2.174 Correction of Office mistake. Whenever a material mistake in a registration, incurred through the fault of the Patent Office, is clearly disclosed by the records of the Office, a certificate stating the fact and nature of such mistake, signed by the Commissioner or by an employee designated by the Commissioner and sealed with the seal of the Patent Office, shall be issued without charge and recorded, and a printed copy thereof shall be attached to each printed copy of the registration certificate. Such corrected certificate shall thereafter have the same effect as if the same had been originally issued in such corrected form, or in the discretion of the Commissioner a new certificate of registration may be issued without charge. The certificate of registration or, if said certificate is lost or destroyed, a certified copy thereof, must be submitted in order that the Commissioner may make appropriate entry thereon.

(Sec. 7, 60 Stat. 430 as amended; 15 U.S.C. 1057)

2.175 Correction of mistake by registrant. (a) Whenever a mistake has been made in a registration and a showing has been made that such mistake occurred in good faith through the fault of the applicant, the Commissioner may issue a certificate of correction, or in his discretion, a new certificate upon the payment of the required fee, provided that the correction does not involve such changes in the registration as to require republication of the mark.

(b) Application for such action must specify the mistake for which correction is sought and the manner in which it arose, show that it occurred in good faith, be signed and verified by the applicant, and be accompanied by the required fee and by an order for a title report for Office use (or an abstract of title). The certificate of registration or, if said certificate is lost or destroyed, a certified copy thereof, must also be submitted in order that the Commissioner may make appropriate entry thereon.

(c) A printed copy of the certificate of correction shall be attached to each printed copy of the registration.

(Sec. 7, 60 Stat. 430 as amended; 15 U.S.C. 1057)

2.176 Consideration of above matters. The matters in rules 2.171 to 2.175 will be considered in the first instance by the Examiner of Trademarks. If the action of the Examiner of Trademarks is adverse, registrant may request the Commissioner to review the action under rule 2.146. If response to an adverse action of the Examiner is not made by the registrant within six months, the matter will be considered abandoned.

TERM AND RENEWAL

AUTHORITY NOTE: Rules 2.181 to 2.184 interpret or apply sec. 9, 60 Stat. 431; 15 U.S.C. 1059.

(a) Regis

2.181 Term of original registrations and renewals. trations issued under the act of 1946, whether on the Principal Register or on the Supplemental Register, remain in force for twenty years, and may be renewed for periods of twenty years from the expiring period unless previously cancelled or surrendered.

(b) Registrations issued under the acts of 1905 and 1881 remain in force for their unexpired terms and may be renewed in the same manner as registrations under the act of 1946.

(c) Registrations issued under the act of 1920 cannot be renewed unless renewal is required to support foreign registrations and in such case may be renewed on the Supplemental Register in the same manner as registrations under the act of 1946.

2.182 Period within which application for renewal must be filed. An application for renewal may be filed by the registrant at any time within six months before the expiration of the period for which the certificate of registration was issued or renewed, or it may be filed within three months after such expiration on payment of the additional fee required.

2.183 Requirements of application for renewal. (a) The application for renewal must include a verified statement by the registrant setting forth the goods or services recited in the registration on or in connection with which the mark is still in use in commerce, specifying the nature of such commerce. This statement must be executed not more than six months before the expiration of the registration and be accompanied by:

(1) A specimen or facsimile showing current use of the mark. (2) The required fee including an additional fee in the case of a delayed application for renewal.

(b) The verified statement, specimen or facsimile and the fee must be filed within the period prescribed for applying for renewal. If defective or insufficient, they cannot be completed after the period for applying for renewal has passed; if completed after the initial six month period has expired but before the expiration of the three month delay period, the application can be considered only as a delayed application for renewal.

(c) If the mark is not in use in commerce at the time of filing of the verified statement, sufficient facts must be recited to show that nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark.

(d) The application for renewal must also include:

(1) An order for a title report for Office use (or an abstract of title).

(2) If the applicant is not domiciled in the United States, the designation of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark.

(3) If the mark is registered under the act of 1920, a verified showing that renewal is required to support foreign registrations.

2.184 Refusal of renewal. (a) If the application for renewal is incomplete or defective, the renewal will be refused by the Examiner of Trademarks. The application may be completed or amended in response to a refusal, subject to the provisions of rules 2.62 and 2.183.

(b) If the registrant is dissatisfied with the action of the Examiner considering the application for renewal incomplete or defective, he may request the Commissioner to review the action, under rule 2.146. If response to an adverse action of the Examiner is not made within 6 months, the application for renewal will be considered abandoned.

ASSIGNMENT OF MARKS

2.185 Requirements for assignments. (a) Assignments under section 10 of the act of registered marks, or marks for which an application for registration has been filed, will be recorded in the Patent Office. Other instruments which may relate to such marks may be recorded in the discretion of the Commissioner. No assignment will be recorded, except as may be ordered by the Commissioner, unless it has been executed and unless:

(1) The certificate of registration is identified in the assignment by the certificate number (the date of registration should also be given), or, the application for registration shall have been first filed in the Patent Office and the application is identified in the assignment by serial number (the date of filing should also be given);

(2) It is in the English language or, if not in the English language, accompanied by a sworn translation;

(3) The fee for recording is received; and

(4) An appointment of a resident agent is made in case the assignee is not domiciled in the United States. The appointment must be separate from the assignment and there must be a separate appointment for each registration or application assigned in one instrument.

(b) The address of the assignee should be recited in the assignment, otherwise it must be given in a separate paper.

(c) The date of record of the assignment is the date of the receipt of the assignment at the Patent Office in proper form and accompanied by the full fee for recording.

(Sec. 10, 60 Stat. 431; 15 U.S.C. 1060)

2.186 Action may be taken by assignee of record. Any action which may or must be taken by a registrant or applicant may be taken by the assignee, provided the assignment has been recorded.

2.187 Certificate of registration may issue to assignee. The certificate of registration may be issued to the assignee of the applicant if the assignment is recorded in the Patent Office at least ten days before the application is allowed, and the address of the assignee appears in the record. See rule 2.82.

AMENDMENT OF RULES

2.189 Amendments to rules. (a) All amendments to this part will be published in the Official Gazette and in the Federal Register. (b) Whenever required by law, and in other cases whenever practicable, notice of proposed amendments to these rules will be published in the Federal Register and in the Official Gazette. If not published with the notice, copies of the text will be furnished to any person requesting the same. All comments, suggestions, and briefs received within a time specified in the notice will be considered before adoption of the proposed amendments which may be modified in the light thereof. Oral hearings may be held at the discretion of the Commissioner.