TMEP / Change Summary

Change Summary

CHANGES: INDEX TO CHANGES IN TMEP October 2018

Attention is directed to the following changes in the October 2018 TMEP.

SECTION

CHANGE

TMEP

Incorporated changes in accordance with final rules issued at 82 FR 56887 and 83 FR 33129, relevant precedential decisions reported prior to Sept. 15, 2018, and Exam Guides 1-18 and 3-18.

103

Reworded first paragraph for clarity.

107

Deleted reference to Government Printing Office.

401.04

Updated to reflect current procedures for creating application records.

403

Revised in accordance with Exam Guide 3-18.

503.01(c)

Clarified the Assignment Recordation Branch process.

611.06

Added definition of signatories considered to have “legal authority to bind.”

611.06(e)

Added cross references.

710.01(b)

Clarified the standard for making internet evidence of record.  Added case citations.

713.01

Miscellaneous stylistic edits.

714.05(a)

Added example of amendment that requires a new nonfinal action and example of amendment that does not require a new nonfinal action.

714.05(c)

Added case citation.

716.01

Miscellaneous stylistic edits.

717

Revised to clarify procedure.

717.01

Revised in accordance with Exam Guide 3-18.

806.02(a)

Adding exception. Reworded slightly for clarity.

819.01(g)

Clarified procedure regarding fill-in-the-blank elements.

904.07(a)

Revised example for clarity.

1002.03

Revised to correct name of European Union trademark.

1201.01

Added case citation.

1201.02(c)

Adding example of non-correctable error.

1201.03(e)

Added case citation.

1201.06(a)

Added case citation.

1201.06(c)

New section: Applicant Using Designation of a U.S. Government Agency or Instrumentality

1202.02(a)(v)

Added case citations.

1202.02(a)(v)(A)

Clarified evidentiary value of specification and/or drawings in patent. Added case citation.

1202.02(b)(i)

Added case citation.

1202.02(b)(ii)

Added case citation.

1202.03(a)

Added case citation.

1202.03(b)

Added case citation.

1202.03(f)(i)

Added case citation.

1202.04(b)

Added case citation.

1202.05(a)

Added case citation.

1202.05(h)

Added case citation.

1202.05(i)

Added case citation.

1202.18

Added case citation.

1203.03(c)(ii)

Clarified procedures regarding matter that may falsely suggest a connection with a United States government agency or instrumentality.

1204

Deleted case citation.

1204.02(a)

Deleted case citation.

1205.01(a)(iv)

Clarified situations in which refusal may be withdrawn.

1205.01(c)(iii)

Clarified situations in which refusal may be withdrawn.

1207.01

Revised to clarify procedures. Added case citations.

1207.01(a)(ii)

Added case citation.

1207.01(a)(ii)(A)

Added case citation.

1207.01(a)(iii)

Added case citations.

1207.01(b)

Added case citations.

1207.01(b)(iii)

Added case citations.

1207.01(b)(viii)

Added case citations. Deleted case citation. Updated case citation.

1207.01(c)(iii)

Added case citation.

1207.01(d)(ii)

Added case citation.

1207.01(d)(iii)

Added case citation.

1207.01(d)(iv)

Added case citation.

1207.01(d)(v)

Added case citation.

1208.01(b)

Clarified the date of execution of §66 applications.

1208.03

Deleted citation to 37 C.F.R. §2.91(a).

1208.03(b)

Deleted citation to 37 C.F.R. §2.91(a).

1208.03(c)

Deleted citation to 37 C.F.R. §§2.92 and 2.98.

1209.01(c)(i)

Added case citation.

1209.01(c)(ii)

Added case citation.

1209.01(c)(iii)

Added case citation. Deleted case citation.

1209.03(d)

Added case citation.

1209.03(v)

Added case citation.

1211.01(a)(v)

Added case citation. Updated case citation.

1211.02(b)(iv)

Added case citation.

1211.02(b)(vii)

Added case citation.

1212.01

Added case citation.

1212.02(b)

Added case citation.

1212.02(c)

Added case citation.

1212.02(d)

Revised to change time for applicant to respond to inquiry regarding deleting unnecessary voluntary §2(f) claim.

1212.02(f)(ii)(A)

Added case citation.

1212.02(f)(ii)(B)

Added case citation and cross reference.

1212.05(a)

Added case citation.

1212.05(d)

Added case citation. Reworded slightly for clarity.

1212.06(e)(v)

Added case citation.

1212.06(e)(vi)

New section: Parodies and Copies

1212.09(a)

Added case citations. Revised to clarify means to establish acquired distinctiveness. Updated case citation.

1213.01(c)

Revised to change time for applicant to respond to inquiry regarding deleting unnecessary voluntary disclaimer.

1213.06

Added case citation.

1214.01

Added case citation and explanation of decision.

1216.01

Added case citation.

1217

Added case citation.

1301.04(h)(iii)

Deleted reference to Trademark Law Library.

1301.04(h)(iv)(D)

Clarified procedures for specimens for software applications.

1401.02(a)

Updated references to 2018 and 2019 versions of Nice Classification. Revised headings and explanatory notes to match current version of Nice Classification.

1402.02

Added example of wording that does not meet the requirements for a filing date. Miscellaneous stylistic edits.

1402.04

Clarified types of entries in ID Manual and added examples of fill-in entries. Updated title of intellectual property office of China.

1402.07(d)

Miscellaneous stylistic edits.

1501.02(b)

Clarified proper method for citing to the record in examining attorney briefs.

1502.01

Updated procedure for requesting correction of errors in the USPTO electronic record or Official Gazette.

1505.01(a)

Updated procedure for requesting correction of typographical errors entered by the USPTO.

1507

Deleted citations to 37 C.F.R. §2.91(a).

1601.01(b)

Revised in accordance with Exam Guide 3-18.

1604.04

Clarified that the pendency of a cancellation action does not toll the time for filing an affidavit or declaration of use or excusable nonuse.

1604.11

Miscellaneous stylistic edits. Added case citation.

1606.02

Clarified that the pendency of a cancellation action does not toll the time for filing a renewal application.

1610

Added case citation and cross reference.

1613.04

Clarified that the pendency of a cancellation action does not toll the time for filing an affidavit or declaration of use or excusable nonuse.

1613.11

Added case citation. Miscellaneous stylistic edits.

1713.02

Clarified procedure when evidence is provided in response to a final Office action.

1715.04

Revised in accordance with Exam Guide 3-18.

1715.04(b)

Revised in accordance with Exam Guide 3-18.

1902.02(f)(i)

Miscellaneous stylistic edits.