Patent Publishing, LLC
`
`"Your Source /or Intellectual Property Publications and CD Products"
`
`TRADEMARK MANUAL
`OF
`EXAMINING PROCEDURE
`(TMEP)
`
`Third Edition, January 2002
`
`,
`)
`
`AMN1041
`IPR of Patent No. 7,919,499
`
`

`

`
`
`
`
`
`
`AMN1041
`
`IPR of Patent No. 7,919,499
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`AMN1041
`IPR of Patent No. 7,919,499
`
`

`

`Patent Publishing, LLC
`
`"Your Source for Intellectual Property Publications and CD Products"
`
`TRADEMARK MANUAL
`OF
`EXAMINING PROCEDURE
`(TMEP)
`
`Third Edition, January 2002
`
`AMN1041
`IPR of Patent No. 7,919,499
`
`

`

`Foreword to the Third Edition
`
`The Trademark Manual of Examining Procedure (TMEP) may be downloaded free
`of charge from the United States Patent and Trademark Office (USPTO) website at
`www.uspto.gov.
`
`The Manual is published to provide trademark examining attorneys in the USPTO,
`trademark applicants, and attorneys and representatives for trademark applicants,
`with a reference work on the practices and procedures relative to prosecution of
`applications to register marks in the USPTO. The Manual contains guidelines for
`Examining Attorneys and materials in the nature of information and interpretation,
`and outlines the procedures which Examining Attorneys are required or authorized
`to follow in the examination of trademark applications.
`
`Trademark Examining Attorneys will be governed by the applicable statutes, the
`Trademark Rules of Practice, decisions, and Orders and Notices issued by the
`Under Secretary of Commerce for Intellectual Property and Director of the United
`States Patent and Trademark Office, Commissioners, or Deputy Commissioners.
`This third edition incorporates into the Manual Office practice and relevant case
`law reported prior to January 24, 2002. Policies stated in this revision supersede
`any previous policies stated in the second edition, examination guides, or any other
`statement of Office policy, to the extent that there is any conflict.
`
`Suggestions for improving the form and content of the Manual are always
`welcome. They should be addressed to:
`
`Commissioner for Trademarks
`Attention: Editor, Trademark Manual of Examining Procedure
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Mary E. Hannon
`Editor
`
`Anne H. Chasser
`Commissioner for Trademarks
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`GENERAL INFORMATION
`
`107
`
`Trademark Manuals
`
`The following manuals may be downloaded free of charge from the USPTO website
`at www.uspto.gov, or purchased in DVD-ROM format from the USPTO's Office of
`Electronic Information Products.
`
`o
`
`o
`
`Trademark Manual of Examining Procedure (TMEP)
`Stock No. 903-010-00000-2
`
`Trademark Trial and Appeal Board Manual of Procedure (TBMP)
`Stock No. 903-022-00000-1
`
`The Acceptable Identification of Goods and Services Manual can be downloaded free
`of charge from the USPTO's website at www.uspto.gov, or purchased in DVD-ROM
`format from the USPTO's Office of Electronic Information Products. For
`information about purchasing DVD-ROM products, call (703) 306-2600.
`
`108
`
`108.01
`
`Status Inquiries
`
`Internet Information
`
`The Trademark Applications and Registrations Retrieval (TARR) database on the
`USPTO website at http://tarr.uspto.govprovides detailed, up to the minute
`information about the status and prosecution history of trademark applications and
`registrations. The TARR database is available 24 hours a day, 7 days a week.
`
`The Board Information Systems Index (BisX), available online at www.uspto.gov,
`provides detailed information about the status of proceedings pending before the
`Trademark Trial and Appeal Board.
`
`108.02
`
`Recorded Status Messages
`
`The Trademark Status Line provides access, via touch-tone telephone, to the current
`status and location of federal trademark application and registration records. The
`Status Line is available at (703) 305-8747 from 6:30 a.m. until midnight, Eastern
`Standard Time, Monday through Friday. After the welcoming message and the tone,
`callers should enter the seven-digit registration number and the "#" symbol, or the
`eight-digit application number (i.e., the two-digit series code followed by the six-digit
`serial number) and the "#" symbol, to obtain the current status and status date. If the
`serial number for an application is less than six digits, or if a registration number is
`less than seven digits, a sufficient number of leading zeroes must be added to the
`number. All calls are answered in the order received. Callers may request
`information for up to five application or registration records per call.
