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*The following material consists of work of the US Government.*

AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.

SUMMARY: The United States Patent and Trademark Office (Office) is adding new regulations to implement the Madrid Protocol Implementation Act of 2002 (MPIA), and is amending existing regulation both to implement the MPIA and to otherwise clarify and improve the procedures for processing trademark applications and conducting proceedings before the Trademark Trial and Appeal Board. The MPIA provides that: The owner of a u.s. application or registration may seek protection of its mark in any of the other 58 countries party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) by submitting a single international application through the Office to the International Bureau of the World Intellectual Property Organization (IB); and the owner of an application or registration in a country party to the Madrid Protocol may obtain an international registration from the ill and request an extension of protection of its mark to the United States.

DATES: Effective Date: November 2, 2003.

Applicability Dates: New rules added as part 7 of 37 CFR and the amendments to rules in part 2 of 37 CFR shall apply to any application for international registration filed on or after November 2, 2003, and any application for registration in the United States under section 1, section 44 or section 66(a) of the Act filed on or after November 2, 2003, except as noted below.

Drawing requirements under § 2.52: Applicants with pending applications filed prior to November 2, 2003, will not be required to file amended drawings. However, applicants may voluntarily amend their drawings to comply with the new standard character or color drawing requirements. See discussion below of changes to § 2.52. The Office will consider voluntary amendments filed on or after November 2, 2003, in accordance with standard procedures for processing of amendments.
Partial abandonment under §2.65(a): This rule as amended shall apply to all Office actions issued on or after November 2,2003, even if the application was filed prior to that date. See discussion below of the changes to § 2.65.

Requests to extend the time to file an opposition under § 2.1O2(c): If a first request for an extension of time to oppose was filed before November 2, 2003, the rules in effect on the filing date of that first request will apply to the first request and any subsequent request filed by the same potential opposer or one in privity with it. If a first request for an extension of time to oppose is filed on or after November 2, 2003, the amended regulation will apply to the first request and any subsequent request filed by the same potential opposer or one in privity with it.

Petitions to the Director under § 2.146(i): For petitions filed on or after May 2, 2004, petitioners will be held to the new six-month standard of diligence in monitoring the status of applications and registrations. Petitions filed prior to May 2,2004, will be reviewed under the one-year diligence standard, even if the application was filed on or after November 2, 2003. See the discussion below of changes to § 2.146(i).

FOR FURTHER INFORMATION CONTACT: Cheryl L. Black, Office of the Commissioner for Trademarks, by telephone at (703) 308-8910, ext. 153, or bye-mail to cheryl.black@uspto.gov.

SUPPLEMENTARY INFORMATION: A Notice of Proposed Rule Making was published in the Federal Register (68 FR 15119) on March 28, 2003. A public hearing was held on May 30, 2003.

Four organizations, two law firms, seven attorneys, one business and three individuals submitted written comments. Two organizations and one attorney testified at the oral hearing.

The Madrid Protocol Implementation Act of 2002, Public Law 107-273, 116 Stat. 1758, 1913-1921 (MPIA) amends the Trademark Act of 1946 to implement the provisions of the Madrid Protocol in the United States. The MPIA was enacted on November 2, 2002, and becomes effective on November 2, 2003.

The Madrid Protocol and the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement (April 1, 2002) (Common Regulations) are available on the World Intellectual Property Organization's (WIPO) Web site, currently at http://www.wipo.int/madrid/en/. The Common Regulations are the procedures agreed to by the parties to the Madrid Protocol regarding
the administration of the Madrid Protocol, pursuant to Article 10(2)(iii).

References below to "the Act," "the Trademark Act," or "the statute" refer to
the Trademark Act of 1946, 15 U.S.C. 1051, et seq., as amended by the MPIA. The "TMEP" referenced below is the Trademark Manual of Examining Procedure (3rd ed. Rev. 2, May 2003).

FILINGS UNDER MADRID PROTOCOL

Background

The Madrid Protocol provides a system for obtaining an international registration. The IB maintains the system in accordance with the guidelines set forth in the Common Regulations. To apply for an international registration under the Protocol, an applicant for an international application must be a national of, be domiciled in, or have a real and effective business or commercial establishment in one of the countries that are members of the Protocol (Contracting Parties). An international applicant can submit an international application only on the basis of a trademark application or registration in one of the Contracting Parties (basic application or basic registration). The international application must be for the same mark and include a list of goods and/or services identical to or narrower than the list of goods and/or services in the basic application or registration. The international application must designate one or more Contracting Parties in which an extension of protection of the international application is sought.

The international application must be submitted through the trademark office of the Contracting Party in which the basic application or registration is held (office of origin). The office of origin must certify that the information in the international application corresponds with the information in the basic application or registration, and transmit the international application to the IB.

The IB reviews the international application to determine whether the Madrid Protocol filing requirements have been met and the required fees have been paid. If an international application is unacceptable, the IB will notify both the applicant and the office of origin of the “irregularity.”If the Madrid Protocol requirements have been met and the fees have been paid, the IB will immediately register the mark, publish the international registration in the WIPO Gazette of International Marks, send a certificate to the holder, and notify the offices of the designated Contracting Parties in which an extension of protection of the international registration is sought.

Registration by the IB does not mean that the mark is automatically granted protection in the designated Contracting Parties.

The holder of an international registration may designate additional Contracting Parties in a subsequent designation. A subsequent designation is a request by the holder of an international registration for an extension of protection of its international registration to additional Contracting Parties. Each Contracting Party designated in an international application or in a subsequent designation will examine the request for extension of protection as a national application under its laws, and if it complies with
the requirements for registration, grant protection of the mark in its country. A Contracting Party must notify the IB of the refusal of a request for extension of protection within the time limits set forth in Article 5(2) of the Madrid Protocol. If a notification of refusal is not sent to the IB within the required time limits, the Contracting Party must grant protection of the mark in its country.

Discussion of Specific Rules Changed or Added

The Office proposes to add new rules setting forth the requirements for submitting international applications and subsequent designations through the Office for forwarding to the IB. The Office also proposes to add new rules for processing requests for extension of protection of international registrations designating the United States, and changing current regulations to bring the rules of practice in trademark cases into conformance with the MPIA.

New Rules Added as Part 7

The Office proposes to add rules 7.1, 7.3, 7.4, 7.6, 7.7, 7.11, 7.12, 7.13, 7.14, 7.21, 7.22, 7.23, 7.24, 7.25, 7.26, 7.27, 7.28, 7.29, 7.30, 7.31, 7.36, 7.37, 7.38, 7.39, 7.40, and 7.41; and designate part 7 of 37 CFR as the rules of practice in filings pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

§ 7.1 defines certain terms used in this part. Terms defined in the MPIA are not included in the list of definitions in § 7.1.

§ 7.3 requires that correspondence relating to international applications and registrations be in English.

§ 7.4 states that correspondence submitted through the Trademark Electronic Application System (TEAS) will be accorded the date and time the complete transmission is received in the Office based on Eastern Time.

Fees

§ 7.6 sets forth the fees required by the Office for processing correspondence relating to international applications and registrations under the Madrid Protocol. These fees must be paid in U.S. dollars at the time of submission.

The Office is charging fees for: (1) Reviewing and certifying an international application; (2) transmitting a subsequent designation; (3) transmitting a request to record an assignment or restriction (usually a security interest), or the release of a restriction, of a holder's right of disposal of an international registration; (4) requesting a notice of replacement; and (5) filing an affidavit of use in commerce or excusable nonuse for a mark in a registered extension of protection to the United States.

In addition to the fees required by the Office, there are international fees for processing international applications and registrations. Section 7.7 sets forth the international fees that may be paid to the IB through the Office in connection with international applications and registrations, and the requirements and procedures for submitting those fees through the Office. A schedule of the international fees is currently posted on the WIPO Web site, available at http://www.wipo.int/madrid/en/. An international applicant or holder may pay the fees directly to the IB, or to the IB through the Office. Fees paid directly to the IB must be paid in Swiss francs, and fees paid through the Office must be paid in U.S. dollars.

Under § 7.7(b), if an international applicant or holder pays the international fees through the Office, payment must be made at the time of submission by any of the acceptable payment methods set forth in §§ 2.207 and 2.208. If the international fees are paid directly to the IB using an acceptable form of payment established by the IB, the international applicant or holder must include the IB account number for debiting fees or the IB receipt number as proof of payment of fees in its submission to the Office. The fee calculator and acceptable methods for paying fees to the IB may currently be viewed on the WIPO Web site at http://www.wipo.int/madrid/en/.

International Applications Originating From the United States

The requirements for granting a date of receipt to an international application
are set forth in § 7.11(a). An international application must identify at least one basic application or registration. The international application may be based on more than one U.S. application and/or registration, provided that the owner and the mark are the same for each basic application or registration.

An international application must be submitted through TEAS. The Office has developed a TEAS form for filing an application for international registration that conforms to the official IB form created by WIPO. TEAS will require the applicant to select between two different types offorms, namely, a prepopulated form containing information from the basic application or registration, or a free-text form. The applicant can use the pre-populated form if: (1) The international application is based on a single basic application or registration; and (2) applicant's changes to the international application are limited to narrowing the list of goods or services. For all other international applications, the applicant must fill in all the fields in the free text form.

