TMEP Change Summary
Attention is directed to the following changes in the April 2013 TMEP.
| SECTION | CHANGE |
|---|---|
| 305.01 | Corrected mailing address for Madrid Processing Unit. |
| 504.01 | Revised to clarify blackout period for §1(b) applications. Added cross reference to TMEP §504. |
| 609.02(c) | Changed reference to TARR to TSDR. |
| 609.02(f) | Deleted reference to TRAM and TARR. |
| 710.01(b) | Revised to indicate that providing only a website address or hyperlink to internet materials is insufficient. Added case cite. |
| 801.02(b) | Added case cite. |
| 803.03(c) | Revised to clarify requirements for foreign associations. |
| 803.05 | Revised to clarify that zip code is required for addresses outside the United States. |
| 804.03 | Corrected TMEP cross reference. |
| 806.01(d) | Revised to correct inconsistency with TMEP §1004.02 regarding amendment to rely on a different foreign registration. |
| 806.03(j)(ii) | Revised paragraph (3) to clarify requirements for applicants who request to maintain §1(b) basis pending acceptance of §44(e) basis. |
| 807.09 | Added case cite. |
| 904.03(e) | Changed section title to "Specimens for Trademarks Identifying Computer Programs, Movies, or Videos, or Audio Recordings." Added case cite and paragraph regarding specimens for audio recordings. |
| 904.03(f) | Added case cite. |
| 904.03(h) | Revised to clarify that display must show the mark in association with the goods. |
| 904.03(g) | Added paragraph regarding web-page displays. |
| 904.03(i)- 904.03(i)(C)(3) | Incorporated Exam Guide 1-13 (Webpage Specimens as Displays Associated with the Goods) |
| 904.03(i)(A) | New section: Picture or Description of the Goods |
| 904.03(i)(B) | New section: Show the Mark in Association with the Goods |
| 904.03(i)(B)(1) | New section: Prominence of Mark |
| 904.03(i)(B)(2) | New section: Placement of Mark and Proximity to the Goods |
| 904.03(i)(C) | New section: Ordering Information |
| 904.03(i)(C)(1) | New section: "Shopping Cart" and "Shopping Bag" Buttons and Links |
| 904.03(i)(C)(2) | New section: Telephone Numbers and E-mail Addresses |
| 904.03(i)(C)(3) | New section: "Contact Us," "Customize," or "Configure" Buttons and Links |
| 904.03(i)(D) | Added section number and title (Beta Websites) to existing paragraph. |
| 1202.02(a)(v) | Added case cite. |
| 1202.02(a)(v)(A) | Added case cites and information regarding evidence relating to functionality contained in third-party patents. |
| 1202.02(a)(vi) | Added case cite and explanation. |
| 1202.02(a)(viii) | Added case cites. |
| 1202.02(b)(ii) | Added case cites. |
| 1202.02(d) | Added case cite. |
| 1202.03(a) | Added case cite and clarification regarding size of the mark on clothing. |
| 1202.05(b) | Added case cite. |
| 1202.06 | Added case cite. Revised to clarify that case-by-case factual determination is made in regard to all goods. |
| 1202.08(c) | Added case cite. |
| 1202.09(a) | Added case cite. |
| 1202.09(a)(ii) | Added case cite. |
| 1202.09(a)(ii)(B) | Added case cite. |
| 1202.13 | Added case cite. |
| 1202.15 | Added case cite. |
| 1203.01 | Added case cite and additional explanation regarding history of enactment of §2a. Clarified that §2a does not require that a mark’s vulgar meaning be the only relevant meaning, or even the most relevant meaning. |
| 1203.02(a) | Added case cite. |
| 1203.02(c) | Added case cite. |
| 1203.02(d) | Added case cite. |
| 1203.02(e)(ii) | Revised procedures for issuing refusals when it is not clear whether a mark is misdescriptive. |
| 1203.02(f)(i) | Added statement regarding amending the identification to overcome a deceptiveness refusal. |
| 1203.02(g) | Added case cite. |
| 1207.01(b)(xi) | New section: Color Marks (incorporates new precedential case) |
| 1207.01(d)(xii) | Added case cite. |
| 1207.04(c) | Added case cite. |
| 1207.04(e) | Added case cite. |
| 1209.03(d) | Updated case cite. |
| 1209.03(e) | Added case cite. |
| 1209.03(k) | Updated case cite. |
| 1209.03(u) | Updated case cite. |
| 1209.04 | Revised to clarify that deceptively misdescriptive component of mark with registrable matter may be disclaimed. |
| 1210.01(b) | Added case cite. |
| 1210.01(c) | Added case cite. |
| 1210.03 | Added case cite. |
| 1210.04(a) | Added case cite. |
| 1210.05(e) | Added case cite. |
| 1211.01(a)(i) | Added case cite and clarified that the mere existence of other non-surname meanings of a term does not preclude a finding that the term is primarily merely a surname. |
| 1211.01(b)(vi) | Added case cite. |
| 1211.02(b)(iv) | Added case cite. |
| 1213.01(d) | New section: Disclaimer Offered in the Alternative (incorporates new precedential case) |
| 1213.05(c) | Added case cite. |
| 1215.02(d) | Clarified that registration generally must be refused. |
| 1217 | Added case cite and reworded (1)-(4) to reflect wording in case. |
| 1306.06(e) | Updated to clarify correct wording of certification mark identifications of goods and services. |
| Chapter 1400 | Revised to change "Alphabetical List of Goods," "Alphabetical List of Services," and "Alphabetical List of Goods and Services" to "Alphabetical List" for consistency. Revised to change "USPTO ID Manual" to "ID Manual" for consistency. |
| 1401.02(a) | Updated to indicate that annual revisions to the Nice Classification began in 2013 and are published electronically. Corrected Class 5 and Class 39 Explanatory Notes. |
| 1401.02(c) | Revised to delete street address of World Intellectual Property Organization and to indicate that paper publication of the Alphabetical List was discontinued, and that a French version is available online. Revised to clarify that the ID Manual provides general guidance regarding the definiteness of identification. |
| 1402.01(a) | Added case cite. |
| 1402.02 | Added cross reference to TMEP §§718.02(a) and 1402.13. |
| 1402.04 | Revised to clarify that TEAS applicants may include correctly classified goods and/or services taken from the ID Manual or may create and enter a listing of recognizable goods/services. Added cross reference to TMEP §§805 and 1402.02. |
| 1605 | Revised to clarify the response period for issues regarding §15 affidavits filed alone or combined with declarations under §8 or §71. Corrected CFR cite. |
| 1713.02 | Revised to correct TMEP cross reference. |
| 1902.02(a) | Revised to correct mailing address. |
| 1902.03(a) | Revised to correct mailing address. |
| 1902.07(f) | Revised to correct mailing address. |
| 1902.08(b) | Revised to correct mailing address. |
| 1904.02(j) | Revised to clarify that in limited circumstances, applicant may seek to amend a §66(a) application to add a standard character claim. |
| 1904.09(a) | Revised to correct mailing address. |
| 1906.01(a)(i) | Revised to correct mailing address. |
| 1906.01(b) | Revised to correct mailing address. |
| Appendix C | Added Postal Service statute cite to list. |
| Appendix D | Corrected entity descriptions for "Oy" and "Oyj" of Finland. |