[Federal Register Volume 79, Number 34 (Thursday, February 20, 2014)]
[Proposed Rules]
[Pages 9678-9697]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-03256]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2013-0027]
RIN 0651-AC89


Changes in Requirements for Collective Trademarks and Service 
Marks, Collective Membership Marks, and Certification Marks

AGENCY: United States Patent and Trademark Office, Commerce.

ACTIONS: Notice of Proposed Rulemaking.

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[[Page 9679]]

SUMMARY: The United States Patent and Trademark Office (``USPTO'') 
proposes to amend the rules related to collective trademarks, 
collective service marks, and collective membership marks (together 
``collective marks''), and certification marks to clarify application 
requirements, allegations of use requirements, multiple-class 
application requirements, and registration maintenance requirements for 
such marks. These proposed rule changes will codify current USPTO 
practice set forth in the USPTO's ``Trademark Manual of Examining 
Procedure'' (``TMEP'') and precedential case law. These changes also 
will permit the USPTO to provide the public more detailed guidance 
regarding registering and maintaining registrations for these types of 
marks and will promote the efficient and consistent processing of such 
marks. Further, the USPTO proposes to amend several rules beyond those 
related to collective marks and certification marks to create 
consistency with rule changes regarding such marks and to streamline 
the rules, by consolidating text and incorporating headings, for easier 
use.

DATES: Written comments must be received on or before May 21, 2014 to 
ensure consideration.

ADDRESSES: The USPTO prefers that comments be submitted via electronic 
mail message to TMFRNotices@uspto.gov. Written comments also may be 
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Cynthia Lynch; by hand delivery to 
the Trademark Assistance Center, Concourse Level, James Madison 
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention 
Cynthia Lynch; or by electronic mail message via the Federal 
eRulemaking Portal. See the Federal eRulemaking Portal Web site (http://www.regulations.gov) for additional instructions on providing comments 
via the Federal eRulemaking Portal. All comments submitted directly to 
the USPTO or provided on the Federal eRulemaking Portal should include 
the docket number (PTO-T-2013-0027). Written comments will be available 
for public inspection on the USPTO's Web site at http://www.uspto.gov 
as well as at the Federal eRulemaking Portal, and at the Office of the 
Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany 
Street, Alexandria, Virginia. Because comments will be made available 
for public inspection, information that is not desired to be made 
public, such as an address or phone number, should not be included.

FOR FURTHER INFORMATION CONTACT: Cynthia Lynch, Office of the Deputy 
Commissioner for Trademark Examination Policy, at (571) 272-8742 or 
tmpolicy@uspto.gov.

SUPPLEMENTARY INFORMATION: 
    Executive Summary: Purpose: The proposed rules will benefit the 
public by providing more comprehensive and specific guidance regarding 
registering collective marks and certification marks. The current rules 
incorporate by reference the trademark and service mark application 
rules; however, wording in the trademark and service mark application 
rules sometimes may not be specifically suited to collective and 
certification mark applications. Therefore, the USPTO proposes to 
revise the rules in parts 2 and 7 of title 37 of the Code of Federal 
Regulations to codify current USPTO practice in TMEP sections 1302, 
1303 et seq., 1304, and 1306, and to state clearly and provide 
sufficient detail regarding the requirements for collective and 
certification mark applications. The USPTO also seeks to harmonize 
registration maintenance requirements with application requirements 
where appropriate.
    Further, proposed rule changes beyond those related to collective 
marks and certification marks will provide consistency with changes 
made regarding those marks and streamline the rules, by consolidating 
text and incorporating headings, for easier use.
    To provide additional context for the ensuing discussion of the 
amended and revised rules regarding collective marks and certification 
marks, the following is a brief description of those types of marks.
    There are two types of collective marks as defined by section 45 of 
the Trademark Act of 1946, as amended (``the Act''): (1) collective 
trademarks or collective service marks; and (2) collective membership 
marks. 15 U.S.C. 1127. A collective trademark or collective service 
mark is used by members of a collective organization to identify and 
distinguish their goods or services from those of nonmembers. TMEP 
section 1303. By contrast, collective membership marks are used by 
members of a collective organization to indicate membership in the 
collective membership organization. TMEP section 1304.02.
    Certification marks are used by authorized users to indicate the 
following: (1) Goods or services have been certified as to quality, 
materials, or mode of manufacture; (2) goods or services have been 
certified to originate in a specific geographic region; and/or (3) the 
work or labor on goods or for services was certified to have been 
performed by a member of a union or other organization, or to certify 
that the performer meets certain standards. TMEP section 1306.01. A 
certification mark is similar to a collective trademark or collective 
service mark except that the users are not members of a collective 
organization. See TMEP section 1306.09(a). That is, a collective 
trademark or collective service mark is used by members of an 
organization who meet the collective organization's standards of 
admission, while a certification mark is used by parties whose products 
or services meet the certifying organization's established standards.
    Summary of Major Provisions: As stated above, the USPTO proposes to 
revise the rules in parts 2 and 7 of title 37 of the Code of Federal 
Regulations to codify current USPTO practice in TMEP sections 1302, 
1303 et seq., 1304, and 1306, and to state clearly, and provide 
sufficient detail regarding, the requirements for collective and 
certification mark applications, as well as to harmonize registration 
maintenance requirements with application requirements where 
appropriate. Further, the USPTO proposes to revise additional rules 
within these parts for consistency and clarity.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).

Discussion of Specific Rules

    The USPTO proposes to amend the following rules: Sec. Sec.  2.2, 
2.20, 2.32-.34, 2.41-2.42, 2.44-2.45, 2.56, 2.59, 2.71, 2.74, 2.76, 
2.86, 2.88-2.89, 2.146, 2.161, 2.167, 2.173, 2.175, 2.183, 2.193, 7.1, 
and 7.37.

PART 2: RULES OF PRACTICE IN TRADEMARK CASES

Rules Applicable to Trademark Cases

    The USPTO proposes to amend and add terms to Sec.  2.2, regarding 
definitions, to delete repetitious wording elsewhere in the rules 
wherever possible. Specifically, the USPTO proposes to amend Sec.  
2.2(h) to clarify that the definition of ``international application'' 
is limited to an application for international registration seeking an 
extension of protection to the United States or a subsequent 
designation of an international registration to the United States. The 
USPTO also proposes to add Sec.  2.2(i) through (n) to set forth the 
following new definitions: subsequent designation; holder; use in 
commerce; bona fide intention to use the mark in

[[Page 9680]]

commerce; bona fide intention, and is entitled, to exercise legitimate 
control over the use of the mark in commerce; and verified statement, 
verify, verified, or verification.

Declarations

    The USPTO proposes to amend Sec.  2.20, regarding declarations in 
lieu of oaths, to delete from the introductory text the term 
``verification,'' to correspond with the definition of that term in 
Sec.  2.2(n), and to add the term ``declaration.''

Application for Registration

    The USPTO proposes to amend the rule title of Sec.  2.32 to 
``Requirements for a complete trademark or service mark application.'' 
In addition, the USPTO proposes to add Sec.  2.32(f) to cross-reference 
Sec.  2.44 for the requirements for collective mark applications, and 
to add Sec.  2.32(g) to cross-reference Sec.  2.45 for the requirements 
for certification mark applications.
    The USPTO proposes to amend Sec.  2.33, regarding verified 
statements for trademarks or service marks, to ensure the language 
corresponds with other proposed rules, including the proposed new 
definitions in Sec.  2.2. Also, the USPTO proposes to add Sec.  2.33(f) 
to set forth the type of verified statement required for concurrent use 
applications under Sec.  2.42. Additionally, the USPTO proposes to 
amend the title of Sec.  2.33 to ``Verified statement for a trademark 
or service mark.''
    The USPTO proposes to amend Sec.  2.34, regarding filing bases for 
trademark or service mark applications, to ensure the language 
corresponds with other proposed rules, including the proposed new 
definitions in Sec.  2.2, to delete the definition of ``commerce'' 
provided in Sec.  2.34(c) as redundant of section 45 of the Act, and to 
correct a typographical error. The USPTO further proposes to amend the 
title to ``Bases for filing a trademark or service mark application.'' 
Additionally, the USPTO proposes to amend Sec.  2.34(a)(1)(iv) to 
delete ``actually'' as a redundant term for consistency with proposed 
amendments to Sec.  2.56(b)(2) and (c) regarding specimens, Sec.  
2.76(b)(2) regarding amendments to allege use, Sec.  2.88(b)(2) 
regarding statements of use, and Sec.  2.161(g)(1) regarding affidavits 
or declarations of use in commerce or excusable nonuse under section 8 
of the Act. Lastly, the USPTO proposes to revise current Sec.  
2.34(b)(1)-(3) by condensing the text in Sec.  2.34(b), and add the 
title ``More than one basis.''
    The USPTO proposes to revise Sec.  2.41, regarding proof of 
distinctiveness under section 2(f) of the Act, to specify the type of 
proof required to establish such a claim for trademarks, service marks, 
collective marks, and certification marks, and to make other changes 
consistent with current USPTO practice. Specifically, the USPTO 
proposes to revise Sec.  2.41 as follows: in Sec.  2.41(a), add the 
title ``For a trademark or service mark'' and set forth in Sec.  
2.41(a)(1)-(3) the current text in existing Sec.  2.41; in Sec.  
2.41(b), add the title ``For a collective trademark or collective 
service mark'' and set forth in Sec.  2.41(b)(1)-(3) the requirements 
for collective trademarks or collective service marks. The USPTO also 
proposes to add the following to Sec.  2.41: in Sec.  2.41(c), set 
forth the requirements for collective membership marks; and in Sec.  
2.41(d), set forth the requirements for certification marks. Further, 
the USPTO proposes additional revisions to correspond with the proposed 
new definitions in Sec.  2.2 and include subsections with subheadings 
that set forth the three types of proof that can be submitted to 
establish distinctiveness under 15 U.S.C. 1052(f). In addition, 
proposed Sec.  2.41(a)(1), (c)(1), and (d)(1) add the term ``active'' 
to clarify and codify current USPTO practice, see TMEP section 
1212.04(d), that evidence of distinctiveness must be based on ownership 
of an active prior registration on the Principal Register or under the 
Trademark Act of 1905. Further, proposed Sec.  2.41(a)(1) and (d)(1) 
clarify that such registration must be for goods or services 
sufficiently similar to those in the application, and proposed Sec.  
2.41(c)(1) adds that the nature of the collective membership 
organization must be sufficiently similar to the prior registration, 
and such requirement in proposed Sec.  2.41(a)(1), (d)(1), and (c)(1) 
codifies precedential case law and current USPTO practice, see In re 
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1347, 57 USPQ2d 1807, 
1812 (Fed. Cir. 2001), In re Rogers, 53 USPQ2d 1741, 1744 (TTAB 1999), 
TMEP sections 1212.04(c), 1212.09(a). Lastly, proposed Sec.  2.41(e) 
excludes from Sec.  2.41(d) geographic matter in certification marks 
that indicate regional origin, because 15 U.S.C. 1052(e)(2) explicitly 
excepts such terms in certification marks including indications of 
regional origin. See TMEP section 1306.02.
    The USPTO proposes to revise Sec.  2.42, regarding concurrent use 
requirements, to incorporate requirements for collective marks and 
certification marks, as well as to make other changes consistent with 
current USPTO practice. Specifically, the USPTO proposes to revise 
Sec.  2.42 as follows: add Sec.  2.42(a), to require an application for 
registration as a lawful concurrent user to assert use in commerce in 
accordance with current USPTO practice, see TMEP section 1207.04(b), 
and the USPTO's ``Trademark Trial and Appeal Board Manual of 
Procedure'' section 1101.01, to require an application for concurrent 
use be for a mark seeking registration on the Principal Register under 
the Act, in accordance with current Sec.  2.99(g), and to include all 
relevant application requirements, including Sec.  2.44 for collective 
marks or Sec.  2.45 for certification marks, if applicable. In 
addition, the USPTO proposes to add Sec.  2.42(b) to enumerate the 
additional requirements for concurrent use applications set forth in 
the existing second sentence of current Sec.  2.42 and to modify such 
text to incorporate the requirements for collective marks and 
certification marks. Further, the USPTO proposes to add Sec.  2.42(c) 
to cross-reference current Sec.  2.73, pertaining to amending an 
application to recite concurrent use, and to add Sec.  2.42(d) to 
cross-reference current Sec.  2.99, pertaining to concurrent use 
proceedings at the Trademark Trial and Appeal Board.
    The USPTO proposes to revise Sec.  2.44, regarding collective 
marks, to include all requirements for a collective mark application in 
one rule. Specifically, the USPTO proposes to revise Sec.  2.44 as 
follows: in Sec.  2.44(a), enumerate the application requirements for a 
collective mark, incorporating the relevant application requirements 
from current Sec.  2.32, regarding the requirements for a complete 
trademark or service mark application, current Sec.  2.44, and current 
USPTO practice, see TMEP sections 1303.02 et seq. for collective 
trademarks and collective service marks, and TMEP section 1304.08(c)-
(f) for collective membership marks; and in Sec.  2.44(b), specify the 
requirements for a verified statement that was not filed within a 
reasonable time after signing or was omitted from the application to 
correspond with proposed Sec.  2.33(c) and Sec.  2.34(a)(1)(i), (a)(2), 
(a)(3)(i), and (a)(4)(ii). The USPTO also proposes to add the following 
to Sec.  2.44: in proposed Sec.  2.44(c), specify the requirements for 
claiming more than one filing basis in the application to correspond 
with proposed Sec.  2.34(b); in proposed Sec.  2.44(d), specify the 
requirements for the verification in a concurrent use application to 
correspond with proposed Sec.  2.33(f); and in proposed Sec.  2.44(e), 
cross-reference the multiple-class application requirements rule in 
proposed Sec.  2.86 for consistency with proposed Sec.  2.32(e). 
Further, the USPTO proposes additional revisions to correspond with the 
proposed new

