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.** 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.*† 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 Page 66 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 **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 5.55 Decision in motion for dissolution. The decision of the examiner in charge of trade-marks, upon a motion for dissolution, will be binding upon the examiner in charge of interferences unless reversed or modified on appeal. Unless appeal be taken within the time limited for appeal, the examiner in charge of trade-marks will return the files and papers with his decision to the examiner in charge of interferences.*† 5.56 Notice of opposition. Any person who believes he would be damaged by the registration of a mark applied for under the Act of February 20, 1905, as amended, may oppose the same by filing a written notice of opposition stating the grounds therefor, within 30 days after the publication of the mark sought to be registered, which notice of opposition shall be accompanied by the fee required by law and shall be verified by the person filing the same before one of the officers mentioned in section 2 of the Act of February 20, 1905 (35 Stat. 724; 15 U.S.C. 82). Two specimens (or facsimiles) of the mark actually used by the opposer, if there be such, should be filed. An opposition may be filed by a duly authorized attorney, but such opposition shall be null and void unless duly verified by the opposer, within a reasonable time after such filing. A duplicate copy of the notice of opposition must be filed, either with the notice of opposition or within a reasonable time after the filing of the same.* (Secs. 6, 14, 33 Stat. 726, 728, sec. 2, 34 Stat. 1252; 15 U.S.C. 86, 94) 5.57 Application for cancelation. Any person, deeming himself to be injured by the registration of a trade-mark in the Patent Office, may, at any time, make application to the Commissioner to cancel the registration thereof. Such application shall be filed in duplicate, shall state the grounds for cancelation, and shall be verified by the person filing the same, before one of the officers mentioned in section 2 of the Act of February 20, 1905. Such application shall be accompanied by two specimens or facsimiles of the mark actually used by the applicant for cancelation, if there be such. Such application shall be accompanied by a title abstract of the mark to be canceled and shall indicate the respondent party to whom notice shall be sent by the Commissioner of Patents.* (Sec. 13, 33 Stat. 728; sec. 2, 41 Stat. 534; 15 U.S.C. 93, 122) 5.58 Cancelation. If it shall appear, after a hearing before the examiner of interferences, that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the examiner in charge of interferences shall so decide, the Commissioner shall cancel the registration of the mark, unless appeal be taken within the limit fixed.*t (Sec. 13, 33 Stat. 728; sec. 2, 41 Stat. 534; 15 U.S.C. 93, 122) 5.59 Notification of cancelation. In cases of opposition, the examiner in charge of trade-marks shall forward the files and papers to the examiner in charge of interferences, who shall give notice thereof to the applicant. The applicant must make answer at such time, not less than 30 days from the date of the notice, as shall be fixed by the examiner in charge of interferences.*† Page 68 **For statutory and source citations, see note to § 5.1. 5.60 Practice followed in opposition; cancelation proceedings. The proceedings, on oppositions, and on applications for cancelation, shall follow, as nearly as practicable, the practice in interferences between applications for patents. Pleadings and procedure with respect thereto shall be governed by the rules in equity suits in the United States courts.*t (Sec. 9, 33 Stat. 727; 15 U.S.C. 89) APPEALS AND PETITIONS 5.61 Appeal to Commissioner. Every applicant under the Act of February 20, 1905, as amended, whose mark has been twice refused registration by the examiner of trade-marks for the same reasons, upon grounds involving the merits of the application, may appeal to the Commissioner in person upon payment of the fee required by law. Such refusal may be considered by the examiner of trademarks as final. There must have been two refusals to register the mark as originally filed, or, if amended in matter of substance, the amended mark; and, except in cases of division, all preliminary and intermediate questions relating to matters not affecting the merits of the application must have been settled before the case can be appealed to the Commissioner. Cases which have been heard and decided by the Commissioner on appeal will not be reopened except by his order.