to that date and proceed with

examination of the application.

 

2. Identifications of Goods and Services

 

a. Disposition of Amendments Filed Before November 16, 1989

If an applicant filed an amendment to the identification of goods and services

before November 16, 1989, and the amendment conforms to the pre- November 16 rules

and policies governing acceptance of amendments, the examining attorney should

accept the amendment. If the examining attorney must issue any further requirements

related to the identification of goods and services, all amendments filed after

November 16 are subject to Trademark Rule 2.71(b), 37 C.F.R. Section 2.71(b), as

revised effective November 16, 1989.

 

b. Determining the Scope of the Identification of Goods and Services

Examining attorneys should note the following specific guidance related to the

acceptability of amendments to the identification of goods and services, in addition

to the guidance provided in Examination Guide 3-89. These guidelines attempt to

strike a balance between the interests of applicants and the interests of third

parties who may be relying on the identification of goods and services.

 

i. Indefinite Identifications

An applicant may amend an indefinite identification of goods or services, which

fails to indicate a type of goods or services, to specify definite goods or services

within the scope of the indefinite terminology.

Example - If the applicant specifies "Computer Systems," the applicant may amend

to specify either goods or services within the scope of that term, such as, custom

design of [p.5]computer programs, computers, or computer programs related to a

specific field.

Likewise, if the applicant includes wording in an indefinite identification of

goods or services which, in context, is obviously surplus, the applicant may amend

the identification to specify goods or services within the scope of the indefinite

terminology.

Example - If the applicant begins an indefinite identification of goods with

surplus wording such as "sale of...," "publishing of...," "advertising of...,"

"manufacture of..." or similar wording, the applicant may amend to specify either

goods or services within the scope of the existing identification. The specific

terms used to preface the goods establish some limitation as to scope. "Sale of" may

justify an amendment to retail or mail order services for specific goods, but not to

custom manufacture of or advertising agency services related to those goods.

The policy permitting applicants to amend to specify either goods or services

discussed here should be construed narrowly. The applicant should only be permitted

to amend from goods to services or vice versa when the identification of goods and

services fails to specify a type of goods or services and when the existing

identification provides reasonable notice to third parties that the applicant may be

providing either goods or services within the scope of the existing identification.

ii. Definite Identifications

 

An applicant may amend a definite identification of goods, which indicates a

specific type of goods, to specify definite and acceptable identifications of goods

within the scope of the existing definite terminology.

An applicant may amend a definite identification of services, which indicates a

specific type of service, to specify definite and acceptable identifications of

services within the scope of the existing definite terminology.

An applicant may not amend a definite identification of goods to specify services

or vice versa.

Example - If the applicant specifies "Computer Programs in the Field of

Accounting," the applicant may only amend to specify computer programs within the

scope specified, those concerning accounting. The applicant may not amend to any

service, nor to any goods outside the scope of the goods already identified.

Example - Likewise, if the applicant identifies the goods as "computer programs"

without specifying the field, the applicant would be limited to specific types of

computer [p.6]programs for the purposes of amendments. The applicant has identified

a definite type of goods although Office policy requires further specificity as to

field. An applicant which had identified its goods as "clothing" would likewise be

limited to goods within the scope of the term "clothing."

Example - If the applicant specified "Retail Store Services," the applicant

would be limited to amendments within the scope of this service. Although Office

policy requires further specificity as to the field, the applicant has identified a

definite type of service.

Example - If the applicant identifies its goods as "Stationery" or "Wine Labels"

or "Menus," the applicant would be restricted in any amendments to goods within the

scope of the type indicated. The applicant could not amend to specify other types of

goods or services, such as wine or restaurant services.

 

iii. The "Ordinary-Meaning" Test

 

For the purpose of determining the scope of an indefinite identification, the

examining attorney should consider the ordinary meaning of the wording apart from

any specific meaning the Office might ascribe to the wording within the

classification system. The class designation, whether inserted by the applicant or

the Office, does not limit the scope of permissible amendments. If the applicant

designates the class, this information may be weighed with other factors for the

benefit of the applicant in determining the scope of permissible amendments.

However, if the applicant does not merely designate the class but expressly limits

the application to the goods or services within one or more classes, the applicant

may not amend to specify goods or services not in those classes. For example, if the

applicant specifies "All of the goods in Class 9," the applicant may only amend to

specify goods in Class 9.

If the applicant uses the entire class heading for International Classes 36, 37,

38, 39, 40 or 41, the applicant may amend to any service within the class or to any

service within the ordinary meaning of the terms in the class heading. The treatment

of the class headings for International Classes 35 and 42 is discussed below (

B.2.d.iii.).

 

c. Effect of Unacceptable Amendment on Scope of Identification of Goods and

Services

 

If the applicant files an amendment to the identification of goods and services,

and the examining attorney determines that the amendment is unacceptable, the

examining attorney should refer to the identification of goods before the

unacceptable amendment to determine whether any later amendment is within the scope

of the identification. [p.7]

 

d. Specification of Goods and Services - Entitlement to Filing Date

 

i. Recognizable Goods or Services Identified

If the applicant has provided an identification in the written application which

specifies any recognizable goods or services, the Office will accord the application

a filing date, provided the applicant is otherwise entitled to a filing date. The

applicant may then only amend to specify goods or services within the scope of that

identification, as discussed in A. above.