[[Page 9681]]

definitions in Sec.  2.2. Also, the USPTO proposes to amend the title 
to ``Requirements for a complete collective mark application'' for 
consistency with the title in proposed Sec.  2.32 regarding trademark 
and service mark application requirements.
    The USPTO proposes to revise Sec.  2.45, regarding certification 
marks, to include all requirements for a certification mark application 
in one rule, and to be consistent with the formatting of proposed Sec.  
2.44 for collective mark application requirements. Specifically, the 
USPTO proposes to revise Sec.  2.45 as follows: in Sec.  2.45(a), 
enumerate the application requirements for a certification mark, 
incorporating the relevant application requirements from current Sec.  
2.32, regarding the requirements for a complete trademark or service 
mark application, current Sec.  2.45, and current USPTO practice, see 
TMEP sections 1306.06 et seq.; and in Sec.  2.45(b), specify the 
requirements for a verified statement that was not filed within a 
reasonable time after signing or was omitted from the application to 
correspond with proposed Sec.  2.33(c) and Sec.  2.34(a)(1)(i), (a)(2), 
(a)(3)(i), and (a)(4)(ii) and proposed Sec.  2.44(b). The USPTO also 
proposes to add the following to Sec.  2.45: in proposed Sec.  2.45(c), 
specify the requirements for claiming more than one filing basis in the 
application to correspond with proposed Sec.  2.34(b) and proposed 
Sec.  2.44(c); in proposed Sec.  2.45(d), specify the requirements for 
the verification in a concurrent use application to correspond with 
proposed Sec.  2.33(f) and proposed Sec.  2.44(d); in proposed Sec.  
2.45(e), cross-reference the multiple-class application requirements 
rule in proposed Sec.  2.86 for consistency with proposed Sec.  2.32(e) 
and proposed Sec.  2.44(e); and in proposed Sec.  2.45(f), prohibit a 
single application from including both a certification mark and another 
type of mark, because the USPTO's databases preclude capturing 
different legal requirements for multiple types of marks in a single 
application, and also prohibit the registration of the same mark for 
the same goods and/or services as both a certification mark and another 
type of mark, in accordance with sections 4 and 14(5)(B) of the Act and 
current USPTO practice, see TMEP section 1306.05(a). Further, the USPTO 
proposes additional revisions to correspond with the proposed new 
definitions in Sec.  2.2. Also, the USPTO proposes to amend the rule 
title to ``Requirements for a complete certification mark application; 
restriction on certification mark application'' for consistency with 
the title of proposed Sec.  2.32 regarding trademark and service mark 
application requirements and proposed Sec.  2.44 regarding collective 
mark application requirements.

Specimens

    The USPTO proposes to amend Sec.  2.56(b)(2) and (c), regarding 
specimens, to delete the term ``actually'' as a redundant term and for 
consistency with similar proposed amendments to Sec.  2.34(a)(1)(iv), 
Sec.  2.76(b)(2), Sec.  2.88(b)(2), and Sec.  2.161(g). Additionally, 
the USPTO proposes to amend Sec.  2.56(b)(5) to delete ``to certify'' 
and replace it with ``to reflect certification of.'' Lastly, the USPTO 
proposes to amend Sec.  2.56(d)(3), to delete ``audio or video cassette 
tape recording, CD-ROM'' and replace it with ``compact disc, digital 
video disc,'' in accordance with current practice, see TMEP section 
904.03(d), (f).
    The USPTO proposes to amend Sec.  2.59, regarding substitute 
specimens, to change existing text to ``verified statement'' to 
correspond with Sec.  2.2(n). Additionally, the USPTO proposes to amend 
Sec.  2.59(a) to reference substitute specimens for a collective 
membership mark.

Amendment of Application

    The USPTO proposes to amend Sec.  2.71(a), regarding amendments to 
the identification of goods and/or services, to reference amending the 
description of the nature of a collective membership mark. In addition, 
the USPTO proposes to amend Sec.  2.71(b)-(d) to change existing text 
to correspond with Sec.  2.2(n). Further, the USPTO proposes to add 
Sec.  2.71(e) to set forth that an amendment that would materially 
alter a certification statement pursuant to proposed Sec.  
2.45(a)(4)(i)(A) and (a)(4)(ii)(A), is not permitted, which is 
consistent with proposed Sec.  2.173(f) regarding such amendments after 
registration.
    The USPTO proposes to amend Sec.  2.74(b), regarding the form and 
signature of an amendment, to change existing text to ``verification'' 
to correspond with Sec.  2.2(n).
    The USPTO proposes to amend Sec.  2.76, regarding amendments to 
allege use, to include the relevant requirements for collective marks 
and certification marks, and to be consistent with proposed Sec.  2.88 
for statements of use. Specifically, the USPTO proposes to amend Sec.  
2.76 as follows: in Sec.  2.76(a), add the title ``When to file an 
amendment to allege use;'' in Sec.  2.76(a)(1) and (a)(2), include the 
text from existing Sec.  2.76(a) and (c), except delete the language 
regarding the USPTO returning an untimely filed amendment to allege use 
because under current practice the USPTO will not return or review such 
amendment; in Sec.  2.76(b), add the title ``A complete amendment to 
allege use'' and include in Sec.  2.76(b)(1)-(5) the text from existing 
Sec.  2.76(b) and (c) and the requirements for collective marks and 
certification marks, in Sec.  2.76(b)(6), require the title ``Amendment 
to Allege Use'' on the first page of the document for those documents 
not filed using the Trademark Electronic Application System (TEAS); in 
Sec.  2.76(c), add the title ``Minimum filing requirements for a timely 
filed amendment to allege use'' and include the text from existing 
Sec.  2.76(e) and change existing text to ``verified statement'' to 
correspond with Sec.  2.2(n); in Sec.  2.76(d), add the title 
``Deficiency notification'' and include the text from existing Sec.  
2.76(g); in Sec.  2.76(e), add the title ``Notification of refusals and 
requirements'' and include the text from existing Sec.  2.76(f), except 
the last two sentences regarding the USPTO providing notification of 
acceptance of an amendment to allege use because current practice is 
that a notice of approval for publication provides such notice; in 
Sec.  2.76(f), add the title ``Withdrawal'' and include the text from 
existing Sec.  2.76(h); in Sec.  2.76(g), add the title ``Verification 
not filed within reasonable time,'' and include the text from existing 
Sec.  2.76(i) and change existing text to ``verified statement'' to 
correspond with Sec.  2.2(n); in Sec.  2.76(h), add the title ``An 
amendment to allege use is not a response but may include amendments'' 
and include the text from the last sentence of existing Sec.  2.76(f) 
and clarify that an amendment to allege use may include amendments in 
accordance with Sec.  2.59 and Sec.  2.71 through Sec.  2.75; in Sec.  
2.76(i), specify the requirements for the verification in a concurrent 
use application under Sec.  2.42; and in Sec.  2.76(j), add the title 
``Multiple-class application.''

Classification

    The USPTO proposes to amend Sec.  2.86, regarding multiple-class 
application requirements, to include the requirements for collective 
marks and certification marks, and to make other changes consistent 
with current USPTO practice. Specifically, the USPTO proposes to amend 
Sec.  2.86 as follows: in Sec.  2.86(a), set forth the requirements for 
a single trademark, service mark, and/or collective mark application 
for multiple classes, clarifying that such an application must satisfy 
either the trademark or service mark application requirements in Sec.  
2.32 or the collective mark application requirements in Sec.  2.44, in 
addition to providing the applicable

[[Page 9682]]

goods, services, or nature of the collective membership organization in 
each appropriate international or U.S. class, and providing a fee, 
dates of use, and a specimen for each class based on use in commerce or 
a bona fide intent statement for each class based on section 1(b), 44, 
or 66(a) of the Act; in Sec.  2.86(b), set forth the requirements for a 
single certification mark application for goods and services, 
clarifying that such multiple class application must satisfy the 
certification mark application requirements in Sec.  2.45, in addition 
to identifying the applicable goods and services in each appropriate 
U.S. class for applications filed under section 1 or 44 or in the 
international classes assigned by the World Intellectual Property 
Organization's International Bureau for applications filed under 
section 66(a) of the Act, and providing a fee, dates of use, and a 
specimen for each class based on use in commerce or a bona fide intent 
statement for each class based on section 1(b), 44, or 66(a) of the 
Act; and in Sec.  2.86(c), amend to include the text in the last 
sentence of existing Sec.  2.86(a)(3) regarding an applicant not 
claiming both section 1(a) and 1(b) of the Act for identical goods or 
services in a single application. The USPTO also proposes to add the 
following to Sec.  2.86: in proposed Sec.  2.86(d), restrict a single 
application from including goods or services in U.S. Classes A and/or B 
and either goods or services in any international class or with a 
collective membership organization in U.S. Class 200, for consistency 
with proposed Sec.  2.45(f); in proposed Sec.  2.86(e), add the text 
from existing Sec.  2.86(b) regarding multiple-class requirements for 
amendments to allege use and statements of use; and in Sec.  2.86(f), 
add the text in existing Sec.  2.86(c) regarding issuing a single 
registration certificate for multiple-class applications. Additionally, 
the USPTO proposes to amend the rule title to ``Multiple-class 
applications.''

Post Notice of Allowance

    The USPTO proposes to amend Sec.  2.88, regarding statements of 
use, to include the relevant requirements for collective marks and 
certification marks, and to be consistent with proposed Sec.  2.76 for 
amendments to allege use. Specifically, the USPTO proposes to amend 
Sec.  2.88 as follows: in Sec.  2.88(a), add the title ``When to file a 
statement of use;'' in Sec.  2.88(a)(1) and (a)(2), include the text 
from existing Sec.  2.88(a), except delete the language regarding the 
USPTO returning a premature statement of use filed prior to issuance of 
a notice of allowance because under current practice the USPTO will not 
return or review such amendment, and include the text from existing 
Sec.  2.88(c), except for the last sentence; in Sec.  2.88(b), add the 
title ``A complete statement of use,'' include in Sec.  2.88 (b)(1)-(3) 
the text from existing Sec.  2.88(b), in Sec.  2.88(b)(1)(iii) 
additionally include the last sentence from existing Sec.  2.88(c), in 
Sec.  2.88(b)(1)(iv) additionally include the text from existing Sec.  
2.88(i)(1)-(2), in Sec.  2.88 (b)(6) require the title ``Statement of 
Use'' on the first page of the document for those documents not filed 
using the TEAS, and in Sec.  2.88(b) incorporate the requirements for 
collective marks and certification marks and change existing text to 
``verified statement'' to correspond with Sec.  2.2(n); in Sec.  
2.88(c), add the title ``Minimum filing requirements for a timely filed 
statement of use,'' include the text in existing Sec.  2.88(e), and in 
Sec.  2.88(c), change existing text to ``verified statement'' to 
correspond with Sec.  2.2(n); in Sec.  2.88(d), add the title 
``Deficiency notification'' and include the text from existing Sec.  
2.88(g), except for the last sentence; in Sec.  2.88(e), add the title 
``Notification of refusals and requirements'' and include the text from 
existing Sec.  2.88(f), except delete the language regarding the USPTO 
providing notification of acceptance of a statement of use because the 
registration certificate provides such notice; in Sec.  2.88(f), add 
the title ``Statement of use may not be withdrawn'' and include the 
text in the last sentence of existing Sec.  2.88(g); in Sec.  2.88(g), 
add the title ``Verification not filed within reasonable time,'' 
include the text from existing Sec.  2.88(k), and change existing text 
to ``verified statement'' to correspond with Sec.  2.2(n); in Sec.  
2.88(h), add the title ``Amending the application,'' include the text 
from the second to last sentence of existing Sec.  2.88(f), and specify 
that statements of use may include amendments in accordance with Sec.  
2.51, Sec.  2.59, and Sec.  2.71 through Sec.  2.75, as the TEAS on-
line statement of use form will now accept such amendments within the 
same form; in Sec.  2.88(i), add the requirements for the verification 
in a concurrent use application under Sec.  2.42; in Sec.  2.88(j), add 
the title ``Multiple-class application'' and include the text from 
existing Sec.  2.88(l); and in Sec.  2.88(k), add the title 
``Abandonment'' and include the text from existing Sec.  2.88(h). 
Additionally, the USPTO proposes to amend the rule title to ``Statement 
of use after notice of allowance.''
    The USPTO proposes to amend Sec.  2.89, regarding submitting a 
request for an extension of time to file a statement of use 
(``extension request''), to include the relevant requirements for 
collective marks and certification marks as well as to make other 
changes consistent with current USPTO practice. The USPTO proposes to 
amend Sec.  2.89 as follows: in Sec.  2.89(a), add the title ``First 
extension request after issuance of notice of allowance;'' in Sec.  
2.89(a)(3), change existing text to ``verified statement'' to 
correspond with Sec.  2.2(n), and incorporate the requirements for 
collective marks and certification marks; in Sec.  2.89(b), add the 
title ``Subsequent extension requests'' and a cross-reference in 
proposed Sec.  2.89(b)(2) to proposed Sec.  2.89(a)(2), as the fee 
requirements are the same for first and subsequent extension requests; 
in Sec.  2.89(c), add the title ``Four subsequent extension requests 
permitted;'' in Sec.  2.89(d), add the title ``Good cause,'' enumerate 
in proposed Sec.  2.89(d)(1)-(3) the requirements for showing good 
cause for all marks, including collective marks and certification 
marks, and include the text from existing Sec.  2.89(d) in (d)(1); in 
Sec.  2.89(e), add the title ``Extension request filed in conjunction 
with or after a statement of use'' and amend the current text for 
clarity; in Sec.  2.89(f), add the title ``Goods or services'' and 
incorporate the requirements for collective marks and certification 
marks; in Sec.  2.89(g), add the title ``Notice of grant or denial;'' 
and in Sec.  2.89(h), add the title ``Verification not filed within 
reasonable time,'' incorporate the requirements for collective marks 
and certification marks, and change existing text to ``verified 
statement'' to correspond with Sec.  2.2(n).

