               CHAPTER 100  GENERAL INFORMATION


101  Applicable Authority

102  Nature of Board Proceedings

103  Location and Address of Board

104  Business to be Conducted in Writing

105  Contact With Board Personnel

106  Identification, Signature, and Form of Papers

107  How and Where to File Papers and Fees

108  Filing Receipts

109  Filing Date

110  Certificate of Mailing or Transmission Procedure

111  Certificate of Mailing by "Express Mail" Procedure

112  Times for Taking Action

113  Service of Papers

114  Representation of Party

115  Conduct of Practitioner

116  Termination of Representation

117  Correspondence - With Whom Held

118  Payment of Fees

119  Papers and Fees Generally Not Returnable

120  Proceeding Files and Exhibits

121  Access to Files

122  Copying of Files

123  Certification

124  Application and Registration Status Information

125  Action by Assignee

101  Applicable Authority



101.01  Statute and Rules of Practice

All proceedings before the Trademark Trial and Appeal Board
("TTAB" or "Board") are governed by the Trademark Act of
1946 ("Act of 1946" or "Act"), 15 U.S.C. 1051 et seq.; the
rules of practice in trademark cases (commonly known as the
Trademark Rules of Practice), which may be found in Part 2
of Title 37 of the Code of Federal Regulations ("CFR"); the
rules pertaining to assignments in trademark cases, which
may be found in Part 3 of 37 CFR; and the rules relating to
representation of others before the Patent and Trademark
Office, which may be found in Part 10 of 37 CFR.  In
addition, Trademark Rule 2.1, 37 CFR 2.1, makes applicable
to trademark cases certain rules from Part 1 of 37 CFR,
which contains the rules of practice in patent cases.  The
PTO rules governing procedure in inter partes proceedings
before the Board are adapted, in large part, from the
Federal Rules of Civil Procedure, with modifications due
primarily to the administrative nature of Board proceedings.
See Yamaha International Corp. v. Hoshino Gakki Co., 840
F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).

A copy of 37 CFR may be obtained at a nominal cost from the
U.S. Government Printing Office.  Price and ordering
information may be obtained by calling (202) 512-1800.
Written orders sent by mail should be sent to the U.S.
Government Printing Office, Superintendent of Documents,
P.O. Box 371954, Pittsburgh, PA 15250-7954.  In addition,
orders or inquiries may be submitted by fax to (202) 512-
2250.



101.02  Federal Rules

Inter partes proceedings before the Board are also governed
by the Federal Rules of Civil Procedure ("FRCP"), except as
otherwise provided in the Trademark Rules of Practice, and
wherever applicable and appropriate; and by the Federal
Rules of Evidence ("FRE").  See 37 CFR 2.116, 2.120(a),
and 2.122(a).

There is no provision in the Trademark Rules of Practice
concerning the applicability of the Federal Rules of
Evidence to ex parte appeals before the Board.  Certain of
the principles embodied in the Federal Rules of Evidence are
applied by the Board, in practice, in evaluating the
probative value of evidence submitted in ex parte cases.
See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); In re American OleanTile Co., 1 USPQ2d
1823 (TTAB 1986); and In re Foundry Products, Inc., 193 USPQ
565 (TTAB 1976).  For information concerning the treatment
of evidence in Board ex parte proceedings, see TBMP 1208,
and authorities cited therein.



101.03  Decisional Law

Proceedings before the Board are also governed, to a large
extent, by published decisions in prior cases.  These
decisions include not only the decisions of the Board
itself, but also the decisions of the Court of Appeals for
the Federal Circuit (which determines appeals from decisions
of the Board); the Court of Customs and Patent Appeals
(predecessor of the Court of Appeals for the Federal
Circuit); and the Commissioner (who determines petitions
seeking review of Board actions on procedural matters).

Decisions of the Board, the Commissioner, and the Court of
Appeals for the Federal Circuit may or may not be designated
for publication.  Those decisions which are designated for
publication are published in the United States Patent
Quarterly ("USPQ"), a periodical publication of The Bureau
of National Affairs, Inc., Washington, D.C.  They may also
be found in Mead Data Central, Inc.'s "LEXIS" legal data
base, and in the Intellectual Property Library of West
Publishing Company's WESTLAW data base.

Decisions which are designated for publication in full are
citable as precedent.  Decisions which are not designated
for publication, or which are designated for publication
only in digest form, are not citable as precedent, even if a
complete copy of the unpublished or digest decision is
submitted.  See General Mills Inc. v. Health Valley Foods,
24 USPQ2d 1270 (TTAB 1992); In re American Olean Tile Co., 1
USPQ2d 1823 (TTAB 1986); Marcon, Ltd. v. Merle Norman
Cosmetics, Inc., 221 USPQ 644 (TTAB 1984); and Roberts
Proprietaries, Inc. v. Rumby International, Inc., 212 USPQ
302 (TTAB 1981).  See also Franklin Pierce Law Center v.
Georgetown University, 14 USPQ2d 1255, Editor's Note at 1256
(Fed. Cir. 1990).  An unpublished or digest decision will,
however, be considered in determining issues of claim
preclusion, issue preclusion, judicial estoppel, law of the
case, or the like, provided that (1) a party to the pending
Board proceeding, or its privy, was also a party to the
prior proceeding, and (2) a complete copy of the decision is
submitted.  See General Mills Inc. v. Health Valley Foods,
supra.



101.04  Commissioner's Orders and Notices

Occasionally, the Commissioner of Patents and Trademarks, or
another PTO official acting under the Commissioner's
authority, publishes in the Official Gazette an Order or
Notice relating to a particular PTO policy, practice,
procedure, or other such matter of interest to the public.
Some of these Orders and Notices affect practice and
procedure before the Trademark Trial and Appeal Board.  One
example is a Commissioner's Notice announcing the late
mailing of an issue of the Official Gazette and the
consequent change in the time for opposing marks published
therein, pursuant to Section 12(a) of the Act, 15 U.S.C.
1062(a), for purposes of opposition.  See TBMP 202.03.



102  Nature of Board Proceedings

102.01  Jurisdiction of Board

The Trademark Trial and Appeal Board is an administrative
tribunal of the United States Patent and Trademark Office.
The Board is empowered to determine only the right to
register.  See Sections 17, 18, 20, and 24 of the Act of
1946, 15 U.S.C. 1067, 1068, 1070, and 1092.

The Board is not authorized to determine the right to use,
nor may it decide broader questions of infringement or
unfair competition.  See Person's Co. v. Christman, 900 F.2d
1565, 14 USPQ2d 1477 (Fed. Cir. 1990) [Board cannot
adjudicate unfair competition issues; function of Board is
to determine whether there is a right to secure or to
maintain a registration]; Paramount Pictures Corp. v. White,
31 USPQ2d 1768 (TTAB 1994) [Board has no jurisdiction over
claims of trademark infringement and unfair competition];
Kelly Services Inc. v. Greene's Temporaries Inc., 25 USPQ2d
1460 (TTAB 1992) [Board is not empowered to render
declaratory judgment that one party's use of mark is not an
infringement of mark of other party]; Devries v. NCC Corp.,
227 USPQ 705 (TTAB 1985) [dilution and tarnishment are not
matters which may be entertained by the Board as grounds for
cancellation]; Andersen Corp. v. Therm-O-Shield Int'l, Inc.,
226 USPQ 431 (TTAB 1985) [Board may not entertain any claim
based on Section 43(a) of the Act, 15 U.S.C. 1125(a)];
Electronic Water Conditioners, Inc. v. Turbomag Corp., 221
USPQ 162 (TTAB 1984) [unfair competition and Section 43(a)
claims are outside the jurisdiction of the Board]; Hershey
Foods Corp. v. Cerreta, 195 USPQ 246 (TTAB 1977)
[determination of whether opposer is guilty of unfair
business practices is not within the province of the Board];
Yasutomo & Co. v. Commercial Ball Pen Co., 184 USPQ 60 (TTAB
1974) [Board does not have jurisdiction to address itself to
anti-trust issues]; and American-International Travel
Service, Inc. v. AITS, Inc., 174 USPQ 175 (TTAB 1972) [Board
is without jurisdiction to determine whether opposer
violated criminal statute].  But see Loglan Institute Inc.
v. Logical Language Group Inc., 962 F.2d 1038, 22 USPQ2d
1531 (Fed. Cir. 1992) [Board may have erred in stating that
it lacked jurisdiction over equitable defenses which were
based on allegations of trademark infringement and unfair
competition, but error was harmless because equitable
defenses are not applicable against claim that mark is
generic]; Selva & Sons, Inc. v. Nina Footwear, Inc., 705
F.2d 1316, 217 USPQ 641 (Fed. Cir. 1983) [although other
courts would be the proper tribunals in which to litigate a
cause of action for enforcement or breach of contract, that
is not sufficient reason for the Board to decline to
consider an agreement, its construction, or its validity if
necessary to decide the issues properly before it, including
the issue of estoppel]; and Knickerbocker Toy Co. v.
Faultless Starch Co., 467 F.2d 501, 175 USPQ 417 (CCPA 1972)
[Board has no jurisdiction over the issues raised by the
pleadings insofar as they allege copyright infringement,
unfair competition, and the like, but Board is not precluded
from passing on the validity of a copyright if it is
necessary to do so in the course of the exercise of its
statutory jurisdiction].  See also Scotch Whiskey Ass'n v.
United States Distilled Products Co., 13 USPQ2d 1711 (TTAB
1989), recon. denied, 17 USPQ2d 1240 (TTAB 1990) [Board
cannot consider claims of unfair competition standing alone,
but can consider such claims in determining the
registrability of a mark, that is, in determining a
separate, properly pleaded ground for opposition or
cancellation], dismissed, Scotch Whiskey Ass'n v. United
States Distilled Products Co., 18 USPQ2d 1391 (TTAB 1991)
[because petitioner has not pleaded a separate ground on
which to base the petition to cancel, petitioner's claims
under Articles 10 and 10bis of the Paris Convention cannot
be considered by Board], rev'd on other grounds, 952 F.2d
1317, 21 USPQ2d 1145 (Fed. Cir. 1991).

