"Type of application" should not be confused with "type of mark." The type of mark refers to the character of the mark for which registration is sought -- that is, whether it is a trademark, a service mark, a collective mark or a certification mark. Regarding types of marks, see Chapter 100.

Section 202 of this chapter describes several types of applications based on the following distinctions: whether the application is a single-class application or a multiple-class application; whether registration is sought on the Principal Register or on the Supplemental Register; whether the application is filed pursuant to §1(a), 81(b), §44(d) or §44(e) of the Trademark Act; whether the use of the mark, in an application under §1, is by the applicant or by related companies; whether, in an application under §1, an exception to the applicant's exclusive right to use the mark is stated; and whether the application includes a claim of distinctiveness under §2(f) of the Act.

Concurrent Use

Distinctiveness under §2(f)
Types of Registrations
Repeal of Prior Acts

Additional Registration under
Act of 1946

Registrations Now Being Issued

Form of Copies of Registrations in Trademark Search Library

201 Terminology

The term "type of application" refers to the kind of application by which registration is requested. Applications are of various types depending upon such factors as whether the specified goods or services are in one class or in multiple classes, the register on which registration of the mark is sought, and the statutory basis or bases for filing. These types of applications are not mutually exclusive.

202 Types of Applications

202.01 Single or Combined Application 202.01(a) Single (Single-class) Application

A single or single-class application limits the goods or services for which registration of the mark is sought to goods or services in one of the classes in the classification schedules. The application may recite more than one item, provided the items recited are all classified in one class. See 37 C.F.R. $2.86(a).

For classification, see Chapter 1400.

202.01(b) Combined (Multiple-class) Appli

cation

A combined or multiple-class application is one in which the goods and/or services are not limited to one class. A combined application, therefore, is an application to register the mark for items classified in two or more classes. The class numbers must be specified separately. They should be listed from the lowest to the highest number, each class number being associated with the goods or services classified in the respective class.

All requirements must be fulfilled for each class in a multiple-class application.

For examination of combined applications, see TMEP

$1113.

202.02(a) Act of 1946, Principal Register

The primary provision for registration in the Trademark Act of 1946 is for registration on the Principal Register. This register is provided for by §§1 through 22, 15 U.S.C. §§1051 through 1072. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Act.

Certificates of registration indicate that registration is on the Principal Register, when that is the case. The physical register consists of the bound volumes which contain copies of the certificates of registration, which are kept in the Trademark Search Library.

An application to register a mark should specify that registration is requested on the Principal Register when registration on that register is sought. If no register is specified, it will be assumed that registration is being requested on the Principal Register.

The procedures set out in this Manual relate to the Principal Register unless otherwise indicated.

202.02(b) Act of 1946, Supplemental Register

In addition to the Principal Register, the Trademark Act of 1946 provides for register to be called the Supplemental Register. This register is provided for in §§23 through 28, 15 U.S.C. §§1091 through 1096. This is a continuation of the register provided for in the Act of March 19, 1920.

Certain marks which are not eligible for registration on the Principal Register, but which are capable of distinguishing an applicant's goods or services, may be registered on the Supplemental Register. registered on the Supplemental Register are excluded Marks from receiving the advantages of certain sections of the Act of 1946. Section 26 of the Act, 15 U.S.C §1094, lists the excluded sections.

Certificates of registration indicate that registration is on the Supplemental Register, when that is the case. The physical register consists of the bound volumes which contain copies of the certificates of registration, which are kept in the Trademark Search Library.

An application to register a mark should specify that registration is requested on the Supplemental Register when registration on that register is sought. If no register is specified, it will be assumed that registration is being requested on the Principal Register.

A registration on the Supplemental Register may not be amended to the Principal Register. See 37 C.F.R. §2.173. If a registrant wishes to seek registration on the Principal Register of a mark for which it owns a registra

tion on the Supplemental Register, the registrant must file a new application.

For examination procedure relating to the Supplemental Register, see TMEP §§1114 and 1115.

202.03 Filing Bases

An application for registration must assert a basis for filing and satisfy any related requirements. See 37 C.F.R. §2.21(a)(5); TMEP §806. An application may be filed on the basis of use in commerce, intent to use the mark in commerce, a claim of the benefit of a foreign application, or demonstrated ownership of a foreign registration, as provided in Trademark Act §§1(a), 1(b), 44(d), and 44(e), respectively.

An applicant must assert use of the mark in commerce in an application filed pursuant to §1(a); an applicant must assert a bona fide intent to use the mark in commerce in an application filed pursuant to §1(b), §44(d) or §44(e).

The filing bases provided by §§1(a) and 1(b) may not both be asserted in the same application. 37 C.F.R §2.33(d). However, an application may assert a filing basis under §1(a) or §1(b) in addition to a §44 filing basis. See TMEP $1006 et seq.

