has been registered by the applicant, or that an application for the registration thereof has been filed by him in the foreign country in which he resides or is located, and shall give the date of such registration and of the application therefor. In such cases it shall not be necessary to state that the mark has been used in commerce with the United States or among the States thereof. If the application be presented under the provisions of section 3 of the Act of May 4, 1906, the statement must state that the applicant has a manufacturing establishment within the territory of the United States and that the goods upon which the trade-mark is used are the product of such establishment.*t (Sec. 2, 33 Stat. 724, 35 Stat. 627, sec. 3, 34 Stat. 169; 15 U.S.C. 82, 132) 5.34 Execution of declaration before proper authority. The declaration may be made before any person within the United States authorized by law to administer oaths, or, when the applicant resides in a foreign country, before any minister, chargé d'affaires, consul, or commercial agent holding commission under the Government of the United States, or before any notary public, judge, or magistrate having an official seal and authorized to administer oaths in the foreign country in which the applicant may be, whose authority shall be proved by the certificate of a diplomatic or consular officer of the United States, the declaration being attested in all cases, in this and other countries, by the proper official seal of the officer before whom the same is made, except that no acknowledgment may be taken before any attorney appearing in the case. When the person before whom the declaration is made is not provided with a seal, his official character shall be established by competent evidence, as by a certificate of a clerk of a court of record, or other proper officer having a seal.** (Sec. 2, 33 Stat. 724, 35 Stat. 627; 15 U.S.C. 82) 5.35 Substitute declaration. Amendment of the declaration will not be permitted. If that filed with the application be faulty or defective, a substitute declaration must be filed.*† 5.36 DRAWING Requisites and form. (a) The drawing must be made upon pure white paper of a thickness corresponding to two-sheet Bristol board. The surface of the paper must be calendered and smooth. India ink alone must be used, to secure perfectly black and solid lines. (b) The size of a sheet on which a drawing is made must be exactly 8 by 13 inches. Three-fourths of an inch from its edges a single marginal line is to be drawn, leaving the "sight" precisely 62 by 1112 inches. Within this margin all work and signatures must be included. One of the shorter sides of the sheet should be regarded as its top. (c) All drawings must be made with the pen only. Every line and letter, signatures included, must be absolutely black. This direction applies to all lines, however fine, and to shading. All lines must be clean, sharp, and solid, and they must not be too fine or crowded. Surface shading, when used, should be open. **For statutory and source citations, see note to § 5.1. Page 63 (d) The name of the proprietor of the trade-mark, signed by himself or by his attorney of record, must be within the marginal lines, but in no instance should it encroach upon the drawing. (e) When the view is longer than the width of the sheet, the sheet should be turned on its side. (f) Drawings transmitted to the office should be sent flat, protected by a sheet of heavy binder's board, or should be rolled for transmission in a suitable mailing tube. They should never be folded. (g) An agent's or attorney's stamp, or advertisement, or written address will not be permitted upon the face of a drawing, within or without the marginal line. (h) Where color is a material feature of a mark as used, the color or colors employed may be illustrated in the drawing by means of the conventional linings as shown in the following color chart for draftsmen: *† (Sec. 1, 33 Stat. 724, 35 Stat. 628; 15 U.S.C. 81) 5.37 Drawings furnished at cost. The office, at the request of applicants, will furnish the drawings at cost.** EXAMINATION OF APPLICATIONS 5.38 Prosecution of applications. All complete applications for registration shall be considered, in the first instance, by the examiner in charge of trade-marks as if filed under the Act of February 20, 1905, as amended, unless otherwise specified in the application. Whenever, on examination of an application, registration is refused for any reason whatever, the applicant will be notified thereof. The reasons for such refusal will be stated, and such information and references will be given as may be useful in aiding the applicant to judge of the propriety of further prosecuting his application. If the examiner shall find the application unregisterable under the Act of 1905, but registerable under the Act of 1920, he shall so advise the applicant; and the applicant shall then notify the office whether he will prosecute such application under the 1905 Act or will accept registration under the 1920 Act. Such notification shall be entered on the file and further proceedings governed accordingly.** (Sec. 6, 33 Stat. 726, sec. 2, 34 Stat. 1252; 15 U.S.C. 86) 5.39 Merits; objections stated. The examination of an application and the actions thereon will be directed throughout to the merits, and in each letter the examiner shall state or refer to all his objections.*+ 5.40 Publication in Official Gazette. If, on examination of an application for the registration of a trade-mark under the Act of Page 64 **For statutory and source citations, see note to § 5.1. February 20, 1905, as amended, it shall appear that the applicant is entitled to have his trade-mark registered under the provisions of that law, the mark will be published in the Official Gazette at least once. Such publication shall be at least 30 days prior to the date of passing the application to registration. If no notice of opposition be filed within 30 days after such publication, the applicant or his attorney will be duly notified of the allowance of his application, and a certificate of registration will be issued as provided in § 5.69. Marks registered under section 1 (b) of the Act approved March 19, 1920, may be published when registered. The weekly issue closes on Thursday, and the certificates of registration of that issue bear date as of the fourth Tuesday thereafter.*t (Sec. 6, 33 Stat. 726, sec. 2, 34 Stat. 1252; 15 U.S.C. 86) AMENDMENTS 5.41 Correction of informalities. The statement may be amended to correct informalities, or to avoid objections made by the office, or for other reasons arising in the course of examination, but no amendments to the description or drawing of the trade-mark or to the description of the goods will be permitted unless warranted by something in the specimens (or facsimiles) as originally filed, or supported by additional specimens (or facsimiles) and a supplemental affidavit alleging that such amended mark was in actual use at the time the application was filed, or that the mark was in actual use on all of the goods added by the amendment at the time the application was filed.