Similarly, the Board, being an administrative tribunal, has
no authority to declare any portion of the Act of 1946, or
any other act of Congress, unconstitutional.  See Harjo v.
Pro Football Inc., 30 USPQ2d 1828 (TTAB 1994), and Zirco
Corp. v. American Telephone and Telegraph Co., 21 USPQ2d
1542 (TTAB 1991).



102.02  Types of Board Proceedings

The Board has jurisdiction over four types of inter partes
proceedings, namely, oppositions, cancellations,
interferences, and concurrent use proceedings.

An opposition is a proceeding in which the plaintiff seeks
to prevent the issuance of a registration of a mark on the
Principal Register.  "Any person who believes that he would
be damaged by the registration" of a mark may file an
opposition thereto, but the opposition may be filed only in
response to the publication of the mark, under Section 12(a)
of the Act, in the Official Gazette of the Patent and
Trademark Office ("PTO").  See Section 13 of the Act of
1946, 15 U.S.C. 1063.

A cancellation proceeding is a proceeding in which the
plaintiff seeks to cancel an existing registration of a
mark.  The proceeding may only be filed after the issuance
of the registration.  A petition for cancellation may be
filed by "any person who believes that he is or will be
damaged by the registration" of the mark.  See Sections 14
and 24 of the Act of 1946, 15 U.S.C. 1064 and 1092.

An interference is a proceeding in which the Board
determines which, if any, of the owners of conflicting
applications (or of one or more applications and one or more
registrations which are in conflict), is entitled to
registration.  See Section 18 of the Act, 15 U.S.C. 1068.
The proceeding is declared by the PTO only upon petition to
the Commissioner showing extraordinary circumstances
therefor, that is, that the party who filed the petition
would be unduly prejudiced without an interference.  See
Section 16 of the Act of 1946, 15 U.S.C. 1066; 37 CFR
2.91; and TBMP 1002.  An interference which has been
declared by the Commissioner is not instituted by the Board
until after all of the marks which are to be involved in the
proceeding have been published in the Official Gazette for
opposition.  See TBMP 1003.  For further information
concerning interference proceedings, see TBMP chapter 1000.

A concurrent use proceeding is a proceeding in which the
Board determines whether one or more applicants is entitled
to a concurrent registration, that is, a registration with
conditions and limitations, fixed by the Board, as to the
mode or place of use of the applicant's mark or the goods
and/or services on or in connection with which the mark is
used (usually, a concurrent registration is restricted as to
the territory which it covers).  See TBMP 1101.01, and
authorities cited therein.  The proceeding may be generated
only through the filing of an application for registration
as a lawful concurrent user, and is instituted by the Board
only after each of the one or more involved applications has
been published for opposition in the Official Gazette, and
all oppositions thereto (if any) have been withdrawn or
dismissed.  See TBMP 1102.01 and 1105, and authorities
cited therein.  For further information concerning
concurrent use proceedings, see TBMP chapter 1100.

The Board also has jurisdiction over ex parte appeals, that
is, appeals from an Examining Attorney's final refusal to
register a mark in an application.  See Sections 12(b) and
20 of the Act of 1946, 15 U.S.C. 1062(b) and 1070; 37 CFR
2.141 and 2.142; and TBMP chapter 1200.



102.03   General Description of Board Proceedings

An inter partes proceeding before the Board is very similar
to a civil action in a Federal district court.  There are
pleadings (at least in an opposition or cancellation
proceeding); a wide range of possible motions; discovery;
testimony periods; briefs; and an oral hearing (if
requested), followed by a decision on the case.  However,
because the Board is an administrative tribunal, its rules
and procedures necessarily differ in some respects from
those prevailing in the Federal district courts.  See Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1004 (Fed. Cir. 1988).  See also La Maur, Inc.
v. Bagwells Enterprises, Inc., 193 USPQ 234 (Comm'r 1976).
Cf.  TBMP 502.01 and 702.  The principal difference is
that proceedings before the Board are conducted in writing,
and the Board's actions in a particular case are based upon
the written record therein.  For example, the Board does not
preside at the taking of testimony.  Rather, all testimony
is taken out of the presence of the Board, and the written
transcripts thereof, together with any exhibits thereto, are
then filed with the Board.  Indeed, a party to a proceeding
before the Board need never come to the offices of the Board
at all, unless the Board requests that the parties meet with
the Board at its offices for a pre-trial conference pursuant
to 37 CFR 2.120(i)(2), or unless the party wishes to argue
its case at oral hearing (an oral hearing is held only if
requested by a party to the proceeding).

An ex parte appeal, being appellate in nature, is a much
simpler and shorter procedure, involving only the filing of
briefs by the applicant and Examining Attorney, and, if
requested by the  applicant, an oral hearing.

The Board includes both interlocutory attorneys, and
administrative trademark judges (known also as Board
members).  Interlocutory motions, requests, and other
matters not actually or potentially dispositive of a
proceeding may be acted upon by a single Board judge, or by
a single interlocutory attorney to whom such authority has
been delegated.  See 37 CFR 2.127(c).  Decisions on the
case, and on potentially dispositive motions, are rendered
by a panel of at least three Board judges.  See Section 17
of the Act, 15 U.S.C. 1067.



103  Location and Address of Board

The Board is located at 2900 Crystal Drive, Ninth Floor,
Arlington, Virginia 22202-3513.  The mailing address of the
Board, however, is Box TTAB No Fee (or Box TTAB Fee),
Assistant Commissioner for Trademarks, 2900 Crystal Drive,
Arlington, Virginia 22202-3513.  If papers are not
accompanied by a fee, "Box TTAB No Fee" should be used.  If
papers are accompanied by a fee, "Box TTAB Fee" should be
used.



104  Business to be Conducted in Writing

37 CFR 1.2 All business with the Patent and Trademark
Office should be transacted in writing.  The personal
attendance of applicants or their attorneys or agents at the
Patent and Trademark Office is unnecessary.  The action of
the Patent and Trademark Office will be based exclusively on
the written record in the Office.  No attention will be paid
to any alleged oral promise, stipulation, or understanding
in relation to which there is disagreement or doubt.

All business with the Board should be transacted in writing.
The personal attendance of parties or their attorneys or
other authorized representatives at the offices of the Board
is unnecessary, except in the case of a pre-trial conference
as provided in 37 CFR 2.120(i)(2), or upon oral argument at
final hearing, if a party so desires, as provided in 37 CFR
2.129.  Decisions of the Board will be based exclusively on
the written record before it.  Cf. In re Sovran Financial
Corp., 25 USPQ2d 1537 (Comm'r 1992); In re Merck & Co., 24
USPQ2d 1317 (Comm'r 1992); and In re Investigacion Y
Desarrollo de Cosmeticos S.A., 19 USPQ2d 1717 (Comm'r 1991).