*t (Sec. 8, 33 Stat. 726; 15 U.S.C. 88) 5.62 Statement of grounds for examiner's decision. Upon receiving a petition stating concisely and clearly any proper question which has been twice acted upon by the examiner in charge of trademarks which does not involve the merits of a trade-mark claimed under the Act of February 20, 1905, as amended, the refusal of registration of such trade-mark, or a requirement for division, and also stating the facts involved and the point or points to be reviewed, an order will be made directing the examiner to furnish a written statement of the grounds of his decision upon the matters averred in such petition within 10 days. The examiner shall, at the time of making such statement, furnish a copy thereof to the petitioner. Hearing will be granted at the discretion of the Commissioner. No fee is required for such a petition.** 5.63 Petition to Commissioner. Petition may be taken to the Commissioner from a refusal by the examiner of trade-marks to register a mark under section 1 of the Act of March 19, 1920, without a fee.** 5.64 Appeal to United States Court of Customs and Patent Appeals. From the adverse decision of the Commissioner of Patents upon the right of an applicant to register a trade-mark, under the Act of February 20, 1905, as amended, or from the decision of the Commissioner in cases of interference, opposition, or cancelation of such a mark, an appeal may be taken to the United States Court of Customs and Patent Appeals in the manner prescribed by the rules of that court.* (Sec. 9, 33 Stat. 727, sec. 2 (b), 45 Stat. 1476; 15 U.S.C. 89) **For statutory and source citations, see note to § 5.1. Page 69 ABANDONED APPLICATIONS 5.65 What constitutes abandonment. An abandoned trade-mark application is one applied for under the Act of February 20, 1905, as amended, or section 1 (b) of the Act of March 19, 1920, and which has not been completed and prepared for examination within 1 year after the filing of the petition, or which the applicant has failed to prosecute within 1 year after any action therein of which notice. has been duly given or which the applicant has expressly abandoned by filing in the office a written declaration of abandonment, signed by himself and assignee, if any, identifying his application by serial number and date of filing.*t 5.66 Abandonment avoided. Prosecution of an application to save it from abandonment must include such proper action as the condition of the case may require. The admission of an amendment not responsive to the last official action, or refusal to admit the same, and any proceedings relative thereto, shall not operate to save the application from abandonment.*† 5.67 Delay of prosecution must be shown unavoidable. Before an application abandoned by failure to complete or prosecute can be revived as a pending application it must be shown to the satisfaction of the Commissioner that the delay in the prosecution of the same was unavoidable.** 5.68 New application. When a new application is filed in place of an abandoned or rejected application, a new petition, statement, declaration, and fee will be required, but the old drawing, if suitable, may be used upon the filing of suitable permanent photographic copies thereof.** 5.69 Certificate of registration. When the requirements of the law and of the rules in this part have been complied with, and the office has adjudged a trade-mark registerable under the Act of February 20, 1905, as amended, or section 1 (b) of the Act of March 19, 1920, a certificate will be issued to the effect that the applicant has complied with the law and that he is entitled to registration of his trade-mark. The certificate shall state the date on which the application for registration was received in the Patent Office and the act under which the mark is registered. Attached to the certificate will be a copy of the drawing of the trade-mark and a printed copy of the statement.*t (Sec. 11, 33 Stat. 727, sec. 1 (b), 41 Stat. 533, sec. 3, 43 Stat. 1269; 15 U.S.C. 91, 121) 5.70 Duration of certificate. A certificate of registration under the Act of February 20, 1905, as amended, shall remain in force 20 years from its date, except that, in case a trade-mark be previously registered in a foreign country, such certificate shall cease to be in force on the day on which the trade-mark ceases to be protected in such foreign country, and shall in no case remain in force more than 20 years unless renewed.* (Sec. 12, 33 Stat. 727; 15 U.S.C. 92) Page 70 5.71 Renewal. A certificate of registration under the Act of February 20, 1905, as amended, may be, from time to time, renewed for like periods on payment of the renewal fees required, upon request by **For statutory and source citations, see note to § 5.1. |