37 C.F.R. §§ 2.160–2.166

7 sections in range

§2.160. Affidavit or declaration of continued use or excusable nonuse required to avoid cancellation of registration.

37 C.F.R. § 2.160

(a)

During the following time periods, the owner of the registration must file an affidavit or declaration of continued use or excusable nonuse, or the registration will be cancelled:

(1)

(i)

For registrations issued under the Trademark Act of 1946, on or after the fifth anniversary and no later than the sixth anniversary after the date of registration; or

(ii)

For registrations issued under prior Acts, on or after the fifth anniversary and no later than the sixth anniversary after the date of publication under section 12(c) of the Act; and

(2)

For all registrations, within the year before the end of every ten-year period after the date of registration.

(3)

The affidavit or declaration may be filed within a grace period of six months after the end of the deadline set forth in paragraphs (a)(1) and (a)(2) of this section, with payment of the grace period surcharge per class required by section 8(a)(3) of the Act and § 2.6.

(b)

For the requirements for the affidavit or declaration, see § 2.161.

Notes, amendments, and revision history

Amendments

[64 FR 48924, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]

Authority

Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

Authority

Authority: 15 U.S.C. 1113, 1123; 35 U.S.C. 2; sec. 10, Pub. L. 112-29, 125 Stat. 284; Pub. L. 116-260, 134 Stat. 1182, unless otherwise noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 434; 15 U.S.C. 1066, 1067.

Source

Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

Amendments

[64 FR 48924, Sept. 8, 1999, as amended at 75 FR 35976, June 24, 2010]

§2.161. Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse; requirement for the submission of additional information, exhibits, affidavits or declarations, and specimens; and fee for deletions of goods, services, and/or classes from a registration.

37 C.F.R. § 2.161

(a)

Requirements for a complete affidavit or declaration. A complete affidavit or declaration under section 8 of the Act must:

(1)

Be filed by the owner within the period set forth in § 2.160(a);

(2)

Include a verified statement attesting to the use in commerce or excusable nonuse of the mark within the period set forth in section 8 of the Act. This verified statement must be executed on or after the beginning of the filing period specified in § 2.160(a);

(3)

Include the U.S. registration number;

(4)

(i)

Include the fee required by § 2.6 for each class that the affidavit or declaration covers;

(ii)

If the affidavit or declaration is filed during the grace period under section 8(a)(3) of the Act, include the grace period surcharge per class required by § 2.6; and

(iii)

If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes, and the class(es) to which the fee(s) should be applied is not specified, the Office will issue a notice requiring either submission of the additional fee(s) or specification of the class(es) to which the initial fee(s) should be applied. Additional fees may be submitted if the requirements of § 2.164 are met. If the additional fee(s) is not submitted within the time period set out in the Office action, and the class(es) to which the original fee(s) should be applied is not specified, the Office will presume that the fee(s) covers the classes in ascending order, beginning with the lowest numbered class;

(5)

(i)

Specify the goods, services, or nature of the collective membership organization for which the mark is in use in commerce, and/or the goods, services, or nature of the collective membership organization for which excusable nonuse is claimed under paragraph (a)(6)(ii) of this section; and

(ii)

Specify the goods, services, or classes being deleted from the registration, if the affidavit or declaration covers fewer than all the goods, services, or classes in the registration;

(6)

(i)

State that the registered mark is in use in commerce; or

(ii)

If the registered mark is not in use in commerce on or in connection with all the goods, services, or classes specified in the registration, set forth the date when such use of the mark in commerce stopped and the approximate date when such use is expected to resume, and recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark; and

(7)

Include one specimen showing how the mark is in use in commerce for each class in the registration, unless excusable nonuse is claimed under paragraph (a)(6)(ii) of this section. When requested by the Office, additional specimens must be provided. The specimen must meet the requirements of § 2.56.

(8)

Additional requirements for a collective mark— In addition to the above requirements, a complete affidavit or declaration pertaining to a collective mark must:

(i)

State that the owner is exercising legitimate control over the use of the mark in commerce; and

(ii)

If the registration issued from an application based solely on section 44 of the Act, state the nature of the owner's control over the use of the mark by the members in the first affidavit or declaration filed under paragraph (a)(1) of this section.

(9)

Additional requirements for a certification mark— In addition to the above requirements, a complete affidavit or declaration pertaining to a certification mark must:

(i)

Include a copy of the certification standards specified in § 2.45(a)(4)(i)(B);

(A)

Submitting certification standards for the first time. If the registration issued from an application based solely on section 44 of the Act, include a copy of the certification standards in the first affidavit or declaration filed under paragraph (a)(1) of this section; or

(B)

Certification standards submitted in prior filing. If the certification standards in use at the time of filing the affidavit or declaration have not changed since the date they were previously submitted to the Office, include a statement to that effect. If the certification standards in use at the time of filing the affidavit or declaration have changed since the date they were previously submitted to the Office, include a copy of the revised certification standards;

(ii)

State that the owner is exercising legitimate control over the use of the mark in commerce; and

(iii)

Satisfy the requirements of § 2.45(a)(4)(i)(A) and (C).