105  Contact With Board Personnel

37 CFR 10.93(b) In an adversary proceeding, including any
inter partes proceeding before the Office, a practitioner
shall not communicate, or cause another to communicate, as
to the merits of the cause with a judge, official, or Office
employee before whom the proceeding is pending, except:
     (1) In the course of official proceedings in the cause.
     (2) In writing if the practitioner promptly delivers a
copy of the writing to opposing counsel or to the adverse
party if the adverse party is not represented by a
practitioner.
     (3) Orally upon adequate notice to opposing counsel or
to the adverse party if the adverse party is not represented
by a practitioner.
     (4) As otherwise authorized by law.

Parties or their attorneys or other authorized
representatives may telephone the Board, or come to the
offices of the Board, to inquire about the status of a case
or to ask for procedural information, but not to discuss the
merits of a case or of any particular issue.  The telephone
number of the Board is (703) 308-9300.  If an inquiry
involves a particular case, the person making the inquiry
should be prepared to give the number of the proceeding or
application in question.



106  Identification, Signature, and Form of Papers

106.01  Identification of Papers

A paper filed in a proceeding before the Board should bear
at its top the heading "IN THE UNITED STATES PATENT AND
TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL
BOARD," followed by the name and number of the inter partes
proceeding (or, in the case of an ex parte appeal, the
application) to which it relates.  Cf. 37 CFR 1.5(c).  The
paper should also include a title describing its nature,
i.e., "Notice of Opposition," "Answer," "Motion to Compel,"
"Brief in Opposition to Respondent's Motion for Summary
Judgment," "Notice of Reliance," etc.

Papers filed in an application which is the subject of an
inter partes proceeding before the Board should be filed
with the Board, and should bear at the top of its first page
both the application serial number, and the inter partes
proceeding number and title.  Similarly, requests under
Section 7 of the Act, 15 U.S.C. 1057, to amend, correct, or
surrender a registration which is the subject of a Board
inter partes proceeding, and any new power of attorney,
designation of domestic representative, or change of address
submitted in connection with such a registration, should be
filed with the Board, and should bear at the top of its
first page both the registration number, and the inter
partes proceeding number and title.  Cf. 37 CFR 1.5(c).



106.02  Signature of Papers

37 CFR 2.119(e) Every paper filed in an inter partes
proceeding, and every request for an extension of time to
file an opposition, must be signed by the party filing it,
or by the party's attorney or other authorized
representative, but an unsigned paper will not be refused
consideration if a signed copy is submitted to the Patent
and Trademark Office within the time limit set in the
notification of this defect by the Office.

37 CFR 10.14(e) No individual other than those specified in
paragraphs (a), (b), and (c) of this section will be
permitted to practice before the Office in trademark cases.
Any individual may appear in a trademark or other non-patent
case in his or her own behalf.  Any individual may appear in
a trademark case for (1) a firm of which he or she is a
member or (2) a corporation or association of which he or
she is an officer and which he or she is authorized to
represent, if such firm, corporation, or association is a
party to a trademark proceeding pending before the Office.

37 CFR 10.18(a) Except where a copy, including a photocopy
or facsimile transmission, of a personally signed piece of
correspondence is permitted to be filed pursuant to 1.4 of
this chapter, every piece of correspondence filed by a
practitioner on behalf of himself or herself or representing
an applicant or a party to a proceeding in the Patent and
Trademark Office must bear an original signature personally
signed in permanent ink by such practitioner except for
correspondence which is required to be signed by the
applicant or party.  The signature of a practitioner on
correspondence filed by the practitioner, regardless of
whether the correspondence has an original signature or is a
copy, including a photocopy or facsimile transmission, of
correspondence bearing an original signature, constitutes a
certificate that:
     (1) The correspondence has been read by the
practitioner;
     (2) The filing of the correspondence is authorized;
     (3) To the best of practitioner's knowledge,
information, and belief, there is good ground to support the
correspondence, including any allegations of improper
conduct contained or alleged therein; and
     (4) The correspondence is not interposed for delay.

(b) Any practitioner knowingly violating the provisions of
this section is subject to disciplinary action.  See
10.23(c)(15).

37 CFR 1.4(d) Each piece of correspondence, except as
provided in paragraphs (e) and (f) of this section, filed in
a patent or trademark application, reexamination proceeding,
patent or trademark interference proceeding, patent file or
trademark registration file, trademark opposition
proceeding, trademark cancellation proceeding, or trademark
concurrent use proceeding, which requires a person's
signature, must either:
     (1) be an original, that is, have an original signature
personally signed in permanent ink by that person; or
     (2) be a copy, such as a photocopy or facsimile
transmission (1.6(d)), or an original.  In the event that a
copy of the original is filed, the original should be
retained as evidence of authenticity.  If a question of
authenticity arises, the Patent and Trademark Office may
require submission of the original.

37 CFR 1.4(f) When a document that is required by statute
to be certified must be filed, a copy, including a photocopy
or facsimile transmission, of the certification is not
acceptable.

Every paper filed in an inter partes or ex parte proceeding
before the Board, and every request for an extension of time
to file an opposition, must be personally signed by the
party filing it, or by the party's attorney or other
authorized representative, as appropriate.  See 37 CFR
1.4(d); 2.119(e); and 10.18(a).

A party may act in its own behalf in a proceeding before the
Board, or the party may be represented by an attorney or
other authorized representative.  See 37 CFR 10.14, and
TBMP 114.01.  Cf. 37 CFR 2.11.  When an individual who is
a party to a Board proceeding elects to act in his or her
own behalf, the individual must sign any papers which he or
she files with the Board.  If a party which is a partnership
elects to act in its own behalf, papers filed by the
partnership should be signed by a partner.  If a party which
is a corporation or association elects to act in its own
behalf, papers filed by the corporation or association
should be signed by an officer thereof who is authorized to
sign for the corporation or association.  See 37 CFR
510.14(e).

If a paper is filed on behalf of a party by the party's
attorney or other authorized representative, it must bear
the signature of, and be personally signed by, that attorney
or other representative, unless it is a paper required to be
signed by the party.  An attorney or other authorized
representative who signs a paper, and then files it with the
Board on behalf of a party, should remember that his or her
signature to the paper constitutes a certification of the
elements specified in 37 CFR 10.18(a), and that a knowing
violation of the provisions of that rule by an attorney or
other authorized representative will leave him or her open
to disciplinary action.  See 37 CFR 10.18.  Cf. FRCP 11.
For information concerning the meaning of the designation
"other authorized representative," see TBMP 114.04.

Under the written signature on a paper filed in a proceeding
before the Board there should appear the name, in typed or
printed form, of the person who signed; a description of the
capacity in which he or she signed (e.g., as the individual
who is a party, if the filing party is an individual; as a
corporate officer, if the filing party is a corporation; as
the filing party's attorney; etc.); and his or her business
address and telephone number.  The inclusion of the signing
person's address and phone number on the paper itself is
vital because mail sent to the PTO is opened in the PTO Mail
Room, and ordinarily the envelopes are discarded there
before the mail is sent on to its ultimate destination
within the PTO.  Thus, the Board rarely sees the return
addresses on the mailing envelopes of papers filed in Board
proceedings.

It is not appropriate for one person to sign a paper for
another person, as, for example, "John Smith, for John Doe"
or "John Doe, by John Smith."  See 37 CFR 2.119(e) and
10.18(a); In re Cowan, 18 USPQ2d 1407 (Comm'r 1990); and
Cerveceria India Inc. v. Cerveceria Centroamericana, S.A.,
10 USPQ2d 1064 (TTAB 1989), aff'd Cerveceria
Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307 (Fed. Cir. 1989).

Either the original of the personally signed paper, or a
legible copy thereof, may be filed with the Board.  If a
copy is filed, the original should be retained as evidence
of authenticity.  If a question as to the authenticity of a
filed copy arises, the PTO may require submission of the
original.  See 37 CFR 1.4(d).  For information concerning
fax copies, see TBMP 107.

Notwithstanding the requirement that a paper filed before
the Board be signed, an unsigned paper will not be refused
consideration if a signed copy is submitted to the Board
within the time limit set in the notification of this defect
by the Board.  See 37 CFR 2.119(e).  Similarly, a telegram,
being in effect an unsigned paper, will not be refused
consideration if the subject matter thereof is subsequently
presented in a properly signed paper filed within the time
limit set by the Board in its notification of the defect.



