Constitutional Basis

The authority of Congress to provide for the registration of marks which are used in commerce stems from the power of Congress under the commerce clause of the Constitution of the United States to regulate commerce.

Statutes

Under its authority to regulate commerce, Congress has over the years passed a number of statutes providing for the registration of marks in the USPTO. The provisions of statutes cannot be changed or waived by the USPTO. The statute now in effect is Public Law 489, 79th Congress, approved July 5, 1946, 60 Stat. 427, commonly referred to as the Trademark Act of 1946 or the Lanham Act. The Trademark Act of 1946 (as amended) forms Chapter 22 of Title 15 of the United States Code. In referring to a particular section of the Trademark Act, this Manual often gives the citation of the United States Code, e.g., 15 U.S.C. §1051, and provides links to a USPTO-created compilation of the statutes in electronic form at https://www.tfsr.uspto.gov . This compilation was created for the public’s convenience and is not meant to serve as an official legal source. Those using this compilation for legal research should verify their results against the most current official printed edition of the United States Code and published Public Laws.

Rules of Practice

Section 2 of Title 35 of the United States Code authorizes the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office to establish regulations, not inconsistent with law, for the conduct of proceedings in the USPTO. The rules which govern the practices and procedures in the USPTO as they relate to the registration of marks are set forth in Title 37 of the Code of Federal Regulations.

The trademark rules are a part of the Code of Federal Regulations, which is a codification of Federal regulations under the provisions of The Federal Register Act of 1937 and The Administrative Procedure Act of 1946 and which is published pursuant to 44 U.S.C. §1510.  Rules relating to patents, trademarks and copyrights are codified in Title 37 of the Code of Federal Regulations. The trademark rules constitute Part 2, the rules relating to assignments constitute Part 3, the classification of goods and services constitutes Part 6, the rules relating to filings under the Madrid Protocol constitute Part 7, and the rules relating to the representation of others before the USPTO constitute Parts 10 and 11. This Manual provides links to a USPTO-created compilation of the rules in electronic form at https://www.tfsr.uspto.gov . This compilation was created for the public’s convenience and is not meant to serve as an official legal source. Those using this compilation for legal research should verify their results against the most current official printed edition of the Code of Federal Regulations and the daily Federal Register.

In creating numbers for rules, the number of the appropriate Part in Title 37 of the Code of Federal Regulations is placed first, followed by a decimal point and then the number of the rule, so that, for example, Trademark Rule 2.56 is Rule 56 in Part 2 of Title 37 of the Code of Federal Regulations. In the Code of Federal Regulations itself, and in material published in the Federal Register, the rules are identified by the term “sections.” Thus, section 2.56 in 37 C.F.R. (37 C.F.R §2.56) is Trademark Rule 2.56.

Notices of proposed and final rulemaking are published in the Federal Register and in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov/ .

The primary function of the rules of practice is to advise the public of the regulations that have been established in accordance with the statutes, which must be followed before the USPTO.

Director’s Orders and Notices

From time to time the Director of the United States Patent and Trademark Office issues Orders and Notices relating to various specific situations that have arisen in operating the USPTO. Notices, circulars of information, or instructions and examination guides have also been issued by other USPTO officials under authority of the Director. These Orders and Notices are published in the Official Gazette of the USPTO, and posted on the USPTO website at http://www.uspto.gov . See notice at 72 FR 72999 (Dec. 26, 2007).

Decisions

In addition to the statutory regulations, the actions taken by the examining attorneys in the examination of applications to register marks are to a great extent governed by decisions on prior cases. Applicants dissatisfied with an examining attorney’s action may have it reviewed. In general, procedural matters may be reviewed by petition to the Director ( see TMEP §1702 ) and substantive matters may be reviewed by appeal to the Trademark Trial and Appeal Board ( see TMEP §1501 ).

Trademark Manual of Examining Procedure

The Trademark Manual of Examining Procedure sets forth the guidelines and procedures followed by the examining attorneys at the USPTO. The manual may be downloaded free of charge from the USPTO website at http://www.uspto.gov/ . See notice at 67 FR 18176 (April 15, 2002) regarding the dissemination of the manual in electronic format.