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`100-5
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`TRADEMARK MANUAL OF EXAMINING PROCEDURE
`
`Personal Telephone Assistance
`
`108.03
`If additional information regarding the status of an application or registration is
`required, callers may telephone the Trademark Assistance Center (TAC) at
`(703) 308-9000 or (800) 786-9199 and request a status check. TAC also provides
`general information about the trademark registration process. TAC is open from 8:30
`a.m. to 5:00 p.m. Eastern Standard Time, Monday through Friday, except on
`holidays. See notices at 1112 TMOG 49 (March 27, 1990); 1132 TMOG 33
`(November 19, 1991); and 1167 TMOG 27 (October 4, 1994).
`
`The Trademark Assistance Center will gladly answer questions about the application
`process. However, Office employees cannot:
`
`o
`
`o
`
`o
`
`o
`
`o
`
`conduct trademark searches for the public (see TMEP § 104 regarding trademark
`searches);
`
`comment on the validity of registered marks (see TMEP §1801);
`
`answer questions on whether a particular mark or type of mark is eligible for
`trademark registration;
`
`offer legal advice or opinions about common law trademark rights, state
`registrations, or trademark infringement claims; or
`
`aid in the selection ofa private trademark attorney or search firm (37 C.F.R.
`§2.1l).
`
`See TMEP Chapter 1800 regarding public inquiries about applications and
`registrations.
`
`108.04
`
`Due Diligence: Duty to Monitor Status
`
`Trademark applicants and registrants should monitor the status of their applications or
`registrations in cases where a notice or action from the Office is expected. Inquiries
`regarding the status of pending matters should be made, at a minimum, within one
`year of the filing or receipt of any document for which further action by the Office is
`expected.
`
`Should the status inquiry reveal that a paper is lost, or that some other problem exists,
`the applicant or registrant must promptly request corrective action. Failure to act
`diligently and follow up with appropriate action may result in denial of the requested
`relief. The Office denies petitions to reactivate abandoned applications and cancelled
`registrations when a party fails to inquire about the status of a pending matter within a
`reasonable time. SeeTMEP §§1705.05 and 1714.01(d).
`
`Written status inquiries are discouraged, because they can delay processing of an
`application. Whenever possible, status inquiries should be made through the TARR
`database or the Trademark Status Line. If additional information regarding the status
`
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`GENERAL INFORMATION
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`of an application or registration is required, callers may telephone the Trademark
`Assistance Center at (703) 308-9000.
`
`109
`
`Access to Files
`
`18 US.C §2071. Concealment, removal, or mutilation generally.
`(a) Whoever willfully and unlawfully conceals, removes, mutilates, obliterates, or
`destroys, or attempts to do so, or, with intent to do so takes and carries away any
`record, proceeding, map, book, paper, document, or other thing, jiled or deposited with
`any clerk or officer of any court of the United States, or in any public office, or with
`any judicial or public officer of the United States, shall be jined under this title or
`imprisoned not more than three years, or both.
`(b) Whoever, having the custody of any such record, proceeding, map, book,
`document, paper, or other thing, willfully and unlawfully conceals, removes, mutilates,
`obliterates, falsifies, or destroys the same, shall be jined under this title or imprisoned
`not more than three years, or both; and shall foifeit his office and be disqualified from
`holding any office under the United States. As used in this subsection, the term
`"office JJ does not include the office held by any person as a retired officer of the Armed
`Forces of the United States.
`
`No file or related document may be removed from the premises occupied by the
`Office, except as required by the issue process or other official process, unless
`specifically authorized by the Director. 18 U.S.c. §2071(b). If such authorization is
`given, the employee having custody will be responsible for conforming with the
`requirements of law.
`
`Files held by examining attorneys and other Office personnel must be accessible to
`authorized Office personnel. Application files, registration files or related documents
`must not be placed in desk drawers, locked cabinets or other locations where they
`might easily be overlooked or not be visible.