106.03  Form of Papers

Apart from proper identification and signature, there is no
particular form which papers filed in proceedings before the
Board must follow.  Nor does the PTO have printed forms for
any papers filed in such proceedings.  As an aid to
litigants, however, the PTO has prepared suggested formats
for certain types of papers filed in Board proceedings.
These include the notice of opposition, petition for
cancellation, notice of appeal to the Board, designation of
domestic representative, certificate of mailing or
certificate of transmission under 37 CFR 1.8(a), and
certificate of "Express Mail" under 37 CFR 1.10.  Copies of
these formats are included in this manual at the place where
the particular type of paper or certificate is discussed
(e.g., the suggested format for a notice of opposition is
included in the chapter on pleadings), as well as in an
appendix to the manual.

A paper filed with the Board may be either the original or a
legible copy thereof, on good quality paper.  See, with
respect to fax copies:  TBMP 107.  Ordinarily, extra copies
of a paper should not be submitted.  See SDT Inc. v.
Patterson Dental Co., 30 USPQ2d 1707 (TTAB 1994).  However,
in inter partes cases, briefs at final hearing must be
submitted in triplicate (see 37 CFR 2.128(b)); stipulations
to extend trial dates should be submitted in multiple form,
i.e., one copy for the Board proceeding file plus as many
other copies as there are parties (see 37 CFR 2.121(d));
and the notice of opposition and petition for cancellation
must be submitted in duplicate (see 37 CFR 2.104(a) and
2.112(a)).  In addition, requests for extensions of time to
oppose should be filed in triplicate (see 37 CFR 2.102(e)).

With the exception of deposition transcripts, exhibits
thereto, and inter partes briefs on the case, papers filed
with the Board should not be bound.  Proceeding papers, with
the noted exceptions, are placed by the Board on the prongs
of the proceeding file to which they pertain.  See TBMP
120.01.  If proceeding papers, other than the noted
exceptions, are filed in bound form, the Board must remove
the binding in order to place the papers on the proceeding
file prongs.  Because of their size, deposition transcripts,
exhibits thereto, and inter partes briefs on the case are
not kept by the Board on proceeding file prongs, and thus
may be filed in bound form.

Briefs at final hearing in inter partes cases, and appeal
briefs in ex parte cases, are required to be submitted in
typewritten or printed form, double spaced, on letter-size
paper.  See 37 CFR 2.128(b) and 2.142(b)(2).  The Board
prefers that other papers, too, be submitted in typewritten
or printed form, double spaced.  Although other papers may
be submitted on either legal or letter-size paper, letter-
size paper is recommended.  This is the size preferred by
many Federal district courts, and their size preference is
significant because review of a final decision of the Board
may be had either by way of appeal to the Court of Appeals
for the Federal Circuit or by way of civil action in a
Federal district court.  See Section 21 of the Act of 1946,
15 U.S.C. 1071; 37 CFR 2.145; and TBMP 901-903.



107  How and Where to File Papers and Fees

37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit.
Correspondence received in the Patent and Trademark Office
is stamped with the date of receipt except as follows:
     (1) No correspondence is received in the Patent and
Trademark Office on Saturdays, Sundays or Federal holidays
within the District of Columbia;
     (2) Correspondence filed in accordance with 1.10 will
be stamped with the date of deposit as "Express Mail" with
the United States Postal Service unlesss the date of deposit
is a Saturday, Sunday, or Federal holiday within the
District of Columbia in which case the date stamped will be
the next succeeding day which is not a Saturday, Sunday, or
Federal holiday within the District of Columbia;
     (3) Correspondence transmitted by facsimile to the
Patent and Trademark Office will be stamped with the date on
which the complete transmission is received in the Patent
and Trademark Office unless that date is a Saturday, Sunday,
or Federal holiday within the District of Columbia, in which
case the date stamped will be the next succeeding day which
is not a Saturday, Sunday, or Federal holiday within the
District of Columbia.

(b) Patent and Trademark Office Post Office pouch.
Mail placed in the Patent and Trademark Office pouch up to
midnight on any day, except Saturdays, Sundays and Federal
holidays within the District of Columbia, by the post office
at Washington, D.C. serving the Patent and Trademark Office,
is considered as having been received in the Patent and
Trademark Office on the day it was so placed in the pouch by
the U.S. Postal Service.

(c) Correspondence delivered by hand.
In addition to being mailed, correspondence may be delivered
by hand during hours the Office is open to receive
correspondence.

(d) Facsimile transmission.
Except in the cases enumerated below, correspondence,
including authorizations to charge a deposit account, may be
transmitted by facsimile.  The receipt date accorded to the
correspondence will be the date on which the complete
transmission is received in the Patent and Trademark Office,
unless that date is a Saturday, Sunday, or Federal holiday
within the District of Columbia.  See 1.6(a)(3).  To
facilitate proper processing, each transmission session
should be limited to correspondence to be filed in a single
application or other proceeding before the Patent and
Trademark Office.  The application number of a patent or
trademark application, the control number of a reexamination
proceeding, the interference number of an interference
proceeding, the patent number of a patent, or the
registration number of a trademark should be entered as a
part of the sender's identification on a facsimile cover
sheet.  Facsimile transmissions are not permitted and if
submitted, will not be accorded a date of receipt, in the
following situations:
     (1) Correspondence as specified in 1.4(e), requiring
an original signature;
     (2) Certified documents as specified in 1.4(f);
     (3) Correspondence which cannot receive the benefit of
the certificate of mailing or transmission as specified in
1.8(a)(2)(i)(A) through (D) and (F); 1.8(a)(2)(ii)(A) and
(D); and 1.8(a)(2)(iii)(A);
     (4) Drawings submitted under 1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
     (5) A request for reexamination under 1.510;
     (6) Correspondence to be filed in a patent application
subject to a secrecy order under 5.1 through 5.8 of this
chapter and directly related to the secrecy order content of
the application;
     (7) Requests for cancellation or amendment of a
registration under section 7(e) of the Trademark Act, 15
U.S.C. 1057(e); and certificates of registration surrendered
for cancellation or amendment under section 7(e) of the
Trademark Act, 15 U.S.C. 1057(e);
     (8) Correspondence to be filed with the Trademark Trial
and Appeal Board, except the notice of ex parte appeal;
     (9) Correspondence to be filed in an interference
proceeding which consists of a preliminary statement under
1.621; a transcript of a deposition under 1.676 or
interrogatories, cross-interrogatories, or recorded answers
under 1.684(c); or an evidentiary record and exhibits under
1.653.

(e) Interruptions in U.S. Postal Service.
If interruptions or emergencies in the United States Postal
Service which have been so designated by the Commissioner
occur, the Patent and Trademark Office will consider as
filed on a particular date in the Office any correspondence
which is:
     (1) Promptly filed after the ending of the designated
interruption or emergency; and
     (2) Accompanied by a statement indicating that such
correspondence would have been filed on that particular date
if it were not for the designated interruption or emergency
in the United States Postal Service.  Such statement must be
a verified statement if made by a person other than a
practitioner as defined in 10.1(r) of this chapter.

Papers relating to proceedings before the Board, and not
accompanied by a fee, may be filed during regular office
hours by delivery (by hand or by courier service) to the
Board at 2900 Crystal Drive, South Tower Building, Ninth
Floor, Arlington, Virginia 22202-3513; or to the Intake
Processing Unit at 2900 Crystal Drive, South Tower Building,
Third Floor, Room 3C06, Arlington, Virginia 22202-3513; or
to the Customers' Window at 2011 S. Clark Place, Crystal
Plaza Building 2, Room 1B-03, Arlington, Virginia 22202; or
(by courier delivery only) to the Patent and Trademark
Office Mail Room (Correspondence and Mail Division) at 2011
S. Clark Place, Crystal Plaza Building 2, Room 1A-01,
Arlington, Virginia 22202 (but delivery of papers intended
for the Board to one of the Crystal Plaza Building 2
locations is not recommended, because papers delivered to
these locations, rather than to one of the South Tower
Building locations, may take considerably longer to reach
the Board).  Such papers may also be filed by depositing
them in the mail addressed to the Board's mailing address
(Box TTAB No Fee, Assistant Commissioner for Trademarks,
2900 Crystal Drive, Arlington, Virginia 22202-3513).  See
"Change of Address For Trademark Applications and Trademark
Related [sic] Papers," 1163 TMOG 80 (June 28, 1994).  The
Board's physical address, which is subject to change, should
not be used on papers sent to the Board.

