TMEP Introduction
The authority of Congress to provide for the registration of marks which are used in commerce stems from the power of Congress under the commerce clause of the Constitution of the United States to regulate commerce.
Under its authority to regulate commerce, Congress has over the years passed a number of statutes providing for the registration of marks in the USPTO. The provisions of statutes cannot be changed or waived by the USPTO. The statute now in effect is Public Law 489, 79th Congress, approved July 5, 1946, 60 Stat. 427, commonly referred to as the Trademark Act of 1946 or the Lanham Act. The Trademark Act of 1946 (as amended) forms Chapter 22 of Title 15 of the United States Code. In referring to a particular section of the Trademark Act, this Manual often gives the citation of the United States Code, e.g., 15 U.S.C. §1051. The text of the current statutes can be downloaded from the USPTO website at http://www.uspto.gov.
Section 2 of Title 35 of the United States Code authorizes the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office to establish regulations, not inconsistent with law, for the conduct of proceedings in the USPTO. The rules which govern the practices and procedures in the USPTO as they relate to the registration of marks are set forth in Title 37 of the Code of Federal Regulations.
The trademark rules are a part of the Code of Federal Regulations, which is a codification of Federal regulations under the provisions of The Federal Register Act of 1937 and The Administrative Procedure Act of 1946 and which is published pursuant to 44 U.S.C. §1510. Rules relating to patents, trademarks and copyrights are codified in Title 37 of the Code of Federal Regulations. The trademark rules constitute Part 2, the rules relating to assignments constitute Part 3, the classification of goods and services constitutes Part 6, the rules relating to filings under the Madrid Protocol constitute Part 7, and the rules relating to the representation of others before the USPTO constitute Parts 10 and 11. The text of the current rules is also available on the USPTO website at http://www.uspto.gov.
In creating numbers for rules, the number of the appropriate Part in Title 37 of the Code of Federal Regulations is placed first, followed by a decimal point and then the number of the rule, so that, for example, Trademark Rule 2.56 is Rule 56 in Part 2 of Title 37 of the Code of Federal Regulations. In the Code of Federal Regulations itself, and in material published in the Federal Register, the rules are identified by the term "sections." Thus, section 2.56 in 37 C.F.R. (37 CFR §2.56) is Trademark Rule 2.56.
Notices of proposed and final rulemaking are published in the Federal Register and in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov/.
The primary function of the rules of practice is to advise the public of the regulations that have been established in accordance with the statutes, which must be followed before the USPTO.
From time to time the Director of the United States Patent and Trademark Office issues Orders and Notices relating to various specific situations that have arisen in operating the USPTO. Notices, circulars of information, or instructions and examination guides have also been issued by other USPTO officials under authority of the Director. These Orders and Notices are published in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov. See notice at 72 Fed. Reg. 72999 (Dec. 26, 2007).
In addition to the statutory regulations, the actions taken by the examining attorneys in the examination of applications to register marks are to a great extent governed by decisions on prior cases. Applicants dissatisfied with an examining attorney's action may have it reviewed. In general, procedural matters may be reviewed by petition to the Director (see TMEP §1702) and substantive matters may be reviewed by appeal to the Trademark Trial and Appeal Board (see TMEP §1501).
The Trademark Manual of Examining Procedure sets forth the guidelines and procedures followed by the examining attorneys at the USPTO. The manual may be downloaded free of charge from the USPTO website at http://www.uspto.gov/. See notice at 67 Fed. Reg. 18176 (April 15, 2002) regarding the dissemination of the manual in electronic format.
References in this Manual to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) refer to the June 2015 Revision, currently available on the USPTO website at http://tbmp.uspto.gov/RDMS/detail/manual/TBMP/current/tbmpd1e2.xml#/manual/TBMP/current/tbmpd1e2.xml. The TBMP sets forth guidelines and practices followed in proceedings held before the Trademark Trial and Appeal Board.