202.03(a) Use in Commerce

In an application based on use in commerce, under $1(a) of the Act, 15 U.S.C. §1051(a), the applicant must assert use of the mark in commerce on or in connection with the identified goods or services, specifying the type of commerce, and, for each class, must specify the dates of first use, submit three specimens evidencing such use and indicate the mode or manner in which the mark is used on or with the goods or services. See TMEP §901.

The Trademark Act defines "commerce" as commerce which may lawfully be regulated by Congress and "use in commerce" as the bona fide use of a mark in the ordinary course of trade. See 15 U.S.C. §1127.

202.03(b) Intent to Use

In an intent-to-use application, under §1(b), 15 U.S.C. $1051(b), the applicant must assert a bona fide intention to use the mark in commerce on or in connection with the identified goods or services.

Prior to registration, the applicant must file an allegation of use, either an amendment to allege use under 37 C.F.R. §2.76 or a statement of use under 37 C.F.R. §2.88, which includes the applicant's assertion of use of the mark in commerce on or in connection with the goods or services specified, noting the type of

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commerce, and, for each class, the dates of first use, three specimens evidencing such use and an indication of the mode or manner of use. Allegations of use must be timely, must include the required fee and must be supported by an affidavit or by a declaration in accordance with 37 C.F.R. §2.20. See TMEP §§902 and 903.

202.03(c) Foreign Priority Pursuant to §44(d)

In an application filed in accordance with §44(d), 15 U.S.C. §1126(d), the applicant must claim the benefit of its first-filed prior foreign application for the mark in a treaty country. See TMEP §§1001 and 1002 et seq. The United States and the foreign country must each be a party to the treaty or convention. The treaty must include a priority provision, and the United States application must be filed within six months of the filing in the foreign country. A §44(d) applicant must also assert a bona fide intention to use the mark in commerce on or in connection with the identified goods or services. See TMEP §1003 and Appendix B.

If the basis for registration in the United States is the registration that will issue from the foreign application, the applicant must submit a certification or certified copy of the foreign registration prior to approval of the mark for publication in the Official Gazette or approval for registration on the Supplemental Register. See TMEP $1005.

202.03(d) Foreign Registration

In an application based on a foreign registration, under §44(e), 15 U.S.C. §1126(e), the applicant must submit a certification or certified copy of a registration of the mark in the applicant's country of origin. A §44(e) applicant must also assert a bona fide intention to use the mark in commerce on or in connection with the identified goods or services. The applicant's country of origin must either be a party to any convention or treaty relating to trademarks to which the United States is also a party or extend reciprocal registration rights to nationals of the United States by law. See TMEP §1002 and Appendix B.

202.04 Character of Use (Applications under §1)

The term "use in commerce," when appearing in this Manual, means the bona fide use of a mark, in the ordinary course of trade, in commerce which may lawfully be regulated by Congress. See 15 U.S.C. §1127.

202.04(a) Use by Applicant

The typical application is one wherein the mark is used or is intended to be used in commerce by the applicant itself on its own goods or services.

202.04(b) Use by Related Company

In an application based solely upon use or intended use of the mark by a person or company which is related to the applicant, the applicant retains control over the nature and quality of the goods or services with which the applicant permits the mark to be used. See TMEP §107. (If the applicant itself uses the mark in addition to authorizing use by a related company, reference to the related company is not required, and the application would not be identified as a related-company or related-use application.)

Use of the mark by the related company, under the control of the applicant, does not provide the related company with a basis to register in its name.

For examination in connection with related company use, see TMEP §1201 et seq.

202.04(c) Concurrent Use

A concurrent-use application is one in which it is indicated that the applicant's use of the mark is not exclusive and the applicant identifies a person or persons unrelated to the applicant who use the mark concurrently with the applicant. See 15 U.S.C. §§1051(a)(1)(A) and 1052(d); 37 C.F.R. §2.99.

For examination in connection with concurrent use, see TMEP §1207.04.

202.04(d) Distinctiveness under §2(f)

Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), allows the registration of matter which, while not inherently distinctive, has acquired distinctiveness as to the applicant's goods or services in commerce. Thus, an application which includes a claim of distinctiveness is one in which, while the mark, or a portion of the mark, is not originally entitled to registration on the Principal Register, the applicant contends that it has become distinctive of, or has acquired a secondary meaning for, the goods or services specified and is registrable on that basis.

For examination in connection with the provisions of §2(f), see TMEP §1212.

203 Types of Registrations

203.01 Repeal of Prior Acts

The Act of 1946 became effective on July 5, 1947. Most acts relating to trademarks, and amendments thereto, which existed prior to the Act of 1946 were repealed as of the effective date of the Act of 1946. Repealed acts included the Act of 1881, Act of 1905, Act of 1920, and the amendment entitled Act of June 10, 1938. The repeal did not affect the validity of registrations granted in accordance with any of said prior Acts. Trademark Act §46(a), 15 U.S.C. §1051 note.