Papers accompanied by fees may be filed by mailing them to
the Board's mailing address for fee papers, i.e., Box TTAB
Fee, Assistant Commissioner for Trademarks, 2900 Crystal
Drive, Arlington, Virginia 22202-3513.  Papers with fees may
also be filed by delivery (by hand or by courier service) to
the Intake Processing Unit at 2900 Crystal Drive, South
Tower Building, Third Floor, Room 3C06, Arlington, Virginia
22202-3513 (from which the paper will be routed in due
course to the PTO's Office of Finance for handling of the
fee); or to the Finance Window at 2900 Crystal Drive, South
Tower Building, Third Floor, Arlington, Virginia 22202-3513
(which will record the fee as "received" or "posted"
immediately and then give the paper to the Intake Processing
Unit on the same floor--this procedure saves the time
involved in routing a paper to the Office of Finance); or to
the Customers' Window at 2011 S. Clark Place, Crystal Plaza
Building 2, Room 1B-03, Arlington, Virginia 22202; or (by
courier delivery only) to the Patent and Trademark Office
Mail Room (Correspondence and Mail Division) at 2011 S.
Clark Place, Crystal Plaza Building 2, Room 1A-01,
Arlington, Virginia 22202 (but delivery of papers intended
for the Board to one of the Crystal Plaza Building 2
locations is not recommended, because papers delivered to
these locations, rather than to one of the South Tower
Building locations, may take considerably longer to reach
the Board).

To facilitate the handling of mail intended for the Board,
the PTO has established two special box designations which
may be used thereon.  The box designations are as follows:

     BOX TTAB       For use on papers intended for the
     NO FEE         Board which do not include a fee,
                    such as extension requests, motions,
                    briefs, etc.

     BOX TTAB       For use on papers intended for the
     FEE            Board which include a fee, such as
                    a notice of opposition, a petition
                    for cancellation, or a notice of
                    appeal in an ex parte appeal

It is strongly recommended that these box designations be
used on all papers intended for the Board.  Documents being
sent to a TTAB box should be addressed as follows (with the
designation "BOX TTAB" on one line, and the "NO FEE" or
"FEE" indicator on the line below):

     BOX TTAB
     FEE (or "NO FEE")
     Assistant Commissioner for Trademarks
     2900 Crystal Drive
     Arlington, Virginia 22202-3513

For best results, the TTAB box designation, including the
"FEE/NO FEE" indicator, should be used both on the mailing
envelope and on the cover sheet or first page of each
document intended for the Board.  Preferably, envelopes
addressed to a TTAB box designation should include only
documents designated for the box specified on the envelope.
The inclusion in a single envelope of documents destined for
more than one location may cause delay in the processing of
those documents.  However, documents destined for more than
one location may be included in a single envelope (albeit
this is not the preferred practice), provided that each
document bears on its cover sheet or first page its box
designation, including the "FEE/NO FEE" indicator, and
provided also that each complete filing is stapled or
secured in some fashion.  If documents destined for more
than one location are included in a single envelope, all of
the box designations, with "FEE/NO FEE" indicators, of the
included documents should be listed on the envelope.  See
"Special Boxes and 'Fee/No Fee' Indicators For Trademark-
Related Mail And Guidelines For Filing Requests To Extend
Time To Oppose With The Trademark Trial And Appeal Board
(TTAB)," 1168 TMOG 89 (November 22, 1994).

With the exception of the notice of appeal in an ex parte
appeal, papers to be filed with the Board may not be filed
by facsimile transmission ("fax").  See 37 CFR 1.6(d)(8).
If papers other than the notice of appeal in an ex parte
appeal are filed with the Board by fax transmission, they
will not receive a filing date.

However, the Board will accept, and give filing dates to,
fax copies of papers, when the fax copies are hand delivered
to the Board, or are sent to the Board by mail or courier
service.  In addition, the Board may request that a party
send by fax transmission a copy of a paper which has already
been filed in the PTO by one of the acceptable methods
described above, such as by mail, but which paper has not
yet been received by the Board and/or entered in the
proceeding file for which it is intended.  The Board may
make such a request when, for example, (1) a Board attorney
needs a copy of the paper in order to make an immediate
ruling, by telephone conference, on a motion, or (2) the
Board needs to see a copy of a paper which was assertedly
filed in the PTO, but which the Board does not have or
cannot locate.  When the Board requests that a copy of a
paper be sent to the Board by fax transmission, the name of
the Board employee making the request must appear on the
cover sheet of the transmission, so that the Board staff
member receiving the transmission will know that the
transmission is authorized, and can immediately give the
paper to the employee who requested it.  If the name of the
requesting Board employee does not appear on the cover
sheet, the staff member receiving the transmission will
presume that the transmission is unauthorized, and return
the paper to its sender.

When correspondence allowed to be submitted by fax
transmission is submitted in that manner, the requirements
of 37 CFR 1.6(d) should be met.  In addition, it is
recommended that the fax cover sheet specify the number of
pages being transmitted, and the name, address, fax number,
and telephone number of the transmitting party.

A document transmitted by fax must be legible.  The document
that is used as the original for the fax transmission should
be retained by the sender as evidence of the content of the
transmission.  See 37 CFR 1.4(d).

Correspondence filed by fax transmission should be
transmitted to the fax number of the PTO location for which
it is intended.  Transmission of correspondence to the fax
number of the wrong PTO location will cause delay in
matching the correspondence with the file to which it
pertains.  The Board itself has several different fax
numbers.  The Board fax number to be used for a notice of
appeal in an ex parte appeal is (703) 308-9333.  In those
cases where the Board requests that a party send a copy of
some other paper by fax transmission, the party will be
provided with the appropriate fax number.

The Board's fax machines are attended between the business
hours of 8:30 a.m. and 5:00 p.m., Eastern Standard Time,
Monday through Friday, excluding holidays.  Normally, the
machines may be accessed 24 hours a day.  However, there may
be times when reception is not possible because of equipment
failure or maintenance requirements.  Accordingly, persons
transmitting correspondence to the Board by fax should be
cautious about relying on the availability of this service
near time deadlines, such as the end of the six-month period
for filing a notice of appeal in an ex parte appeal to the
Board.

For information concerning how to pay fees, see TBMP 118.



108  Filing Receipts

When a paper (with or without a fee) intended for the Board
is filed in the PTO, it is possible to obtain a receipt
evidencing the filing, and the date of such filing.  In the
case of a paper sent by mail, a receipt may be obtained by
submitting with the paper a stamped, self-addressed postcard
with sufficient information to identify clearly the paper,
the party in whose behalf the paper is being filed, and the
proceeding or application in connection with which the paper
is being filed.  When the PTO receives the paper and the
postcard, it will date-stamp both of them and mail the
postcard back.

If a paper intended for the Board is delivered by hand or by
courier service to the offices of the Board, or to the
Intake Processing Unit at 2900 Crystal Drive, South Tower
Building, Third Floor, Room 3C06, Arlington, Virginia 22202-
3513, or to the Finance Window on the same floor of that
building, the receipt may take the form of a postcard
bearing appropriate identifying information, or a duplicate
copy of the paper, or a transmittal letter with appropriate
identifying information.  The receipt and the paper will be
date-stamped and the receipt will be handed back to the
person who delivered the paper.  If a paper is delivered by
hand or by courier service to the Customers' Window at 2011
S. Clark Place, Crystal Plaza Building 2, Room 1B03,
Arlington, Virginia 22202, the receipt may be in the form of
a postcard, or, alternatively, a handwritten receipt will be
furnished.  If a paper is delivered by courier service to
the Patent and Trademark Office Mail Room (Correspondence
and Mail Division) at 2011 S. Clark Place, Crystal Plaza
Building 2, Room 1A-01, Arlington, Virginia 22202, the
postcard receipt must be used.

When a paper is submitted to the Board by fax transmission,
the Board will not formally acknowledge receipt of the
paper.  However, the Board fax machine usually will confirm
to the sending unit that the transmission is complete.  With
the exception of the notice of appeal in an ex parte appeal
to the Board, papers intended for the Board may not be filed
by fax transmission.  See 37 CFR 1.6(d)(8).  See also TBMP
107.