Petitions and Action by the Director

    The USPTO proposes to amend Sec.  2.146(c), regarding petitions to 
the Director, to change existing text to ``verified statements'' to 
correspond with Sec.  2.2(n). Additionally, the USPTO proposes to amend 
Sec.  2.146(d) to specify that a petition regarding a cancelled or 
expired registration must be submitted to the Office within two months 
of the date when Office records are updated to show the registration as 
cancelled or expired, to ensure that all interested parties will be 
able to accurately determine the deadline for filing a petition under 
these circumstances.

Cancellation for Failure To File Affidavit or Declaration

    The USPTO proposes to amend Sec.  2.161, regarding affidavits or 
declarations of use in commerce or excusable nonuse under section 8 of 
the Act, to include the relevant requirements for collective marks and 
certification marks, to change existing text to correspond with Sec.  
2.2, and to make other changes consistent with

[[Page 9683]]

current USPTO practice. The USPTO proposes to amend Sec.  2.161(g) to 
cross-reference current Sec.  2.56 regarding specimens and remove Sec.  
2.161(g)(1)-(3), as similar language appears in current Sec.  2.56. The 
USPTO proposes to add Sec.  2.161(i) and (j), as follows, to include 
requirements for collective marks and certification marks to harmonize 
the USPTO's post registration practice with current examination 
practice, and to be consistent with proposed Sec.  7.37(i)-(j), 
regarding affidavits or declarations of use in commerce or excusable 
nonuse under section 71 of the Act: in Sec.  2.161(i), add the title 
``Additional requirements for a collective mark'' and the additional 
requirements for such marks, see TMEP sections 1303.01, 1303.02(c)(i), 
1304.08(f)(i)-(ii); in Sec.  2.161(j), add the title ``Additional 
requirements for a certification mark'' and the additional requirements 
for such marks, see TMEP section 1306.06(f)(i)-(iii), (f)(v). The USPTO 
also proposes to add Sec.  2.161(k) to cross-reference to Sec.  7.37 
regarding the requirements for a complete affidavit or declaration of 
use in commerce or excusable nonuse for a registration with an 
underlying application based on section 66(a). The sunset provision in 
current Sec.  2.161(h)(3), in which Sec.  2.161(h)(2) will no longer be 
applied after June 21, 2014, to affidavits or declarations filed under 
section 8 of the Act, is not altered by this rulemaking.

Affidavit or Declaration Under Section 15

    The USPTO proposes to amend Sec.  2.167, regarding an affidavit or 
declaration of incontestability under section 15 of the Act, to include 
the relevant requirements for collective marks and certification marks, 
to change existing text to ``verified'' to correspond with Sec.  
2.2(n), and to make other changes consistent with current USPTO 
practice. Specifically, the USPTO proposes to amend Sec.  2.167(f) to 
delete the last sentence of the existing rule because, under current 
USPTO practice, notification acknowledging receipt of the affidavit or 
declaration only issues if the requirements of Sec.  2.167(a) through 
(g) have been satisfied, consistent with proposed Sec.  2.167(i). See 
TMEP section 1605. The USPTO also proposes to add Sec.  2.167(h), (i), 
(j), and (k), as follows, to clarify current USPTO practice: in Sec.  
2.167(h), clarify that notification will be provided to an owner that 
an affidavit or declaration cannot be acknowledged if the affidavit or 
declaration fails to satisfy any requirements in paragraphs Sec.  
2.167(a) through (g), that the affidavit or declaration will be 
abandoned if a response is not received in the time specified in the 
notification; in Sec.  2.167(i), clarify that a notice of 
acknowledgement will only issue if an affidavit or declaration 
satisfies Sec.  2.167(a) through (g); in Sec.  2.167(j), clarify that 
an affidavit or declaration may be abandoned by petitioning the 
Director under Sec.  2.146 either before or after a notice of 
acknowledgement issues; and in Sec.  2.167(k), clarify that a new 
affidavit or declaration with a new fee may be filed if an affidavit or 
declaration is abandoned. See TMEP section 1605.

Correction, Disclaimer, Surrender, Etc.

    The USPTO proposes to amend Sec.  2.173, regarding an amendment to 
a registration, to include the relevant requirements for collective 
marks and certification marks, to change existing text to correspond 
with Sec.  2.2, and to make other changes consistent with current USPTO 
practice. The USPTO proposes to make the following amendments to Sec.  
2.173: in Sec.  2.173(b)(2), cross-reference Sec.  2.193(e)(6), 
regarding trademark signature requirements, and delete the language in 
this subsection that is similar to wording in current Sec.  
2.193(e)(6); in Sec.  2.173(d), clarify that an amendment that would 
materially alter the mark will not be permitted in accordance with 
section 7(e) of the Act; in Sec.  2.173(e), amend the title to 
``Amendment of identification of goods, services, or collective 
membership organization,'' and in the text of (e), add a reference to a 
description of the nature of the collective membership organization; 
and in Sec.  2.173(f), amend the title to ``Amendment of certification 
statement for certification marks'' and set forth the prohibition 
regarding amending a certification statement, as specified in proposed 
Sec.  2.45(a)(4)(i)(A) and (a)(4)(ii)(A), in accordance with section 
7(e) of the Act and for consistency with proposed Sec.  2.71(e). The 
USPTO proposes to redesignate current Sec.  2.173(f) as Sec.  2.173(g), 
and redesignate current Sec.  2.173(g) as Sec.  2.173(h). The USPTO 
also proposes to add Sec.  2.173(i) with the heading ``No amendment to 
add or delete a section 2(f) claim of acquired distinctiveness'' to 
clarify that the USPTO will not permit an amendment seeking the 
addition or elimination of a claim of acquired distinctiveness, just as 
an owner cannot amend a registration from the Supplemental to the 
Principal Register. See TMEP section 1609.09.
    The USPTO proposes to amend Sec.  2.175(b)(2), regarding correcting 
an owner's mistake, to change existing text to ``verified'' to 
correspond with Sec.  2.2(n).

Term and Renewal

    The USPTO proposes to amend Sec.  2.183(d), regarding requirements 
for a renewal application, to specify that a renewal application may 
cover less than all the classes in a registration, in addition to 
covering less than all the goods or services in a registration.

General Information and Correspondence in Trademark Cases

    The USPTO proposes to amend Sec.  2.193, regarding trademark 
correspondence and signature requirements, to correct a typographical 
error in Sec.  2.193(c)(2), to change existing text in Sec.  
2.193(e)(1) to correspond with Sec.  2.2(n), and to revise the final 
sentence of Sec.  2.193(f) to delete reference to Sec.  10.23(c)(15) 
and instead refer to Sec.  11.804, as part 10 of this chapter has been 
removed and reserved and the content in Sec.  11.804 corresponds with 
content previously set out in Sec.  10.23.

PART 7: RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING 
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF 
MARKS

Subpart A--General Information

    The USPTO proposes to amend Sec.  7.1, regarding definitions, to 
add Sec.  7.1(f), which incorporates by reference the definitions in 
proposed Sec.  2.2(k) and (n), to apply to filings pursuant to the 
Protocol relating to the Madrid Agreement concerning the international 
registration of marks.

Subpart F--Affidavit Under Section 71 of the Act for Extension of 
Protection to the United States

    The USPTO proposes to amend Sec.  7.37, regarding affidavits or 
declarations of use in commerce or excusable nonuse under section 71 of 
the Act, to include the relevant requirements for collective marks and 
certification marks and to change existing text to correspond with 
Sec.  2.2. Specifically, the USPTO proposes to add Sec.  7.37(i) and 
(j) as follows, to include requirements for collective marks and 
certification marks so as to harmonize the USPTO's post registration 
practice with current examination practice, and to be consistent with 
proposed Sec.  2.161(i)-(j), regarding affidavits or declarations of 
use in commerce or excusable nonuse under section 8 of the Act: in 
proposed Sec.  7.37(i), add the title ``Additional requirements for a 
collective mark'' and the additional requirements for such marks, see 
TMEP sections 1303.01, 1303.02(c)(i), 1304.08(f)(i)-(ii), 1904.02(d); 
in proposed Sec.  7.37(j), add

[[Page 9684]]

the title ``Additional requirements for a certification mark'' and 
additional requirements for such marks, see TMEP sections 
1306.06(f)(i)-(iii), (f)(v), 1904.02(d). The sunset provision in 
current Sec.  7.37(h)(3), in which Sec.  7.37(h)(2) will no longer be 
applied after June 21, 2014, to affidavits or declarations filed under 
section 71 of the Act, is not altered by this rulemaking.

Rulemaking Considerations

    Administrative Procedure Act: The changes in this proposed 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See Nat'l Org. of Veterans' Advocates v. Sec'y of 
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that 
clarifies interpretation of a statute is interpretive); Bachow Commc'ns 
Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an 
application process are procedural under the Administrative Procedure 
Act); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 
2001) (rules for handling appeals were procedural where they did not 
change the substantive standard for reviewing claims).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this proposed rulemaking are not required pursuant to 5 
U.S.C. 553(b) or (c), or any other law. See Cooper Techs. Co. v. Dudas, 
536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and 
thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment 
rulemaking for ``interpretative rules, general statements of policy, or 
rules of agency organization, procedure, or practice,'' quoting 5 
U.S.C. 553(b)(A)). The USPTO, however, is publishing these proposed 
rule changes for comment as it seeks the benefit of the public's views 
regarding collective and certification marks.
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 or any other 
law, neither a Regulatory Flexibility Act analysis, nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601, et seq.), is 
required. See 5 U.S.C. 603.
    In addition, for the reasons set forth herein, the Deputy General 
Counsel for General Law of the United States Patent and Trademark 
Office (USPTO) has certified to the Chief Counsel for Advocacy of the 
Small Business Administration that rule changes proposed in this 
document will not have a significant economic impact on a substantial 
number of small entities. See 5 U.S.C. 605(b).
    To the extent the rule changes proposed in this document primarily 
codify existing USPTO practice set forth in the TMEP and precedential 
case law regarding collective marks and certification marks, those 
proposed rule changes impose no new burdens on applicants and 
registration owners. Some rule changes have been proposed to harmonize 
registration maintenance requirements with current application 
requirements. The USPTO also has proposed to change existing practice 
regarding maintenance requirements regarding certification marks to 
require filers of the first affidavit of use after registration in 
registrations based on Trademark Act Sections 44 and 66(a) to submit 
certification standards, and to require that all filers of such 
affidavits submit updated standards if the standards have changed or a 
statement indicating they have not. The USPTO does not collect or 
maintain statistics in trademark cases on small versus large entity 
applicants, and this information would be required in order to 
precisely calculate the number of small entities that would be 
affected. However, these proposed rule changes will have no impact on 
the vast majority of trademark owners, and only a slight effect on the 
very small subset of certification mark registrations, where standards 
previously have not been provided, or change post registration. 
Certification marks account for approximately 0.2% of the total number 
of registered marks in the USPTO database (approximately 4,000 
registrations out of a total of approximately 2,000,000 registrations). 
For fiscal year 2013, affidavits of use for all filers have totaled 
approximately 170,000 of which approximately 0.2%, or 340 affidavits, 
were submitted for certification mark registrations. Of those 340 
affidavits, only a small subset will be required to include 
certification standards or revised standards. Even in the event that 
standards must be submitted, the burden is quite minimal, as it merely 
involves attaching an already existing document to a filing that must 
otherwise be made to maintain the registration. For these reasons, the 
proposed rule changes will not have a significant economic impact on a 
substantial number of small entities.
    Executive Order 12866 (Regulatory Planning and Review): The 
proposed rulemaking has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).
    Executive Order 13563 (Improving Regulation and Regulatory Review): 
The USPTO has complied with Executive Order 13563 (Jan. 18, 2011). 
Specifically, the USPTO has, to the extent feasible and applicable: (1) 
Made a reasoned determination that the benefits justify the costs of 
the proposed rule changes; (2) tailored the proposed rules to impose 
the least burden on society consistent with obtaining the regulatory 
objectives; (3) selected a regulatory approach that maximizes net 
benefits; (4) specified performance objectives; (5) identified and 
assessed available alternatives; (6) provided the public with a 
meaningful opportunity to participate in the regulatory process, 
including soliciting the views of those likely affected prior to 
issuing a notice of proposed rulemaking, and provided on-line access to 
the rulemaking docket; (7) attempted to promote coordination, 
simplification, and harmonization across government agencies and 
identified goals designed to promote innovation; (8) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (9) ensured the objectivity of scientific 
and technological information and processes, to the extent applicable.
    Executive Order 13132 (Federalism): This proposed rulemaking does 
not contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the final rule and other required 
information to the U.S. Senate, the U.S. House of Representatives, and 
the Comptroller General of the Government Accountability Office. The 
changes proposed in this document are not expected to result in an 
annual effect on the economy of 100 million dollars or more, a major 
increase in costs or prices, or significant adverse effects on 
competition, employment, investment, productivity, innovation, or the 
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this 
document is not expected to result in a ``major rule'' as defined in 5 
U.S.C. 804(2).
    Unfunded Mandates Reform Act of 1995: The changes set forth in this 
proposed rulemaking do not involve a Federal intergovernmental mandate 
that will result in the expenditure by State, local, and tribal 
governments, in the aggregate, of 100 million dollars (as adjusted) or 
more in any one year, or a Federal private sector mandate that will 
result in the expenditure by the private

[[Page 9685]]

sector of 100 million dollars (as adjusted) or more in any one year, 
and will not significantly or uniquely affect small governments. 
Therefore, no actions are necessary under the provisions of the 
Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
    Paperwork Reduction Act: This proposed rulemaking involves 
information collection requirements which are subject to review by the 
U.S. Office of Management and Budget (OMB) under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The USPTO has 
determined that there would be no new information collection 
requirements or impacts to existing information collection requirements 
associated with this proposed rulemaking. The collections of 
information involved in this proposed rulemaking have been reviewed and 
previously approved by OMB under control numbers 0651-0009, 0651-0050, 
0651-0051, 0651-0054, 0651-0055, 0651-0056, and 0651-0061.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information subject to the requirements 
of the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, Trademarks, International 
Registration.