Section 7.11(a)(3) requires a reproduction of the mark in the international application that is the same as the mark in the basic application or registration, and that meets the drawing requirements of § 2.52. If the mark in the basic application or registration is depicted in black and white and does not include a color claim, the reproduction of the mark in the international application must be black and white. If a mark is depicted in black and white in the basic application or registration but there is a claim of color, the international application must include both a black and white reproduction of the mark and a color reproduction of the mark. If the mark in the basic application or registration is in color, the reproduction of the mark in the international application must be in color.

Under §§ 7. 11 (a)(4) and 7.12, if color is claimed as a feature of the mark, the same color claim must be made in the international application. If color is not claimed as a feature of the mark in the basic application or registration, the international application may not include a claim of color.

Under § 7.11(a)(5), if the basic application or registration includes a description of the mark, the international application must include the same description of the mark.

Under § 7.11(a)(6), if the mark in the basic application or registration is a three-dimensional mark, sound mark, collective mark or certification mark, the international application must indicate the type of mark.

Section 7.11(a)(7) requires a list of goods and/or services in the international application that is identical to or narrower than the list of goods and/or services in the basic application or registration, and is classified according to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. An applicant may omit or revise goods and/or services from the international application as long as the omission or revision does not broaden the scope of the goods or services identified in the basic application or registration.

The pre-populated form will include the list of goods/services in the basic application or registration. The applicant may edit the list of goods and/ or services by either omitting particular goods or services or revising the description of goods or services populated from the basic application or registration. In the free text form, the applicant must enter the goods/services manually. The applicant may omit goods or services, or revise the list of goods/services. The list of goods and services for each designated Contracting Party must be identical to or narrower than the list of goods or services in the international application.

Both the pre-populated form and the free-text form will also allow an applicant to change the classification of goods and services in an international application. If the goods or services in the basic application or registration are classified in U.S. Classes A, B or 200 or entirely under the U.S. classification system, an applicant may want to reclassify goods or services into international classes. Classes A, Band 200 are not part of the international classification system under the Nice Agreement. Failure to properly classify goods or services in an international application according to the international classification system under the Nice Agreement may result in an IB notice of irregularity. The Office will issue an examination guide regarding classification on or before November 2, 2003.

Under § 7. 11 (a)(8), an international applicant must designate at least one Contracting Party in which it seeks an extension of protection.

Under § 7.11(a)(9), the international applicant must pay the U.S. certification
fee and the international fees (see § 7.7) for all classes and all designated Contracting Parties at the time of submission.

Under section 61 of the Act, and § 7.11(a)(10), an international applicant must specify that applicant is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States. If the applicant is not a national of the United States and the applicant's address on the application is outside of the United States, the applicant will be required to provide the address of the u.s. domicile or establishment.

Section 7.13 sets forth the requirements for certifying and forwarding an international application to the lB. Under § 7.13(a), if an international application meets the requirements of § 7.11(a), the Office will grant a date of receipt, certify that the information contained in the international application corresponds to the basic application or registration, and forward the international application electronically to the lB.

The Office must certify and forward an international application to the IB within two months of the date ofreceipt in the Office in order to provide the applicant with an international registration date as of the date ofreceipt of the international application in the Office. The Office will automatically certify and forward to the IB all international applications based on a single basic application or registration, with no limitations on the goods/services and no color claim, that meet the requirements of § 7.11(a). Limited review by the Madrid Processing Unit (MPU) is required for international
applications where the goods or services have been narrowed or a color drawing is attached. International applications that are completed on free text forms are reviewed by the MPU. The use of a fully automated filing system expedites the processing of international applications because information is either prepopulated from Office records or entered by the applicant directly into the Office's automated systems, and electronically reviewed for certification.

Section 7.13(b) states that if the Office cannot certify that the information contained in the international application corresponds with the information in the basic application or
registration, the Office will notify the applicant that the international application cannot be certified. Any international fees (see § 7.7) paid through the Office will be refunded; however, the Office will not refund the certification fee.

Correcting Irregularities in International Application-§ 7.14

The IB will notify both the international applicant and the Office of any irregularities in an international application. Under Rule 11 of the Common Regulations, the international applicant must correct certain irregularities through the Office. Fees for correcting irregularities in an international application must be paid directly to the lB. All other irregularities requiring applicant's response may either be submitted through the Office or filed directly at the IB. Section 7.14(b) sets forth the types of irregularities that must be corrected through the Office, and § 7.14(e) sets forth the procedures for responding to irregularities through the Office.

To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IE's notice. Receipt in the Office does not fulfill this requirement.

Information about filing directly with the IB is available on the WIPO Web site, currently at http://www.wipo.int/madrid/en/. The applicant may contact the IB by mail to the World Intellectual Property Organization, 34 chemin des Colombettes, PO Box 18, CH-1211 Geneva 20, Switzerland; by telephone at 41223389111; by fax to 4122740 1429; or bye-mail to intreg.mail@wipo.int.

Irregularities in Classification and Identification of Goods/Services

Rules 12 and 13 of the Common Regulations provide that the IB will not consider a response to irregularities in classification or identification of goods and/or services unless the response is submitted through the office of origin. Section 7.14(b) therefore requires that an international applicant respond to irregularities in classification and identification of goods and/or services through the Office. Because the Office must certify that the goods or services in an applicant's response are within the scope of the basic application or registration at the time the response is filed, responses to irregularities in the identification will be reviewed by the MPU.

If the goods or services in the basic application or registration have been amended since the date the international application was submitted to the Office, the goods and services in the response to the IB notice must be within the scope of the amended goods and services. If the response includes goods and services that exceed the scope of the goods and services in the basic application or registration as amended, the MPU will reject the response and notify the applicant. If there is time remaining in the IB response period, the applicant may submit a corrected response. If the goods and services in an applicant's response do not exceed the scope of the goods and services in the basic application or registration as amended, and the IB response period has not
expired, the MPU will certify the goods and services and forward the response to the IB.

Fees To Correct Irregularities Must Be Paid Directly to the IB

Section 7.14(c) provides that fees for correcting irregularities in an international application must be paid directly to the IB. This is true even if the applicant is filing a response to correct other irregularities through the Office. At this time, the Office's automated system cannot process fees to correct irregularities in an international application.

Other Irregularities Requiring Response From Applicant

Under § 7.14(d), applicants may respond to all other irregularities either through the Office in accordance with § 7.14(e), or directly at the IB. The Office will not respond to any irregularities on behalf of an applicant. Except for an applicant's response to irregularities in the identification of goods and services, the Office will not review responses to IB notices of irregularities.

Procedures for Responding to IB Notices of Irregularities Through the Office
To be considered timely, responses to IB notices of irregularities must be received by the IB before the end of the response period set forth in the IB's notice. Receipt in the Office does not fulfill the requirement for timely submission to the IB.

Under § 7.14(e), the Office requires that applicants use TEAS to submit responses through the Office. Responses submitted through the Office for forwarding to the IB should be submitted as soon as possible, but at least one month before the end of the response deadline set forth in the IB's notice. The Office will not process any response submitted to the Office after the IB response deadline.

Subsequent Designations-§ 7.21

Section 64 of the Act and § 7.21 permit the holder of an international registration to submit a subsequent designation through the Office, if: (1) The international registration is based on a U.S. application or registration; and (2) the holder of the international registration is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States. The holder also has the option of filing a subsequent designation directly with the IB.

Under § 7.21, if a subsequent designation is submitted through the Office, it must be submitted through TEAS and include the international registration number, the name and address of the holder of the international registration, one or more Contracting Parties in which an extension of protection is sought, and a list of goods and/or services that is identical to or narrower than the goods and/or services listed in the international registration. The holder can omit or revise goods and/or services from the subsequent designation as long as the omission or revision does not broaden the scope of the goods or services identified in the international registration. The holder must include the U.S. transmittal fee and all subsequent designation fees (see § 7.7) at the time of submission. The Office is not required to certify a subsequent designation.

The IB will review a subsequent designation for compliance with Rule 24 of the Common Regulations before forwarding the request for extension of protection to the designated Contracting Parties. If there are any irregularities in the subsequent designation, the IB will notify both the holder and the Office. The holder must file any responses to the notice or irregularities directly with the IB. The Office will not forward any responses to irregularities in a subsequent designation to the IB, even if the subsequent designation was submitted through the Office.

Recording Changes to International Registration

The IB shall record changes to international registrations pursuant to Articles 9 and gbis of the Madrid Protocol. Section 7.22 requires that all requests to record changes to an international registration be filed at the IB, except in the limited circumstances in which an assignment, or restriction of a holder's right of disposal of an international registration or the release of such a restriction, must be submitted through the Office, as set forth in §§ 7.23 and 7.24. Section 10 of the Act and 37 CFR part 3 are not applicable to such assignments or restrictions.