 

ii. Recognizable Goods or Services not Identified

If the applicant has provided no identification or one which could not be

construed to identify any recognizable goods or services in the written application,

the examining attorney should return the application to the application section in

the Trademark Examining Operation with instructions to cancel the filing date and to

return the papers to the applicant for failure to specify goods or services under

Trademark Rule 2.21(a)(4), 37 C.F.R. Section 2.21(a)(4). For example, if the

identification is blank or specifies the mark itself or wording such as "company

name," "corporate name" or "company logo," and nothing else, the application should

be denied a filing date.

 

iii. Goods and Services Identified Without Even Minimal Scope Limitation

If the applicant identifies the goods and services as "Advertising and Business"

(heading for International Class 35) or "Miscellaneous" or "Miscellaneous Services"

(headings for International Class 42) or "Miscellaneous Goods," the application

should be returned to the application section in the Trademark Examining Operation

with instructions to cancel the filing date and to return the papers to the

applicant for failure to specify goods or services under Trademark Rule 2.21(a)(4),

37 C.F.R. Section 2.21(a)(4). In general, the Office will not deny a filing date

unless an applicant fails to identify any recognizable goods or services. However,

the four formulations specified here refer to the goods or services without any

limitation as to scope whatsoever and, therefore, fail to meet even the minimal

requirements necessary to receive a filing date under the rule.

If the applicant includes one or more of these formulations and other wording

which, by itself, would be sufficiently specific to receive a filing date, the

Office will accord the application a filing date and will disregard the wording

which fails to include any scope limitations for the purpose of determining the

scope of permissible amendments. If excess fees have been paid as a consequence of

including the surplus wording which is to be disregarded, the fee should be

refunded. [p.8]

 

iv. Location of the Identification of Goods and Services

The examining attorney should consider only the identification of goods and

services stated in the proper place for the identification in the written

application to determine entitlement to a filing date or the scope of permissible

amendments. The examining attorney should not look at the drawing, the specimens,

the method-of-use clause, the dates-of-use clause or anywhere else in the

application to determine the applicant's entitlement to a filing date with respect

to the specification of goods and services or the scope of the identification of

goods and services for purposes of permissible amendments.

 

3. Claims of Ownership of Prior Registration in Application at Filing

If an applicant includes a claim of ownership of a prior registration in the

application as filed, the examining attorney should accept the claim without further

proof of ownership. This policy supersedes policies set forth in TMEP section 903.01

or elsewhere to the extent that there is disagreement.

 

4. Assignments

As noted in Examination Guide 3-89, under the revised rules an applicant must make

a written request in the application record that a registration issue in the name of

an assignee or in a new name of applicant before preparation of the registration

certificate. The request must indicate either that an appropriate document has been

recorded or that the document has been submitted for recordation. Otherwise, the

registration will issue in the current owner's name. Trademark Rule 2.187, 37 C.F.R.

Section 2.187.

The applicant's request should expressly state that the applicant wishes the

registration to issue in the name of the assignee or the new name of the applicant.

If the applicant indicates in the application record merely that a document has been

recorded or that it has been submitted for recordation, the examining attorney

should contact the applicant to determine whether the applicant wishes the

registration to issue in the name of the assignee or in the new name of the

applicant.

During initial examination, the examining attorney should not suspend action or

reserve issuance of a final action, when it is otherwise appropriate, to await

recordation of a document. If the applicant submits a request indicating that the

relevant document has been submitted for recordation and the application is in

condition to be approved for publication, the examining attorney should withhold

approval for publication until the document has been recorded and the applicant's

name has been amended accordingly. During examination of the statement of use, the

examining attorney likewise should withhold final approval for [p.9]registration

until the relevant document has been recorded and the applicant's name has been

amended accordingly.

When the applicant has submitted a proper request and the document has been

recorded, the examining attorney will ensure that the change has been entered in the

application record, provided the mark has not been approved for publication, as

discussed immediately above. If the mark has been approved for publication, the

review and amendment clerk or the quality review clerk will ensure that the change

has been entered in the application record.

In general, the examining attorney should only issue an action regarding an

assignment if the assignee attempts to take substantive action in the case and,

therefore, must establish entitlement to take the action, and the applicant has not

yet done so. Trademark Rule 2.186, 37 C.F.R. Section 2.186. Recordation of an

assignment, or submission of proof of the assignment, establishes the assignee's

entitlement to take action under the cited rule.

 

C. Provisions Affecting Applications under Section 44 of the Act

 

1. Filing-Date Requirements

As noted above ( A.1.), the Trademark Rules require that all applications filed

under Trademark Act Section 44, 15 U.S.C. Section 1126, include a statement that the

applicant has "a bona fide intention to use the mark in commerce...." Trademark Rule

2.21(a)(5)(iv), 37 C.F.R. Section 2.21(a)(5)(iv). The policies concerning the form

and the placement of the statement in the written application set forth with respect

to intent-to-use applications apply equally to applications under Section 44.

