T.M.E.P. § 907
Compliance with Other Statutes

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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907 Compliance with Other Statutes

37 C.F.R. 2.69. Compliance with other laws. When the sale or transportation of any product for which registration of a trademark is sought is regulated under an Act of Congress, the Patent and Trademark Office may make appropriate inquiry as to compliance with such Act for the sole purpose of determining lawfulness of the commerce recited in the application.

Use of a mark in commerce must be lawful use to be the basis for federal registration of the mark. Under 37 C.F.R. 2.69, the Office may inquire about compliance with federal laws to confirm that the applicant's use of the mark in commerce is lawful. However, the Office does not inquire whether use in commerce is lawful unless the record shows a clear violation of law, such as the sale or transportation of a controlled substance. The Office presumes that an applicant's use of the mark in commerce is lawful.

The examining attorney should inquire about compliance with federal laws or refuse registration based on the absence of lawful use in commerce when a court or the responsible federal agency has issued a finding of noncompliance under the relevant statute or where there has been a per se violation of the relevant statute. Cf. Kellogg Co. v. New Generation Foods Inc., 6 USPQ2d 2045 (TTAB 1988); Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80 (TTAB 1984).

For the purpose of determining whether to issue an inquiry, the Office will not regard apparent technical violations, such as labeling irregularities on specimens, as violations. For example, if a package fails to show all required labeling information, the examining attorney should not take any action. Likewise, the Office does not routinely solicit information regarding label approval under the Federal Alcohol Administration Act or similar acts.

See TMEP §1205 regarding refusal of registration of matter that is protected by a statute or convention.