    For the reasons given in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the USPTO 
proposes to amend parts 2 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

0
2. Amend Sec.  2.2 as follows:
0
a. Revise paragraphs (f) and (h).
0
b. Add paragraphs (i) through (n).


Sec.  2.2  Definitions.

* * * * *
    (f) The acronym TEAS means the Trademark Electronic Application 
System, available at http://www.uspto.gov.
* * * * *
    (h) The term international application as used in this part means 
an application seeking an extension of protection of an international 
registration to the United States or a subsequent designation of the 
international registration to the United States, and is filed under the 
Protocol Relating to the Madrid Agreement Concerning the International 
Registration of Marks. See section 60 of the Act.
    (i) The term subsequent designation as used in this part means a 
request for extension of protection of an international registration to 
the United States made after the International Bureau registers the 
mark.
    (j) The term holder as used in this part means the natural or 
juristic person in whose name an international registration seeking an 
extension of protection to the United States is recorded on the 
International Register. See section 60 of the Act.
    (k) The term use in commerce as used in this part means, in 
addition to the definition in section 45 of the Act:
    (1) For a trademark or service mark, use of the mark in commerce by 
an applicant or owner on or in connection with the goods or services 
specified in a U.S. application, amendment to allege use, statement of 
use, or affidavit or declaration of use or excusable nonuse;
    (2) For a collective trademark or collective service mark, use of 
the mark in commerce by members on or in connection with the goods or 
services specified in a U.S. application, amendment to allege use, 
statement of use, or affidavit or declaration of use or excusable 
nonuse;
    (3) For a collective membership mark, use of the mark in commerce 
by members to indicate membership in the collective organization as 
specified in a U.S. application, amendment to allege use, statement of 
use, or affidavit or declaration of use or excusable nonuse; and
    (4) For a certification mark, use of the mark in commerce by 
authorized users on or in connection with the goods or services 
specified in a U.S. application, amendment to allege use, statement of 
use, or affidavit or declaration of use or excusable nonuse.
    (l) The term bona fide intention to use the mark in commerce as 
used in this part means, for a trademark or service mark, that an 
applicant or holder has a bona fide intention to use the mark in 
commerce on or in connection with the goods or services specified in a 
U.S. application or international application.
    (m) The term bona fide intention, and is entitled, to exercise 
legitimate control over the use of the mark in commerce as used in this 
part means:
    (1) For a collective trademark or collective service mark, that an 
applicant or holder has a bona fide intention, and is entitled, to 
exercise legitimate control over the use of the mark in commerce by 
members on or in connection with the goods or services specified in a 
U.S. application or international application;
    (2) For a collective membership mark, that an applicant or holder 
has a bona fide intention, and is entitled, to exercise legitimate 
control over the use of the mark in commerce by members to indicate 
membership in the collective organization as specified in a U.S. 
application or international application; and
    (3) For a certification mark, that an applicant or holder has a 
bona fide intention, and is entitled, to exercise legitimate control 
over the use of the mark in commerce by authorized users on or in 
connection with the goods or services specified in a U.S. application 
or international application.
    (n) The term verified statement, and the terms verify, verified, or 
verification as used in this part refers to a statement that is sworn 
to, made under oath or in an affidavit, or supported by a declaration 
under Sec.  2.20 or 28 U.S.C. 1746, and signed in accordance with the 
requirements of Sec.  2.193.
0
3. Revise the introductory text to Sec.  2.20 to read as follows:


Sec.  2.20  Declarations in lieu of oaths.

    Instead of an oath, affidavit, or sworn statement, the language of 
28 U.S.C. 1746, or the following declaration language, may be used:
* * * * *
0
4. Amend Sec.  2.32 as follows:
0
a. Revise the section heading and paragraphs (a)(3)(ii), (a)(6), and 
(c).
0
b. Add paragraphs (f) and (g).


Sec.  2.32  Requirements for a complete trademark or service mark 
application.

    (a) * * *
    (3) * * *
    (iii) If the applicant is a domestic partnership, the names and 
citizenship of the general partners; or
* * * * *
    (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

[[Page 9686]]

goods or services in the foreign application or registration;
* * * * *
    (c) The application must include a drawing that meets the 
requirements of Sec.  2.51 and Sec.  2.52.
* * * * *
    (e) For the requirements of a multiple-class application, see Sec.  
2.86.
    (f) For the requirements of all collective mark applications, see 
Sec.  2.44.
    (g) For the requirements of a certification mark application, see 
Sec.  2.45.
0
5. Revise Sec.  2.33 to read as follows:


Sec.  2.33  Verified statement for a trademark or service mark.

    (a) The application must include a verified statement.
    (b)(1) In an application under section 1(a) of the Act, the 
verified statement must allege:
    That the applicant believes the applicant is the owner of the mark; 
that the mark is in use in commerce; that to the best of the 
signatory's knowledge and belief, no other person has the right to use 
the mark in commerce, either in the identical form or in such near 
resemblance as to be likely, when applied to the goods or services of 
such other person, to cause confusion or mistake, or to deceive; that 
the specimen shows the mark as used on or in connection with the goods 
or services; and that the facts set forth in the application are true.
    (2) In an application under section 1(b) or 44 of the Act, the 
verified statement must allege:
    That the applicant has a bona fide intention to use the mark in 
commerce; that the applicant believes the applicant is entitled to use 
the mark in commerce on or in connection with the goods or services 
specified in the application; that to the best of the signatory's 
knowledge and belief, no other person has the right to use the mark in 
commerce, either in the identical form or in such near resemblance as 
to be likely, when applied to the goods or services of such other 
person, to cause confusion or mistake, or to deceive; and that the 
facts set forth in the application are true.
    (c) If the verified statement in paragraph (b)(1) or (b)(2) of this 
section is not filed within a reasonable time after it is signed, the 
Office may require the applicant to submit a substitute verified 
statement attesting, as of the filing date, that the mark has been in 
use in commerce or the applicant has had a bona fide intention to use 
the mark in commerce.
    (d) [Reserved]
    (e) In an application under section 66(a) of the Act, the verified 
statement, which is part of the international registration on file with 
the International Bureau, must allege that:
    (1) The applicant/holder has a bona fide intention to use the mark 
in commerce;
    (2) The signatory is properly authorized to execute the declaration 
on behalf of the applicant/holder;
    (3) The signatory believes the applicant/holder to be entitled to 
use the mark in commerce that the U.S. Congress can regulate on or in 
connection with the goods or services specified in the international 
application/registration; and
    (4) To the best of his/her knowledge and belief, no other person, 
firm, corporation, association, or other legal entity has the right to 
use the mark in commerce either in the identical form thereof or in 
such near resemblance thereto as to be likely, when used on or in 
connection with the goods or services of such other person, firm, 
corporation, association, or other legal entity, to cause confusion, or 
to cause mistake, or to deceive.
    (f) In an application for concurrent use under Sec.  2.42, the 
verified statement in paragraph (b)(1) of this section must be modified 
to indicate that no other person except as specified in the application 
has the right to use the mark in commerce.
0
6. Amend Sec.  2.34 as follows:
0
a. Revise the section heading and paragraphs (a) introductory text, 
(a)(1) introductory text, (a)(1)(i), (a)(1)(iii) through (a)(1)(v), 
(a)(2), (a)(3) introductory text, (a)(3)(i), (a)(3)(iii), (a)(4) 
introductory text, (a)(4)(i)(B), (a)(4)(ii), (a)(4)(iii), (a)(5), and 
(b); and
0
b. Remove paragraph (c).


Sec.  2.34  Bases for filing a trademark or service mark application.

    (a) An application for a trademark or service mark must include one 
or more of the following five filing bases:
    (1) Use in commerce under section 1(a) of the Act. The requirements 
for an application under section 1(a) of the Act are:
    (i) The applicant's verified statement that the mark is in use in 
commerce. If the verified statement is not filed with the initial 
application, the verified statement must also allege that the mark has 
been in use in commerce as of the application filing date;
* * * * *
    (iii) The date of the applicant's first use of the mark in 
commerce;
    (iv) One specimen showing how the applicant uses the mark in 
commerce; and
    (v) If the application specifies more than one item of goods or 
services in a class, the dates of use in paragraphs (a)(1)(ii) and 
(iii) of this section are required for only one item of goods or 
services specified in that class.
    (2) Intent-to-use under section 1(b) of the Act. In an application 
under section 1(b) of the Act, the applicant must verify that the 
applicant has a bona fide intention to use the mark in commerce. If the 
verified statement is not filed with the initial application, the 
verified statement must also allege that the applicant has had a bona 
fide intention to use the mark in commerce as of the application filing 
date.
    (3) Registration of a mark in a foreign applicant's country of 
origin under section 44(e) of the Act. The requirements for an 
application under section 44(e) of the Act are:
    (i) The applicant's verified statement that the applicant has a 
bona fide intention to use the mark in commerce. If the verified 
statement is not filed with the initial application, the Office will 
require submission of the verified statement, which must also allege 
that the applicant has had a bona fide intention to use the mark in 
commerce as of the application filing date.
* * * * *
    (iii) If the record indicates that the foreign registration will 
expire before the U.S. registration will issue, the applicant must 
submit a true copy, a photocopy, a certification, or a certified copy 
of a proof of renewal from the applicant's country of origin to 
establish that the foreign registration has been renewed and will be in 
full force and effect at the time the U.S. registration will issue. If 
the proof of renewal is not in the English language, the applicant must 
submit a translation.
    (4) Claim of priority, based upon an earlier-filed foreign 
application, under section 44(d) of the Act. The requirements for an 
application under section 44(d) of the Act are:
    (i) * * *
    (B) State that the application is based upon a subsequent regularly 
filed application in the same foreign country, and that any prior-filed 
application has been withdrawn, abandoned, or otherwise disposed of, 
without having been laid open to public inspection and without having 
any rights outstanding, and has not served as a basis for claiming a 
right of priority.
    (ii) The applicant's verified statement that the applicant has a 
bona fide intention to use the mark in commerce. If the verified 
statement is not filed with the initial application, the Office will 
require submission of the verified

[[Page 9687]]

statement, which must also allege that the applicant has had a bona 
fide intention to use the mark in commerce as of the application filing 
date.
    (iii) Before the application can be approved for publication, or 
for registration on the Supplemental Register, the applicant must 
establish a basis under section 1 or 44 of the Act.
    (5) Extension of protection of an international registration under 
section 66(a) of the Act. In an application under section 66(a) of the 
Act, the international application or subsequent designation requesting 
an extension of protection to the United States must contain a signed 
declaration that meets the requirements of Sec.  2.33(a), (e).
    (b) More than one basis. In an application under section 1 or 44 of 
the Act, an applicant may claim more than one basis, provided the 
applicant satisfies all requirements for the bases claimed. In such 
case, the applicant must specify each basis, followed by the goods or 
services to which that basis applies. An applicant must specify the 
goods or services covered by more than one basis. Section 1(a) and 1(b) 
of the Act may not both be claimed for identical goods or services in 
the same application. A basis under section 66(a) of the Act may not be 
combined with another basis.
0
7. Revise Sec.  2.41 to read as follows:


Sec.  2.41  Proof of distinctiveness under section 2(f).

