b) Identify the certificate of registration by the ficate number and date of registration;

Recite sufficient facts to show that the mark scribed in the registration is still in use, specifying nature of such use, or recite sufficient facts to that its nonuse is due to special circumstances hexcuse such nonuse and is not due to any antion to abandon the mark; and

Be accompanied by an abstract of title or an for a title report for Office use.

23. Acknowledgment of receipt of affidavit.

The registrant will be notified by the Examiner of -Marks of the receipt of the affidavit and, if factory, of its acceptance.

4. Reconsideration of affidavit.

the affidavit is insufficient, the registrant will be ed of the reasons by the Examiner. Reconsidin of such refusal may be requested within six s from the date of the mailing of the notice. request for reconsideration must state the reaherefor; a supplemental or substitute affidavit ed by section 8 of the act [section 1058 of this cannot be considered unless it is received before piration of six years from the date of the regisor from the date of republication. 100.261, 100.262 and 100.264 for appeal. ended Nov. 3, 1947, 12 F. R. 7141.)

5. Time of cancellation.

to affidavit is filed, the registration will be candforthwith by the Commissioner after the end of Th year, and a notice of the cancellation will to the registrant. If the affidavit is filed but ed, cancellation of the registration will be d pending further proceedings. AFFIDAVIT FOR INCONTESTABILITY 31. Affidavit for incontestability.

adavit required by section 15 of the act [sec

of this title] for acquiring incontestability mark registered on the Principal Register or registered under the act of 1881 or 1905 and shed under section 12 (c) of the act [section of this title] (§ 100.301) must: Be signed by the registrant;

dentify the certificate of registration by the ate number and date of registration; Pecite the goods or services stated in the regon or in connection with which the mark in continuous use for a period of five years ent to the date of registration or date of reon under section 12 (c) of the act [section of this title] in commerce which may lawregulated by Congress and is still in use in merce, specifying the nature of such com

Specify that there has been no final decision to registrant's claim of ownership of such such goods or services, or to registrant's register the same or to keep the same on the

(e) Specify that there is no proceeding involving said rights pending in the Patent Office or in a court and not finally disposed of;

(f) Be filed within one year after the expiration of any such five year period.

The registrant will be notified of the reecipt of the affidavit.

§ 100.332. Combined with other affidavits.

The affidavit filed under section 15 of the act [section 1065 of this title] for the purpose of acquiring incontestability may also be used as the affidavit required by section 8 [section 1058 of this title], provided it also complies with the requirements and is filed within the time limit specified in §§ 100.321 and 100.322.

In appropriate circumstances the affidavit filed under section 15 of the act [section 1065 of this title] may be combined with the affidavit required for renewal of a registration (see § 100.353). CORRECTION, DISCLAIMER, SURRENDER, ETC. § 100.341. New certificate on change of ownership.

In case of change of ownership of a registered mark, a new certificate of registration may be issued in the name of the assignee for the unexpired part of the original period, at the request of the assignee. The assignment must be recorded in the Patent Office, and the request for the new certificate must be signed by the assignee and accompanied by the required fee and by an abstract of title or an order for a title report for Office use. The original certificate of registration, if available, must also be submitted. (As amended Nov. 3, 1947, 12 F. R. 7141; Nov. 1, 1949, 14 F. R. 8839.)

§ 100.342. Surrender, cancellation disclaimer in whole. The Commissioner may permit any registration to be surrendered or cancelled, or any registered mark to be disclaimed in whole, upon application by the registrant. Application for such action must be signed by the registrant and must be accompanied by the required fee, and by an abstract of title or an order for a title report for Office use, and, if not lost or destroyed, by the original certificate of registration. (As amended Nov. 3, 1947, 12 F. R. 7141.)

§ 100.343. Amendment and disclaimer in part.

The Commissioner may permit any registration to be amended or any registered mark to be disclaimed in part, upon application by the registrant. Application for such action must specify the amendment or disclaimer and be signed by the registrant, and must be accompanied by the required fee and by an abtract of title or an order for a title report for Office use. If the amendment involves a change in the mark, new specimens showing the mark as used in connection with the goods or services, and a new drawing of the amended mark must be submitted. The certificate of registration or, if said certificate is lost or destroyed, a certified copy thereof, must also be submitted in order that the Commissioner may make appropriate entry thereon and in the records

(d) If the applicant is not domiciled in the United States, the designation of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark.

(e) If the mark is registered under the act of 1920, a verified statement showing that renewal is required to support foreign registrations.

§ 100.354. Refusal of renewal.

If the application for renewal is incomplete or defective, the renewal will be refused by the Examiner of Trade-Marks. The application may be completed or amended in response to a refusal, subject to the provisions of §§ 100.122 and 100.353.

See §§ 100.261 and 100.262 for appeal.

ASSIGNMENT OF MARKS

§100.361. Requirements for assignments.

A mark which has been registered or a mark for which an application for registration has been filed shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.

