associate can not be considered. In each application the written authorization must be filed. A power of attorney purporting to have been given to a firm or copartnership will not be recognized, either in favor of the firm or of any of its members, unless all its members shall be named in such power of attorney.** 5.13 Substitution and association. Substitution or association may be made by an attorney upon the written authorization of his principal; but such authorization will not empower the second attorney to appoint a third.*† 5.14 Revocation of power. Powers of attorney may be revoked at any stage in the proceedings of a case upon application to and approval by the Commissioner; and, when so revoked, the office will communicate directly with the applicant, or such other attorney as he may appoint. A power of attorney appointing a second principal attorney will not be entered unless such power of attorney specifically revokes that given the principal attorney of record. An attorney will be promptly notified by the docket clerk of the revocation of his power of attorney.*+ 5.15 Gross misconduct. For gross misconduct the Commissioner may refuse to recognize any person as an attorney, either generally or in any particular case, but the reasons for such refusal will be duly recorded.*+ WHO MAY REGISTER A TRADE-MARK 5.16 Person, firm, corporation, or association. A trade-mark may be registered under the Act of February 20, 1905 (33 Stat. 724; 15 U.S.C. 81-109), as amended, by any person, firm, corporation, or association domiciled within the territory of the United States, or residing in or located in any foreign country which, by treaty, convention, or law, affords similar privileges to the citizens of the United States, and who is the owner of such trade-mark, and uses the same in commerce with foreign nations or among the several States, or with Indian tribes, upon payment of the fee required by law and other due proceedings had.* (Sec. 1, 33 Stat. 724, 35 Stat. 628, sec. 4, 46 Stat. 155; 15 U.S.C. 81) 5.17 Foreign registration and reciprocity. Except as provided by section 3 of the Act of May 4, 1906 (34 Stat. 169; 15 U.S.C. 132), no trade-mark will be registered under the Act of February 20, 1905, as amended, to an applicant residing or located in a foreign country unless such country, by treaty, convention, or law, affords similar privileges to the citizens of the United States, nor unless the trademark has been registered by the applicant in the foreign country in which he resides or is located, nor until such applicant has filed in this office a certified copy of the certificate of registration of his trademark in the country where he resides or is located. In such cases it is not necessary to state in the application that the trade-mark has been used in commerce with the United States or among the several States thereof.*t (Secs. 1, 2, 4, 33 Stat. 724, 725, 49 Stat. 1539; 15 U.S.C. 81, 82, 84 and Sup.) Page 58 **For statutory and source citations, see note to § 5.1. 5.18 Foreign registrant domiciled in United States. The owner of a trade-mark residing or located in a foreign country and who shall have a manufacturing establishment within the territory of the United States may register a trade-mark used on the products of such establishment upon complying with the provisions of the Act of February 20, 1905, as prescribed for owners of trade-marks domiciled within the territory of the United States.** (Sec. 3, 34 Stat. 169; 15 U.S.C. 132) WHAT MAY BE REGISTERED 5.19 Restrictions to registration. A trade-mark must have been actually used in commerce before an application for its registration can be filed in the Patent Office. No trade-mark will be registered to an owner domiciled within the territory of the United States unless it shall be made to appear that the same is used as such by said owner in commerce among the several States, or between the United States and some foreign nation or Indian tribe; no trade-mark except as provided by section 3 of the Act of May 4, 1906, and the Act of March 19, 1920, will be registered to an owner residing in or located in a foreign country unless said country, by treaty, convention, or law, affords similar privileges to the citizens of the United States; no trade-mark will be registered which consists of or comprises immoral or scandalous matter, or which consists of or comprises the flag or coat of arms or other insignia of the United States, or any simulation thereof, or of any State or municipality, or of any foreign nation, or which consists of or comprises any design or picture that has been adopted by any fraternal society as its emblem, unless it shall be shown to the satisfaction of the Commissioner of Patents that the mark was adopted and used as a trademark by the applicant or applicant's predecessors, from whom title is derived, at a date prior to the date of its adoption by such fraternal