203.02 Additional Registration under Act of 1946

Marks which were registered under any previous act may also be registered, again, under the Act of 1946, provided the mark can meet the requirements of the Act of 1946. Trademark Act §46(b), 15 U.S.C. §1051 note. The Office will not issue duplicate registrations, however, for marks which are registered under the 1946 Act. See TMEP $1103.06.

203.03 Registrations Now Being Issued

Currently, the Office issues registrations only under the Act of 1946. These are either Principal Register registrations or Supplemental Register registrations.

203.04 1881 and 1905 Act Registrations

Registrations which were issued under the Acts of 1881 and 1905 may be renewed under §9 of the Act of 1946, 15 U.S.C. §1059. After the effective date of the Act of 1946, registrations under the Acts of 1881 and 1905 and renewals thereof are subject to, and entitled to the benefits of, the provisions of the Act of 1946 as though registered on the Principal Register of the Act, except with certain limitations which are set out in §46(b). Some of these limitations can be removed if the registrant follows the procedure specified in §12(c), 15 U.S.C. §1062(c), for claiming the benefits of the Act of 1946. See TMEP $1602.

Marks registered under the "10-year proviso" of $5 of the Act of 1905 are deemed to have become distinctive of the registrant's goods under §2(f) of the Act of 1946, and such registrations may be renewed under §9 of the Act of 1946 in the same manner as registrations issued under 82(f).

203.05 1920 Act Registrations

Registrations under the Act of 1920 are subject to, and entitled to the benefits of, the provisions of the Act of 1946 relating to marks registered on the Supplemental Register, and may not be renewed unless renewal is required to support foreign registrations. In that event, renewal may be effected on the Supplemental Register under 89 of the Act of 1946, 15 U.S.C. §1059. Trademark Act §46(b), 15 U.S.C. §1051 note.

203.06 Form of Copies of Registrations in Trademark Search Library

The copies of registrations on file in the Trademark Search Library do not designate, before August 24, 1920, the name of the act under which they were issued. Beginning with registrations issued on August 24, 1920, there is printed in the heading of each registration either the words "Act of Feb. 20, 1905" or the words "Act of Mar. 19, 1920." The first registrations under the Act of 1920 apparently were issued on August 24, 1920.

Registrations under the Act of 1881 range from Number 8,191, issued on May 17, 1881, through Number 44,357, issued on March 28, 1905. No registrations were issued between March 28, 1905, and July 4, 1905. On July 4, 1905, the first registration under the Act of 1905 was issued, as Number 44,358.

The Act of 1946 provides that the certificates of registration for marks registered on the Supplemental Register shall be conspicuously different from certificates issued for marks registered on the Principal Register. Trademark Act §25, 15 U.S.C. §1093. Certificates issued under the 1946 Act are clearly marked either Principal Register or Supplemental Register, with the date the application was filed.

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18 U.S.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, filed 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 fined not more than $2,000 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 fined not more than $2,000 or imprisoned not more than three years, or both; and shall forfeit his office and be disqualified from holding any office under the United States.

In order for the Patent and Trademark Office to provide prompt and orderly service to the public, application files and registration files must be readily available to authorized Office employees at all times. Accordingly, in carrying or transporting files and related papers, Office employees must exercise care, especially in corridors and elevators, to ensure that files and related papers are always under employee surveillance and control.

Interoffice mail must be sent in appropriate enve

lopes.

No part of any file or related paper should be reproduced or copied except for official purposes or as provided in TMEP §304.

No file or related document may be removed from the premises occupied by the Office, except for handling as required by the issue process or other official process, unless specifically authorized by the Commissioner. 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. 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 to authorized personnel.

Before a file is removed from the operating area having custody of the file, a charge card with appropriate notations must be properly completed and filed. The new location of the file must be entered in the TRAM system, regardless of the length of time for which the file is expected to remain at that location.

302 Index of Marks in Pending Applications

37 CFR $2.27(a). An index of pending applications including the name and address of the applicant, a reproduction or description of the mark, the goods or services with which the mark is used, the class number, the dates of use, and the serial number and filing date of the application will be available for public inspection as soon as practicable after filing.

In addition to copies of registered marks, the Trademark Search Library contains an index of marks in pending applications. The index is composed of photocopies of the drawings of marks in applications which have been assigned filing dates and serial numbers. The index is arranged alphabetically for word marks and by subject for design marks.

After application papers have been given a filing date and a serial number, copies of the drawing are forwarded to the Search Library to be placed in the pending index. When applications abandon or issue into registrations, the copies of the drawings are removed from the index. Copies of abandoned drawings are filed in the Abandoned Drawing Index.