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.*t (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.*† (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.*t 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.** (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) 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 Page 70 **For statutory and source citations, see note to § 5.1. the registrant, his legal representatives, or transferees of record in the Patent Office, and such request may be made at any time not more than six months prior to the expiration of the period for which the certificate of registration was issued or renewed.*t (Secs. 12, 14, 33 Stat. 727, 728, sec. 4, 46 Stat. 155; 15 U.S.C. 92, 94) 5.72 Duration of certificates issued on or before April 1, 1905. Certificates of registration in force on the 1st day of April, 1905, shall remain in force for the periods for which they were issued; and shall be renewable on the same conditions for the same periods as certificates issued under the provisions of the Act of February 20, 1905, and, when so renewed, shall have the same force and effect as certificates issued under the Act of February 20, 1905.*† (Sec. 12, 33 Stat. 727; 15 U.S.C. 92) 5.73 Registration to foreign applicants. A certificate of registration under the Act of February 20, 1905, as amended, shall not be issued to an applicant located in a foreign country for any trademark, for registration of which he has filed an application in such foreign country, until such mark has been actually registered by him in the country in which he is located.*t (Sec. 4, 33 Stat. 725, 49 Stat. 1539; 15 U.S.C. 84 and Sup.) 5.74 Application for renewal. An application for the renewal of a trade-mark registration may be made by the owner or his duly authorized attorney and should consist of a request addressed to the Commissioner of Patents to renew such certificate of registration, accompanied by the proper fee, and, if the applicant for renewal is other than the owner of record in the Patent Office, by a showing of title to the certificate to be renewed.*† 5.75 Claim of registrant communicated to International Bureau, Habana. Under the convention adopted for the establishment of an International Bureau at Habana, and the regulations of such bureau provided to carry into effect the Convention for the Protection of Trade-Marks, the Commissioner of Patents will communicate to the International Bureau the claim of the owner of the mark on the written request of the owner of the mark or his duly authorized agent, accompanied by a fee of $5, together with (a) an international money order for $50 to the order of "Director of the International Bureau, Habana"; (b) an electrotype of the trade-mark not larger than 10 centimeters in either dimension; (c) should the United States registration claim color as a distinctive element of the trade-mark, 30 copies of the mark printed on paper, reproduced in color; (d) a statement including (1) the name of the owner of the mark; (2) the address of the owner of the mark; (3) the number and the date of registration of the mark in the United States Patent Office; and (e) a translation into Spanish of the particular description of goods as stated in the certificate of registration.*+ ASSIGNMENTS 5.76 Requisites. Every registered trade-mark and every mark for the registration of which application has been made, together with the application for registration thereof, shall be assignable in con **For statutory and source citations, see note to § 5.1. Page 71 nection with the good will of the business in which the mark is used. Such assignment must be by an instrument in writing_and duly acknowledged according to the laws of the country or State in which the same is executed. Provision is made for recording such assignments in the Patent Office; but no such assignment will be recorded unless it is in the English language, nor unless an application for the registration of the mark shall have been first filed in the Patent Office, and such assignment must identify the application by serial number and date of filing, or, when the mark has been registered, by the certificate number and the date thereof. No particular form of assignment is prescribed.* (Sec. 10, 33 Stat. 727; 15 U.S.C. 90) 5.77 Time for recording. An assignment shall be void as against any subsequent purchaser for a valuable consideration, without notice, unless it be recorded in the Patent Office within three months from the date thereof.*t (Sec. 10, 33 Stat. 727; 15 U.S.C. 90) 5.78 Certificate issued to assignee. The certificate of registration may be issued to the assignee of the applicant, but the assignment must first be entered of record in the Patent Office as of a date not later than the fourth Thursday before the date the certificate of registration is to bear.*t (Sec. 11, 33 Stat. 727, sec. 3, 43 Stat. 1269; 15 U.S.C. 91) COPIES AND PUBLICATIONS 5.79 Copies of registered trade-marks. After a trade-mark has been registered, printed copies of the statement and declaration in each case, with a photolithographed copy of the drawing of the trade-mark, may be furnished by the office upon the payment of the fee.*t (Secs. 11, 14, 33 Stat. 727, 728, sec. 3, 43 Stat. 1269, sec. 4, 46 Stat. 155; 15 U.S.C. 91, 94) 5.80 Copies of assignments. An order for a copy of an assignment must give the liber and page of the record as well as the name of the applicant; otherwise an extra charge will be made for the time consumed in making a search for such assignment.** 5.81 Registrations listed in Official Gazette. The Official Gazette of the Patent Office will contain a list of all trade-marks registered, giving in each case a statement of the goods to which the trade-mark is applied, the name and address of the applicant, the date of filing and serial number of the application, and when published, the date of the publication of the trade-mark in the Official Gazette.*t 5.82 Fees. On filing each original application for registration of a trade-mark_--On filing each application for renewal of the registration of a trademark_. $15.00 15.00 On filing each application for a communication to the International 5.00 On filing notice of opposition to the registration of a trade-mark_ 10.00 15.00 Page 72 **For statutory and source citations, see note to $ 5.1. |