*t 5.42 Form. In every amendment the exact word or words to be stricken out or inserted in the statement must be specified and the precise point indicated where the erasure or insertion is to be made. All such amendments must be on sheets of paper separate from the papers previously filed, and written on but one side of the paper. Erasures, additions, insertions, or mutilations of the papers and records must not be made by the applicant or attorney.*t 5.43 Amendment to amendments. When an amendatory clause is amended, it must be wholly rewritten, so that no interlineation or erasure shall appear in the clause, as finally amended, when the application is passed to issue. If the number or nature of the amendments shall render it otherwise difficult to consider the case, or to arrange the papers for printing or copying, the examiner may require the entire statement to be rewritten.*t 5.44 Jurisdiction after allowance. After allowance, the examiner will exercise jurisdiction over an application only by special authority from the Commissioner. Amendments may be made after the allowance of an application, if the case has not been printed, on the recommendation of the examiner, approved by the Commissioner, without withdrawing the case from issue.** 5.45 Papers not returned by office. After the completion of the application, the office will not return the papers for any purpose **For statutory and source citations, see note to § 5.1. Page 65 whatever. If the applicant has not preserved copies of the papers which he wishes to amend, the office will furnish them on the usual terms.*t 5.46 Abandonment; failure to prosecute. If an applicant fail to prosecute his application within 1 year after the date when the last official notice of any action by the office was mailed to him, the application will be held to be abandoned. Where the day, or the last day, fixed by statute for taking any action or paying any fee in the United States Patent Office falls on Sunday, or on a holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day.*t (Sec. 14, 44 Stat. 1335; 35 U.S.C. 21) 5.47 Date of last official action. Whenever action upon an application is suspended upon request of an applicant and whenever an applicant has been called upon to put his application in condition for interference, the period of 1 year running against such application shall be considered as beginning at the date of the last official action preceding such actions.*f 5.48 Suspensions. Acknowledgment of the filing of an application is an official action. Suspensions will only be granted for good and sufficient cause and for a reasonable time specified.*t 5.49 Suspensions approved by Commissioner. Only one suspension will be granted by the examiner of trade-marks. Any further suspension must be approved by the Commissioner.** INTERFERENCE 5.50 Declaration. Whenever application is made under the Act of February 20, 1905, for the registration of a trade-mark which is substantially identical with a trade-mark appropriated to goods of the same descriptive properties, for which a certificate of registration has been previously issued to another, or for registration of which another had previously made application, or which so nearly resembles such trade-mark, as, in the opinion of the Commissioner, to be likely to be mistaken therefor by the public, an interference may be declared. No interference will be declared with respect to applications filed under the Act of March 19, 1920. The practice in trade-mark interferences will follow, as nearly as practicable, the practice in interferences between applications for patents.** (Secs. 7, 9, 33 Stat. 726, 727; 15 U.S.C. 87, 89) 5.51 Preliminary questions. Before the declaration of interference, all preliminary questions must have been settled by the examiner in charge of trade-marks, and the trade-mark which is to form the subject matter of the controversy must have been decided to be registrable, and must have been published at least once in the Official Gazette of the Patent Office.*t 5.52 Publication and allowance within time specified. Whenever two or more applicants are found to be claiming substantially the same registrable trade-mark, and the application of one of the applicants is ready for publication, or allowance, the examiner in Page 66 **For statutory and source citations, see note to § 5.1. charge of trade-marks may require the other applicants to put their applications in condition for publication or allowance, within a time specified in order that an interference may be declared. If any party fail to put his application in condition for publication or allowance within the time specified, the declaration of interference will not be delayed, but after final judgment the application of such party will be held for revision and restriction, subject to interference with other applications or registered trade-marks.*+ 5.53 Determination of questions raised. The examiner in charge of interferences may, either before or in his final decision in an interference or opposition, direct the attention of the Commissioner to any matter which may have come to his notice which can not be acted upon by him, which in his opinion precludes a proper determination of questions raised by the proceeding. The Commissioner may, before judgment, suspend the interference or opposition and remand the same to the examiner in charge of trademarks for his consideration of the matters to which attention has been directed. If the case be not so remanded, the examiner in charge of trade-marks will, after judgment, consider any matter affecting the right to registration which may have been brought to his attention, unless the same shall have been previously disposed of in the proceeding. From the decision of the examiner in charge of trade-marks appeals may be taken as in other cases.*† 5.54 Motion to dissolve; motion to shift burden of proof. Motions to dissolve an interference upon the ground that no interference in fact exists, or that there has been such irregularity in declaring the same as will preclude a proper determination of the question of the right of registration, or which deny the registrability of an applicant's mark, should contain a full statement of the grounds relied upon, and should, if possible, be made not later than the thirtieth day after the notices of the interference have been mailed. Such motions and all motions of a similar character, if in the opinion of the Commissioner they be in proper form, will be heard and determined by the examiner of trade-marks, due notice of the day of hearing being given by the office to all parties. If in the opinion of the Commissioner the motion be not in proper form, or if it be not brought within the time specified and no satisfactory reason be given for the delay, it will not be considered and the parties will be so notified. Setting a motion for hearing by the examiner of trademarks will act as a stay of proceedings pending the determination of the motion. When the motion has been decided by the examiner in charge of trade-marks, the files and papers, with his decision, will be sent at once to the docket clerk. Motions to shift the burden of proof should be made before, and will be determined by, the examiner in charge of interferences. No appeal from the decision on such motion will be entertained, but the matter may be reviewed on appeal from the final decision upon the question of priority.*+ **For statutory and source citations, see note to § 5.1. Page 67 |