    (a) For a trademark or service mark--(1) Ownership of prior 
registration(s). In appropriate cases, ownership of one or more prior 
active registrations on the Principal Register or under the Trademark 
Act of 1905 of the same mark may be accepted as prima facie evidence of 
distinctiveness if the goods or services are sufficiently similar to 
the goods or services in the application; however, further evidence may 
be required.
    (2) Five years substantially exclusive and continuous use in 
commerce. In appropriate cases, if a trademark or service mark is said 
to have become distinctive of the applicant's goods or services by 
reason of the applicant's substantially exclusive and continuous use of 
the mark in commerce for the five years before the date on which the 
claim of distinctiveness is made, a showing by way of verified 
statements in the application may be accepted as prima facie evidence 
of distinctiveness; however, further evidence may be required.
    (3) Other evidence. When registration is sought for a trademark or 
service mark that would be unregistrable by reason of section 2(e) of 
the Act, but which is said by the applicant to have become distinctive 
in commerce of the applicant's goods or services, the applicant may, in 
support of registrability, submit with the application, or in response 
to a request for evidence or to a refusal to register, verified 
statements, depositions, or other appropriate evidence showing 
duration, extent, and nature of the use in commerce and advertising 
expenditures in connection therewith (identifying types of media and 
attaching typical advertisements), and verified statements, letters or 
statements from the trade or public, or both, or other appropriate 
evidence of distinctiveness.
    (b) For a collective trademark or collective service mark--(1) 
Ownership of prior registration(s). See the requirements of paragraph 
(a)(1) of this section.
    (2) Five years substantially exclusive and continuous use in 
commerce. In appropriate cases, if a collective trademark or collective 
service mark is said to have become distinctive of the members' goods 
or services by reason of the members' substantially exclusive and 
continuous use of the mark in commerce for the five years before the 
date on which the claim of distinctiveness is made, a showing by way of 
verified statements in the application may be accepted as prima facie 
evidence of distinctiveness; however, further evidence may be required.
    (3) Other evidence. When registration is sought for a collective 
trademark or service mark that would be unregistrable by reason of 
section 2(e) of the Act, but which is said by the applicant to have 
become distinctive in commerce of the members' goods or services, the 
applicant may, in support of registrability, submit with the 
application, or in response to a request for evidence or to a refusal 
to register, verified statements, depositions, or other appropriate 
evidence showing duration, extent, and nature of the use in commerce, 
and advertising expenditures in connection therewith (identifying types 
of media and attaching typical advertisements), and verified 
statements, letters or statements from the trade or public, or both, or 
other appropriate evidence of distinctiveness.
    (c) For a collective membership mark--(1) Ownership of prior 
registration(s). In appropriate cases, ownership of one or more prior 
active registrations on the Principal Register or under the Act of 1905 
of the same mark may be accepted as prima facie evidence of 
distinctiveness if the goods, services, or nature of the collective 
membership organization are sufficiently similar to the collective 
membership organization in the application; however, further evidence 
may be required.
    (2) Five years substantially exclusive and continuous use in 
commerce. In appropriate cases, if a collective membership mark is said 
to have become distinctive of indicating membership in the applicant's 
collective membership organization by reason of the members' 
substantially exclusive and continuous use of the mark in commerce for 
the five years before the date on which the claim of distinctiveness is 
made, a showing by way of verified statements in the application may be 
accepted as prima facie evidence of distinctiveness; however, further 
evidence may be required.
    (3) Other evidence. When registration is sought for a collective 
membership mark that would be unregistrable by reason of section 2(e) 
of the Act, but which is said by the applicant to have become 
distinctive in commerce of indicating membership in the applicant's 
collective membership organization, the applicant may, in support of 
registrability, submit with the application, or in response to a 
request for evidence or to a refusal to register, verified statements, 
depositions, or other appropriate evidence showing duration, extent, 
and nature of the members' use in commerce, and advertising 
expenditures in connection therewith (identifying types of media and 
attaching typical advertisements), and verified statements, letters or 
statements from the trade or public, or both, or other appropriate 
evidence of distinctiveness.
    (d) For a certification mark--(1) Ownership of prior certification 
mark registration(s). In appropriate cases, ownership of one or more 
prior active certification mark registrations on the Principal Register 
or under the Act of 1905 of the same mark may be accepted as prima 
facie evidence of distinctiveness if the authorized users' goods or 
services are sufficiently similar to the goods or services certified in 
the application, subject to the limitations of the statement set forth 
in Sec.  2.45(a)(4)(i)(C); however, further evidence may be required.
    (2) Five years substantially exclusive and continuous use in 
commerce. In appropriate cases, if a certification mark is said to have 
become distinctive of the certified goods or services by reason of the 
authorized users' substantially exclusive and continuous use of the 
mark in commerce for the five years before the date on which the claim 
of

[[Page 9688]]

distinctiveness is made, a showing by way of verified statements in the 
application may be accepted as prima facie evidence of distinctiveness; 
however, further evidence may be required.
    (3) Other evidence. When registration is sought for a certification 
mark that would be unregistrable by reason of section 2(e) of the Act, 
but which is said by the applicant to have become distinctive of the 
certified goods or services program, the applicant may, in support of 
registrability, submit with the application, or in response to a 
request for evidence or to a refusal to register, verified statements, 
depositions, or other appropriate evidence showing duration, extent, 
and nature of the authorized users' use in commerce and advertising 
expenditures in connection therewith (identifying types of media and 
attaching typical advertisements), and verified statements, letters or 
statements from the trade or public, or both, or other appropriate 
evidence of distinctiveness.
    (e) Paragraph (d) does not apply to geographical matter in a 
certification mark pursuant to section 2(e)(2) of the Act.
0
8. Revise Sec.  2.42 to read as follows:


Sec.  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 Sec.  2.44 or Sec.  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 Sec.  2.73.
    (d) For the requirements of a concurrent use proceeding, see Sec.  
2.99.
0
9. Revise Sec.  2.44 to read as follows:


Sec.  2.44  Requirements for a complete collective mark application.

    (a) A complete application to register a collective trademark, 
collective service mark, or collective membership mark must include the 
following:
    (1) The requirements specified in Sec.  2.32(a) introductory text-
(a)(4), (a)(8)-(10), (c)-(d);
    (2)(i) For a collective trademark or collective service mark, a 
list of the particular goods or services on or in connection with which 
the applicant's members use or intend to use the mark; or
    (ii) For a collective membership mark, a description of the nature 
of the membership organization such as by type, purpose, or area of 
activity of the members; and
    (iii) In a U.S. application filed under section 44 of the Act, the 
scope of the goods or services or the nature of the membership 
organization covered by the section 44 basis may not exceed the scope 
of the goods or services or nature of the membership organization in 
the foreign application or registration.
    (3)(i) For a collective trademark or collective service mark 
application, the international class of goods or services, if known. 
See Sec.  6.1 of this chapter for a list of the international classes 
of goods and services; or
    (ii) For a collective membership mark application filed under 
sections 1 or 44 of the Act, classification in U.S. Class 200; and for 
a collective membership mark application filed under section 66(a) of 
the Act, the international class(es) assigned by the International 
Bureau in the corresponding international registration.
    (4) One or more of the following five filing bases:
    (i) Use in commerce under section 1(a) of the Act. The requirements 
for an application under section 1(a) of the Act are:
    (A) A statement specifying the nature of the applicant's control 
over the use of the mark by the members;
    (B) For a collective trademark or collective service mark, the date 
of the applicant's member's first use of the mark anywhere on or in 
connection with the goods or services and the date of the applicant's 
member's first use of the mark in commerce; or for a collective 
membership mark, the date of the applicant's member's first use 
anywhere to indicate membership in the collective organization and the 
date of the applicant's member's first use in commerce. If the 
application specifies more than one item of goods or services in a 
class, the dates of use are required for only one item of goods or 
services specified in that class;
    (C) One specimen showing how a member uses the mark in commerce; 
and
    (D) A verified statement alleging:
    That the applicant believes the applicant is the owner of the mark; 
that the mark is in use in commerce; that the applicant is exercising 
legitimate control over the use of the mark in commerce by members on 
or in connection with the goods, services, or collective membership 
organization specified in the application; that to the best of the 
signatory's knowledge and belief, no other persons except members have 
the right to use the mark in commerce, either in the identical form or 
in such near resemblance as to be likely, when used on or in connection 
with the goods, services, or collective membership organization of such 
other persons to cause confusion or mistake, or to deceive; that the 
specimen shows the mark as used in commerce by the applicant's members; 
and that the facts set forth in the application are true.
    (ii) Intent-to-use under section 1(b) of the Act. The requirement 
for an application based on section 1(b) of the Act is a verified 
statement alleging:
    That the applicant has a bona fide intention, and is entitled, to 
exercise legitimate control over the use in commerce of the mark; that 
to the best of the signatory's knowledge and belief, no other persons, 
except members, have the right to use the mark in commerce, either in 
the identical form or in such near resemblance as to be likely, when

[[Page 9689]]

used on or in connection with the goods, services, or collective 
membership organization of such other persons, to cause confusion or 
mistake, or to deceive; and that the facts set forth in the application 
are true.
    (iii) Registration of a mark in a foreign applicant's country of 
origin under section 44(e) of the Act. The requirements for an 
application under section 44(e) of the Act are:
    (A) The requirements of Sec.  2.34(a)(3)(ii)-(iii); and
    (B) A verified statement in accordance with paragraph (a)(4)(ii) of 
this section.
    (iv) Claim of priority, based upon an earlier-filed foreign 
application, under section 44(d) of the Act. The requirements for an 
application under section 44(d) of the Act are:
    (A) The requirements of Sec.  2.34(a)(4)(i), (iii); and
    (B) A verified statement in accordance with paragraph (a)(4)(ii) of 
this section.
    (v) Extension of protection of an international registration under 
section 66(a) of the Act. The requirement for an application under 
section 66(a) of the Act is a verified statement, which is part of the 
international registration on file with the International Bureau, 
alleging that:
    (A) The applicant/holder has a bona fide intention, and is 
entitled, to exercise legitimate control over the use of the mark in 
commerce;
    (B) The signatory is properly authorized to execute the declaration 
on behalf of the applicant/holder; and
    (C) to the best of his/her knowledge and belief, no other person, 
firm, corporation, association, or other legal entity, except members, 
has the right to use the mark in commerce either in the identical form 
thereof or in such near resemblance thereto as to be likely, when used 
on or in connection with the goods, services, or collective membership 
organization of such other person, firm, corporation, association, or 
other legal entity, to cause confusion, or to cause mistake, or to 
deceive.
    (b) Verification not filed within reasonable time or omitted--(1) 
If the verified statement in paragraph (a)(4)(i)(D), (a)(4)(ii), 
(a)(4)(iii)(B), or (a)(4)(iv)(B) of this section is not filed within a 
reasonable time after it is signed, the Office may require a substitute 
verified statement attesting, as of the application filing date, that 
the mark has been in use in commerce or the applicant has had a bona 
fide intention, and is entitled, to exercise legitimate control over 
the use of the mark in commerce; or
    (2) If the verified statement in paragraph (a)(4)(i)(D), 
(a)(4)(ii), (a)(4)(iii)(B), or (a)(4)(iv)(B) of this section is not 
filed with the initial application, the verified statement must also 
allege that, as of the application filing date, the mark has been in 
use in commerce, or the applicant has had a bona fide intention, and is 
entitled, to exercise legitimate control over the use of the mark in 
commerce.
    (c) More than one basis. In an application under section 1 or 44 of 
the Act, an applicant may claim more than one basis, provided the 
applicant satisfies all requirements for the bases claimed. In such 
case, the applicant must specify each basis, followed by the goods or 
services to which that basis applies. An applicant must specify the 
goods or services covered by more than one basis. Section 1(a) and 1(b) 
of the Act may not both be claimed for identical goods or services in 
the same application. A basis under section 66(a) of the Act may not be 
combined with another basis.
    (d) In an application for concurrent use under Sec.  2.42, the 
verified statement in paragraph (a)(4)(i)(D) of this section must be 
modified to indicate that no other persons except members and the 
concurrent users as specified in the application have the right to use 
the mark in commerce.
    (e) Multiple-class applications. For the requirements of a 
multiple-class application, see Sec.  2.86.
0
10. Revise Sec.  2.45 to read as follows:


Sec.  2.45  Requirements for a complete certification mark application; 
restriction on certification mark application.

    (a) A complete application to register a certification mark must 
include the following:
    (1) The requirements specified in Sec.  2.32(a) introductory text--
(a)(4), (a)(8)-(10), (c)-(d);
    (2) A list of the particular goods or services on or in connection 
with which the applicant's authorized users use or intend to use the 
mark. In an 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;
    (3) For applications filed under section 1 or 44 of the Act, 
classification in U.S. Class A for an application certifying goods and 
U.S. Class B for an application certifying services. For applications 
filed under section 66(a) of the Act, the international class(es) of 
goods or services assigned by the International Bureau in the 
corresponding international registration;
    (4) One or more of the following five filing bases:
    (i) Use in commerce under section 1(a) of the Act. The requirements 
for an application under section 1(a) of the Act are:
    (A) A statement specifying what the applicant is certifying about 
the goods or services in the application;
    (B) A copy of the certification standards governing use of the 
certification mark on or in connection with the goods or services 
specified in the application;
    (C) A statement that the applicant is not engaged in the production 
or marketing of the goods or services to which the mark is applied, 
except to advertise or promote recognition of the certification program 
or of the goods or services that meet the certification standards of 
the applicant;
    (D) The date of the applicant's authorized user's first use of the 
mark anywhere on or in connection with the goods or services and the 
date of the applicant's authorized user's first use of the mark in 
commerce. If the application specifies more than one item of goods or 
services in a class, the dates of use are required for only one item of 
goods or services specified in that class;
    (E) One specimen showing how an authorized user uses the mark in 
commerce; and
    (F) A verified statement alleging:
    That the applicant believes the applicant is the owner of the mark; 
that the mark is in use in commerce; that the applicant is exercising 
legitimate control over the use of the mark in commerce by authorized 
users on or in connection with the goods or services specified in the 
application; that to the best of the signatory's knowledge and belief, 
no other persons except authorized users have the right to use the mark 
in commerce, either in the identical form or in such near resemblance 
as to be likely, when used on or in connection with the goods or 
services of such other persons, to cause confusion or mistake, or to 
deceive; that the specimen shows the mark as used in commerce by the 
applicant's authorized users; and that the facts set forth in the 
application are true.
    (ii) Intent-to-use under section 1(b) of the Act. The requirements 
for an application based on section 1(b) of the Act are:
    (A) A statement specifying what the applicant will be certifying 
about the goods or services;
    (B) A statement that the applicant will not engage in the 
production or marketing of the goods or services to which the mark is 
applied, except to advertise or promote recognition of the 
certification program or of the goods or