`
`Before a file is removed from the operating area having custody of the file, an Office
`employee must enter the new location of the file into the TRAM database, regardless
`of the length of time for which the file is expected to remain at that location.
`
`109.01
`
`Access by Public to Pending Unpublished Application Files
`
`37 CF.R. §2.27(b). Except as provided in paragraph (e) of this section, access to
`the jile of a particular pending application will be permitted prior to publication under
`§2.80 upon written request.
`
`37 CF.R. §2.27(e). Anything ordered to bejiled under seal pursuant to a
`protective order issued or made by any court or by the Trademark Trial and Appeal
`Board in any proceeding involving an application or registration shall be kept
`confidential and shall not be made available for public inspection or copying unless
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`otherwise ordered by the court or the Board, or unless the party protected by the order
`voluntarily discloses the matter subject thereto. When possible, only confidential
`portions of filings with the Board shall be filed under seal.
`
`In order to inspect the contents of an application file, it is not necessary to show good
`cause or to have a power to inspect from the applicant or the applicant's
`representative.
`
`A request for access to a pending unpublished file should be directed to the office in
`which the file is located, as shown on TRAM. In general, there is no access to an
`application file before it has been assembled and delivered to the law office where the
`application will be examined. Amended applications that are awaiting action by an
`examining attorney are located with the examining attorney. Applications that have
`not been assigned to an examining attorney, applications that are suspended, and
`applications that are awaiting response by the applicant are located in the dockets of
`the respective law offices.
`
`A member of the public must make a written request for access to the file. The
`request must include the name and phone number of the person requesting the file.
`Office personnel must keep a record of all files being removed. Office personnel
`must enter the new location of the file (e.g., charged to non-Office personnel) in the
`TRAM database. The public must inspect the file on the premises of the Office, and
`nothing may be removed from the file without written authorization from the
`Managing Attorney or the Office of the Commissioner for Trademarks. An unmailed
`letter or draft is not part of the file. Office personnel should ensure that such material
`is removed before making the file available to a member of the public.
`
`109.02
`
`Access by Public to Files of Pending But Published
`Applications, Registrations, Abandoned Applications, and
`Terminated Inter Partes Proceedings
`
`37 C.F.R. §2.27(d). Except as provided in paragraph (e) of this section, after a
`mark has been registered, or published for opposition, the file of the application and all
`proceedings relating thereto are available for public inspection and copies of the
`papers may be furnished upon paying the fee therefor.
`
`37 C.F.R. §2.27(e). Anything ordered to be filed under seal pursuant to a
`protective order issued or made by any court or by the Trademark Trial and Appeal
`Board in any proceeding involving an application or a registration shall be kept
`confidential and shall not be made available for public inspection or copying unless
`otherwise ordered by the court or the Board, or unless the party protected by the order
`voluntarily discloses the matter subject thereto. When possible, only confidential
`portions of filings with the Board shall be filed under seal.
`
`Requests for access to files of pending but published applications must be made in the
`Publication and Issue Section or, for those § 1 (b) applications for which a notice of
`allowance has issued, in the Intent-to-Use/Divisional Unit. Requests for access to
`
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`GENERAL INFORMATION
`
`registration files that are located in the Post Registration Section may be made in that
`section.
`
`A member of the public must make a written request for access to the file. The
`request must include the name and phone number of the person requesting the file,
`and Office personnel must keep a record of all files being removed. Office personnel
`must enter the new location of the file in the TRAM system. Inspection of the file
`must be made on the premises of the Office. Nothing may be removed from the file
`without written authorization from the Office of the Commissioner for Trademarks,
`the Supervisor of the ITU/Divisional Unit, or the Supervisor of the Post Registration
`Section.
`
`Abandoned application files are stored in the warehouse for two years after the date
`of abandonment, and then destroyed. See TMEP §718.07. Cancelled and expired
`registration files are stored in the warehouse for two years after the date of
`cancellation or expiration, and then destroyed. See notice at 980 TMOG 16, reprinted
`at 1232 TMOG 625 (March 21,2000).
`
`A member of the public may request access to files that are stored in the warehouse
`(i.e.) files of registrations, abandoned applications or terminated inter partes
`proceedings) in the Trademark Search Library. Office personnel will obtain these
`files from the warehouse, and the file will usually be available to the requester in the
`Search Library within a few days.