 

2. Prompt Filing of Applications

All applications, including applications under Trademark Act Section 44, 15

U.S.C. Section 1126, must be filed within a reasonable time after execution of the

application. See TMEP section 803.04. The requirement for a statement of a bona fide

intention to use the mark in commerce in conjunction with applications under Section

44 reinforces the need for timely filing to ensure that the statement is valid at

the time of filing.

 

D. Provisions Affecting Applications Based on Use in Commerce Only

 

1. Filing-Date Requirements

In an application under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a),

based on use of the mark in commerce, the written application must include a date of

first use of the mark in commerce to receive a filing date. Trademark Rule

2.21(a)(5)(i), [p.10] 37 C.F.R. Section 2.21(a)(5)(i). If the date appears only in

the drawing, or anywhere else other than in the written application, the applicant

should be denied a filing date. If the date of first use in commerce does not appear

in the application statement, and the application reaches the examining attorney,

the examining attorney should return the file to the application section in the

Trademark Examining Operation with instructions to cancel the filing date and to

return the papers to the applicant for failure to comply with Trademark Rule 2.21,

37 C.F.R. Section 2.21.

 

2. Allegation as to Current Use

The revised application form begins the allegation of dates of use in an

application under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), with the

following language, "Applicant is using the mark in commerce on or in connection

with the above identified goods/services." The allegation that "applicant is using

the mark in commerce" satisfies the requirement that the applicant allege that it is

now using the mark in commerce. If an applicant provides such an allegation of

current use in the Office form or in any other form, the examining attorney should

not require an additional statement that the mark is now in use in commerce.

 

E. Filing on More Than One Basis and Changing the Basis of the Application

 

1. The Intent-to-Use-in-Commerce Statement

Any application filed under both Trademark Act Sections 1(a) and 44, 15 U.S.C.

Sections 1051(a) and 1126, must include a statement of a bona fide intention to use

the mark in commerce in spite of the fact that actual use is asserted in the

application.

 

2. Change in Basis - Retention of Filing Date

If the applicant files an application under Trademark Act Section 1(a), 15 U.S.C.

Section 1051(a), only, and later amends to rely on Trademark Act Section 44(e), 15

U.S.C. Section 1126(e), as the sole basis for registration, the application will

retain its original filing date. The Office will presume that a continuous valid

basis for registration is present.

If the applicant files an application relying on Trademark Act Section 1(b), 15

U.S.C. Section 1051(b), only, and later amends to rely on Trademark Act Section

44(e), 15 U.S.C. Section 1126(e), as the sole basis for registration, the

application will retain its original filing date. Here also, the Office will presume

that a continuous valid basis for registration is present. [p.11]

 

3. Time Periods During Which Basis May be Changed

Any amendment to assert a second basis for registration or to substitute one basis

for registration for another must be filed before publication of the mark. Cf.

Goodway Corp. v. Intl. Marketing Group, Inc., Opposition No. 078455 (TTAB February

6, 1990); Societe Des Produits Marnier Lapostolle v. Distillerie Moccia S.R.L., 10

USPQ2d 1241 (TTAB 1989). Such an amendment may be filed during an ex parte appeal

along with a request for a remand to the examining attorney to consider the

amendment.

In an application under both Trademark Act Section 1(b), 15 U.S.C. Section 1051(b)

, and Trademark Act Section 44(e), 15 U.S.C. Section 1126(e), the applicant may

delete either of the bases for registration after issuance of the notice of

allowance. If the applicant deletes the intent-to-use basis under Section 1(b), the

application will proceed to registration.

 

4. Effective Date of Amendment to Change Basis

If an amendment to change the basis of an application requires a statement of

dates of use or a statement of a bona fide intention to use the mark in commerce,

the amendment to change the basis will be considered effective on the date the

applicant files a verified statement of dates of use in commerce or a verified

statement of a bona fide intention to use the mark in commerce, as appropriate. If

the record already includes such a verified statement, the amendment will be

considered effective on the date the amendment is filed. The applicant need not

verify again a statement which has already been verified.

If an applicant wishes to add Trademark Act Section 44(e), 15 U.S.C. Section

1126(e), as a basis for registration, without asserting a claim of priority based on

the same application/ registration, the amendment is effective on the date of filing

of the certificate or certified copy of the foreign registration, and the verified

statement of a bona fide intention to use the mark in commerce, if necessary.

 

5. Priority Claims Based on Later-Filed Foreign Applications

If an applicant files an application in the United States under Trademark Act

Section 1(b), 15 U.S.C. Section 1051(b), the applicant may not amend to assert a

claim of priority under Trademark Act Section 44(d), 15 U.S.C. Section 1126(d),

based on a foreign application filed after the filing date of the United States

application. A claim of priority must be asserted within six months of the foreign

application on which the claim is based and the relevant foreign application must be

the first filed in the world for the mark and goods and services specified.

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