October 17, 2007

By Brad Stohry

The Fifth Edition of the Trademark Manual of Examining Procedure ("TMEP") has recently been posted on the USPTO's website at http://tess2.uspto.gov/tmdb/tmep/. An outline of the differences between the Fifth Edition and the Fourth Edition can be found at http://tess2.uspto.gov/tmdb/tmep/changes.htm. Most of the amendments are minor, such as language revisions, amendments to include new case citations, renumbering, etc. However, some of the amendments are significant. The following are, in the opinion of the author, some of the more pertinent amendments:

TMEP § 505: When the recordation of an assignment does not automatically update the ownership field in the USPTO's electronic records for a registered mark, the USPTO will update Trademark Reporting and Monitoring (“TRAM”) System and Trademark Applications and Registrations Retrieval (“TARR”) database to identify the new owner of a registered mark only if the new owner: (1) records the appropriate document; (2) files a written request that TRAM and TARR be updated; and (3) pays the required fee.

TMEP §§ 602.01, 602.04 and 602.07: Clarifies that if an applicant is represented by an attorney, any new attorney who wishes to take action must file a new power of attorney and revocation of the previous power. The power of attorney/revocation cannot be signed by the new attorney; rather, it must be signed by the applicant. Further, the power of attorney/revocation must be filed before the USPTO will accept filings by, or correspond with, the new attorney.

TMEP 705.05: Clarifies that while a non-precedential decision is not binding on the TTAB, such a decision may be cited for its persuasive value

TMEP § 708.01: Previously this section included a statement that indicated that an examining attorney would expedite examination of a response if the applicant responds to a priority action within two months of the mailing date. Apparently this is no longer the case because this statement has been deleted.

TMEP § 708.02: Provides that an examining attorney must fully discuss all refusals and requirements with the applicant before issuing a priority action.

TMEP § 712.01: Provides that an examining attorney will no longer presume that a proper person signed a response to office action. Rather, an examining attorney must determine that the record clearly establishes the authority of the signer of the response.

TMEP § 718.02(a): Clarifies that if the fees in a multiple-class application are insufficient to cover all the classes, and the applicant fails to respond to an office action requiring submission of additional fees, the entire application will be abandoned.

TMEP § 806.03: Clarifies that an applicant may not amend from §1(a) to §1(b) after a statement of use has been filed.

TMEP § 807.07(f): Clarifies that the USPTO will accept drawings that contain the color gray, or stippling that produces gray tones, even if color is not claimed as a feature of the mark.

TMEP § 812: Provides that if an applicant owns one or more registrations for the same mark, the initial TEAS Plus application must include a claim of ownership. If this claim is not included in the initial application, the applicant must pay an additional fee to have the application examined as a regular TEAS application.

TMEP § 813: Provides that if a mark includes an individual’s name or portrait, the initial TEAS Plus application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises and a written consent of that individual; or (2) a statement that the name or portrait does not identify a living individual. If neither of these statements are included in the initial application, the applicant must pay an additional fee to have the application examined as a regular TEAS application.

TMEP § 904.02(a): Provides that electronically filed specimens may now be submitted in .pdf or .jpg format.

TMEP § 1004.01: Clarifies that a §44(e) applicant must submit a copy of a document that has been certified by the intellectual property office in the applicant’s country of origin before the application will be published for opposition. A printout from the intellectual property office’s website or a photocopy of the office’s publications is not sufficient, nor is an English translation of a foreign registration without a copy of the underlying document.

TMEP §§ 1104.09(c) and 1109.13: Provides that if the goods/services identified in the application are omitted from an amendment to allege use or statement of use filed through TEAS, the examining attorney should not issue any inquiry with respect to the omitted goods/services. Further, the applicant may not reinsert the omitted goods/services.

TMEP §§ 1201.02(c) and 1201.03(c): Clarifies that an application may be amended to correct the applicant’s name if the party listed as the applicant did not exist as a matter of law on the application filing date, and the application was filed by the party who owned or was entitled to use the mark, albeit under an incorrect name or with an incorrect entity designation. However, if an application is filed in the name of a wholly owned subsidiary, and the parent corporation owns the mark, the application is void as filed because the applicant is not the owner of the mark.

TMEP § 1213.08(b): Clarifies that separate disclaimers of adjacent components of a mark may be accepted where the components do not form a grammatically or otherwise unitary expression.

TMEP § 1402.02: Provides that an application will be denied a filing date if the goods/services are identified as “business” or “business services.” Further, clarifies that if an applicant claims use in a particular class and yet only uses the mark on some of the goods/services, the resulting registration could be void.

TMEP § 1402.07(a): Provides that if the identification of goods/services is merely a repetition of the entire general class heading for a given class, the USPTO will look to the ordinary meaning of the words for the purposes of determining the scope of the identification. The USPTO will not permit the applicant to amend to include any item that falls in the class, unless the item falls within the ordinary meaning of the words identified.

TMEP § 1609.02(e): Clarifies that a drawing originally submitted in black-and-white may be amended to include a claim of color, as long as the amendment does not constitute a material alteration.

TMEP § 1609.10: Provides that an original certificate of registration should not be submitted with a request for correction. If an original certificate of registration is submitted with a request for correction, it will be destroyed.

Brad Stohry is an attorney with Ice Miller focusing his efforts on trademark prosecution and intellectual property licensing.

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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