The Office will not take note of an assignment or restriction of a holder's right of disposal of an international registration in its records unless the IB notifies the Office that the assignment or restriction has been recorded in the International Register. When the IB sends notice of an assignment of an international registration with an extension of protection to the United States, the MPU will update the ownership information in the Trademark database and forward the IB notice to the Assignment Services
Division to update its automated records. An assignment of an extension
of protection that has not been recorded at the IB will not be reflected in the Trademark database, even if the assignment has been inadvertently recorded by the Assignment Services Division.

Section 7.23 sets forth the limited circumstances in which a request to record an assignment of an international registration may be submitted through the Office. The Office will accept and forward to the IB a request to record an assignment of an international registration by an assignee who is a national of, is domiciled in or has a real and effective commercial or industrial establishment in the U.S. only if the assignee cannot obtain the assignor's signature for the request to record the assignment and the request meets the requirements of § 7.23.

Section 7.24 sets forth the limited circumstances in which a request to record a restriction of a holder's right of disposal of an international registration, or the release of such a restriction, may be submitted through the Office. Under § 7.24, the Office will accept for submission and forward to the IB a request to record a restriction of a holder's right of disposal of an international registration (usually a security interest), or the release of such a restriction, by a party holding the restriction who is a national of, is domiciled in or has a real and effective commercial or industrial establishment in the U.S. only if: (1) (i) The restriction is the result of a court order; or (ii) the restriction is the result of an agreement between the holder of the international registration and the party restricting the holder's right of disposal, and the signature of the holder of the international registration cannot be obtained; (2) the party who obtained the restriction is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States; and (3) the restriction or release applies to the holder's right to dispose of the international registration in the United States. The request must meet the requirements of § 7.24(b). The Office will charge a fee for transmitting a request to record an assignment or restriction, or the release of a restriction, to the IB.

Requests for Extension of Protection to the United States

Under section 65 of the Act, the holder of an international registration may request an extension of protection of the international registration to the United States, provided the international registration is not based on a u.s. application or registration.

The holder may file with the IB a request for extension of protection to the United States in either an international application or a subsequent designation. Section 66(a) of the Act requires that a request for extension of protection to the United States include a declaration of bona fide intention to use the mark in commerce that the United States Congress can regulate. The allegations in a verified statement required by an international applicant or holder seeking an extension of protection of an international registration to the United States are set forth in § 2.33(e). See discussion below of new § 2.33(e). The IB will certify that the request for extension of protection contains a properly signed declaration of bona fide intention to use the mark in commerce when it forwards the request to the Office. The declaration will remain part of the international registration on file at the IB.

The IB will forward the request for extension of protection to the Office electronically. A holder cannot file a request for extension of protection to the United States directly with the Office.

Section 7.25 provides that for purposes of examination and opposition, a request for an extension of protection to the United States will be referred to as an application for registration under section 66(a) of the Act; that references to "applications" and "registrations" in 37 CFR part 2 include extensions of protection to the United States; and that upon registration, an extension of protection will be referred to as a "registration," a "registered extension of protection," or a "section 66(a) registration." With the exception of §§ 2.130-2.131,2.1602.166,2.168,2.172,2.173,2.175 and 2.181-2.186, all the sections in 37 CFR parts 2 and 10 apply to a request for extension of protection to the United States.

Under § 7.26, the filing date of a request for extension of protection to the United States for purposes of examination in the Office is: (1) The international registration date, if the request for extension of protection to the United States was made in the international application, or (2) the date the IB recorded the subsequent designation, if the request for extension of protection to the United States was made in a subsequent designation. Under section 66(b) of the Act, the filing date of the extension of protection will be considered the date of constructive notice pursuant to section 7(c) of the Act.

Under section 67 of the Act and § 7.27, the holder of an international registration may claim priority under Article 4 of the Paris Convention for the Protection of Industrial Property if: (1) The request for an extension of protection contains a claim of priority; and (2) the international registration date or the date of recordal of the subsequent designation at the IB requesting an extension of protection to the United States is no later than six months after the filing date ofthe application that formed the basis of the claim of priority.

Replacement

Under Article 4bis ofthe Madrid Protocol, where a mark that is the subject of a national or regional registration in the Office of a Contracting Party is also the subject of an international registration and both registrations are in the name of the same person, the international registration is deemed to replace the national or regional registration, without prejudice to any rights acquired by virtue of the latter, provided that: (1) The protection resulting from the international registration extends to that Contracting Party; (2) all the goods and services listed in the national or regional registration are also listed in the international registration with respect to that Contracting Party; and (3) the extension of protection takes effect after the date of the national or regional registration.
Under section 74 of the Act and § 7.28(a), a registered extension of protection to the United States affords the same rights as a previously issued U.S. registration if: (1) Both registrations are owned by the same person and identify the same mark; and (2) the goods/services in the previously issued U.S. registration are covered by the registered extension of protection. Under § 7.28(b), the holder of a registered extension of protection may request that the Office note in its records replacement of the earlier U.S. registration by the extension of protection. The Office will require a fee to note replacement.

Under § 7.29, the replaced U.S. registration will remain in force, unless cancelled, expired or surrendered, as long as the owner files affidavits or declarations of use or excusable nonuse under section 8 of the Act and renews the registration under section 9 of the Act.

Effect of Cancellation or Expiration of International Registration on Extension of Protection
Under section 70 of the Act and § 7.30, the Office will cancel a pending or registered extension of protection to the United States, in whole or in part, if the IB notifies the Office ofthe cancellation or expiration of the corresponding international registration, in whole or in part.

Transformation

Under section 70(c) of the Act and § 7.31, if an international registration is cancelled, in whole or in part, by the IB at the request of the office of origin under Article 6(4) of the Madrid Protocol (due to the cancellation or expiration of the basic application or registration), the holder of the international registration may file a request to transform the corresponding extension of protection to the United States into an application under sections 1 and/or 44 of the Act. If only a portion ofthe cancelled goods and services in the international registration pertains to the extension of protection to the United States, the Office will not cancel the entire extension of protection, but will instead delete the cancelled goods or services from the extension of protection. The holder of the extension of protection may request transformation only as to the cancelled goods or services.

The requirements for transformation are set forth in § 7.31(a). The holder of an international registration must file the request for transformation through TEAS within three months of the date of cancellation of the international registration. The request must include an application filing fee for at least one class of goods and/or services.
Under § 7.31(b), if a request for transformation contains all the elements in § 7.31(a), the cancelled extension of protection to the United States will be transformed into an application under sections 1 and/or 44 of the Act. The application will be accorded the same filing date and same priority (if any) as the cancelled extension of protection to the United States. The application resulting from the transformation will be examined as a new application under part 2 and, if approved for publication, published for opposition. The application must meet all the requirements of the Act and rules for an application under section 1 and/or section 44 of the Act, as appropriate.

If the holder does not meet the requirements of § 7.31(a), the Office will not process the request for transformation.

Maintaining an Extension of Protection to the United States

Section 71 of the Act and § 7.36 require the holder of an international registration with a registered extension of protection to the United States to file an affidavit or declaration of use in commerce or excusable nonuse during the following time periods: (1) Between the fifth and sixth year after the date of registration in the United States; and (2) within the six-month period before the end of every ten-year period after the date of registration in the United States, or upon payment of a grace period surcharge, within the three-month grace period immediately following.

There is no requirement in the MPIA that the holder of a registered extension of protection to the United States renew the extension of protection in the Office under section 9 of the Act. Renewal of international registrations is governed by Article 7 ofthe Madrid Protocol and Rules 29-31 of the Common Regulations. The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee.

Under § 7.41, renewal of an international registration and its extension of protection to the United States must be made directly with the IB. A request for renewal of an international registration cannot be submitted through the Office. If an international registration is not renewed at the IB, the registration will lapse, and the IE will notify the Office. Pursuant to section 70(b) of the Act, the Office will cancel the corresponding extension of protection to the United States.

Comments to Part 7 Rules

Comment: One comment voiced a concern that people who reside in the West will be disadvantaged by the Office's adherence to Eastern Time for according date and time of receipt of correspondence under § 7.4.

Response: The Office currently uses Eastern Time to accord a date and time of receipt to trademark-related correspondence, even when documents are submitted by customers on the West Coast and overseas. Under the current practice, the Office is able to consistently accord a receipt date to the thousands of documents it receives daily, without regard to the time zone in which the correspondence originated. This ensures effective and expeditious processing of incoming correspondence. Applying the same practice to correspondence related to international applications and registrations will provide continuity to the incoming correspondence process.

Comment: One comment requested an explanation of the Office's fees for transmitting IB filings submitted electronically by applicants and the associated burden on the Office in comparison with the fees and associated burden on other national trademark offices.

Response: The fees for processing IB filings under the Madrid Protocol reflect not only the "handling fee" but also the cost of redesigning the Office's automated systems so that it can receive documents from and transmit documents to the IB, and maintain electronic copies of documents sent to and received from the IB; the cost of reprogramming and expanding TEAS to add new forms for filings related to the Madrid Protocol; and the expense associated with establishing, staffing and operating a new business unit, the Madrid Processing Unit (MPU). Each Contracting Party sets their own transmittal fees. The Office does not provide information about other national trademark offices.