109  Filing Date

37 CFR 1.6 Receipt of correspondence.
(a) Date of receipt and Express Mail date of deposit.
Correspondence received in the Patent and Trademark Office
is stamped with the date of receipt except as follows:
     (1) No correspondence is received in the Patent and
Trademark Office on Saturdays, Sundays or Federal holidays
within the District of Columbia;
     (2) Correspondence filed in accordance with 1.10 will
be stamped with the date of deposit as "Express Mail" with
the United States Postal Service unlesss the date of deposit
is a Saturday, Sunday, or Federal holiday within the
District of Columbia in which case the date stamped will be
the next succeeding day which is not a Saturday, Sunday, or
Federal holiday within the District of Columbia;
     (3) Correspondence transmitted by facsimile to the
Patent and Trademark Office will be stamped with the date on
which the complete transmission is received in the Patent
and Trademark Office unless that date is a Saturday, Sunday,
or Federal holiday within the District of Columbia, in which
case the date stamped will be the next succeeding day which
is not a Saturday, Sunday, or Federal holiday within the
District of Columbia.

(b) Patent and Trademark Office Post Office pouch.
Mail placed in the Patent and Trademark Office pouch up to
midnight on any day, except Saturdays, Sundays and Federal
holidays within the District of Columbia, by the post office
at Washington, D.C. serving the Patent and Trademark Office,
is considered as having been received in the Patent and
Trademark Office on the day it was so placed in the pouch by
the U.S. Postal Service.

(c) Correspondence delivered by hand.
In addition to being mailed, correspondence may be delivered
by hand during hours the Office is open to receive
correspondence.

(d) Facsimile transmission.
Except in the cases enumerated below, correspondence,
including authorizations to charge a deposit account, may be
transmitted by facsimile.  The receipt date accorded to the
correspondence will be the date on which the complete
transmission is received in the Patent and Trademark Office,
unless that date is a Saturday, Sunday, or Federal holiday
within the District of Columbia.  See 1.6(a)(3).  To
facilitate proper processing, each transmission session
should be limited to correspondence to be filed in a single
application or other proceeding beforethe Patent and
Trademark Office.  The application number of a patent or
trademark application, the control number of a reexamination
proceeding, the interference number of an interference
proceeding, the patent number of a patent,
or the registration number of a trademark should be entered
as a part of the sender's identification on a facsimile
cover sheet.  Facsimile transmissions are not permitted and
if submitted, will not be accorded a date of receipt, in the
following situations:
     (1) Correspondence as specified in 1.4(e), requiring
an original signature;
     (2) Certified documents as specified in 1.4(f);
     (3) Correspondence which cannot receive the benefit of
the certificate of mailing or transmission as specified in
1.8(a)(2)(i)(A) through (D) and (F); 1.8(a)(2)(ii)(A) and
(D); and 1.8(a)(2)(iii)(A);
     (4) Drawings submitted under 1.81, 1.83 through 1.85,
1.152, 1.165, 1.174, 1.437, 2.51, 2.52, or 2.72;
     (5) A request for reexamination under 1.510;
     (6) Correspondence to be filed in a patent application
subject to a secrecy order under 5.1 through 5.8 of this
chapter and directly related to the secrecy order content of
the application;
     (7) Requests for cancellation or amendment of a
registration under section 7(e) of the Trademark Act, 15
U.S.C. 1057(e); and certificates of registration surrendered
for cancellation or amendment under section 7(e) of the
Trademark Act, 15 U.S.C. 1057(e);
     (8) Correspondence to be filed with the Trademark Trial
and Appeal Board, except the notice of ex parte appeal;
     (9) Correspondence to be filed in an interference
proceeding which consists of a preliminary statement under
1.621; a transcript of a deposition under 1.676 or
interrogatories, cross-interrogatories, or recorded answers
under 1.684(c); or an evidentiary record and exhibits under
1.653.

(e) Interruptions in U.S. Postal Service.
If interruptions or emergencies in the United States Postal
Service which have been so designated by the Commissioner
occur, the Patent and Trademark Office will consider as
filed on a particular date in the Office any correspondence
which is:
     (1) Promptly filed after the ending of the designated
interruption or emergency; and
     (2) Accompanied by a statement indicating that such
correspondence would have been filed on that particular date
if it were not for the designated interruption or emergency
in the United States Postal Service.  Such statement must be
a verified statement if made by a person other than a
practitioner as defined in 10.1(r) of this chapter.

Correspondence received in the PTO is stamped with the date
of receipt (i.e., the "filing" date) unless the
correspondence is filed by the "Express Mail" procedure
provided in 37 CFR 1.10, or by fax transmission (for
correspondence which is permitted to be filed by fax) in
accordance with 37 CFR 1.6(d), in which case the
correspondence is date-stamped as described below.  See 37
CFR 1.6(a).  The "date of receipt" of correspondence mailed
to the PTO is the date stamped by the Post Office on the
mail bags in which the correspondence is delivered to the
PTO.  See 37 CFR 1.6(b), and In re Klein, 6 USPQ2d 1528,
1536 (Dep't Comm.. 1986).

When correspondence intended for the Board is filed by the
"Express Mail Post Office to Addressee" service of the
United States Postal Service with a certificate of mailing,
in accordance with the procedure described in 37 CFR 1.10,
it is stamped with the date the correspondence is shown to
have been deposited with the United States Postal Service
(unless the date of deposit is a Saturday, Sunday, or
Federal holiday within the District of Columbia, in which
case the date assigned will be the next succeeding day which
is not a Saturday, Sunday, or Federal holiday within the
District of Columbia).  See 37 CFR 1.6(a)(2) and 1.10.  If
the correspondence is filed by the "Express Mail Post Office
to Addressee" service without a certificate of mailing by
"Express Mail," or with a deficient certificate, and the
correspondence is actually received at the PTO bearing a
clear indication on the "Express Mail" label of the "date
in," the paper will be stamped with the "date in" as the
date of receipt (unless the "date in" is a Saturday, Sunday,
or Federal holiday within the District of Columbia).  See
"Waiver of Certificate of Mailing Requirement Under 37 CFR
1.10," 1174 TMOG 92 (May 16, 1995).

If correspondence which is permitted to be filed by fax
transmission to the Board is filed by that method with a
certificate of transmission in accordance with 37 CFR
1.8(a), the transmission date specified in the certificate
of transmission is used for purposes of determining the
timeliness of the correspondence.  The date of receipt, as
described in 37 CFR 1.6(a)(3), is used for all other
purposes.  See 37 CFR 1.8(a).  For further information
concerning correspondence which may be filed by fax
transmission to the Board, see TBMP 107.

When correspondence intended for the Board is filed by first-
class mail with a certificate of mailing, in accordance with
the procedure described in 37 CFR 1.8(a), it is stamped
with the date of receipt of the correspondence in the PTO,
i.e., the date on the mail bags in which the correspondence
is delivered to the PTO.  The mailing date specified in the
certificate of mailing is used for purposes of determining
the timeliness of the correspondence.  The date of receipt
is used for all other purposes.  See 37 CFR 1.6(a) and
1.8(a).

For information concerning the date stamped by the PTO on
correspondence when interruptions or emergencies occur in
the United States Postal Service, see 37 CFR 1.6(e).