society as its emblem; and no mark will be registered which is identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resembles a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers, or, under the Act of February 20, 1905, which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term; no portrait of a living individual will be registered as a trade-mark, except by consent of such individual evidenced by an instrument in writing; and no trade-mark will be registered which is used in unlawful business, or upon any article injurious in itself, or which has been used with the design of deceiving the public in the purchase of merchandise, or which is abandoned. No trade-mark **For statutory and source citations, see note to § 5.1. Page 59 will be registered under section 1 (b), Act of March 19, 1920 (41 Stat. 533; 15 U.S.C. 121 (b)), which is registrable under the Act of February 20, 1905, as amended, or which has not been in bona fide use as a trade-mark for 1 year in international or interstate commerce or commerce with Indian tribes.*t (Secs. 1, 5, 21, 33 Stat. 724, 725, 729, 35 Stat. 628, sec. 4, 46 Stat. 155, sec. 1, 41 Stat. 533; 15 U.S.C. 81, 85, 101, 121) 5.20 Actual and exclusive use. Any mark, used in commerce with foreign nations or among the several States or with Indian tribes, may be registered if it has been in actual and exclusive use as a trade-mark of the applicant, or his predecessors from whom he derived title, for 10 years next preceding February 20, 1905. Or if it has been registered under the 10 years proviso for one class of goods, it may be registered for other classes. (Sec. 5, 33 Stat. 725, sec. 1, 34 Stat. 1251, 36 Stat. 918, 37 Stat. 649, sec. 9, 41 Stat. 535, 43 Stat. 647; 15 U.S.C. 85) APPLICATION 5.21 Requisites. An application for the registration of a trademark must be made to the Commissioner of Patents and must be signed by the applicant.** (Sec. 1, 33 Stat. 725, sec. 1, 41 Stat. 533; 15 U.S.C. 81, 121) 5.22 Form. A complete application comprises: (a) A petition, requesting registration, and if under Act of March 19, 1920, so specifying, signed by the applicant. An application for registration under the Act of February 20, 1905, as amended, may be changed to an application for registration under section 1 of the Act approved March 19, 1920, and no additional fee will be required but the petition must be correspondingly amended. (b) A statement specifying the name, domicile, location, and citizenship of the party applying, and if the applicant be a corporation or association, the State or nation under the laws of which organized; the class of merchandise (according to the official classification), and the particular description of goods comprised in such class upon which the trade-mark has actually been used; a statement of the mode in which the same is applied and affixed to the goods, and the length of time during which the trade-mark has been used upon the goods specified. A description of the trade-mark itself shall be included, if desired by the applicant or required by the Commissioner, provided such description is of a character to meet the approval of the Commissioner. The petition and statement may be incorporated in a single paper. (c) A declaration complying with section 2 of the Act of February 20, 1905, as amended by the Act of February 18, 1909, or sections 1 (b) or 9 of the Act of March 19, 1920. (d) A drawing of the trade-mark, signed by the applicant, or his attorney, which shall be a facsimile of the same as actually used upon the goods. Page 60 **For statutory and source citations, see note to § 5.1. (e) Five specimens (or facsimiles, when, from the mode of applying or affixing the trade-mark to the goods, specimens can not be furnished) of the trade-mark as actually used upon the goods. (f) A fee of $15.** (Sec. 1, 33 Stat. 724, 35 Stat. 628, sec. 1, 41 Stat. 533, sec. 4, 46 Stat. 155; 15 U.S.C. 81, 121) 5.23 English language required. The petition, the statement, and the declaration must be in the English language and written on one side of the paper only.** 5.24 Name and signature must be uniform. The name of the applicant will appear in the certificate of registration precisely as it is signed to the statement of the application, and, therefore, the signature to the statement must be the correct signature of the applicant, and the name of the applicant wherever it appears in the papers of the application will be made to agree with the name as signed to the statement."t 5.25 Information prior to publication confidential. No information will be given, prior to publication under § 5.40, without authority of the applicant, respecting the filing of an application for the registration of a trade-mark by any person, or the subject matter thereof, unless it shall, in the opinion of the Commissioner, be necessary to the proper conduct of business before the office.