[[Page 9690]]

services that meet the certification standards of the applicant; and
    (C) A verified statement alleging:
    That the applicant has a bona fide intention, and is entitled, to 
exercise legitimate control over the use of the mark in commerce; that 
to the best of the signatory's knowledge and belief, no other persons, 
except authorized users, have the right to use the mark in commerce, 
either in the identical form or in such near resemblance as to be 
likely, when used on or in connection with the goods or services of 
such other persons, to cause confusion or mistake, or to deceive; and 
that the facts set forth in the application are true.
    (iii) Registration of a mark in a foreign applicant's country of 
origin under section 44(e) of the Act. The requirements for an 
application under section 44(e) of the Act are:
    (A) The requirements of Sec.  2.34(a)(3)(ii)-(iii);
    (B) The requirements of Sec.  2.45(a)(4)(ii)(A), (B); and
    (C) A verified statement in accordance with Sec.  
2.45(a)(4)(ii)(C).
    (iv) Claim of priority, based upon an earlier-filed foreign 
application, under section 44(d) of the Act. The requirements for an 
application under section 44(d) of the Act are:
    (A) The requirements of Sec.  2.34(a)(4)(i), (iii);
    (B) The requirements of Sec.  2.45(a)(4)(ii)(A), (B); and
    (C) A verified statement in accordance with Sec.  
2.45(a)(4)(ii)(C).
    (v) Extension of protection of an international registration under 
section 66(a) of the Act. The requirements for an application under 
section 66(a) of the Act are:
    (A) The requirements of Sec.  2.45(a)(4)(ii)(A), (B); and
    (B) A verified statement, which is part of the international 
registration on file with the International Bureau, alleging that:
    (1) The applicant/holder has a bona fide intention, and is 
entitled, to exercise legitimate control over the use of the mark in 
commerce;
    (2) The signatory is properly authorized to execute the declaration 
on behalf of the applicant/holder; and
    (3) To the best of his/her knowledge and belief, no other person, 
firm, corporation, association, or other legal entity, except 
authorized users, has the right to use the mark in commerce either in 
the identical form thereof or in such near resemblance thereto as to be 
likely, when used on or in connection with the goods or services of 
such other person, firm, corporation, association, or other legal 
entity, to cause confusion, or to cause mistake, or to deceive.
    (b) Verification not filed within reasonable time or omitted--(1) 
If the verified statement in paragraph (a)(4)(i)(F), (a)(4)(ii)(C), 
(a)(4)(iii)(C), or (a)(4)(iv)(C) of this section is not filed within a 
reasonable time after it is signed, the Office may require the 
applicant to submit a substitute verified statement attesting that, as 
of the application filing date, the mark has been in use in commerce or 
the applicant has had a bona fide intention, and is entitled, to 
exercise legitimate control over the use of the mark in commerce; or
    (2) If the verified statement in paragraph (a)(4)(i)(F), 
(a)(4)(ii)(C), (a)(4)(iii)(C), or (a)(4)(iv)(C) of this section is not 
filed with the initial application, the verified statement must also 
allege that, as of the application filing date, the mark has been in 
use in commerce, or the applicant has had a bona fide intention, and is 
entitled, to exercise legitimate control over the use of the mark in 
commerce.
    (c) More than one basis. In an application under section 1 or 44 of 
the Act, an applicant may claim more than one basis, provided the 
applicant satisfies all requirements for the bases claimed. In such 
case, the applicant must specify each basis, followed by the goods or 
services to which that basis applies. An applicant must specify the 
goods or services covered by more than one basis. Section 1(a) and 1(b) 
of the Act may not both be claimed for identical goods or services in 
the same application. A basis under section 66(a) of the Act may not be 
combined with another basis.
    (d) Concurrent use. In an application for concurrent use under 
Sec.  2.42, the verified statement in paragraph (a)(4)(i)(F) of this 
section must be modified to indicate that no other persons except 
authorized users and concurrent users as specified in the application 
have the right to use the mark in commerce.
    (e) Multiple-class applications. For the requirements of a 
multiple-class application, see Sec.  2.86.
    (f) Restriction on certification mark application. A single 
application may not include a certification mark and another type of 
mark. The same mark for the same goods or services is not registrable 
as both a certification mark and another type of mark. See sections 4 
and 14(5)(B) of the Act.
0
11. Amend Sec.  2.56 by revising paragraphs (b)(2), (b)(5), (c), and 
(d)(3) to read as follows:


Sec.  2.56  Specimens.

* * * * *
    (b) * * *
    (2) A service mark specimen must show the mark as used in the sale 
or advertising of the services.
* * * * *
    (5) A certification mark specimen must show how a person other than 
the owner uses the mark to reflect certification of regional or other 
origin, material, mode of manufacture, quality, accuracy, or other 
characteristics of that person's goods or services; or that members of 
a union or other organization performed the work or labor on the goods 
or services.
    (c) A photocopy or other reproduction of a specimen of the mark as 
used on or in connection with the goods, or in the sale or advertising 
of the services, is acceptable. However, a photocopy of the drawing 
required by Sec.  2.51 is not a proper specimen.
* * * * *
    (d) * * *
    (3) In the absence of non-bulky alternatives, the Office may accept 
a compact disc, digital video disc, or other appropriate medium.
* * * * *
0
12. Amend Sec.  2.59 by revising paragraphs (a), (b)(1), and (b)(2) to 
read as follows:


Sec.  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) * * *
    (1) For an amendment to allege use under Sec.  2.76, submit a 
verified statement that the applicant used the substitute specimen(s) 
in commerce prior to filing the amendment to allege use.
    (2) For a statement of use under Sec.  2.88, submit a verified 
statement that the applicant used the substitute specimen(s) in 
commerce either prior to filing the statement of use or prior to the 
expiration of the deadline for filing the statement of use.
0
13. Amend Sec.  2.71 as follows:
0
a. Revise paragraphs (a) through (b), the introductory text of 
paragraph (c), and paragraph (d).
0
b. Add paragraph (e).

[[Page 9691]]

Sec.  2.71  Amendments to correct informalities.

* * * * *
    (a) The applicant may amend the application to clarify or limit, 
but not to broaden, the identification of goods and/or services or the 
description of the nature of the collective membership organization.
    (b)(1) If the verified statement in an application under Sec.  2.33 
is unsigned or signed by the wrong party, the applicant may submit a 
substitute verification.
    (2) If the verified statement in a statement of use under Sec.  
2.88, or a request for extension of time to file a statement of use 
under Sec.  2.89, is unsigned or signed by the wrong party, the 
applicant must submit a substitute verification before the expiration 
of the statutory deadline for filing the statement of use.
    (c) The applicant may amend the dates of use, provided that the 
amendment is verified, except that the following amendments are not 
permitted:
* * * * *
    (d) The applicant may amend the application to correct the name of 
the applicant, if there is a mistake in the manner in which the name of 
the applicant is set out in the application. The amendment must be 
verified. However, the application cannot be amended to set forth a 
different entity as the applicant. An application filed in the name of 
an entity that did not own the mark as of the filing date of the 
application is void.
    (e) An amendment that would materially alter the certification 
statement specified in Sec.  2.45(a)(4)(i)(A) or Sec.  
2.45(a)(4)(ii)(A) will not be permitted.
0
14. Revise Sec.  2.74(b) to read as follows:


Sec.  2.74  Form and signature of amendment.

* * * * *
    (b) Signature. A request for amendment of an application must be 
signed by the applicant, someone with legal authority to bind the 
applicant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under Sec.  11.14 
of this chapter, in accordance with the requirements of Sec.  
2.193(e)(2). If the amendment requires verification, see Sec.  2.2(n).
0
15. Revise Sec.  2.76 to read as follows:


Sec.  2.76  Amendment to allege use.

    (a) When to file an amendment to allege use. (1) An application 
under section 1(b) of the Act may be amended to allege use of the mark 
in commerce under section 1(c) of the Act at any time between the 
filing of the application and the date the examiner approves the mark 
for publication. Thereafter, an allegation of use may be submitted only 
as a statement of use under Sec.  2.88 after the issuance of a notice 
of allowance under section 13(b)(2) of the Act. An amendment to allege 
use filed outside the time period specified in this paragraph will not 
be reviewed.
    (2)(i) For a trademark, service mark, collective trademark, 
collective service mark, and certification mark, an amendment to allege 
use may be filed only when the mark has been in use in commerce on or 
in connection with all the goods or services specified in the 
application, for which the applicant will seek registration. For a 
collective membership mark, an amendment to allege use may be filed 
only when the mark has been in use in commerce to indicate membership 
in the collective organization specified in the application, for which 
the applicant will seek registration.
    (ii) An amendment to allege use may be accompanied by a request in 
accordance with Sec.  2.87 to divide out from the application the 
goods, services, or classes not yet in use in commerce.
    (b) A complete amendment to allege use. A complete amendment to 
allege use must include the following:
    (1) A verified statement alleging:
    (i) The applicant believes the applicant is the owner of the mark;
    (ii) The mark is in use in commerce;
    (iii) The date of first use of the mark anywhere on or in 
connection with the goods or services, and/or to indicate membership in 
the collective organization specified in the application, and the date 
of first use of the mark in commerce. If the amendment to allege use 
specifies more than one item of goods or services in a class, the dates 
of use are required for only one item of goods or services specified in 
that class;
    (iv) The goods, services, and/or nature of the collective 
membership organization specified in the application; and
    (v) For a collective mark and certification mark, the applicant is 
exercising legitimate control over the use in commerce of the mark.
    (2) One specimen showing how the applicant, member, or authorized 
user uses the mark in commerce. See Sec.  2.56 of this chapter for the 
requirements for specimens;
    (3) The fee per class required by Sec.  2.6;
    (4) For a collective mark, the requirements of Sec.  
2.44(a)(4)(i)(A);
    (5) For a certification mark, the requirements of Sec.  
2.45(a)(4)(i)(A)-(C); and
    (6) The title ``Amendment to Allege Use'' should appear at the top 
of the first page of the document, if not filed through TEAS.
    (c) Minimum filing requirements for a timely filed amendment to 
allege use. The Office will review a timely filed amendment to allege 
use to determine whether it meets the following minimum requirements:
    (1) The fee required by Sec.  2.6 for at least one class;
    (2) One specimen of the mark as used in commerce; and
    (3) The verified statement in paragraph (b)(1)(ii) of this section.
    (d) Deficiency notification. If the amendment to allege use is 
filed within the permitted time period but does not meet the minimum 
requirements specified in paragraph (c) of this section, the Office 
will notify the applicant of the deficiency. The deficiency may be 
corrected provided the mark has not been approved for publication. If 
an acceptable amendment to correct the deficiency is not filed prior to 
approval of the mark for publication, the amendment will not be 
examined, and the applicant must instead file a statement of use after 
the notice of allowance issues.
    (e) Notification of refusals and requirements. A timely filed 
amendment to allege use that meets the minimum requirements specified 
in paragraph (c) of this section will be examined in accordance with 
Sec.  2.61 through Sec.  2.69. If, as a result of the examination of 
the amendment to allege use, the applicant is found not entitled to 
registration for any reason not previously stated, the applicant will 
be notified and advised of the reasons and of any formal requirements 
or refusals. The notification shall restate or incorporate by reference 
all unresolved refusals or requirements previously stated. The 
amendment to allege use may be amended in accordance with Sec.  2.59 
and Sec.  2.71 through Sec.  2.75.
    (f) Withdrawal. An amendment to allege use may be withdrawn for any 
reason prior to approval of a mark for publication.
    (g) Verification not filed within reasonable time. If the verified 
statement in paragraph (b)(1)(ii) of this section is not filed within a 
reasonable time after it is signed, the Office may require the 
applicant to submit a substitute verified statement attesting that the 
mark is still in use in commerce.
    (h) An amendment to allege use is not a response but may include 
amendments. The filing of an amendment to allege use does not 
constitute a response to any outstanding

[[Page 9692]]

action by the examiner. See Sec.  2.62. The amendment to allege use may 
include amendments in accordance with Sec.  2.59 and Sec.  2.71 through 
Sec.  2.75.
    (i) In an application for concurrent use under Sec.  2.42, the 
amendment to allege use must include a verified statement modified in 
accordance with Sec.  2.33(f), Sec.  2.44(d), or Sec.  2.45(d).
    (j) Multiple-class application. For the requirements of a multiple-
class application, see Sec.  2.86.
0
16. Revise Sec.  2.86 to read as follows:


Sec.  2.86  Multiple-class applications.

    (a) In a single application for a trademark, service mark, and/or 
collective mark, an applicant may apply to register the same mark for 
goods, services, and/or a collective membership organization in 
multiple classes. In a multiple-class application, the applicant must 
satisfy the following, in addition to the application requirements of 
Sec.  2.32 for a trademark or service mark, and Sec.  2.44 for 
collective marks:
    (1) For an application filed under section 1 or 44 of the Act, 
identify the goods or services in each international class and/or the 
nature of the collective membership organization in U.S. Class 200; for 
applications filed under section 66(a) of the Act, identify the goods, 
services, and/or the nature of the collective membership organization 
in each international class assigned by the International Bureau in the 
corresponding international registration;
    (2) Submit the application filing fee required by Sec.  2.6 for 
each class; and
    (3) Include either dates of use and one specimen for each class 
based on section 1(a) of the Act; or a statement that the applicant has 
a bona fide intention to use the mark in commerce, for a trademark or 
service mark, or a statement that the applicant has a bona fide 
intention, and is entitled, to exercise legitimate control over the use 
of the mark in commerce, for collective marks, for each class based on 
section 1(b), 44, or 66(a) of the Act. When requested by the Office, 
additional specimens must be provided.
    (b) In a single application for a certification mark, an applicant 
may apply to register the same mark for goods and services. In such 
case, the applicant must satisfy the following, in addition to the 
application requirements of Sec.  2.45:
    (1) For an application filed under section 1 or 44 of the Act, 
identify the goods in U.S. Class A and the services in U.S. Class B; 
for applications filed under section 66(a) of the Act, identify the 
goods and services in each international class assigned by the 
International Bureau in the corresponding international registration;
    (2) Submit the application filing fee required by Sec.  2.6 for 
both classes; and
    (3) Include either dates of use and one specimen for each class 
based on section 1(a) of the Act; or a statement that the applicant has 
a bona fide intention, and is entitled, to exercise legitimate control 
over the use of the mark in commerce for each class based on section 
1(b), 44, or 66(a) of the Act. When requested by the Office, additional 
specimens must be provided.
    (c) In a single application, both section 1(a) and 1(b) of the Act 
may not be claimed for identical goods or services.
    (d) In a single application, goods or services in U.S. Classes A 
and/or B may not be combined with either goods or services in any 
international class or with a collective membership organization in 
U.S. Class 200. See Sec.  2.45(f).
    (e) An amendment to allege use under Sec.  2.76 or a statement of 
use under Sec.  2.88 for multiple classes must include, for each class, 
the required fee, dates of use, and one specimen. When requested by the 
Office, additional specimens must be provided. The applicant may not 
file an amendment to allege use or a statement of use until the 
applicant has used the mark on or in connection with all the goods, 
services, or classes, unless the applicant also files a request to 
divide under Sec.  2.87.
    (f) The Office will issue a single certificate of registration for 
the mark, unless the applicant files a request to divide under Sec.  
2.87.
0
17. Revise Sec.  2.88 to read as follows:


Sec.  2.88  Statement of use after notice of allowance.