110  Certificate of Mailing or Transmission Procedure

110.01  In General

37 CFR 1.8 Certificate of mailing or transmission.
(a) Except in the cases enumerated in paragraph (a)(2) of
this section, correspondence required to be filed in the
Patent and Trademark Office within a set period of time will
be considered as being timely filed if the procedure
described in this section is followed.  The actual date of
receipt will be used for all other purposes.
     (1) Correspondence will be considered as being timely
filed if:
          (i) the correspondence is mailed or transmitted
prior to expiration of the set period of time by being:
               (A) deposited with the U.S. Postal Service
with sufficient postage as first class mail addressed to the
Commissioner of Patents and Trademarks, Washington, D.C.
20231; or
               (B) transmitted by facsimile to the Patent
and Trademark Office in accordance with 1.6(d); and
               (ii) the correspondence includes a
certificate for each piece of correspondence stating the
date of deposit or transmission.  The person signing the
certificate should have reasonable basis to expect that the
correspondence would be mailed or transmitted on or before
the date indicated.
     (2) The procedure described in paragraph (a)(1) of this
section does not apply to, and no benefit will be given to a
Certificate of Mailing or Transmission on the following:
          (i) Relative to Patents and Patent Applications
                        *     *     *
               (ii) Relative to Trademark Registrations and
Trademark Applications
               A. The filing of a trademark application;
               B. The filing of an affidavit showing that a
mark is still in use or containing an excuse for nonuse
under section 8(a) or (b) or section 12(c) of the Trademark
Act, 15 U.S.C. 1058(a), 1058(b), 1062(c);
               C. The filing of an application for renewal
of a registration under section 9 of the Trademark Act, 15
U.S.C. 1059;
               D. The filing of a petition to cancel a
registration of a mark under section 14, subsection (1) or
(2) of the Trademark Act, 15 U.S.C. 1064;
               E. In an application under section 1(b) of
the Trademark Act, 15 U.S.C. 1051(b), the filing of an
amendment to allege use in commerce under section 1(c) of
the Trademark Act, 15 U.S.C. 1051(c); or the filing of a
statement of use under section 1(d)(1) of the Trademark Act,
15 U.S.C. 1051(d)(1);
               F. In an application under section 1(b) of
the Trademark Act, 15 U.S.C. 1051(b), the filing of a
request under section 1(d)(2) of the Trademark Act, 15
U.S.C. 1051(d)(2), for an extension of time to file a
statement of use under  section 1(d)(1) of the Trademark
Act, 15 U.S.C. 1051(d)(1).
              (iii) Relative to Disciplinary Proceedings
               A. Correspondence filed in connection with a
disciplinary proceeding under Part 10 of this chapter.
               B. Reserved.

(b) In the event that correspondence is considered timely
filed by being mailed or transmitted in accordance with
paragraph (a) of this section, but not received in the
Patent and Trademark Office, and the application is held to
be abandoned or the proceeding dismissed, terminated, or
decided with prejudice, the correspondence will be
considered timely if the party who forwarded such
correspondence:
     (1) informs the Office of the previous mailing or
transmission of the correspondence promptly after becoming
aware that the Office has no evidence of receipt of the
correspondence,
     (2) supplies an additional copy of the previously
mailed or transmitted correspondence and certificate, and
     (3) includes a statement which attests on a personal
knowledge basis or to the satisfaction of the Commissioner
to the previous timely mailing or transmission.  Such
statement must be a verified statement if made by a person
other than a practitioner as defined in 10.1(r) of this
chapter.  If the correspondence was sent by facsimile
transmission, a copy of the sending unit's report confirming
transmission may be used to support this statement.

(c) The Office may require additional evidence to determine
if the correspondence was timely filed.

Except in certain instances, specified in 37 CFR 1.8(a), as
amplified by 37 CFR 1.6(d), correspondence required to be
filed within a set period of time will be considered as
being timely filed, even though the correspondence is not
received by the PTO until after the expiration of the set
period, if, prior to the expiration of the set period, (1)
the correspondence is mailed to the PTO by first-class mail,
with the proper address, or (for correspondence which is
permitted to be filed by fax) is transmitted to the PTO by
fax, in accordance with 37 CFR 1.6(d), and (2) includes a
certificate of mailing or transmission which meets the
requirements specified in 37 CFR 1.8(a).  See 37 CFR
1.8(a), and In re LS Bedding, 16 USPQ2d 1451 (Comm'r 1990).

In effect, the certificate of mailing or transmission
procedure permits certain types of correspondence, as
specified in 37 CFR 1.8(a) and 1.6(d), to be sent to the
PTO by first-class mail, or by fax transmission, even on the
due date for the correspondence and still be considered
timely, notwithstanding the fact that the mailed
correspondence will not be received in the PTO until after
the due date, or that the fax transmission may not, because
of equipment failure or maintenance requirements, be
completed until the next day.

However, the PTO, in its discretion, may require additional
evidence to determine if correspondence which bears a
certificate of mailing or a certificate of transmission was
timely filed, i.e., was mailed or transmitted on the date
stated in the certificate.  See 37 CFR 1.8(c), and In re
Klein, 6 USPQ2d 1547 (Comm'r 1987), aff'd sub nom. Klein v.
Peterson, 696 F. Supp. 695, 8 USPQ2d 1434 (D.D.C. 1988),
aff'd 866 F.2d 412, 9 USPQ2d 1558 (Fed. Cir. 1989), cert.
denied, 490 U.S. 1091, 109 S.Ct. 2432 (1989).

The certificate of mailing procedure applies to the filing
of all types of correspondence in Board proceedings, except
the filing of a petition to cancel a registration of a mark
under Section 14(1) or 14(2) of the Act, 15 U.S.C. 1064(1)
or 1064(2).  See 37 CFR 1.8(a), and TBMP 110.07.

The certificate of transmission procedure is available in
Board proceedings only for the filing of a notice of ex
parte appeal to the Board.  See 37 CFR 1.6(d) and 1.8(a),
and TBMP 107.



110.02  Requirements for Certificate

The requirements for filing trademark-related papers (except
for trademark-related documents sent to the Assignment
Branch for recordation and requests for certified copies of
trademark application and registration documents) by the
certificate of mailing or transmission procedure are as
follows:
     1.  Prior to the expiration of the set period, the
correspondence must be either (i) deposited with the U.S.
Postal Service, with sufficient postage as first-class mail,
addressed to the Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513, or (ii) (for
correspondence which is permitted to be filed by fax)
transmitted to the PTO by fax, in the manner described in 37
CFR 1.6(d); and
     2.  Each piece of correspondence must include a
certificate which states the date of deposit or
transmission, and which is signed (separate and apart from
any signature for the piece of correspondence itself) by a
person who has reasonable basis to expect that the
correspondence will be mailed or transmitted on or before
the date indicated.
See 37 CFR 1.8(a), and "Change of Address For Trademark
Applications and Trademark Related Papers," 1163 TMOG 80
(June 28, 1994).

Alternatively, until such time as 37 CFR 1.8 has been
amended to specify that trademark-related mail (except for
trademark-related documents sent to the Assignment Branch
for recordation and requests for certified copies of
trademark application and registration documents) must be
addressed to the Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513, such
correspondence may continue to be sent to the Commissioner
of Patents and Trademarks, Washington, D.C. 20231 address.
Any certificate of mailing used on correspondence sent to
the Washington, D.C. address should specify that address.
See "Change of Address For Trademark Applications and
Trademark Related Papers," 1163 TMOG 80 (June 28, 1994).

Trademark-related documents sent to the Assignment Branch
for recordation, and requests for certified copies of
trademark application and registration documents, should be
addressed to the Commissioner of Patents and Trademarks,
Washington, D.C. 20231.  If a certificate of mailing is used
on such correspondence, it should specify that address.

The certificate of mailing procedure may not be used for
mail sent to the Patent and Trademark Office from a foreign
country, because U.S. Postal Service first-class mail
services are not available in foreign countries.

A certificate of mailing or a certificate of transmission
should be clearly labeled as such.



110.03  Suggested Format

Shown below is a suggested format for a certificate of
mailing, under 37 CFR 1.8, for trademark-related mail
(except for trademark-related documents sent to the
Assignment Branch for recordation and requests for certified
copies of trademark application and registration documents)

          Certificate of Mailing

     I hereby certify that this correspondence
     is being deposited with the United States
     Postal Service with sufficient postage as
     first-class mail in an envelope addressed to:

     Assistant Commissioner for Trademarks
     2900 Crystal Drive
     Arlington, Virginia 22202-3513
                 .
     on ___________   _________________
              Date                    Signature
                        _________________
                               Typed or printed name
                        of person signing
                        certificate

See "Changes in Signature and Filing Requirements for
Correspondence filed in the Patent and Trademark Office,"
ll57 TMOG 86 ( December 28, 1993), and "Change of Address
For Trademark Applications and Trademark Related Papers,"
1163 TMOG 80 (June 28, 1994).

Shown below is a suggested format for a certificate of
transmission under 37 CFR 1.8:

          Certificate of Transmission

     I hereby certify that this correspondence is
     being facsimile transmitted to the Patent and
     Trademark Office on __________________
                        Date                       .
                    __________________
                                           Signature
                           __________________
                                  Typed or printed name
                           of person signing
                           certificate

See "Changes in Signature and Filing Requirements for
Correspondence filed in the Patent and Trademark Office,"
ll57 TMOG 86 ( December 28, 1993).