* 5.26 Registrations. A trade-mark registered under the Act of March 3, 1881 (21 Stat. 502), may be registered under the Act of February 20, 1905, but the application for such registration will be subject to examination in the same manner as other applications filed under said Act of February 20, 1905.** 5.27 Foreign filing date. An application for registration of a trade-mark under the Act of February 20, 1905, as amended, filed in this country by any person who has previously regularly filed in any foreign country which, by treaty, convention, or law, affords similar privileges to the citizens of the United States an application for registration of the same trade-mark, shall be accorded the same force and effect as would be accorded to the same application if filed in this country on the date on which application for registration of the same trade-mark was first filed in such foreign country: Provided, That such application be filed in this country within 6 months from the date on which the application was first filed in such foreign country.*t (Sec. 4, 33 Stat. 725, 49 Stat. 1539; 15 U.S.C. 84 and Sup.) 5.28 Process or notice of proceedings affecting right of ownership. Every applicant for registration of a trade-mark, who is not domiciled within the United States, shall, in the statement, before the issuance of the certificate of registration, designate some person residing within the United States on whom process or notice of proceedings affecting the right of ownership of the trade-mark of which such applicant may claim to be the owner may be served. This notice shall be indorsed upon the file wrapper of the application. Such an applicant for renewal of a trade-mark must file such a designation in writing.*t (Sec. 3, 33 Stat. 725; 15 U.S.C. 83) **For statutory and source citations, see note to § 5.1. Page 61 5.29 Serving of notice. In proceedings relating to an application, or to a registration under the Act of February 20, 1905, it shall be deemed sufficient to serve notice upon the applicant, registrant, or representative, by leaving a copy of the process or notice of proceedings addressed to him at the last address of which the Commissioner of Patents has been notified.*t (Sec. 3, 33 Stat. 725; 15 U.S.C. 83) 5.30 Option of applicant. A trade-mark may, at the option of the applicant, be registered on a single application, for any or all goods comprised in a single class of merchandise, provided the particular description of goods be stated, and provided that the mark has been actually used upon all of the goods specified.*t (Sec. 2, 34 Stat. 169; 15 U.S.C. 131) 5.31 Declaration of ownership. The application must be accompanied by a written declaration, verified by the applicant, or by a member of the firm, or by an officer of the corporation or association applying, to the effect that he believes himself, or the firm, corporation, or association in whose behalf he makes the declaration, to be the owner of the trade-mark sought to be registered, and that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use the trade-mark in the United States, either in the identical form or any such near resemblance thereto as might be calculated to deceive; that such trademark is used in commerce among the several States, or with foreign nations, or with Indian tribes; that the description and drawing truly represent the trade-mark sought to be registered; that the specimens (or facsimiles) show the mark as actually used upon the goods; and that the facts set forth in the statement are true.* ( (Sec. 2, 33 Stat. 724, 35 Stat. 627; 15 U.S.C. 82) 5.32 Allegation of actual use. Where application is made under section 5 of the Act of February 20, 1905 (33 Stat. 725; 15 U.S.C. 85), on the ground that the mark has been in actual and exclusive use as a trade-mark by the applicant, or his predecessors from whom he derived title, for 10 years next preceding February 20, 1905, the applicant shall allege in the statement such actual use of the mark as a trade-mark by himself or his predecessors, or by those from whom title to the same is derived, for the period specified, and that, to the best of his knowledge and belief, such use has been exclusive. If the application is made under the last paragraph of section 5 of the Act of February 20, 1905, the statement shall identify the registered mark and allege use of the mark on the goods of the application for at least one year.*t (Sec. 5, 33 Stat. 725, sec. 1, 34 Stat. 1251, 36 Stat. 918, 37 Stat. 649, sec. 9, 41 Stat. 535, 43 Stat. 647; 15 U.S.C. 85) 5.33 Declaration as to filing foreign application. If the applicant for registration under the Act of February 20, 1905, as amended, resides or is located in a foreign country, the statement required, unless the application be presented under the provisions of section 3 of the Act of May 4, 1906, shall also set forth that the trade-mark Page 62 **For statutory and source citations, see note to § 5.1. |