Comment: Two comments opposed mandatory electronic filing and requested that the Office provide an alternative to electronic filing.

Response: It is imperative that the Office process international applications expeditiously because the Office must certify and forward an international application meeting the requirements of § 7.11 to the IB within two months of the date ofreceipt in the Office in order to provide the applicant with an international registration date as of the date of receipt of the international application in the Office. Electronic filing saves the Office time in processing international applications and provides greater assurance to customers and the Office that the information contained in the electronic application is accurate. The pre-populated form takes information directly from the Office records, and the information entered by an applicant in the free text form is entered directly into the Office's automated system. The use of a completely automated system eliminates the additional time and work steps involved in scanning a paper application into electronic form and reduces the possibility of the paper application becoming lost within the Office.

Comment: Four comments requested that the Office eliminate the requirement for an address that is identical to the address in the basic application or registration.

Response: The Office has eliminated that requirement.

Comment: Two comments suggested that the Office adopt a mechanism to link the trademark automated records with the assignment automated records to avoid ownership discrepancies in the Office records.

Response: The Office has created an interface between the automated system
in the Assignment Services Division of the Office and the Trademark database
that will enable the Office to update ownership information in the Trademark database when an assignment of the entire interest and goodwill, a name change or a merger has been recorded in the Assignment Services Division. This change in practice will apply only to documents recorded on and after the date on which the new procedures are implemented. The Office will implement these new procedures on or before November 2, 2003. A notice with detailed guidelines will be published in the Official Gazette and posted on the Office's Web site prior to November 2, 2003.

Comment: One comment asked if the TEAS form will permit an international applicant to authorize some charges to a U.S. deposit account and other charges to an IB account in a single filing.

Response: The TEAS form is designed to permit an international applicant to authorize some charges to a U.S. deposit account and other charges to an IE account in a single filing.

Comment: Two comments requested that the Office treat international applications that do not meet the requirements of § 7.11(a) as informal and allow applicants an opportunity to correct any deficiencies.

Response: Setting up a docketing system for informal international applications is unnecessary and inefficient. Since an international application is filed in "real" time through TEAS, if required information is omitted from an international application, the applicant will immediately receive a TEAS error message. If the Office cannot certify an international application, the MPU will send an e-mail message. In either case, the applicant may immediately re-file the international application with the correct information through TEAS.

Comment: One comment suggested that § 7.14 identify the irregularities that
the Office must correct under the Common Regulations.

Response: The suggestion has not been adopted. The irregularities that the Office must remedy are set forth in Rule 11(4) of the Common Regulations, and are not repeated in part 7 of these rules.

Comment: One comment requested that the Office change the applicant's deadline for submitting responses to IE notices of irregularities through TEAS from one month to seven days prior to the IB deadline.

Response: The one-month response period set forth in § 7.14(e) is a suggestion, not a deadline. Only responses to correct irregularities in classification and identification of goods and services must be submitted through the Office. Early submission is
encouraged to allow the Office sufficient time to process responses to irregularities in classification and identification of goods and/or services through the Office. Fees for correcting irregularities must be paid directly to the IB. All other responses to correct irregularities can be filed directly at the IB or submitted through the Office for forwarding to the lB. See discussion above of § 7.14.

Comment: One comment stated that the Office should be willing to assist international applicants in resolving classification or identification issues raised by the lB.

Response: The IB will propose changes to the identification and classification of goods and services in its notice of irregularities concerning goods and services. Because the final decision on classification and identification for an international application rests with the IB, the Office recommends that applicants adopt suggestions offered by the lB, if accurate.

Comment: One comment requested that the Office treat deficient requests to record an assignment or restriction (see §§ 7.23 and 7.24) as informal and allow
the filer an opportunity to correct deficiencies within a reasonable time.

Response: Setting up a docketing system for deficient requests is unnecessary and inefficient. If the request is deficient, the Office will inform the filer of the deficiency in an e-mail message. The applicant/holder will have the opportunity to immediately re-file.
Comment: One comment stated that noting replacement of an extension of protection before registration could cause confusion as to the effect of such notice.

Response: The Office has revised § 7.28. Under Article 4bis of the Madrid Protocol and section 74 of the Act, replacement does not take effect until the extension of protection matures into a registration. Therefore, the Office will not note replacement of an extension of protection unless the mark has registered.

Comment: Two comments stated that the grace period for affidavits of use under § 7.36 should be changed from three months to six months.

Response: The grace period for filing an affidavit of use of a registered extension of protection is set forth in section 71 of the Act and will require a statutory amendment.

Amendment to Part 2 Rules

In addition to the new rules added as part 7 of 37 CFR, the Office is amending rules and adding new rules to part 2 of 37 CFR to bring the rules of practice in trademark cases into conformance with the MPIA, to set forth the requirements for examination and registration of extensions of protection to the United States, as well as proceedings before the Trademark Trial and Appeal Board relating to them, and to otherwise clarify and improve the procedures for processing trademark applications and conducting proceedings before the Trademark Trial and Appeal Board.

The Office is amending rules 2.2, 2.11,2.17,2.18,2.19,2.21,2.33,2.34, 2.35,2.37,2.47,2.51,2.52,2.56,2.65, 2.66,2.73,2.75,2.84,2.88,2.101,2.102,
2.104,2.105,2.107,2.111,2.112,2.113, 2.118,2.121,2.123,2.127,2.128,2.130, 2.131,2.142,2.145,2.146,2.151,2.161, and 2.171; and adding rules 2.53, 2.54,
and 2.126.

The Office is amending § 2.2 to add definitions of "ESTTA" (Electronic System for Trademark Trials and Appeals) and "international application."

The Office is revising § 2.11 and its heading to indicate that representation before the Office is governed by 37 CFR 10.14. It is redundant to have provisions governing representation before the Office in both parts 2 and 10.

The Office is rewording § 2.17(b) by adding a reference to § 10.14(b), and rewording § 2.17(a) and (c) by replacing "paper" with "document."

The Office is amending § 2.18 to clarify procedures for establishing a correspondence address in trademark cases. The amendment does not change current practice.

The Office is amending § 2.19(a) to clarify procedures for sending correspondence after a power of attorney is revoked, and amending § 2.19(b) to indicate that the procedures for permissive withdrawal of an attorney are governed by § 10.40.

The Office is amending § 2.21(a) to indicate that § 2.21 sets forth the minimum filing requirements only for applications under sections 1 and 44 of the Act. The filing date of an application under section 66(a) of the Act is governed by section 66(b) of the Act and § 7.26.

Section 2.33(d)(1) is amended to delete the requirement that a party who signs a trademark document electronically print, sign, date and maintain a paper copy of the electronic submission. It is burdensome and inefficient to require parties who file electronically to maintain both paper and electronic records of the filings.

The Office is also amending § 2.33 by adding paragraph (e), setting forth the requirements for a verified statement for an application under section 66(a) of the
Act, and stating that the verified statement is part of the international registration on file at the lB.

The Office is removing §§ 2.34(a)(1)(v), 2.34(a)(2)(ii), 2.34(a)(3)(iv) and 2.34(a)(4)(iv), which state that an application may list more than one item of goods or more than one service, provided that the applicant has used or has a bona fide intention to use the mark in commerce on or in connection with all the specified goods or services. This is stated in §§ 2.32(a)(6), 2.33(b)(1) and 2.33(b)(2), and it is unnecessary to repeat it in §2.34.

The Office is amending § 2.34(a)(4)(i)(A) to require that an application based on section 44(d) of the Act specify the serial number of the foreign application. This incorporates a requirement of Article 4(D)(5) of the Paris Convention, and codifies current practice, as stated in TMEP § 1003.

The Office is adding a new § 2.34(a)(5), setting forth a request for extension of protection of an international registration under section 66(a) of the Act as a fifth basis for filing a trademark application.

The Office is revising § 2.34(b) to provide that more than one basis can be claimed only in an application under section 1 or 44 of the Act, and that a basis under section 66(a) of the Act cannot be combined with any other basis.

The Office is revising § 2.35(a) to state that in an application under section 66(a) of the Act, the applicant may not add, substitute or delete a basis, unless the applicant meets the requirements for transformation under section 70(c) of the Act and § 7.31.

The Office is revising § 2.35(b) to clarify that the requirements for adding, substituting or deleting a basis apply only to applications under sections 1 and 44 of the Act. This does not change current practice.

The Office is redesignating § 2.35(c) through 2.35(h) as § 2.35(b)(3) through 2.35(b)(8).
The Office is amending § 2.37(b) to delete the requirement for a description of a mark that has color. The requirement for a description of color for marks where color is claimed as a feature of the mark is already set forth in § 2.52, and it is unnecessary to repeat the requirement in § 2.37.

The Office is amending § 2.47 to indicate that an application under section 66(a) of the Act is not eligible for registration on the Supplemental Register. Section 68(a)(4) of the Act provides that registration of an extension of protection of an international registration shall be refused to any mark not eligible for registration on the Principal Register.

The Office is rewording § 2.51 to simplify the rule and to add a provision that, in an application under section 66(a) of the Act, the drawing of the mark must be a substantially exact representation of the mark that appears in the international registration.

