New USPTO Rules Affect Application Procedures for a Trademark Registration

Effective January 16, 2009, applicants seeking a trademark registration should be aware of several rule changes when looking into how to register a trademark.   The “Summary of Miscellaneous Changes to Trademark Rules” summarize changes that can affect whether or not an applicant is able to successfully register a trademark.  Of particular note:

1. Translation and Transliteration

If a mark includes non‑English wording, the applicant must submit an English translation of that wording.  Rule 2.32(a)(9).  If the mark includes non-Latin characters, the applicant must submit a transliteration of those characters and either a translation of the corresponding non‑English word(s) or a statement that the transliterated term has no meaning in English.  Rule 2.32(a)(10).  This is consistent with TMEP §809.

2. Names and Citizenship of Partners and Members of Joint Venture

Rule 2.32(a)(3)(iii) was amended to require that an application by a domestic partnership include the names and citizenship of the general partners.  Rule 2.32(a)(3)(iv) was added to require that an application by a domestic joint venture include the names and citizenship of the active members of the joint venture.  These requirements are consistent with TMEP §803.03(b). 

3. Dates of Use

Rule 2.34(a)(1)(v) was added to require that if more than one item of goods or services is specified in a §1(a) application, the dates of use need be for only one of the items specified in each class, provided that the particular item to which the dates apply is designated.  This is consistent with TMEP §903.09.

4. Allegation that Applicant "Has Adopted" the Mark Not Required

Rule 2.33(b)(1) was amended to remove the requirement that an application include a verified statement that the applicant "has adopted … the mark shown in the accompanying drawing."  The rule as amended requires an allegation that "the mark is in use in commerce." 

An applicant should understand these rules, including the ones listed above, and adhere to them in order to increase the likelihood of a successful trademark registration.  The USPTO will not register a trademark if the application is deficient.