Such assignments shall be by instruments in writing duly executed. Acknowledgment as provided by section 11 of the act [section 1061 of this title] shall be prima facie evidence of the execution of an assignment and when recorded in the Patent Office the record shall be prima facie evidence of execution. No assignment will be recorded unless it has been executed and unless:

(a) The certificate of registration is identified in the assignment by the certificate number (the date of registration should also be given), or, the application for registration shall have been first filed in the Patent Office and the application is identified in the assignment by serial number (the date of filing should also be given);

(b) It is in the English language or, if not in the English language, accompanied by a sworn translation;

(c) The fee for recording is received; and

(d) An appointment of a resident agent is made in case the assignee is not domiciled in the United States. The appointment must be separate from the assignment and there must be a separate appointment for each registration or application assigned in one instrument.

The date of record of the assignment is the date of the receipt of the assignment at the Patent Office in proper form and accompanied by the full fee for recording.

§ 100.362. Action may be taken by assignee of record. Any action which may or must be taken by a registrant or applicant may be taken by the assignee, provided the assignment has been recorded, and unless such assignment has been recorded no assignee will be recognized.

§100.363. Certificate of registration may issue to assignee.

The certificate of registration may be issued to the assignee of the applicant, but the assignment must

24626°-53-vol. 2-23

first be entered of record in the Patent Office as of a date not later than the fourth Thursday before the date the certificate of registration is to bear. See § 100.152.

UNPROVIDED FOR AND EXTRAORDINARY CASES

§ 100.381. Cases not specifically defined.

All cases not specifically defined and provided for in this part will be decided in accordance with the merits of each case under the authority of the Commissioner, and such decision will be communicated to the interested parties in writing.

§ 100.382. Commissioner may suspend certain rules.

In an extraordinary situation, when justice requires and no other party is injured thereby, any requirement of this part not being a requirement of statute may be suspended or waived by the Commissioner.

AMENDMENT OF RULES

§ 100.391. Amendments to rules will be published.

All amendments to this part will be published in the Official Gazette and in the Federal Register. §100.392. Publication of notice of proposed amendments.

Whenever required by law, and in other cases whenever practicable, notice of proposed amendments to this part will be published in the Federal Register and in the Official Gazette. If not published with the notice, copies of the text will be furnished to any person requesting the same. All comments, suggestions, and briefs received within a time specified in the notice will be considered before adoption of the proposed amendments which may be modified in the light thereof.

Oral hearings may be held at the discretion of the Commissioner.

TIME OF TAKING EFFECT

§ 100.401. Effective date of rules.

This part, except § 100.44, shall take effect on July 5, 1947, and shall apply to all applications for registration, registrations, and proceedings under and subject to the act of 1946. Applications filed prior to July 5, 1947, and still subject to the acts under which said applications were filed shall be prosecuted and certificates granted in accordance with the act under which filed and the rules thereunder in effect immediately prior to July 5, 1947 (37 CFR, Part 5).

This part shall apply to contested or inter partes proceedings instituted on or after July 5, 1947, and also to further inter partes action in such cases pending on July 5, 1947, except to the extent that in the opinion of the Commissioner their application to a particular case pending when this part takes effect would not be feasible or would work injustice, in which event the rules in effect immediately prior to July 5, 1947, shall apply to such case.

Section 100.44 shall take effect on January 1, 1950. (As amended Nov. 3, 1947, 12 F. R. 7141; June 30, 1948, 13 F. R. 3677.)

Sec. 110.2

APPLICATIONS PENDING ON JULY 5, 1947

§ 100.411. Conversion of pending applications to act of 1946.

Applications for registration filed before July 5, 1947, and pending in the Patent Office on and after that date may be amended, if practicable, to bring them under the provisions of the act of 1946 [sections 1051-1127 of this title].

§ 100.412. Requirements of amendment.

Such amendment must supply the facts required by this part to be included in the statement of an original application which are not contained in the statement on file, supported by a supplemental affidavit including any required averments which are not contained in the original declaration. The amendment is subject to all rules in this part relating to or affecting amendments and must not be inconsistent with the original statement and declaration. The amendment may take the form of a substitute written application and in any case the Examiner may require the amended application to be rewritten.

The entire filing fee required for an original application under the act of 1946 [sections 1051-1127 of this title] must be paid, but the filing fee previously paid will be considered as part payment of such filing fee.

For the purpose of proceedings in the Patent Office, the date of filing the amendment will be considered as the filing date of the application; for the purpose of contested proceedings, the applicant may be permitted to rely on the filing date of his original application, provided the mark was registrable under the act on which the original application was based.

§ 100.413. Applications which cannot be amended.

An amendment to bring an application under the act of 1946 [sections 1051-1127 of this title] will not be considered:

(a) If the application is abandoned at the time the amendment is filed;

(b) If the application is under rejection or other action by the Examiner and the appropriate response thereto is not received within the time for response, in which case the mere filing of the proposed amendment will not avoid abandonment of the application; (c) If filed after the notice of allowance has been sent; and

(d) In any other case if, from the nature of the particular amendment or the condition of the application, it is not practicable.