The Office is revising § 2.52 to clarify the types of drawings and format for drawings. There are two types of drawings: (1) Standard character drawings; and (2) special form drawings. Currently the rules refer to "typed drawings." The Office is using the term "standard character" in the amended rules instead of the term "typed" because this is the term used for international applications under the Madrid Protocol. Section 2.52(a) sets forth the requirements for a standard character drawing, and § 2.52(b) sets
forth the requirements for a special form drawing.

Section 2.52(a) permits an applicant to submit a standard character drawing,
if the applicant seeks to register words, letters, and/or numbers without claim to any particular font style, size, or color, and the mark does not include a design element. Only Latin characters, Roman or Arabic numerals and common punctuation and diacritical marks may be used in a standard character drawing. The Office has created a chart of acceptable characters that may be included in a standard character drawing. The Office's standard characters set is attached as an appendix to this notice and will be published on the Office's Web site and linked to TEAS forms.

A standard character drawing does not have to display the mark in all upper case letters, but may display the mark in any font style. To avoid any confusion as to whether an applicant is seeking registration of a mark in standard characters or in the particular font style depicted in the drawing, § 2.52(a)(1) requires an applicant seeking registration of a mark in standard characters to submit a statement that the mark is in standard characters and that no claim is made to any particular font style, size, or color. If a drawing displays a mark in all capital letters or includes the wording "typed drawing," the Office will treat the drawing as a standard character drawing and the examining attorney will amend the application to include a standard characters statement by Examiner's Amendment. No prior authorization from the applicant is required for this type of Examiner's Amendment. If it is unclear whether the drawing is a standard character drawing or a special form drawing, the examining attorney will require the applicant to clarify the type of drawing during examination.

Section 2.52(b) requires a special form drawing if an applicant seeks to register a design, a mark that contains color, or a mark comprised of words, letters and/ or numbers in a particular font style or size.

Section 2.52(b)(1) requires that if a mark includes color, the drawing must show the mark in color and the applicant must claim color as a feature of the mark, name the color(s) and describe where the color(s) appear in the mark.

Currently, the Office does not accept color drawings. Under the current rules,
to show color in a mark, an applicant must submit a black and white drawing, with a statement identifying the color(s) and describing where they appear in the mark.
Alternatively, an applicant may show color by using the lining chart set forth in TMEP § 807.09(b).

Effective November 2, 2003, the Office will accept color drawings, and will require that applicants whose marks include color submit a drawing that shows color. The Office will no longer accept black and white drawings with a color claim, or drawings that are "lined for color." Under § 2.52(b)(1), if color is not claimed as a feature of the mark, the applicant must submit a black and white drawing. This is consistent with the requirements for international applications under the Madrid Protocol.

The new requirements under § 2.52(b)(1) do not prohibit the use of stippling in a black and white drawing. The Office will continue to process drawings with stippling as black and white drawings. However, if shading in a mark produces gray tones or gray is a feature of the mark, the Office will process the drawing as a color drawing and require a color claim.

The Office is adding § 2.53, setting forth additional requirements for drawings filed through TEAS, and
§ 2.54, setting forth additional requirements for drawings submitted on paper.
Section 2.53(a) requires an applicant submitting a standard character drawing to type the mark in the appropriate field on the TEAS form or attach a digitized image of the mark that meets the requirements of§2.53(c). If the applicant enters the mark in the appropriate text field on the TEAS form and the standard characters in the applicant's mark are all included in the Office's standard character set (see Appendix), the Office will create a digitized image of the mark in . jpg format and attach the image to the TEAS submission. If the applicant enters a mark that includes characters not in the Office's standard character set, an error message will appear. The applicant will then be required to attach a digitized image of the mark that meets the requirements of § 2.53(c).

Section 2.53(b) requires an applicant filing a special form drawing to attach to its TEAS submission a digitized image of the mark that meets the requirements of § 2.53(c).
Section 2.53(c) requires a digitized image of the mark that is in .jpg format and scanned at no less than 300 dots per inch and no more than 350 dots per inch with a length and width of no less than 250 pixels and no more than 944 pixels. The image must be clear and produce a high quality image when copied. These requirements are necessary to ensure that the Office database contains a clear and accurate reproduction of the mark and meets the 8 em by 8 em size limit that is required for an international application.
The Office is adding § 2.54, setting forth the requirements for a paper drawing. These requirements are necessary to ensure that the Office receives an image that can be scanned into its database without losing clarity.

The Office is amending § 2.56(d)(4) to require that a specimen transmitted electronically be a digitized image in .jpg format.

The Office is amending § 2.65(a) to add a statement that if a refusal or requirement is expressly limited to only certain goods and/or services and the applicant fails to file a complete response to the refusal or requirement, the application shall be abandoned only as to those particular goods and/or services. This is a change in practice. Currently, failure to respond to a refusal that pertains to fewer than all the goods and/or services, or fewer than all the classes, will result in abandonment of the entire application. See TMEP § 1403.05. This change in practice will result in fewer abandoned applications and comports with sections 68(c) and 69(a) of the Act, which provide that an application under section 66(a) of the Act is automatically protected with respect to any goods or services for which the Office has not timely notified the IE of a refusal.

Proposed § 2.66(a) required an applicant to file a petition to revive an abandoned application based on unintentional delay within two months of the mailing date of the notice of abandonment. The proposed rule removed § 2.66(a)(2), which provides that such a petition may be filed within two months of actual knowledge of the abandonment if the applicant did not receive the notice of abandonment and the applicant was diligent in checking the status of the application. This change in practice was proposed to improve the accuracy and integrity of the Office database, to prevent harm to third parties who have searched Office records, and to prevent the loss of international registrations due to the abandonment of the basic application.

The strict time limits imposed by Article 5(2) of the Madrid Protocol for issuing refusals of requests for extension of protection of international registrations to the United States increase the importance of the accuracy and integrity of the Office database. Moreover, because ofthe dependency of an international registration on a basic application under Article 6 of the Madrid Protocol, filing a petition to revive an abandoned application that serves as the basis of an international registration, more than two months after the date of abandonment may result in the loss of the international registration. If the basic application is abandoned, and a petition to revive is not filed within two months of the mailing date ofthe notice of abandonment, the Office will notify the IB of the abandonment of the application. The IB will then cancel the international registration that was based on the u.S. application. Once the IB cancels an international registration, it cannot be revived, even if the basic application is revived.

However, in view of several comments objecting to the proposed amendment, the Office has reconsidered this proposed change and is not removing § 2.66(a)(2). Instead, the Office is revising § 2.66(a)(2) to require that an applicant, who files a petition to revive within two months of actual knowledge of the abandonment of the application and who did not receive a notice of abandonment of the application, must have been diligent in checking the status of the application every six months from the filing date of the application to the issuance of a registration in accordance with § 2.146(i).

The Office is not adopting proposed § 2. 72(d), which would have provided that in an application under section 66(a) of the Act, the applicant could amend the description or drawing of the mark if the proposed amendment does not materially alter the mark. The Madrid Protocol and the Common Regulations do not permit the amendment of a mark in an international registration. If the holder of the international registration wants to change the mark in any way, even slightly, the holder must file a new international application. See the IB's Guide to International Registration, Para. B.II.69.02 (2002). Because an application under section 66(a) of the Act is a request to extend protection of the mark in an international registration to the United States, the Office will not permit any amendment to the mark in a section 66(a) application.

Section 2.73 sets forth the requirements for amendment of an application to recite concurrent use under section 2(d) of the Act. The Office is amending § 2.73(a) to add references to applications under sections 44 and 66(a) of the Act.

The Office is adding a new § 2.75(c), stating that in an application under section 66(a) of the Act, the applicant may not amend the application to the Supplemental Register. As noted above, section 68(a)(4) ofthe Act provides that registration of an extension of protection of an international registration shall be refused to any mark not eligible for registration on the Principal Register.

The Office is revising § 2.84(a) and (b) to add references to the new filing basis under section 66(a) of the Act. The provisions with respect to requesting jurisdiction over published section 66(a) applications are similar to those in applications under sections l(a) and 44 of the Act. However, when deciding whether to grant requests for jurisdiction of section 66(a) applications, the Director must also consider the strict time limits for notifying the IB of a refusal of an application under section 66(a) of the Act, set forth in Article 5(2) of the Madrid Protocol and section 68(c) of the Act.

Section 2.88(i)(3) is amended to correct a cross-reference.

The Office is amending §§ 2.101(a), 2.111(a), 2.118 and 2.145(c)(4) to refer to the United States Patent and Trademark Office as Office.

The Office is amending § 2.101(b) to substitute "person" for "entity" to track
the statutory language; to make the rule gender neutral; to clarify the definitions of "attorney" and "other authorized representative" by reference to §§ 10.1(c) and 10.14(b), respectively; to clarify that an opposition must be signed; and to indicate that electronic signatures are required for electronically filed oppositions.

The Office is adding a new § 2.101(b)(1) and a new § 2.101(b)(2) stating that an opposition to an application based on section 1 or 44 of the Act must be filed either on paper or electronically through ESTTA, but that an opposition to an application based on section 66(a) of the Act must be filed only through ESTTA.

