817 Preparation of Application for Publication or Registration
When an application is ready to be approved for publication or registration, the examining attorney must carefully review the application record to ensure the accuracy of the information contained therein and to ensure that all information that must be printed in the Official Gazette and on the certificate of registration has been properly entered into the Trademark database. The type of information that must be printed includes:
- (1) Disclaimer statements (TMEP §§1213–1213.11);
- (2) Notations of acquired distinctiveness, i.e., “2(f)” or “2(f) in part as to...,” as appropriate (TMEP §§1212–1212.10);
- (3) Lining and/or stippling statements, if necessary (TMEP §808.01(b));
- (4) Consent to register a name or portrait and/or statements that a name or portrait does or does not identify a living individual (TMEP §§813.01–813.01(c));
- (5) Translations of non-English wording and transliterations of non-Latin characters in the mark, or statements that the non-English wording or transliterated term has no meaning in English (TMEP §§809.01(a), 809.03);
- (6) Ownership of related United States registrations (TMEP §812);
- (7) Description of mark statements (TMEP §§808–808.03(g));
- (8) Dates of use of the mark in another form (TMEP §903.07); and
- (9) Color claims and color location statements (TMEP §§807.07(a)–807.07(a)(ii)).
All statements in the Trademark database relating to the above-listed items will automatically be printed in the Official Gazette and on the registration certificate. Therefore, examining attorneys must ensure that information that must not be printed (e.g., claims of ownership of unrelated or cancelled United States registrations, statements such as disclaimers that have been amended and are no longer valid, or unnecessary §2(f) statements) is deleted from the Trademark database. The documents containing the information deleted from the Trademark database will remain of record for informational purposes. It is not necessary to notify the applicant that the information will not be printed. If an applicant provides information by phone that does not need to be printed (e.g., a statement that a particular term has no meaning in the relevant industry), the examining attorney must enter a Note to the File in the record detailing the information that will not be entered into the database.
In addition, the examining attorney must 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 multiple-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 Trademark database, the examining attorney must ensure that the necessary correction(s) are made.
If there has been an assignment, the examining attorney must check the records of the Assignment Recordation Branch of the USPTO to ensure that there is a clear chain of title, and ensure that the change of ownership is entered into the Trademark database, if necessary. See TMEP §§502.02(a) and 502.02(c).