`
`109.03
`
`Making Copies of Materials in Files
`
`Photocopiers are available to the public on the premises of the Office for a fee.
`
`See TMEP § 111 for information about requesting that the Office provide copies of
`trademark documents.
`
`110
`
`Decisions Available to the Public
`
`37 C.P.R. §2.27(c). Decisions of the {Director} and the Trademark Trial and
`Appeal Board in applications and proceedings relating thereto are published or
`available for inspection or publication.
`
`Precedential decisions of the Director (see TMEP § 1701 and the notice at 1234
`TMOG 41 (May 9, 2000) regarding the change of the title of the "Commissioner of
`Patents and Trademarks" to "Under Secretary of Commerce for Intellectual Property
`and Director of the United States Patent and Trademark Office") and the Trademark
`Trial and Appeal Board are noted as such and published in the United States Patents
`Quarterly (cited as USPQ or USPQ2d), which is a periodical reporting service of a
`non-governmental publishing company. The Office does not print these decisions in
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`TRADEMARK MANUAL OF EXAMINING PROCEDURE
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`its own publications. Non-precedential decisions of the Director and the Trademark
`Trial and Appeal Board are not published.
`
`A weeldy summary of final decisions issued by the Trademark Trial and Appeal
`Board appears on the Office's website at www.uspto.gov and in each issue ofthe
`Trademark Official Gazette.
`
`See TMEP § 1803 regarding decisions that are available under the Freedom of
`Information Act.
`
`111
`
`Requests for Copies of Trademark Documents
`
`The public can view and print an electronic copy of an application or registration
`through TESS (see TMEP § 104). The public can print the prosecution history of an
`application or registration through TARR (see TMEP § 108.01). There is no charge
`for use of these databases.
`
`The public may purchase certified or uncertified copies of trademark documents (i.e.,
`application files, file wrappers, trademark title and status reports, registrations, etc.).
`Fee schedules are posted on the Office's website. Requests for copies oftrademark
`documents are handled by the Certification Division of the Office of Public Records.
`
`Copies of trademark documents can be ordered through the Office's website at
`www.uspto.gov, for delivery by the United States Postal Service. The fee must be
`paid by credit card or deposit account authorization. Requests for copies of
`trademark documents may also be faxed to (703) 305-8759, or e-mailed to
`dsd@uspto.gov, with an authorization to charge the fee to a credit card or deposit
`account.
`
`With the exception of coupon orders (see 37 C.F.R. § 1.24) for uncertified copies of
`registrations, the mailing address for requests for copies is: Box 10, Director ofthe
`United States Patent and Trademark Office, Washington, D.C. 20231. 37 C.F.R.
`§1.1(a)(2)(iii). Coupon orders should be sent to Box 9, Director of the United States
`Patent and Trademark Office, Washington, D.C. 20231. 37 C.F.R. §1.1(a)(2)(iv).
`
`Requests for copies of trademark documents (certified or uncertified) can be hand
`delivered to Crystal Gateway 4, Suite 300, 1213 Jefferson Davis Highway, Arlington,
`Virginia 22202.
`
`General inquiries may be made to the Certification Division at (703) 308-9726 or
`(800) 972-6382. See notice at 1165 TMOG 13 (August 2, 1994).
`
`112
`
`Patent and Trademark Depository Libraries
`
`There is a network of Patent and Trademark Depository Libraries (PTDLs)
`throughout the United States that provides access to many of the same products and
`services offered at the USPTO. A list of the PTDLs and their telephone numbers
`
`100-10
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`GENERAL INFORMATION
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`appears on the USPTO website at www.uspto.gov and is printed in each issue of the
`Trademark Official Gazette.
`
`Information available free of charge at the PTDLs includes the text of the trademark
`statute and rules (see TMEP § 101), the Trademark Manual of Examining Procedure;
`Trademark Trial and Appeal Board Manual of Procedure; Acceptable Identification
`of Goods and Services Manual (TMEP §1402.04); and the Trademark Electronic
`Search System (TESS). Photocopiers are generally provided for a fee.
`
`The scope of PTDL collections, hours of operation, services and fees (where
`applicable) may vary from one library to another.
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