The Office is revising § 2.101(d)(1) through § 2.101(d)(3) and adding new § 2.101(d)(3)(i) through § 2.101(d)(3)(iii) to indicate that the Office will not accept an opposition submitted through ESTT A that does not include fees to cover all named party opposers and all classes opposed; and that the Office will not institute an opposition proceeding if an opposition submitted on paper does not include a fee sufficient to pay for one person to oppose the registration of a mark in at least one class. Prior to instituting an opposition, the Board will no longer correspond with an opposer in an opposition submitted on paper to permit submission of additional fees or designation of party opposers and/or classes where an opposition is submitted with insufficient fees to pay for opposition by all party opposers and/or in all classes. The amended regulation explains how the Office will apply a fee accompanying a paper submission that is insufficient to cover all classes and/or to cover all party opposers. The Board will notify opposer when the opposition is instituted and will indicate in the notification the opposers and classes opposed, i.e., for which the required fees were submitted.

The Office is amending § 2.102(a) to make the rule gender neutral; to clarify the definitions of "attorney" and "authorized representative" by reference to §§ 10.1(c) and 10.14(b), respectively; to clarify that a request to extend the time for filing an opposition must be signed; and to indicate that electronic signatures are required for electronically filed requests to extend the time for filing oppositions.

The Office is adding a new § 2.102(a)(1) and a new § 2.102(a)(2) stating that a written request to extend the time for filing an opposition to an application based on section 1 or 44 of the Act must be filed either on paper or electronically through ESTT A, but stating that a request to extend the time for filing an opposition to an application based on section 66(a) of the Act must be filed only through ESTTA.

The Office is revising § 2.102(c) to set out the time frames for extensions of time to oppose and to indicate that the Trademark Trial and Appeal Board will no longer extend a potential opposer's time to file an opposition beyond 180 days from the date the mark is published for opposition. The Office is adding § 2.102(c)(1), (2) and (3) to state the requirements concerning the filing of permitted requests to extend the time for filing an opposition.

The Office is removing § 2.102(d), which requires submission of extension requests in triplicate.

The Office is revising § 2.104(a) to remove the requirement that a duplicate copy of the opposition, including exhibits, be filed with an opposition.

The Office is rewording the heading for § 2.105 to specify that notification of opposition proceedings is to the parties.

The Office is revising § 2.105 to clarify the definitions of "attorney" and "authorized representative" by reference to §§ 10.1(c) and 10.14(b), respectively; and to indicate that, if no attorney or other authorized representative is appointed, notification will be sent to a party's domestic representative, or, if there is no domestic representative, notification will be sent to the party.

The Office is redesignating § 2.107 as § 2.107(a); and revising it to limit this paragraph to oppositions against an application filed under section 1 or 44 of the Act; and to incorporate in the rule the existing Board practice which prohibits an opposer in a proceeding against an application filed under section 1 or 44 of the Act from adding to the goods or services in an opposition after the period for filing the opposition has closed.

The Office is adding a new § 2.107(b) to state that pleadings in an opposition proceeding against an application filed under section 66(a) of the Act may be amended in the same manner and to the same extent as in a civil action in a United States district court; except that, once filed, such opposition may not be amended to add to the goods or services opposed, or to add to the grounds for opposition. Thus, opposer may not add an entirely new ground for opposition or add an additional claimed registration to a previously stated section 2(d) ground. An opposer may make amendments to grounds asserted in the notice of opposition, for example, for clarification.

The Office is revising § 2.111(b) to substitute "person" for "entity" to track the statutory language; to make the rule gender neutral; to clarify the definitions of "attorney" and "authorized representative" by reference to §§ 10.1(c) and 10.14(b), respectively; to clarify that a petition for cancellation must be signed; and to indicate that electronic signatures are required for electronically filed petitions for cancellation.

The Office is revising § 2.111(c) to divide it into four paragraphs; to state that the Office will not accept a petition for cancellation submitted through ESTTA that does not include fees to cover all named party petitioners and all classes; that the Office will not institute a cancellation proceeding if a petition for cancellation submitted on paper
does not include a fee sufficient to pay for one person for a petition for cancellation against at least one class; and that prior to instituting a cancellation proceeding, the Office will no longer correspond with the petitioner named in a petition for cancellation submitted on paper to permit submission of additional fees or designation of party petitioners and/or classes where a petition for cancellation is submitted with insufficient fees to pay for cancellation by all party petitioners and/or in all classes. The revision explains how the Office will apply a fee accompanying a paper submission that is insufficient to cover all classes and/or to cover all party petitioners.

The Office is amending § 2.112(a) to make the rule gender neutral and to remove the requirement that a duplicate copy of the petition for cancellation, including exhibits, be filed with the petition for cancellation.

The Office is rewording the heading for § 2.113 to specify that notification of
cancellation proceedings is to the parties.

The Office is revising § 2.113 to divide it into paragraphs (a), (b), (c) and (d) for clarity; to clarify the definitions of "attorney" and "authorized representative" by reference to
§§ 10.1(c) and 10.14(b), respectively; and to indicate that, if no attorney or other authorized representative is appointed by a party, notification will be sent to that party's domestic representative, or, if there is no domestic representative for that party, notification will be sent to the party.

The Office is amending § 2.118 to delete reference to a party residing abroad and his representative in the United States in order to clarify that when any notice sent by the Office to a registrant is returned to the Office, notice may be given by publication in the Official Gazette, regardless of whether that registrant resides in the United States or elsewhere.

The Office is amending § 2.121(d) to eliminate the requirement for multiple copies of a stipulated/consent motion to extend the discovery or testimony periods in view of the fact that the Board is no longer stamping copies as "approved" and returning the copies to the parties.

The Office is amending § 2.123(g)(1) to require that depositions be in written form, but to delete reference to specific requirements that may vary depending upon the media used for submission. Requirements for submissions are specified in § 2.126.

The Office is adding new § 2.126, entitled "Form of submissions to the Trademark Trial and Appeal Board," which includes paragraphs (a) through (d). Paragraphs (a) through (c) provide that submissions may be made to the Board on paper, CD-ROM, or electronically, as permitted by the rules contained in this part or Board practice; and specify the requirements for each type of submission. Paragraph (d) specifies the requirements for making a submission to the Board that is confidential in whole or in part.

The Office is amending § 2.127(a) to delete the specifications for filing on paper a brief in support of, or response to, a motion, referring instead to § 2.126.

The Office is amending § 2.128(b) to require that briefs be in written form and to delete the specifications for filing a brief on paper, referring instead to §2.126.

The Office is amending both the heading and the body of § 2.130 to change "Examiner of Trademarks" to "trademark examining attorney." The Office is revising § 2.130 to provide that during an inter partes proceeding, only applications under section 1 or section 44 of the Act may be remanded, at the request of the trademark examining attorney, for consideration offacts which appear to render the mark unregistrable.

The Office is amending § 2.131 to change the term "examiner" to .'trademark examining attorney" and to limit the applicability of this section to inter partes proceedings involving applications under sections 1 and 44 of the Act.

The Office is revising § 2.142(a) and (b)(2) to state that notices of appeal and briefs must be filed in written form, as prescribed in § 2.126, and to delete the specifications for filing a brief on paper.

The Office is amending § 2.145(b)(3) to indicate that notices of appeal to the U.S. Court of Appeals for the Federal Circuit should be sent to the Office of the General Counsel, with a duplicate copy addressed to the Board.

The Office is amending § 2.145(c)(3) to indicate that any adverse party to an appeal taken to the u.s. Court of Appeals for the Federal Circuit by a defeated party in an inter partes proceeding who files a notice with the Office as provided in section 21(b) of the Act, must address that notice to the Office of the General Counsel.

The Office is amending § 2.145(c)(4) to indicate that, in order to avoid premature termination of a Board proceeding, a party who commences a civil action, pursuant to section 21(b) of the Act, must file written notice thereof at the Trademark Trial and Appeal Board

The Office is amending § 2.146(c) to delete reference to a petition to revive as an example of a situation where an affidavit or declaration is required in support of a petition. This is a technical correction to the rule. Effective October 30, 1999, § 2.66 was amended to delete the requirement for an affidavit or declaration in a petition to revive based on unintentional delay. An unverified statement is sufficient. See notices at 64 FR 48900 (Sept. 8, 1999) and 1226 TMOG 103 (Sept. 28, 1999). However, § 2.146(c) still requires a verified statement in other situations where facts are to be proven on petition. For example, if the petition arises from the loss or misplacement of a document submitted to the Office, it should be accompanied by the affidavit or declaration of the person who mailed the document, attesting to the date of submission and identifying the document filed with the petition as a true copy of the document previously filed. TMEP § 1705.03.