• First Edition, January 1974
• Revision 1, January 1976
• Revision 2, January 1977
• Revision 3, January 1978
• Revision 4, January 1979
• Revision 5, December 1982
• Revision 6, December 1983 (Incorporating Exam Guide Nos. 1-83 to 31-83)
• Revision 7, January 1986 (Incorporating Office practice and relevant case law prior to January 1986; drawing rules amendment effective Sept. 22, 1986; letter of protest procedures effective April 23, 1986; Exam Guide Nos. 1-83 to 2-86)
• Second Edition, May 1993 (Incorporating Office practice and relevant case law reported prior to April 1993)
• Revision 1, April 1997 (Incorporating Office practice and relevant case law reported prior to March 31, 1997)
• Revision 1.1, August 1997 (Corrected errors in Rev. 1)
• Third Edition, January 2002, issued March 18, 2002 (Incorporating Office practice and relevant case law reported prior to Jan. 24, 2002)
• Revision 1, June 2002, issued June 24, 2002 (Incorporating Office practice and relevant case law reported prior to June 24, 2002)
• Revision 2, May 2003, issued May 1, 2003 (Incorporating Office practice and relevant case law reported prior to April 21, 2003)
• Fourth Edition, April 2005, issued April 29, 2005 (Incorporating Office practice and relevant case law reported prior to March 25, 2005)
• Fifth Edition, September 2007, issued Sept. 30, 2007 (Incorporating Office practice and relevant case law reported prior to August 11, 2007)
• Sixth Edition, September 2009, issued Oct. 12, 2009 (Incorporating Office practice and relevant case law reported prior to Sept. 1, 2009)
• Revision 1, October 2009, issued October 27, 2009 (Revising §§1202.02(c)(iii), 1206.03, and 1402.15)
• Revision 2, May 2010, issued May 21, 2010 (Incorporating amendments to 15 U.S.C. §§1058  and 1141k effective March 17, 2010 and signature, representation, and correspondence address rules amendments effective December 28, 2009; revising §§904.03(h), 904.03(i), 1109.15, 1109.15(a), and 1905)
• Seventh Edition, October 2010, issued Oct. 15, 2010 (Incorporating Office practice and relevant case law reported prior to Sept. 1, 2010)
• Eighth Edition, October 2011, issued Oct. 15, 2011 (Incorporating Office practice and relevant case law reported prior to Sept. 1, 2011)
• October 2012, issued Oct. 31, 2012 (Incorporating Office practice, amendments to the Trademark Rules, and relevant case law prior to Oct. 1, 2012)
• April 2013, issued April 30, 2013 (Incorporating Office practice and relevant case law reported prior to April 1, 2013)
• October 2013, issued Oct. 30, 2013 (Incorporating Office practice, amendments to the Trademark Rules, and relevant case law reported prior to Oct. 1, 2013)
• April 2014, issued April 30, 2014 (Incorporating Office practice and relevant case law reported prior to April 1, 2014)
• October 2014, issued Oct. 30, 2014 (Incorporating Office practice and relevant case law reported prior to Oct. 1, 2014)
• January 2015, issued Jan. 17, 2015 (Incorporating changes in accordance with final rules issued at 79 FR 63036, 79 FR 74633, and 80 FR 2303)
• July 2015, issued July 11, 2015 (Incorporating Office practice, changes in accordance with the final rule issued at 80 FR 33170, and relevant case law reported prior to July 1, 2015)
• October 2015, issued Oct. 30, 2015 (Incorporating Office practice and relevant case law reported prior to Oct. 1, 2015)
• April 2016, issued April 30, 2016 (Incorporating Office practice and relevant case law reported prior to April 1, 2016)
• October 2016, issued Oct. 30, 2016 (Incorporating Office practice and relevant case law reported prior to Oct. 1, 2016)
• January 2017, issued Jan. 14, 2017 (Incorporating Office practice, changes in accordance with final rules issued at 81 FR 69950, 81 FR 72694, 81 FR 76867, 81 FR 78042, and 81 FR 89382, and relevant case law reported prior to Jan. 1, 2017)
• April 2017, issued April 30, 2017 (Incorporating Office practice and relevant case law reported prior to March 1, 2017)
• October 2017, issued October 15, 2017 (Incorporating Office practice, changes in accordance with final rule issued at 82 FR 29401, and relevant case law reported prior to September 1, 2017)
• October 2018, issued October 31, 2018 (Incorporating Office practice, changes in accordance with final rules issued at 82 FR 56887 and 83 FR 33129, and relevant case law reported prior to September 15, 2018)
• July 2021, issued July 25, 2021 (Incorporating changes in accordance with final rules issued at: 83 FR 62711, 84 FR 65680, and 85 FR 69501; 84 FR 31498; 84 FR 37081, 84 FR 52363, 84 FR 68045, and 84 FR 69330; 85 FR 73197; and 86 FR 35229 and relevant Supreme Court decisions)

Trademark Trial and Appeal Board Manual of Procedure

References in this Manual to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) refer to the June 2021 revision, currently available on the USPTO website at http://tbmp.uspto.gov/RDMS/detail/manual/TBMP/current/tbmpd1e2.xml#/manual/TBMP/current/tbmpd1e2.xml . The TBMP sets forth guidelines and practices followed in proceedings held before the Trademark Trial and Appeal Board.