    (a) When to file a statement of use. (1) In an application under 
section 1(b) of the Act, a statement of use, required under section 
1(d) of the Act, must be filed within six months after issuance of a 
notice of allowance under section 13(b)(2) of the Act, or within an 
extension of time granted under Sec.  2.89. A statement of use filed 
prior to issuance of a notice of allowance is premature and will not be 
reviewed.
    (2)(i) For a trademark, service mark, collective trademark, 
collective service mark, and certification mark, a statement of use may 
be filed only when the mark has been in use in commerce on or in 
connection with all the goods or services specified in the notice of 
allowance, for which the applicant will seek registration in that 
application. For a collective membership mark, a statement of use may 
be filed only when the mark has been in use in commerce to indicate 
membership in the collective membership organization specified in the 
notice of allowance, for which the applicant will seek registration in 
that application.
    (ii) A statement of use may be accompanied by a request in 
accordance with Sec.  2.87 to divide out from the application the 
goods, services, or classes not yet in use in commerce.
    (b) A complete statement of use. A complete statement of use must 
include the following:
    (1) A verified statement alleging:
    (i) The applicant believes the applicant is the owner of the mark;
    (ii) The mark is in use in commerce;
    (iii) The date of first use of the mark anywhere on or in 
connection with the goods, services, and/or to indicate membership in 
the collective organization specified in the application, and the date 
of first use of the mark in commerce. If the statement of use specifies 
more than one item of goods or services in a class, the dates of use 
are required for only one item of goods or services specified in that 
class;
    (iv) The goods, services, and/or nature of the collective 
membership organization specified in the notice of allowance. The goods 
or services specified in a statement of use must conform to those goods 
or services specified in the notice of allowance for trademark, service 
mark, collective trademark, collective service mark, or certification 
mark applications. Any goods or services specified in the notice of 
allowance that are omitted from the identification of goods or services 
in the statement of use will be presumed to be deleted and the deleted 
goods or services may not be reinserted in the application. For 
collective membership mark applications, the description of the nature 
of the collective membership organization in the statement of use must 
conform to that specified in the notice of allowance; and
    (v) For a collective mark and certification mark, the applicant is 
exercising legitimate control over the use in commerce of the mark;
    (2) One specimen showing how the applicant, member, or authorized 
user uses the mark in commerce. See Sec.  2.56 for the requirements for 
specimens;
    (3) Fee(s). The fee required by Sec.  2.6 per class. The applicant 
must pay a filing fee sufficient to cover at least one class within the 
statutory time for filing the statement of use, or the application will 
be abandoned. If the applicant submits a fee insufficient to cover all 
the classes in a multiple-class application, the applicant should 
specify the classes to be abandoned. If the applicant timely submits a 
fee sufficient to pay for at

[[Page 9693]]

least one class, but insufficient to cover all the classes, and the 
applicant has not specified the class(es) to be abandoned, the Office 
will issue a notice granting the applicant additional time to submit 
the fee(s) for the remaining class(es) or to specify the class(es) to 
be abandoned. If the applicant does not submit the required fee(s) or 
specify the class(es) to be abandoned within the set time period, the 
Office will apply the fees paid, beginning with the lowest numbered 
class(es), in ascending order. The Office will delete the goods or 
services not covered by the fees submitted;
    (4) For a collective mark, the requirements of Sec.  
2.44(a)(4)(i)(A);
    (5) For a certification mark, the requirements of Sec.  
2.45(a)(4)(i)(A)-(C); and
    (6) The title ``Statement of Use'' should appear at the top of the 
first page of the document, if not filed through TEAS.
    (c) Minimum filing requirements for a timely filed statement of 
use. The Office will review a timely filed statement of use to 
determine whether it meets the following minimum requirements:
    (1) The fee required by Sec.  2.6 for at least one class;
    (2) One specimen of the mark as used in commerce; and
    (3) The verified statement in paragraph (b)(1) of this section. If 
this verified statement is unsigned or signed by the wrong party, the 
applicant must submit a substitute verified statement on or before the 
statutory deadline for filing the statement of use.
    (d) Deficiency notification. If the statement of use is filed 
within the permitted time period but does not meet the minimum 
requirements specified in paragraph (c) of this section, the Office 
will notify the applicant of the deficiency. If the time permitted for 
the applicant to file a statement of use has not expired, the applicant 
may correct the deficiency.
    (e) Notification of refusals and requirements. A timely filed 
statement of use that meets the minimum requirements specified in 
paragraph (c) of this section will be examined in accordance with Sec.  
2.61 through Sec.  2.69. If, as a result of the examination of the 
statement of use, the applicant is found not entitled to registration, 
the applicant will be notified and advised of the reasons and of any 
formal requirements or refusals. The statement of use may be amended in 
accordance with Sec.  2.59 and Sec.  2.71 through Sec.  2.75.
    (f) Statement of use may not be withdrawn. The applicant may not 
withdraw a timely filed statement of use to return to the previous 
status of awaiting submission of a statement of use, regardless of 
whether it is in compliance with paragraph (c) of this section.
    (g) Verification not filed within reasonable time. If the verified 
statement in paragraph (b)(1) of this section is not filed within a 
reasonable time after it is signed, the Office may require the 
applicant to submit a substitute verified statement attesting that the 
mark is still in use in commerce.
    (h) Amending the application. The statement of use may include 
amendments in accordance with Sec.  2.51, Sec.  2.59, and Sec.  2.71 
through Sec.  2.75.
    (i) In an application for concurrent use under Sec.  2.42, the 
statement of use must include a verified statement modified in 
accordance with Sec.  2.33(f), Sec.  2.44(d), or Sec.  2.45(d).
    (j) Multiple-class application. For the requirements of a multiple-
class application, see Sec.  2.86.
    (k) Abandonment. The failure to timely file a statement of use 
which meets the minimum requirements specified in paragraph (c) of this 
section shall result in the abandonment of the application.
0
18. Revise Sec.  2.89 to read as follows:


Sec.  2.89  Extensions of time for filing a statement of use.

    (a) First extension request after issuance of notice of allowance. 
The applicant may request a six-month extension of time to file the 
statement of use required by Sec.  2.88. The extension request must be 
filed within six months of the date of issuance of the notice of 
allowance under section 13(b)(2) of the Act and must include the 
following:
    (1) A written request for an extension of time to file the 
statement of use;
    (2) The fee required by Sec.  2.6 per class. The applicant must pay 
a filing fee sufficient to cover at least one class within the 
statutory time for filing the extension request, or the request will be 
denied. If the applicant submits a fee insufficient to cover all the 
classes in a multiple-class application, the applicant should specify 
the classes to be abandoned. If the applicant timely submits a fee 
sufficient to pay for at least one class, but insufficient to cover all 
the classes, and the applicant has not specified the class(es) to be 
abandoned, the Office will issue a notice granting the applicant 
additional time to submit the fee(s) for the remaining classes, or 
specify the class(es) to be abandoned. If the applicant does not submit 
the required fee(s) or specify the class(es) to be abandoned within the 
set time period, the Office will apply the fees paid, beginning with 
the lowest numbered class(es), in ascending order. The Office will 
delete the goods or services not covered by the fees submitted; and
    (3) A verified statement that the applicant continues to have a 
bona fide intention to use the mark in commerce, for trademarks or 
service marks, or that the applicant continues to have a bona fide 
intention, and is entitled, to exercise legitimate control over the use 
of the mark in commerce, for collective marks or certification marks. 
If this verified statement is unsigned or signed by the wrong party, 
the applicant must submit a substitute verified statement within six 
months of the date of issuance of the notice of allowance.
    (b) Subsequent extension requests. Before the expiration of the 
previously granted extension of time, the applicant may request further 
six-month extensions of time to file the statement of use by submitting 
the following:
    (1) A written request for an extension of time to file the 
statement of use;
    (2) The requirements of paragraph (a)(2) of this section for a fee;
    (3) A verified statement that the applicant continues to have a 
bona fide intention to use the mark in commerce, for trademarks or 
service marks, or that the applicant continues to have a bona fide 
intention, and is entitled, to exercise legitimate control over the use 
of the mark in commerce, for collective marks or certification marks. 
If this verified statement is unsigned or signed by the wrong party, 
the applicant must submit a substitute verified statement before the 
expiration of the previously granted extension; and
    (4) A showing of good cause, as specified in paragraph (d) of this 
section.
    (c) Four subsequent extension requests permitted. Extension 
requests specified in paragraph (b) of this section will be granted 
only in six-month increments and may not aggregate more than 24 months 
total.
    (d) Good cause. A showing of good cause must include:
    (1) For a trademark or service mark, a statement of the applicant's 
ongoing efforts to make use of the mark in commerce on or in connection 
with each of the relevant goods or services. Those efforts may include 
product or service research or development, market research, 
manufacturing activities, promotional activities, steps to acquire 
distributors, steps to obtain governmental approval, or other similar 
activities. In the alternative, the applicant must submit a 
satisfactory explanation for the failure to make efforts to use the 
mark in commerce.

[[Page 9694]]

    (2) For a collective mark, a statement of ongoing efforts to make 
use of the mark in commerce by members on or in connection with each of 
the relevant goods or services or in connection with the applicant's 
collective membership organization. Those efforts may include the 
development of standards, the steps taken to acquire members such as 
marketing and promotional activities targeted to potential members, 
training members regarding the standards, or other similar activities. 
In the alternative, the applicant must submit a satisfactory 
explanation for the failure to make efforts for applicant's members to 
use the mark in commerce.
    (3) For a certification mark, a statement of ongoing efforts to 
make use of the mark in commerce by authorized users on or in 
connection with each of the relevant goods or services. Those efforts 
may include the development of certification standards, steps taken to 
obtain governmental approval or acquire authorized users, marketing and 
promoting the recognition of the certification program or of the goods 
or services that meet the certification standards of the applicant, 
training authorized users regarding the standards, or other similar 
activities. In the alternative, the applicant must submit a 
satisfactory explanation for the failure to make efforts for 
applicant's authorized users to use the mark in commerce.
    (e) Extension request filed in conjunction with or after a 
statement of use. (1) An applicant may file one request for a six-month 
extension of time for filing a statement of use when filing a statement 
of use or after filing a statement of use if time remains in the 
existing six-month period in which the statement of use was filed, 
provided that the time requested would not extend beyond 36 months from 
the date of issuance of the notice of allowance. Thereafter, applicant 
may not request any further extensions of time.
    (2) A request for an extension of time that is filed under 
paragraph (e)(1) of this section, must comply with all the requirements 
of paragraph (a) of this section, if it is an applicant's first 
extension request, or paragraph (b) of this section, if it is a second 
or subsequent extension request. However, in a request under paragraph 
(b) of this section, an applicant may satisfy the requirement for a 
showing of good cause by asserting the applicant believes the applicant 
has made valid use of the mark in commerce, as evidenced by the 
submitted statement of use, but that if the statement of use is found 
by the Office to be fatally defective, the applicant will need 
additional time in which to file a new statement of use.
    (f) Goods or services. For trademark, service mark, collective 
trademark, collective service mark, or certification mark applications, 
the goods or services specified in a request for an extension of time 
for filing a statement of use must conform to those goods or services 
specified in the notice of allowance. Any goods or services specified 
in the notice of allowance that are omitted from the identification of 
goods or services in the request for extension of time will be presumed 
to be deleted and the deleted goods or services may not thereafter be 
reinserted in the application. For collective membership mark 
applications, the description of the nature of the collective 
membership organization in the request for extension of time must 
conform to that set forth in the notice of allowance.
    (g) Notice of grant or denial. The applicant will be notified of 
the grant or denial of a request for an extension of time, and of the 
reasons for a denial. Failure to notify the applicant of the grant or 
denial of the request prior to the expiration of the existing period or 
requested extension does not relieve the applicant of the 
responsibility of timely filing a statement of use under Sec.  2.88. 
If, after denial of an extension request, there is time remaining in 
the existing six-month period for filing a statement of use, applicant 
may submit a substitute request for extension of time to correct the 
defects of the prior request. Otherwise, the only recourse available 
after denial of a request for an extension of time is to file a 
petition to the Director in accordance with Sec.  2.66 or Sec.  2.146. 
A petition from the denial of an extension request must be filed within 
two months of the date of issuance of the denial of the request. If the 
petition is granted, the term of the requested six-month extension that 
was the subject of the petition will run from the date of expiration of 
the previously existing six-month period for filing a statement of use.
    (h) Verification not filed within reasonable time. If the verified 
statement is not filed within a reasonable time after it is signed, the 
Office may require the applicant to submit a substitute verified 
statement attesting that the applicant continues to have a bona fide 
intention to use the mark in commerce, or the applicant continues to 
have a bona fide intention, and is entitled, to exercise legitimate 
control over the use of the mark in commerce.
0
19. Amend Sec.  2.146 by revising paragraphs (c) and (d) to read as 
follows:


Sec.  2.146  Petitions to the Director.