FORMS FOR TRADE-MARK CASES

As amended to August 30, 1952.

TITLE 37.-PATENTS, TRADE-MARKS AND

COPYRIGHTS1

PART 110-FORMS FOR TRADE-MARK CASES Sec.

110.1 Application for trade-mark registration by an individual, Principal Register.

1 Title 37 refers to Code of Federal Regulations.

110.3

110.6

110.9

110.12

110.13

110.16

110.19

110.21

110.25

110.26

Application for trade-mark registration by a firm,
Principal Register.

Application for trade-mark registration by a cor-
poration, Principal Register.

Application for trade-mark registration claiming concurrent use, Principal Register.

Application for service mark registration, Principal Register.

Application for collective mark registration, Prin-
cipal Register.

Application for certification mark registration,
Principal Register.

Application for trade-mark registration, Supple-
mental Register.

Application for trade-mark registration based on

foreign registration or application.

Application for renewal of registration by an individual.

Affidavit under section 8.

Affidavit under section 12 (c).

110.26a Affidavit under section 12 (c) by a corporation. Affidavit under section 15.

110.27

PURPOSE AND APPLICATION

The following forms illustrate the manner of preparing applications for registration of marks and various papers in trade-mark cases, to be filed in the Patent Office. Applicants and other parties will find their business facilitated by following them. These forms should be used in cases to which they are applicable. A sufficient number of representative forms are given which, with the variations indicated by the notes, should take care of all the usual situations. In special situations such alterations as the circumstances may render necessary may be made provided they do not depart from the requirements of this part or the statute. Before using any forms the pertinent rules and sections of the statute should be studied carefully.

§ 110.1. Application for trade-mark registration by an individual, Principal Register.

To the Commissioner of Patents.

(5) For applications under section 2 (f) [section 1052 (f) of this title]:

Applicant, being duly sworn, deposes and says that he believes himself to be the owner of the trademark, which is in use in commerce (3)

and that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such trade-mark in commerce which may lawfully be regulated by Congress, either in the identical form thereof or in such near resemblance thereof as might be calculated to deceive, that the drawing and description truly represent the trademark sought to be registered, that the specimens (or facsimiles) show the trade-mark as actually used in connection with the goods, and that the facts set forth in the statement are true.

(a) If the claim of distinctiveness is based on five years' use, add the following paragraph:

The mark is claimed to have become distinctive of the applicant's goods in commerce which may lawfully be regulated by Congress through substantially exclusive and continuous use thereof as a mark by the applicant in commerce (specify the kind of commerce) for the five years next preceding the date of the filing of this application. (b) If the claim of distinctiveness based on five years' use is supplemented by further evidence, add the following paragraph:

Proof of distinctiveness under section 2 (f) of the act [section 1052 (f) of this title] is supplemented by further evidence submitted in this case.

(c) If the claim of distinctiveness is based on other facts or circumstances, add the following paragraph:

The mark is claimed to have become distinctive of the applicant's goods in commerce which may lawfully be regulated by Congress as supported by evidence separately submitted in this case.

(As amended Nov. 1, 1949, 14 F. R. 6641; Feb. 8, 1952, 17 F. R. 1218.)

§ 110.2. Application for trade-mark registration by a firm, Principal Register.

To the Commissioner of Patents.

(Statement)

a firm domiciled in

his attorney (or agent) to prosecute this application for registration with full power of substitution and revocation, to transact all business in the Patent Office connected therewith, and to receive the certificate.

(Firm name) doing business at (Business address) posed of the following members

(Domicile) and com

(1) Insert: "the goods"; "the containers for the goods"; "displays associated with the goods", and/or, "tags or labels affixed to the goods", as the case may be.

(2) State the date on which the trade-mark was first used as a trade-mark whether or not in commerce which may lawfully be regulated by Congress.

(2a) If one or more items are specified in the list of goods appearing in the statement, and the dates given apply to each item or items, insert "the goods specified." If more than one item is specified in the statement, and the dates given apply only to a particular item, insert the name of such item.

(3) Specify kind of commerce, such as: "among the several states"; "in commerce between foreign nations and the United States"; or specify other commerce which may lawfully be regulated by Congress, as the case may be. (4) If the attorney is not registered on the Patent Office Register the power of attorney or separate paper must recite the bar to which he has been admitted to practice as required by § 100.42 of this chapter.

If the applicant is not domiciled in the United States a domestic representative must be appointed, see § 110.19 for appropriate paragraph.

(Citizenship of firm members) and is using the trade-mark shown in the accompanying drawing for

in Class

(Particular description of goods)

and

(Number and Title of Class) presents herewith five specimens (or facsimiles) showing the trade-mark as actually used in connection with such goods, the trade-mark being applied to and requests that the same

be registered in the United States Patent Office on the Principal Register in accordance with the act of July 5, 1946 [sections 1051-1127 of this title]. The trade-mark was first used on