T.M.E.P. § 817
Preparation of Case for Publication or Registration

Executive summary:

This document contains one section of the Trademark Manual of Examining Procedure (the "TMEP"), Fourth Edition (April 2005). This page was last updated in June 2007. You may return to one either the section index, or to the key word index. If you wish to search the TMEP, simply use the search box that appears on the bottom of every page of BitLaw--be sure to restrict your search to the TMEP in the pop-up list.

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817 Preparation of Case for Publication or Registration

When a case is ready to be approved for publication or registration, the examining attorney must carefully review the application file to ensure the accuracy of the information contained therein and to ensure that all information that should be printed in the Official Gazette and on the certificate of registration has been properly entered into the TRAM database. The type of information that should be printed includes:

(1) Disclaimer statements ( TMEP §§1213 et seq.);

(2) Notations of acquired distinctiveness, i.e., "2(f)" or "2(f) in part as to . . .," as appropriate ( TMEP §§1212 et seq.);

(3) Lining and/or stippling statements ( TMEP §808.01(d)) ;

(4) Consent to register a name or portrait and statements that a name or portrait does not identify a living individual ( TMEP §813) ;

(5) Translations of non-English wording and transliterations of non-Latin characters in the mark ( TMEP §809.02) ;

(6) Ownership of related United States registrations ( TMEP §812) ;

(7) Description of mark statements ( TMEP §808) ; and

(8) Use in another form ( TMEP §903.08).

All statements in the TRAM database relating to the above-listed items will automatically be printed in the Official Gazette and on the registration certificate. Therefore, examining attorneys should ensure that information about these items that should not be printed (e.g., claims of ownership of unrelated U.S. registrations, statements such as disclaimers that have been amended and are no longer valid, or unnecessary §2(f) statements) is deleted from the TRAM database. Images of the documents containing the information deleted from TRAM will remain of record for informational purposes. If an applicant provides information by phone that should not be printed (e.g., a statement that a particular term has no meaning in the relevant industry), then the examining attorney should enter a note to the file detailing the information that will not be entered into the database.

In addition, the examining attorney should check to ensure the accuracy of the following critical data elements:

(1) The mark;

(2) The register for which application is made;

(3) The identification of goods and/or services;

(4) International classification;

(5) Filing date;

(6) Dates of use for each class, if applicable;

(7) Foreign application and registration data, if applicable;

(8) Whether §1(b) of the Act is a basis for registration;

(9) In a multi-basis application, which goods are covered by which basis; and

(10) In concurrent use cases, information as to the proposed geographic limitation.

If any of the above items are not accurately entered into the TRAM database, the examining attorney should ensure that the necessary correction(s) are made.

If there has been an assignment, the examining attorney should check the records of the Assignment Services Division of the Office to ensure that there is a clear chain of title, and ensure that the change of ownership is entered into the TRAM database, if necessary. See TMEP §§502.02(a) and 502.02(c).