* * * * *
    (c) Every petition to the Director shall include a statement of the 
facts relevant to the petition, the points to be reviewed, the action 
or relief requested, and the fee required by Sec.  2.6. Any brief in 
support of the petition shall be embodied in or accompany the petition. 
The petition must be signed by the petitioner, someone with legal 
authority to bind the petitioner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice 
under Sec.  11.14 of this chapter, in accordance with the requirements 
of Sec.  2.193(e)(5). When facts are to be proved on petition, the 
petitioner must submit proof in the form of verified statements signed 
by someone with firsthand knowledge of the facts to be proved, and any 
exhibits.
    (d) A petition must be filed within two months of the date of 
issuance of the action from which relief is requested, unless a 
different deadline is specified elsewhere in this chapter, and no later 
than two months from the date when Office records are updated to show 
that the registration has been cancelled or has expired.
* * * * *
0
20. Amend Sec.  2.161 as follows:
0
a. Revise paragraphs (b), (c), (d)(1), (d)(3), and (e) through (g).
0
b. Add paragraphs (i) through (k).


Sec.  2.161  Requirements for a complete affidavit or declaration of 
continued use or excusable nonuse.

* * * * *
    (b) Include a verified statement attesting to the use in commerce 
or excusable nonuse of the mark within the period set forth in section 
8 of the Act. This verified statement must be executed on or after the 
beginning of the filing period specified in Sec.  2.160(a);
    (c) Include the U.S. registration number;
    (d)(1) Include the fee required by Sec.  2.6 for each class that 
the affidavit or declaration covers;
* * * * *
    (3) 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 submission of the 
additional fee(s) or specification of the class(es) to which the 
initial fee(s) should be applied. Additional fee(s) may be submitted if 
the requirements of Sec.  2.164 are met. If the additional fee(s) are 
not submitted within the time period set out in the Office action and 
the class(es) to which the original fee(s) should be

[[Page 9695]]

applied are not specified, the Office will presume that the fee(s) 
cover the classes in ascending order, beginning with the lowest 
numbered class;
    (e)(1) Specify the goods, services, or nature of the collective 
membership organization for which the mark is in use in commerce, and/
or the goods, services, or nature of the collective membership 
organization for which excusable nonuse is claimed under paragraph 
(f)(2) of this section; and
    (2) Specify the goods, services, or classes being deleted from the 
registration, if the affidavit or declaration covers fewer than all the 
goods, services, or classes in the registration;
    (f)(1) State that the registered mark is in use in commerce; or
    (2) If the registered mark is not in use in commerce on or in 
connection with all the goods, services, or classes specified in the 
registration, set forth the date when such use of the mark in commerce 
stopped and the approximate date when such use is expected to resume; 
and recite facts to show that nonuse as to those goods, services, or 
classes is due to special circumstances that excuse the nonuse and is 
not due to an intention to abandon the mark; and
    (g) Include one specimen showing how the mark is in use in commerce 
for each class in the registration, unless excusable nonuse is claimed 
under paragraph (f)(2) of this section. When requested by the Office, 
additional specimens must be provided. The specimen must meet the 
requirements of Sec.  2.56 of this chapter.
* * * * *
    (i) Additional requirements for a collective mark. In addition to 
the above requirements, a complete affidavit or declaration pertaining 
to a collective mark must:
    (1) State that the owner is exercising legitimate control over the 
use of the mark in commerce; and
    (2) State the nature of the owner's control over the use of the 
mark by the members in the first affidavit or declaration filed under 
paragraph (a) of this section for registrations which issued from an 
application based solely on section 44 of the Act.
    (j) Additional requirements for a certification mark. In addition 
to the above requirements, a complete affidavit or declaration 
pertaining to a certification mark must:
    (1) Include a copy of the certification standards specified in 
Sec.  2.45(a)(4)(i)(B);
    (i) Submitting certification standards for the first time. If the 
registration issued from an application based solely on section 44 of 
the Act, include a copy of the certification standards in the first 
affidavit or declaration filed under paragraph (a) of this section; or
    (ii) Certification standards submitted in prior filing. If the 
certification standards in use at the time of filing the affidavit or 
declaration have not changed since the date they were previously 
submitted to the Office, include a statement to that effect; if the 
certification standards in use at the time of filing the affidavit or 
declaration have changed since the date they were previously submitted 
to the Office, include a copy of the revised certification standards;
    (2) State that the owner is exercising legitimate control over the 
use of the mark in commerce; and
    (3) Satisfy the requirements of Sec.  2.45(a)(4)(i)(A), (C).
    (k) For requirements of a complete affidavit or declaration of use 
in commerce or excusable nonuse for a registration that issued from a 
section 66(a) basis application, see Sec.  7.37.
0
21. Amend Sec.  2.167 as follows:
0
a. Revise the introductory text and paragraphs (a), and (c) through 
(g).
0
b. Add paragraphs (h) through (k).


Sec.  2.167  Affidavit or declaration under section 15.

    The affidavit or declaration in accordance with Sec.  2.20 provided 
by section 15 of the Act for acquiring incontestability for a mark 
registered on the Principal Register or a mark registered under the 
Trademark Act of 1881 or 1905 and published under section 12(c) of the 
Act (see Sec.  2.153 of this chapter) must:
    (a) Be verified;
* * * * *
    (c) For a trademark, service mark, collective trademark, collective 
service mark, and certification mark, recite the goods or services 
stated in the registration on or in connection with which the mark has 
been in continuous use in commerce for a period of five years after the 
date of registration or date of publication under section 12(c) of the 
Act, and is still in use in commerce; for a collective membership mark, 
describe the nature of the owner's collective membership organization 
specified in the registration in connection with which the mark has 
been in continuous use in commerce for a period of five years after the 
date of registration or date of publication under section 12(c) of the 
Act, and is still in use in commerce;
    (d) Specify that there has been no final decision adverse to the 
owner's claim of ownership of such mark for such goods, services, or 
collective membership organization, or to the owner's right to register 
the same or to keep the same on the register;
    (e) Specify that there is no proceeding involving said rights 
pending in the Office or in a court and not finally disposed of;
    (f) Be filed within one year after the expiration of any five-year 
period of continuous use following registration or publication under 
section 12(c) of the Act; and
    (g) Include the fee required by Sec.  2.6 for each class to which 
the affidavit or declaration pertains in the registration. If no fee, 
or a fee insufficient to cover at least one class, is filed at an 
appropriate time, the affidavit or declaration will not be refused if 
the required fee(s) (see Sec.  2.6) is filed in the Office within the 
time limit set forth in the notification of this defect by the Office. 
If the submitted fees are insufficient to cover all classes in the 
registration, the particular class or classes to which the affidavit or 
declaration pertains should be specified.
    (h) If the affidavit or declaration fails to satisfy any of the 
requirements in paragraphs (a) through (g) of this section, the owner 
will be notified in an Office action that the affidavit or declaration 
cannot be acknowledged. If a response is not received within the time 
period provided or does not satisfy the requirements of the Office 
action, the affidavit or declaration will be abandoned.
    (i) If the affidavit or declaration satisfies paragraphs (a) 
through (g) of this section, the Office will issue a notice of 
acknowledgement.
    (j) An affidavit or declaration may be abandoned by the owner upon 
petition to the Director under Sec.  2.146 either before or after the 
notice of acknowledgement has issued.
    (k) If an affidavit or declaration is abandoned, the owner may file 
a new affidavit or declaration with a new filing fee.
0
22. Amend Sec.  2.173 as follows:
0
a. Revise paragraphs (b), and (d) through (g).
0
b. Add paragraphs (h) and (i).


Sec.  2.173  Amendment of registration.

* * * * *
    (b) Requirements for request. A request for amendment or disclaimer 
must:
    (1) Include the fee required by Sec.  2.6;
    (2) Be verified and signed in accordance with Sec.  2.193(e)(6); 
and
    (3) If the amendment involves a change in the mark: a specimen 
showing the mark as used on or in connection with the goods, services, 
or collective membership organization; a verified

[[Page 9696]]

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 Sec.  
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 elimination of a 
claim of acquired distinctiveness will not be permitted.
0
23. Revise Sec.  2.175(b)(2) as follows:


Sec.  2.175  Correction of mistake by owner.

* * * * *
    (b) * * *
    (2) Be verified; and
* * * * *
0
24. Amend Sec.  2.183 by revising paragraphs (d) and (e) to read as 
follows:


Sec.  2.183  Requirements for a complete renewal application.

* * * * *
    (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 Sec.  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.
* * * * *
0
25. Amend Sec.  2.193 by revising paragraphs (c)(2), (e) introductory 
text, (e)(1), and (f) to read as follows:


Sec.  2.193  Trademark correspondence and signature requirements.

* * * * *
    (c) * * *
    (2) Sign the document using some other form of electronic signature 
specified by the Director.
* * * * *
    (e) Proper person to sign. Documents filed in connection with a 
trademark application or registration must be signed by a proper 
person. Unless otherwise specified by law, the following requirements 
apply:
    (1) Verified statement of facts. A verified statement in support of 
an application for registration, amendment to an application for 
registration, allegation of use under Sec.  2.76 or Sec.  2.88, request 
for extension of time to file a statement of use under Sec.  2.89, or 
an affidavit under section 8, 12(c), 15, or 71 of the Act must satisfy 
the requirements of Sec.  2.2(n), and be signed by the owner or a 
person properly authorized to sign on behalf of the owner. A person who 
is properly authorized to verify facts on behalf of an owner is:
* * * * *
    (f) Signature as certification. The presentation to the Office 
(whether by signing, filing, submitting, or later advocating) of any 
document by any person, whether a practitioner or non-practitioner, 
constitutes a certification under Sec.  11.18(b) of this chapter. 
Violations of Sec.  11.18(b) of this chapter may jeopardize the 
validity of the application or registration, and may result in the 
imposition of sanctions under Sec.  11.18(c) of this chapter. Any 
practitioner violating Sec.  11.18(b) of this chapter may also be 
subject to disciplinary action. See Sec.  11.18(d) and Sec.  11.804 of 
this chapter.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
26. The authority citation for 37 CFR Part 7 continues to read as 
follows:

    Authority:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

0
27. Amend Sec.  7.1 as follows:
0
a. Revise paragraph (c).
0
b. Add paragraph (f).


Sec.  7.1  Definitions of terms as used in this part.

* * * * *
    (c) The acronym TEAS means the Trademark Electronic Application 
System, available at http://www.uspto.gov.
* * * * *
    (f) The definitions specified in Sec.  2.2(k) and (n) of this 
chapter are incorporated in this part.
0
28. Amend Sec.  7.37 as follows:
0
a. Revise paragraphs (b) introductory text, (b)(1), (d)(1), (d)(3), 
(e), (f)(1), and (g).
0
b. Add paragraphs (i) and (j).


Sec.  7.37  Requirements for a complete affidavit or declaration of use 
in commerce or excusable nonuse.

* * * * *
    (b) Include a verified statement attesting to the use in commerce 
or excusable nonuse of the mark within the period set forth in section 
71 of the Act. The verified statement must be executed on or after the 
beginning of the filing period specified in Sec.  7.36(b). A person who 
is properly authorized to sign on behalf of the holder is:
    (1) A person with legal authority to bind the holder;
* * * * *
    (d)(1) Include the fee required by Sec.  7.6 for each class that 
the affidavit or declaration covers;
* * * * *
    (3) 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

[[Page 9697]]

Office will issue a notice requiring either submission of the 
additional fee(s) or specification of the class(es) to which the 
initial fee(s) should be applied. Additional fees may be submitted if 
the requirements of Sec.  7.39 are met. If the additional fee(s) are 
not submitted within the time period set out in the Office action and 
the class(es) to which the original fee(s) should be applied are not 
specified, the Office will presume that the fee(s) cover the classes in 
ascending order, beginning with the lowest numbered class;
    (e)(1) Specify the goods, services, or nature of the collective 
membership organization for which the mark is in use in commerce, and/
or the goods, services, or nature of the collective membership 
organization for which excusable nonuse is claimed under paragraph 
(f)(2) of this section;
    (2) Specify the goods, services, or classes being deleted from the 
registration, if the affidavit or declaration covers fewer than all the 
goods, services, or classes in the registration;
    (f)(1) State that the registered mark is in use in commerce; or
    (2) If the registered mark is not in use in commerce on or in 
connection with all the goods, services, or classes specified in the 
registration, set forth the date when such use of the mark in commerce 
stopped and the approximate date when such use is expected to resume 
and recite facts to show that nonuse as to those goods, services, or 
classes is due to special circumstances that excuse the nonuse and is 
not due to an intention to abandon the mark;
    (g) Include one specimen showing how the mark is used in commerce 
for each class in the registration, unless excusable nonuse is claimed 
under paragraph (f)(2) of this section. When requested by the Office, 
additional specimens must be provided. The specimen must meet the 
requirements of Sec.  2.56 of this chapter.
* * * * *
    (i) Additional requirements for a collective mark. In addition to 
the above requirements, a complete affidavit or declaration pertaining 
to a collective mark must:
    (1) State that the owner is exercising legitimate control over the 
use of the mark in commerce; and
    (2) State the nature of the owner's control over the use of the 
mark by the members in the first affidavit or declaration filed under 
paragraph (a) of this section.
    (j) Additional requirements for a certification mark. In addition 
to the above requirements, a complete affidavit or declaration 
pertaining to a certification mark must:
    (1) Include a copy of the certification standards specified in 
Sec.  2.45(a)(4)(i)(B) of this chapter;
    (i) Submitting certification standards for the first time. In the 
first affidavit or declaration filed under paragraph (a) of this 
section, include a copy of the certification standards; or
    (ii) Certification standards submitted in prior filing. If the 
certification standards in use at the time of filing the affidavit or 
declaration have not changed since the date they were previously 
submitted to the Office, include a statement to that effect; if the 
certification standards in use at the time of filing the affidavit or 
declaration have changed since the date they were previously submitted 
to the Office, include a copy of the revised certification standards;
    (2) State that the owner is exercising legitimate control over the 
use of the mark in commerce; and
    (3) Satisfy the requirements of Sec.  2.45(a)(4)(i)(A) and (C) of 
this chapter.

    Dated: February 10, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director, United States Patent and Trademark Office.
[FR Doc. 2014-03256 Filed 2-19-14; 8:45 am]
BILLING CODE 3510-16-P