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Chapter 1600

Registration and Post Registration Procedures

1601 Types of Registrations

1601.01 Registrations Now Being Issued

1601.01(a) Certificate of Registration

1601.01(b) Duplicate Certificate of Registration

1601.01(c) Registered Extension of Protection of International Registration to the United States

1601.02 Repeal of Prior Acts

1601.03 Additional Registration under Act of 1946

1601.04 1881 and 1905 Act Registrations

1601.05 1920 Act Registrations

1601.06 Registrations Issued Under Prior Classification Systems

1601.07 Form of Copies of Registrations

1602 Duration and Maintenance of Registrations

1602.01 Act of 1946

1602.02 Acts of 1881 and 1905

1602.03 Act of 1920

1602.04 Trademark Law Treaty Implementation Act Changes

1603 Bringing Prior Act Registrations Under 1946 Act, §12(c)

1603.01 Notification and Printing of Mark in Official Gazette

1603.02 Cancellation and Incontestability

1603.03 Affidavits of Use in Commerce Required

1604 Affidavit of Use or Excusable Nonuse of Mark in Commerce under §8

1604.01 Registrations to Which §8 Affidavit Pertains

1604.02 Notice of When Affidavit Is Due

1604.03 Form for Filing §8 Affidavit

1604.04 Time for Filing §8 Affidavit

1604.04(a) Premature Filing of §8 Affidavit

1604.04(b) Registrations in Twenty-Year Terms

1604.05 Requirements for §8 Affidavit or Declaration of Use or Excusable Nonuse

1604.06 Fees for §8 Affidavit

1604.06(a) Filing Fee for Affidavit or Declaration

1604.06(b) Grace Period Surcharge and Deficiency Surcharge

1604.06(c) Processing Affidavit or Declaration Filed With Insufficient Fees

1604.07 Ownership, and Who May File §8 Affidavit

1604.07(a) Affidavit or Declaration Must be Filed by Owner

1604.07(b) Establishing Ownership

1604.07(c) Acceptance Notice Issued in Name of Owner of Record

1604.07(d) Changes of Legal Entity

1604.07(e) Changes of Name

1604.07(f) Correction of Mistake in Setting Forth the Name of the Owner

1604.08 Execution of Affidavit or Declaration

1604.08(a) Persons Who May Sign Affidavit or Declaration

1604.08(b) Date of Execution of Affidavit or Declaration

1604.08(c) Signature of Electronically Transmitted Affidavit or Declaration

1604.08(d) Form and Wording of Verification

1604.09 Goods and/or Services Set Forth in §8 Affidavit or Declaration

1604.09(a) Goods and/or Services Must be Specified or Expressly Incorporated by Reference

1604.09(b) Deletion of Goods and/or Services

1604.09(c) Failure to List All Goods and/or Services Recited in Registration

1604.09(d) New Goods and/or Services Cannot be Added

1604.10 Use in Commerce

1604.11 “Excusable Nonuse” of Mark

1604.12 Specimen Showing Current Use of Mark in Commerce

1604.12(a) Specimen for Each Class Required

1604.12(b) Specimens in Electronically Filed Affidavits

1604.12(c) Substitute Specimens

1604.13 Differences in the Mark as Used on the Specimen and the Mark as Registered

1604.13(a) Possible Amendment of Mark in Registration

1604.14 Designation of Domestic Representative by Foreign Owner

1604.15 Office Actions and Notices Regarding Affidavit

1604.16 Response to Office Action

1604.17 Correction of Deficiencies in §8 Affidavit

1604.17(a) Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §§8(a) and 8(b) of the Act

1604.17(b) Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period

1604.17(c) Defects That Cannot be Cured After Expiration of the Grace Period

1604.18 Petition Under 37 C.F.R. §2.146

1604.18(a) Response to Examiner’s Refusal Required Before Petition

1604.18(b) Decision on Petition is Final Action of the USPTO

1604.18(c) Request for Reconsideration of Denial of Petition

1604.18(d) Appeal to Federal Court

1604.19 Section 8 Affidavit or Declaration of Use or Excusable Nonuse Combined with Renewal Application

1605 Affidavit of Incontestability Under §15

1605.01 Registrations to Which §15 Affidavit Pertains

1605.02 Form for Filing Affidavit of Incontestability

1605.03 Time for Filing Affidavit of Incontestability

1605.04 Requirements for Affidavit or Declaration of Incontestability

1605.05 Combining §15 Affidavit with §8 Affidavit

1605.06 Section 14 Limitation is Independent of §15 Affidavit

1606 Renewal of Registration Under Trademark Act §9

1606.01 Which Registrations Must be Renewed Under §9

1606.01(a) Registrations Based on Applications Under §1 or §44 Must Be Renewed Under §9