The Office is amending § 2.146(i) to change the standard for a showing of due diligence for petitions in which the petitioner seeks to reactivate an application or registration that was abandoned, cancelled or expired due to the loss or mishandling of papers. Currently, the rule requires that to be considered diligent, petitioners must check the status of pending matters within one year of the last filing or receipt of a notice from the Office for which further action by the Office is expected. The Office is shortening the time period from one year to six months. A showing of due diligence will require that a petitioner check the status of a pending application every six months between the filing date of the application and issuance of a registration; check the status of a registration every six months after filing an affidavit of use or excusable nonuse under section 8 or 71 of the Act, or a renewal application under section 9 of the Act, until the petitioner receives notice that the affidavit or renewal application has been accepted; and promptly request corrective action where necessary.

Third parties may be harmed by the removal and later reinsertion of an application or registration in the Office database. Hundreds of petitions are filed each month to reinstate applications and registrations. To minimize this problem, the Office is adopting stricter time limits for filing petitions to revive or reinstate abandoned applications and cancelled or expired registrations.

The Office is revising § 2.151 to add a reference to section 71 of the Act, which requires periodic affidavits of use or excusable nonuse to maintain a registration based on an extension of protection of an international registration.

The Office is revising § 2.161(g)(2) and adding paragraph (g)(3), stating that an audio or video cassette tape recording, CD-ROM, or a specimen in another appropriate medium may be submitted in the absence of a non-bulky specimen, and that an electronically submitted specimen must be in .jpg format. The requirement that a specimen filed through TEAS be a digitized image in .jpg format is consistent with the specimen requirement in revised § 2.56(d)(4).

The Office is adding a new § 2.171(b), stating that when ownership of a registration has changed with respect to some but not all of the goods and/or services, the registrant(s) may file a request that the registration be divided into two or more separate registrations. The new owner(s) must pay a fee for each new separate registration created by the division (child registration), and record the change of ownership in the Office.

When the IB notifies the Office of the division of an international registration resulting from a partial change of ownership of the international registration with respect to some of the goods or services in the registered extension of protection to the United States, the Office will record the partial change of ownership, divide out the assigned goods or services from the registered extension of protection (parent registration), issue an updated certificate for the parent registration and publish notice of the parent registration in the Official Gazette. The Office will not issue a new certificate for the child registration or publish notice of the child registration until the assignee files a request to divide under § 2.171(b), and pays the required fee.

A U.S. registration based on an application under section 1 and/or section 44 of the Act may also be divided as a result of a partial change of ownership, if the partial change of ownership is recorded in the Assignment Services Division and the assignee files a request to divide under § 2.171(b), with the required fee.

Comments to Part 2 Rules

Comment: One comment indicated that the "relationship" of proposed § 2.17 and § 1O.14(b) appears to need clarification. Another comment asked whether the Office would accept a response in which the written authorization for the attorney was not filed with the response.

Response: The requirement for written authorization in § 2.17(b) applies only to non-lawyers. The Office is changing the language of § 2.17(b) to make this clear. It is generally not necessary for an attorney as defined in § 10.1(c) to file a power of attorney or any other special authorization in a trademark case. Under §§ 2.17(a) and (c), an attorney who appears in person or signs a document on behalf of an applicant or registrant will be accepted as the representative of the applicant or registrant. See TMEP § 602.01.

Comment: One comment suggested that "written" be inserted before "notification" in § 2.19(a).

Response: The Office has adopted the suggestion.

Comment: Two comments suggested that the Office add the requirements for a verified statement under section 66(a) to the rules, and require that the IB send a copy of the signed verified statement with the request for extension of protection to the United States.

Response: The Office has adopted the suggestion to add the requirements for a verified statement in a section 66(a) application to the rules. These requirements have been added to § 2.33(e). However, the Office will not require that the IB send a copy of the signed verified statement with the request for extension of protection to the United States.

The Office has provided the IB with wording for a declaration of a bona fide intention to use the mark in commerce. The declaration will be made part of the official IB form for international applications and subsequent designations in which the United States is designated for an extension of protection, and will remain as part ofthe international registration on file at the lB. The wording of the declaration and instructions for who may sign the declaration comport with the requirements of section 66(a) of the Act and § 2.33. The IB will review the required declaration as part of the request for an extension of protection to the United States. The IB will not certify and forward a request for extension of protection to the United States, if: (1) The declaration is not signed and dated; (2) there have been any changes or modifications to the declaration; or (3) the declaration is not presented on the official IB form.

Comment: One comment suggests that the Office add the wording "on or in connection with the goods or services listed in the application," to § 2.34(b).
Response: The Office has adopted that suggestion.

Comment: One comment requested clarification as to whether a priori
claim for a Section 66(a) application is part of an international registration or an additional basis for filing in the Office.

Response: If a claim of priority is part of an international registration and meets the requirements of § 7.27, the priority claim is part of the application under Section 66(a), not a separate filing basis.

Comment: Three comments recommended that the Office eliminate the requirement to petition the Director to review a post-publication amendment ofthe basis under § 2.35(b)(2), and delegate the responsibility to trademark examining attorneys. Two of the comments suggested that republication of a mark may not be necessary in every instance.

Response: The recommendation cannot be adopted at this time. Although routinely granted, amendments to change the basis after publication require special manual and automated processing, including republication of the mark.

Comment: One comment suggests that the Office permit section 66(a) applications to register on the Supplemental Register.

Response: The suggestion cannot be adopted because the Act provides only for registration on the Principal Register. See section 68(a)(4) of the Act.

Comment: Three comments requested clarification of the term "standard character" drawing, and asked whether a "standard character drawing" is the equivalent of a "typed drawing" under current practice. One of the comments also requested that the Office delete the requirement for a statement that no claim is made to a particular font style or size.

Response: In the United States, a "standard character drawing" under revised § 2.52(a), is the equivalent in its effect of a "typed drawing" under current § 2.52(a)(1). The requirement for a statement that no claim is made to a particular font style, size, or color ensures that there is no ambiguity as to whether the applicant seeks registration of a mark in standard characters. See changes to § 2.52(a) discussed above.

Comment: One comment suggested that the Office make the requirement to name the colors and describe where they appear on the mark optional for applications under sections 1 and 44 of the Act.

Response: The Office has not adopted this suggestion. Applications under sections 1 and 44 of the Act are required to name the colors and describe where the colors appear in the marks under current § 2.52. Moreover, requirements for applications under sections 1 and 44 of the Act should be consistent with the requirements for section 66(a) applications, since they may serve as the basis for an international application.

Comment: One comment asked whether marks with gray tones but no claim of color will publish with gray tones or be converted to black and white.

Response: The Office will not convert drawings that contain gray tones to black and white drawings. Drawings with gray tones will be processed as color drawings. If the application does not contain a color claim, the examining attorney will inquire whether gray is a feature of the mark. If gray is a feature of the mark, the examining attorney will require a color claim, and the Office will publish the mark in color. If gray is not a feature of the mark, the examining attorney will require a black and white drawing.

Comment: Two comments opposed the requirement in § 2.53 that a digitized
image of a drawing be in .jpg format. The comments suggested that the Office amend the rule to allow flexibility in accepting other digital formats as they develop.

Response: That suggestion has not been adopted. The Office will only accept .jpg format for digitized images at this time. The Office is concerned about the level of stability, uniformity and quality of images that are received and entered into the Office database. The Office currently accepts the .jpg format and has had success handling images in this format. Both the applicant and the Office can be assured that a visible image is attached to the submission because the applicant can view the image in the browser before it is transmitted to the Office. The .jpg format is user friendly and nonproprietary, and it is available to all potential applicants. The Office has not foreclosed the possibility of accepting other formats in the future, and will continue to assess image formats that are currently available and new ones as
they develop.

Comment: One comment requested information as to the consequences of excluding the caption "Drawing Page" from the top of a paper drawing page.

Response: The Office encourages applicants to include the caption "Drawing Page" so that the Office can properly flag the mark when the drawing is scanned into the database. The caption is not mandatory, but its omission may delay processing of the application.

Comment: Six comments opposed the proposed amendment of § 2.66(a), to limit the time period for filing a petition to revive to two months from the mailing date of the notice of abandonment.

Response: The Office is withdrawing the proposal to remove § 2.66(a)(2). Section 2.66(a)(2) is instead amended to change the standard for a showing of due diligence in a petition to revive from one year to six months as set forth in § 2.146(i). Under § 2.146(i), as amended, an applicant will be considered diligent if the applicant checks the status of the application every six months between the filing date of the application and issuance of a registration. The modification to § 2.66(a)(2) provides recourse for applicants who are diligent in monitoring the status of the application. However, if a petition to revive an abandoned application that forms the basis of an international registration is filed more than two months after the mailing date of the notice of abandonment, it is likely that the international registration will be cancelled. A cancelled international registration will not be revived even if the basic application is revived. See discussion above of changes to § 2.66.

Comment: One comment asked if a concurrent use application or registration can be the basis of an international application.

Response: An international application submitted through the Office can be based on a concurrent use application or registration.

Comment: Three comments noted that oppositions with insufficient fees appear to be treated differently for documents filed electronically via ESTT A and those filed on paper; and requested that the rules be amended to allow for uniform treatment for notices of opposition with insufficient fees regardless of the manner in which they are filed. One of the three comments suggested that the Office implement a mechanism in ESTT A to ensure that all required fees are paid as part of the electronic filing of a notice of opposition.

