Trademark Manual of Examining Procedure (TMEP)
Chapter 1600: Registration and Post Registration Procedures

October 2015 Edition of the TMEP
TMEP Chapter Index

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 or Declarations of Use in Commerce Required

1604: Affidavit or Declaration of Use or Excusable Nonuse of Mark in Commerce under §8 of the Trademark Act

1604.01: Registrations to Which §8 Affidavit or Declaration Pertains

1604.02: Notice of When Affidavit or Declaration Is Due

1604.03: Form for Filing §8 Affidavit or Declaration

1604.04: Time for Filing §8 Affidavit or Declaration

1604.04(a): Premature Filing of §8 Affidavit or Declaration

1604.04(b): Registrations in Twenty-Year Terms

1604.05: Requirements for §8 Affidavit or Declaration

1604.06: Fees for §8 Affidavit or Declaration

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 or Declaration

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/Services/Classes Set Forth in §8 Affidavit or Declaration

1604.09(a): Goods/Services/Collective Membership Organization Must Be Specified or Expressly Incorporated by Reference

1604.09(b): Deletion of Goods/Services/Classes

1604.09(c): Failure to List All Goods/Services/Collective Membership Organization 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 or Declarations

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 or Declaration

1604.16: Response to Office Action

1604.17: Correction of Deficiencies in §8 Affidavit or Declaration

1604.17(a): Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §8(a) 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

1604.20: Additional Requirements for §8 Affidavits or Declarations Pertaining to Collective Marks

1604.20(a): Exercising Legitimate Control

1604.20(b): Manner/Method of Control

1604.21: Additional Requirements for §8 Affidavits or Declarations Pertaining to Certification Marks

1604.21(a): Certification Standards

1604.21(b): Exercising Legitimate Control

1604.21(c): Certification Statement

1604.21(d): Statement that Owner is Not Engaged in Production or Marketing of the Goods/Services

1605: Affidavit or Declaration of Incontestability Under §15 of the Trademark Act

1605.01: Registrations to Which §15 Affidavit or Declaration Pertains

1605.02: Form for Filing Affidavit or Declaration of Incontestability

1605.03: Time for Filing Affidavit or Declaration of Incontestability

1605.04: Requirements for Affidavit or Declaration of Incontestability

1605.05: Combining §15 Affidavit or Declaration with §8 Affidavit or Declaration

1605.06: Section 14 Limitation is Independent of §15 Affidavit or Declaration

1606: Renewal of Registration Under §9 of the Trademark Act

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/Services/Classes Set Forth in §9 Renewal Application

1606.08(a): Listing of Goods/Services/Classes Required Only for Partial Renewal

1606.08(b): No Goods/Services/Classes Listed

1606.08(c): Some Goods/Services/Classes Listed

1606.08(d): Goods/Services/Classes 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 Specimens 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

1609.04: Amendment of Classification

1609.05: Disclaimer of Mark and Claim of Acquired Distinctiveness

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

1609.12: Amendment of Certification Statement for Certification Marks

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

1613.01: Registrations to Which §71 Affidavit or Declaration Pertains

1613.02: Notice of When Affidavit or Declaration Is Due

1613.03: Form for Filing §71 Affidavit or Declaration

1613.04: Time for Filing §71 Affidavit or Declaration

1613.05: Requirements for §71 Affidavit or Declaration of Use or Excusable Nonuse

1613.06: Fees for §71 Affidavit or Declaration

1613.06(a): Filing Fee for Affidavit or Declaration

1613.06(b): Grace Period Surcharge and Deficiency Surcharge

1613.06(c): Processing Affidavit or Declaration Filed with Insufficient Fees

1613.07: Ownership and Who May File §71 Affidavit or Declaration

1613.07(a): Affidavit or Declaration Must Be Filed by Holder

1613.07(b): Establishing Ownership

1613.07(c): Changes of Legal Entity

1613.07(d): Changes of Name

1613.07(e): Correction of Mistake in Setting Forth the Name of the Holder

1613.08: Execution of Affidavit or Declaration

1613.08(a): Persons Who May Sign Affidavit or Declaration

1613.08(b): Date of Execution of Affidavit or Declaration

1613.08(c): Signature of Electronically Transmitted Affidavit or Declaration

1613.08(d): Form and Wording of Verification

1613.09: Goods/Services/Classes Set Forth in §71 Affidavit or Declaration

1613.09(a): Goods/Services/Collective Membership Organization Must Be Specified or Expressly Incorporated by Reference

1613.09(b): Deletion of Goods/Services/Classes

1613.09(c): Failure to List All Goods/Services/Collective Membership Organization in Registration

1613.09(d): New Goods and/or Services Cannot Be Added

1613.10: Use in Commerce

1613.11: "Excusable Nonuse" of Mark

1613.12: Specimen Showing Current Use of Mark in Commerce

1613.12(a): Specimen for Each Class Required

1613.12(b): Specimens in Electronically Filed Affidavits or Declarations

1613.12(c): Substitute Specimens

1613.13: Differences in the Mark as Used on the Specimen and the Mark as Registered

1613.13(a): Amendment of Mark in Registration

1613.14: Designation of Domestic Representative by Foreign Holder

1613.15: Office Actions and Notices Regarding Affidavit or Declaration

1613.16: Response to Office Action

1613.17: Correction of Deficiencies in §71 Affidavit or Declaration

1613.17(a): Correcting Deficiencies in Affidavits or Declarations Timely Filed Within the Periods Set Forth in §71(a) of the Act

1613.17(b): Correcting Deficiencies in Affidavits or Declarations Filed During the Grace Period

1613.17(c): Defects That Cannot Be Cured After Expiration of the Grace Period

1613.18: Petition Under 37 C.F.R. §2.146

1613.18(a): Response to Examiner’s Refusal Required Before Petition

1613.18(b): Decision on Petition Is Final Action of the USPTO

1613.18(c): Request for Reconsideration of Denial of Petition

1613.18(d): Appeal to Federal Court

1613.19: Section 71 Affidavit or Declaration Combined with Section 15 Affidavit or Declaration

1613.20: Additional Requirements for §71 Affidavits or Declarations Pertaining to Collective Marks

1613.20(a): Exercising Legitimate Control

1613.20(b): Manner/Method of Control

1613.21: Additional Requirements for §71 Affidavits or Declarations Pertaining to Certification Marks

1613.21(a): Certification Standards

1613.21(b): Exercising Legitimate Control

1613.21(c): Certification Statement

1613.21(d): Statement that Holder is Not Engaged in Production or Marketing of the Goods/Services

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