Constitutional Basis

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.

Statutes

Under its authority to regulate commerce, Congress has over the years passed a number of statutes providing for the registration of marks in the Patent and Trademark Office. The provisions of statutes cannot be changed or waived by the Patent and Trademark Office. 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 Trademark Act (as amended) and references to other statutes are in Chapter 1900.

Rules of Practice

Section 6 of Title 35 of the United States Code authorizes the Commissioner of Patents and Trademarks, subject to the approval of the Secretary of Commerce, to establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent and Trademark Office. The rules which govern the practices and procedures in the Patent and Trademark Office as they relate to the registration of marks are set forth in Title 37 of the Code of Federal Regulations, which is available from the Superintendent of Documents, U.S. Government Printing Office, Washington, D.C. 20402.

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 the representation of others before the Patent and Trademark Office constitute Part 10, and the patent rules constitute Part 1 in Title 37. Title 37 of the Code of Federal Regulations is to be cited thus: 37 C.F.R. 1.1.

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.

The first twenty-six patent rules (ie., Rules 1.1 to 1.26, or 37 C.F.R. 1.1 to 1.26), which pertain to general procedures, are made applicable to trademark cases by Trademark Rule 2.1 except for provisions specifically directed to patents.

Rules and amendments to rules are published in the Federal Register and in the Official Gazette of the Patent and Trademark Office.

The primary function of the rules of practice is to advise the public of the regulations which have been established in accordance with the statutes and which must be followed before the Patent and Trademark Office.

Commissioner's Orders and Notices

From time to time the Commissioner of Patents and Trademarks has issued Orders and Notices relating to various specific situations that have arisen in operating the Patent and Trademark Office. Notices, circulars of information or instructions and examination guides have also been issued by other Patent and Trademark Office officials under authority of the Commissioner. These have served various purposes including directions to the examining attorneys, giving them instruction, information, interpretations and the like. Some may be for the information of the public, advising what the Office will do under specified circumstances.

Decisions

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, that portion of an examining attorney's action pertaining to procedural matters may be reviewed by petition to the Commissioner (see TMEP §1702) and that portion of an examining attorney's action pertaining to registrability may be reviewed by appeal to the Trademark Trial and Appeal Board (see TMEP §1501).