(10)

For requirements of a complete affidavit or declaration of use in commerce or excusable nonuse for a registration that issued from a section 66(a) basis application, see § 7.37.

(b)

Requirement for the submission of additional information, exhibits, affidavits or declarations, and specimens. The Office may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act or for the Office to assess and promote the accuracy and integrity of the register.

(c)

Fee for deletions of goods, services, and/or classes from a registration. Deletions by the owner of goods, services, and/or classes from a registration after submission and prior to acceptance of the affidavit or declaration must be accompanied by the relevant fee in § 2.6(a)(12)(iii) or (iv).

Notes, amendments, and revision history

Amendments

[85 FR 73216, Nov. 17, 2020]

Authority

Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

Authority

Source

Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

Amendments

[85 FR 73216, Nov. 17, 2020]

§2.162. Notice to registrant.

37 C.F.R. § 2.162

When a certificate of registration is originally issued, the Office issues with the certificate a notice of the requirement for filing the affidavit or declaration of use or excusable nonuse under section 8 or section 71 of the Act. However, the affidavit or declaration must be filed within the time period required by section 8 or section 71 of the Act even if this notice is not received.

Notes, amendments, and revision history

Amendments

[84 FR 37096, July 31, 2019]

Authority

Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

Authority

Source

Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

Amendments

[84 FR 37096, July 31, 2019]

§2.163. Acknowledgment of receipt of affidavit or declaration.

37 C.F.R. § 2.163

The Office will issue a notice as to whether an affidavit or declaration is acceptable, or the reasons for refusal.

(a)

If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, deficiencies may be corrected after notification from the Office if the requirements of § 2.164 are met.

(b)

A response to the refusal must be filed within six months of the date of issuance of the Office action, or before the end of the filing period set forth in section 8(a) of the Act, whichever is later. The response must be signed by the owner, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter, in accordance with the requirements of § 2.193(e)(2).

(c)

If no response is filed within this time period, the registration will be cancelled, unless time remains in the grace period under section 8(a)(3) of the Act. If time remains in the grace period, the owner may file a complete, new affidavit.

Notes, amendments, and revision history

Amendments

[75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]

Authority

Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

Authority

Source

Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

Amendments

[75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]

§2.164. Correcting deficiencies in affidavit or declaration.

37 C.F.R. § 2.164

(a)

If the affidavit or declaration is filed within the time periods set forth in section 8 of the Act, deficiencies may be corrected after notification from the Office, as follows:

(1)

Correcting deficiencies in affidavits or declarations timely filed within the periods set forth in sections 8(a)(1) and 8(a)(2) of the Act. If the affidavit or declaration is timely filed within the relevant filing period set forth in section 8(a)(1) or section 8(a)(2) of the Act, deficiencies may be corrected before the end of this filing period without paying a deficiency surcharge. Deficiencies may be corrected after the end of this filing period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.

(2)

Correcting deficiencies in affidavits or declarations filed during the grace period. If the affidavit or declaration is filed during the six-month grace period provided by section 8(a)(3) of the Act, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge. Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 8(c) of the Act and § 2.6.

(b)

If the affidavit or declaration is not filed within the time periods set forth in section 8 of the Act, the registration will be cancelled.

Notes, amendments, and revision history

Amendments

[75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]

Authority

Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

Authority

Source

Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

Amendments

[75 FR 35976, June 24, 2010, as amended at 76 FR 69133, Nov. 8, 2011]

§2.165. Petition to Director to review refusal.

37 C.F.R. § 2.165

(a)

A response to the examiner's initial refusal to accept an affidavit or declaration is required before filing a petition to the Director, unless the examiner directs otherwise. See § 2.163(b) for the deadline for responding to an examiner's Office action.

(b)

If the examiner maintains the refusal of the affidavit or declaration, the owner may file a petition to the Director to review the action. The petition must be filed within six months of the date of issuance of the action maintaining the refusal, or the Office will cancel the registration and issue a notice of the cancellation.

(c)

A decision by the Director is necessary before filing an appeal or commencing a civil action in any court.

Notes, amendments, and revision history

Amendments

[64 FR 48925, Sept. 8, 1999, as amended at 73 FR 67773, Nov. 17, 2008]

Authority

Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

Authority

Source

Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

Amendments

[64 FR 48925, Sept. 8, 1999, as amended at 73 FR 67773, Nov. 17, 2008]

§2.166. Affidavit of continued use or excusable nonuse combined with renewal application.

37 C.F.R. § 2.166

An affidavit or declaration under section 8 of the Act and a renewal application under section 9 of the Act may be combined into a single document, provided that the document meets the requirements of both sections 8 and 9 of the Act.

Notes, amendments, and revision history

Amendments

[64 FR 48925, Sept. 8, 1999]

Authority

Authority: Secs. 2.161 to 2.165 also issued under sec. 8, 60 Stat. 431; 15 U.S.C. 1058.

Authority

Source

Source: 30 FR 13193, Oct. 16, 1965, unless otherwise noted.

Amendments

[64 FR 48925, Sept. 8, 1999]