Response: The language of § 2.101(d)(2) has been modified to more clearly reflect the fact that a potential opposer may not submit a notice of opposition electronically via ESTT A with an insufficient fee, i.e., the sender will immediately receive an electronic message that the transmission is not possible because the fee is insufficient. To be able to transmit the electronic notice of opposition, a potential opposer filing via ESTT A may then elect to submit the correct fee for the number of parties and classes set forth in the electronic notice of opposition, or delete classes and/or parties from the
electronic notice of opposition. For a paper filing with insufficient fees, the Board will notify opposer when the opposition is instituted and will indicate in the notification the opposers and classes opposed, i.e., for which the required fees were submitted. There will be no opportunity to submit additional fees for a paper filing.

Comment: Seven comments disagreed with the proposed 120-day limitation from the date of publication on extensions of time to oppose an application, noting that a longer period of time is necessary to facilitate settlement negotiations. Of these comments, four comments recommended that the 120-day limitation on extensions of time to oppose be extended to 180 days; one comment recommended that the 120day limitation on extensions of time to oppose pertain only to applications filed under section 66(a); and one comment recommended both that the limitation on extensions of time to oppose pertain only to applications filed under section B6(a) and that the limitation be extended to 180 days.

Response: The Office has adopted the recommendation that potential opposers be permitted to extend the time for filing an opposition to up to 180 days from the date of publication. The Office has not adopted the recommendation that this limitation pertain only to section 66(a) applications. The Office encourages use of its electronic systems and does not have the resources at this time to develop an electronic opposition filing system that can handle different filing deadlines for different types of applications. Further, different opposition filing deadlines for different types of applications would be difficult for the Board to handle administratively and would be likely to confuse potential opposers. Finally, the Board will discontinue its practice of suspending a potential opposer's time to file a notice of opposition when a letter of protest or an amendment to the application has been filed. However, the Board is continuing its practice of permitting suspension of an opposition, once filed, to facilitate and encourage settlement negotiations.

Comment: Two comments expressed concern that § 2.105 is not written clearly and could be easily misconstrued. The comments recommended that § 2.105 be rewritten to clarify to whom notification will be sent in each instance.

Response: The section has been rewritten to parallel § 2.18, as appropriate, and to clarify its intent.

Comment: Three comments noted that petitions to cancel with insufficient fees
for documents filed electronically via ESTTA are treated differently from those filed on paper; and requested that the rules be amended to allow for uniform treatment for petitions to cancel with insufficient fees regardless of the manner in which they are filed. One of the three comments suggested that the Office implement a mechanism in ESTT A to ensure that all sufficient fees are paid as part of the electronic filing of a petition to cancel.

Response: The language of § 2.111(c)(2) has been modified to more clearly reflect the fact that a potential cancellation petitioner may not submit a petition to cancel electronically via ESTTA with an insufficient fee. In addition to not being able to transmit the petition for cancellation via ESTT A with an insufficient fee, the sender should receive an immediate electronic message that the transmission is not possible and the reason why transmission is not possible. A potential cancellation petitioner filing via ESTTA must either submit the correct fee for the numbers of parties and classes set forth in the electronic petition to cancel, or delete classes and/or parties from the electronic petition to cancel. If a paper filing is submitted with insufficient fees for at least one party to petition for cancellation against at least one class, the Board will simply return the papers to the sender. If a paper filing is submitted with sufficient fees for at least one party to petition for cancellation against at least one class in the registration sought to be cancelled but with insufficient fees for all stated parties and/or all classes, the Board will institute the cancellation proceeding with respect to the number of parties and classes for which fees have been submitted, according to § 2.111(b)(3), and send notification of the petition for cancellation to the parties. The notification will list only the parties and classes for which the required fees were submitted.
Comment: Two comments expressed concern that § 2.113(a) is not written clearly and could be easily misconstrued. The comments recommended that § 2.113(a) be rewritten to clarify to whom notification will be sent in each instance.
Response: The section has been rewritten to parallel § 2.18, as appropriate, and to clarify its intent. Sections 2.113(b), (c) and (d) have been relabeled accordingly.

Comment: One comment pertaining to § 2.118 recommended that all correspondence be sent to the correspondence address of record.

Response: This recommendation has not been adopted. In relation to § 2.118,
this is essentially a recommendation to send notification of a petition to cancel to the attorney of record during the
prosecution of an application that subsequently registered and is now the subject of a petition for cancellation, rather than sending such notification directly to respondent. The practice under the existing rule, and this provision has not been changed by this regulation, is for the Office to correspond directly with the registrant until notified otherwise by the registrant. The Office considers the appointment of an attorney to prosecute the application to lapse once the registration issues. The Board will send the notification to the registrant of record in the Office at the registrant's address ofrecord, or if registrant is located outside the United States and a domestic representative is of record, to the registrant at the address of the domestic representative.
Comment: One comment recommended that §12.126(a)(4) permit paper submissions to the Board to be bound or fastened if the contents can be easily separated. The comment expressed concern that after scanning, the papers will not be replaced in the file in their original order.
Response: This recommendation has not been adopted. All paper submissions are scanned electronically into the Board's Trademark Trials and Appeals Information System (TTABIS). When the papers are scanned, the Board's scanning equipment keeps
pages in their original order throughout the scanning process. Where papers are filed with pages simply clipped together, the scanning process has not been adversely affected. On the other hand, removing staples or binding prior to scanning has been difficult and timeconsuming, especially where papers have been bound by machine. Moreover, disassembling stapled or bound papers can damage pages, resulting in misfeeds to the scanning equipment and increasing the likelihood that pages will become disordered during scanning.
Comment: One comment recommended, with respect to § 2.127(a) regarding motions in inter partes proceedings at the Board, that, rather than retaining discretion to consider reply briefs, the Board should consider all reply briefs; and reduce the time for filing a reply brief, if a reply brief is filed, from fifteen to ten days from the date of service of a brief in response to the motion.

Response: This recommendation was not accepted. The recommendation to consider all reply briefs, including reply briefs that improperly address matters outside a proper response to statements in the brief responding to the motion, would be burdensome. Therefore, the Board will retain its discretion to
consider reply briefs with respect to motions. There is no reason stated for the recommendation to shorten the time for filing a reply brief; and, at this time, the Board considers the existing fifteenday period for filing a reply brief to be reasonable.
Comment: Four comments opposed the proposal to shorten the due diligence standard from one year to six months in § 2.146(i).

Response: The Office's electronic systems for records are readily available over the Internet 24 hours a day, seven days a week. Applicants and registrants have immediate and free access to information concerning their applications and registrations. An applicant or registrant can check the status of a pending application or registration using the TARR (Trademark Application Registration Retrieval) database. If the application is newly filed, applicant can search TESS (Trademark Electronic Search System) to see if the mark was loaded into the Office's automated database. Moreover, allegations of use under section 1 of the Act, responses to Office actions, changes to correspondence address and affidavits of use under section 8 of the Act and renewal applications under section 9 of the Act can be filed through TEAS.

In most cases, the Office will take action on filings related to a trademark application or registration within six months of receipt of the correspondence for which action is expected. Therefore, it is reasonable to require applicants and registrants to check the status of their application or registration at least twice a year until a final outcome (that is, registration for a pending application or notice of acceptance of an affidavit under section 8 of the Act or grant of renewal under section 9 of the Act) is reached. By monitoring the application or registration every six months, an applicant or registrant can take corrective action more quickly if the Office did not receive applicant's or registrant's correspondence or if correspondence sent by the Office was not received.


Rule Making Requirements

Executive Order 13132: This rule making does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866: This rule making has been determined not to be
significant for purposes of Executive Order 12866.

Regulatory Flexibility Act: The Deputy General Counsel for General Law of the United States Patent and Trademark Office has certified to the Chief Counsel for Advocacy of the Small Business Administration that the rule changes will not have a significant impact on a substantial number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)). The main purpose of the rule change is to implement legislation that provides an additional means for filing trademark applications. Additionally, the rules provide for some technical and other changes that will simplify the trademark application process. Hence, the rules merely provide all applicants for trademark registration, including small businesses, with additional benefits.

Paperwork Reduction Act: The final rules are in conformity with the requirements of the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et seq.). Notwithstanding any other provision of law, no person is required 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 PRA unless that collection of information displays a currently valid OMB control number.
This final rule contains collections of information requirements subject to the PRA. This rule adds provisions allowing parties to (1) file applications for international trademark registration with the IE through the Office; (2) file subsequent designations with the IE through the Office; (3) file responses to notices of irregularities in international applications issued by the IE through the Office; (4) request the Office to note in its records that a registered extension of protection of an international registration to the United States replaces a previously issued U.S. registration; (5) file requests to record assignments or restrictions of a holder's right to dispose of an international registration, or the release of such a restriction, with the IB through the Office; and (6) file a request that the Office transform an extension of protection that was cancelled by the IE into an application for registration in the United States under section 1 or section 44 of the Act. Additionally, the rule sets forth requirements for submitting an affidavit of continued use or excusable nonuse under section 71 of the Act and discusses chan