1606.01(b) Section 9 Does Not Apply to Extensions of Protection of International Registrations to the United States

1606.01(c) Renewal of Registrations Issued Under Prior U.S. Trademark Acts Must Be Renewed Under §9

1606.02 Requirements for Renewal Under §9

1606.03 Time for Filing §9 Renewal Application

1606.03(a) Premature Filing of §9 Renewal Application

1606.04 Form for Filing §9 Renewal Application

1606.05 Fees for §9 Renewal Applications

1606.05(a) Fee for Filing Application for Renewal Under §9

1606.05(b) Grace Period Surcharge and Deficiency Surcharge

1606.05(c) Processing §9 Renewal Application Filed with Insufficient Fees

1606.06 Ownership, and Who May File §9 Renewal Application

1606.07 Execution of §9 Renewal Application

1606.08 Goods and/or Services Set Forth in §9 Renewal Application

1606.08(a) Listing of Goods and/or Services Required Only for Partial Renewal

1606.08(b) No Goods or Services Listed

1606.08(c) Some Goods and/or Services Listed

1606.08(d) Goods and/or Services Not Listed in Registration May Not Be Listed in Renewal Application

1606.09 Affidavit of Use in Commerce or Excusable Nonuse Not Required

1606.10 Designation of Domestic Representative by Foreign Applicant for Renewal Under §9

1606.11 Office Actions and Notices Regarding §9 Renewal Application

1606.12 Response to Office Action

1606.13 Correction of Deficiencies in §9 Renewal Applications

1606.13(a) Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration

1606.13(b) Correcting Deficiencies in Renewal Applications Filed During the Grace Period

1606.13(c) Late Filing Cannot be Cured

1606.14 Petition Under 37 C.F.R. §2.146

1606.14(a) Response to Examiner’s Refusal Required Before Petition

1606.14(b) Decision on Petition is Final Action of the USPTO

1606.14(c) Request for Reconsideration of Denial of Petition

1606.14(d) Appeal to Federal Court

1606.15 Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse

1607 Cancellation of Registrations Under §§14 and 37 of the Trademark Act

1608 Surrender of Registration for Cancellation

1609 Amendment and Correction of Registrations

1609.01 Amendment of Registration - In General

1609.01(a) Limited Amendments to Registered Extension of Protection

1609.01(b) Amendment of Registration Resulting From §1 or §44 Application

1609.02 Amendment of Mark

1609.02(a) Determining What Constitutes Material Alteration of Mark

1609.02(b) New Drawing Required

1609.02(c) Supporting Specimen and Declaration

1609.02(d) Conforming Amendments

1609.02(e) Amendment of Black-and-White Drawing of Mark for Which Color is Claimed to Substitute Color Drawing

1609.02(f) Amendment of Black-and-White Drawing to Color Drawing

1609.02(g) Amendment to Special Form Drawing Containing Black, White, and/or Gray

1609.03 Amendment of Identification of Goods or Services

1609.04 Amendment of Classification

1609.05 Disclaimer of Mark

1609.06 Territorial Restrictions

1609.07 Dates of Use

1609.08 Effect of Amendment of Registration on Limitation of Grounds for Cancellation of a Registration

1609.09 Amendment from Supplemental to Principal Register Not Permitted

1609.10 Correction of Mistake in Registration

1609.10(a) Correction of USPTO Error

1609.10(b) Correction of Owner’s Error

1609.11 Change of Owner’s Address Can Be Filed Through TEAS

1610 Court Orders Concerning Registrations

1611 Updating Automated Records to Show the Status of Registrations

1612 Powers of Attorney and Designations of Domestic Representative Filed After Registration

1613 Affidavit of Use in Commerce or Excusable Nonuse Under §71 of the Trademark Act

1614 Renewal of Registered Extension of Protection

1615 Division of Registrations

1615.01 Division of Registration Based on Application Under §1 or §44 of the Trademark Act

1615.02 Division of Registered Extension of Protection

1616 Replacement