110.04  Location of Certificate

If one of the simple certificate of mailing or certificate
of transmission formats shown in TBMP 110.03 is used, it
may be applied by rubber stamp to the first page of the
correspondence, if feasible.  Otherwise, it should be
stamped or typed in its entirety on the last page of the
correspondence to which it pertains.  If the certificate is
typed, and there is not enough room on the last page to type
the certificate in its entirety, it should at least be
started on the last page, so that only part of it continues
over to another page.  The simple certificate of mailing or
certificate of transmission format should never be used by
itself on a separate page at the end of the correspondence.
If it is, and the page becomes detached from the rest of the
submission, there will be no way of determining the identity
of the correspondence to which it relates, and the benefit
of the certificate will be lost.

In some cases, there may not be room for a certificate of
mailing or a certificate of transmission on a piece of
correspondence.  In such a case, the certificate may be
typed on a separate sheet of paper securely attached to the
correspondence.  However, the simple certificate formats
shown in TBMP 110.03 are not appropriate for use on a
separate sheet of paper.  Rather, a certificate placed on a
separate sheet of paper must include additional information,
namely, a description of the nature of the correspondence to
which it pertains, as well as the identity of the
application, registration, or PTO proceeding in connection
with which the correspondence is being filed.  If there is
any doubt concerning the identity of the correspondence to
which a certificate of mailing or certificate of
transmission on a separate sheet pertains, the certificate
will not be accepted.



110.05  Loss of Certificate of Mailing

If a certificate of mailing is typed on a separate sheet of
paper attached to a piece of correspondence, and the
certificate becomes detached, after the correspondence is
filed in the PTO, and does not contain identifying
information sufficient to enable the PTO to associate the
certificate with the appropriate piece of correspondence,
the PTO will accept, as evidence that the certificate was
filed with the specified correspondence, a postcard receipt
(see TBMP 108) which identifies the separate certificate of
mailing sheet and the correspondence to which it was
attached; accompanied by a copy of the certificate of
mailing sheet as originally mailed.



110.06  Nonreceipt of Correspondence Bearing Certificate

In the event that correspondence intended for the PTO is
timely filed with an appropriate certificate of mailing or
certificate of transmission, pursuant to 37 CFR 1.8, but is
not received in the PTO, and there is a resulting PTO
action, in a proceeding or an application, which is adverse
to the submitting party, the correspondence will be
considered timely if the party which submitted it (1)
informs the PTO of the previous mailing or facsimile
transmission of the correspondence promptly after becoming
aware that the PTO has no evidence of receipt of the
correspondence, (2) supplies an additional copy of the
previously mailed or transmitted correspondence and
certificate, and (3) includes a statement attesting, on a
personal knowledge basis or to the satisfaction of the
Commissioner, to the previous timely mailing or
transmission.  The statement must be verified if it is made
by a person other than a practitioner, as defined in 37 CFR
10.1(r).  If the correspondence was filed by fax
transmission, a copy of the sending fax machine's report
confirming transmission may be used to support the
statement.  See 37 CFR 1.8(b).

For lost or misplaced correspondence intended for the Board,
the evidence required by 37 CFR 1.8(b) should be submitted
to the Board for consideration.  If the requirements of  37
CFR 1.8(b) cannot be met, the only alternative is a
petition to the Commissioner.



110.07  Excluded Filings

The certificate of mailing procedure is not applicable to
the filing of certain types of correspondence.  The excluded
filings include:
     (1)  A petition to cancel the registration of a mark
under Section 14(1) or 14(2) of the Act, 15 U.S.C. 1064(1)
or 1064(2);
     (2)  Certain other filings, as specified in 37 CFR
1.8(a), not pertaining to Board proceedings.

The certificate of mailing procedure is applicable to all
other types of filings in Board proceedings, including a
notice of opposition; a request for an extension of time to
oppose; a notice of appeal to the Board from a final refusal
of registration; a notice of appeal to the Court of Appeals
for the Federal Circuit from a decision of the Board; and a
notice of election (in an inter partes proceeding) to
proceed by civil action under Section 21(a)(1) of the Act of
1946, 15 U.S.C. 1071(a)(1), in response to another party's
appeal to the Court of Appeals for the Federal Circuit.

At present, the certificate of transmission procedure is not
applicable to any correspondence intended for the Board,
except for the notice of appeal in an ex parte appeal to the
Board.  See 37 CFR 1.6(d).  See also TBMP 107.



110.08  A Certificate of Mailing or Transmission is Not...

As is evident from the requirements for a certificate of
mailing, specified in 37 CFR 1.8(a), the certificate of
mailing procedure is not the same as mailing by certified
mail.  Correspondence sent to the Board by certified mail,
and not in compliance with the 37 CFR 1.8(a) requirements
for a certificate of mailing, will be stamped with the date
of receipt of the correspondence in the PTO, and that date
will be used for all purposes, including the timeliness of
the filing of the correspondence.  See 37 CFR 1.6 and 1.8.

Further, a certificate of mailing or certificate of
transmission is not the equivalent of a certificate of
service.  A certificate of mailing or certificate of
transmission indicates when correspondence was sent to the
PTO pursuant to the provisions of 37 CFR 1.8(a).  The
mailing date recited in a certificate of mailing, or the
transmission date recited in a certificate of transmission,
is used for purposes of determining the timeliness of the
filing of the correspondence bearing the certificate.  A
certificate of service, on the other hand, indicates the
date when a copy of the correspondence was served (by hand
delivery, first-class mail, "Express Mail," or overnight
courier) upon another party.  A certificate of service has
no bearing on the timeliness of the filing of the
correspondence.



111  Certificate of Mailing by "Express Mail" Procedure

111.01  In General

37 CFR 1.10 Filing of  papers and fees by "Express Mail"
with certificate.
(a) Any paper or fee to be filed in the Patent and Trademark
Office can be filed utilizing the "Express Mail Post Office
to Addressee" service of the United States Postal Service
and be considered as having been filed in the Office on the
date the paper or fee is shown to have been deposited as
"Express Mail" with the United States Postal Service unless
the date of deposit is a Saturday, Sunday, or Federal
holiday within the District of Columbia.  See 1.6(a).

(b) Any paper or fee filed by "Express Mail" must have the
number of the "Express Mail" mailing label placed thereon
prior to mailing, be addressed to the Commissioner of
Patents and Trademarks, Washington, D.C. 20231, and any such
paper or fee must also include a certificate of mailing by
"Express Mail" which states the date of mailing by "Express
Mail" and is signed by the person mailing the paper or fee.

(c) The Patent and Trademark Office will accept the
certificate of mailing by "Express Mail" and accord the
paper or fee the certificate date under 35 U.S.C. 21(a)
(unless the certificate date is a Saturday, Sunday, or
Federal holiday within the District of Columbia--see
1.6(a)) without further proof of the date on which the
mailing by "Express Mail" occurred unless a question is
present regarding the date of mailing.  If more than a
reasonable time has elapsed between the certificate date and
the Patent and Trademark Office receipt date or if other
questions regarding the date of mailing are present, the
person mailing the paper or fee may be required to file a
copy of the "Express Mail" receipt showing the actual date
of mailing and a statement from the person who mailed the
paper or fee averring to the fact that the mailing occurred
on the date certified.  Such statement must be a verified
statement if made by a person not registered to practice
before the Patent and Trademark Office.

Any paper or fee to be filed in the PTO, including any paper
or fee intended for the Board, can be filed by the
certificate of mailing by "Express Mail" procedure described
in 37 CFR 1.10.  Under this procedure, papers or fees can
be filed utilizing the "Express Mail Post Office to
Addressee" service (not the "Express Mail Post Office to
Post Office" service) of the United States Postal Service,
and be considered as having been filed in the PTO on the
date the paper or fee is shown to have been deposited as
"Express Mail" with the United States Postal Service (unless
the date of deposit is a Saturday, Sunday, or Federal
holiday within the District of Columbia, in which case the
date assigned will be the next succeeding day which is not a
Saturday, Sunday, or Federal holiday within the District of
Columbia).  See 37 CFR 1.10(a).

In effect, the certificate of mailing by "Express Mail"
procedure permits all types of correspondence to be sent to
the PTO by the "Express Mail Post Office to Addressee"
service even on the due date for the correspondence and
still be considered timely, notwithstanding the fact that
the mailed correspondence may not be received in the PTO
until after the due date.

NOTE:  Pending amendment of 37 CFR 1.10 to delete the
requirement for a certificate of mailing and to incorporate
requirements for the resubmission of misplaced
correspondence which parallel those requirements specified
in 37 CFR 1.8, if correspondence is filed by the "Express
Mail Post Office to Addressee" service without a certificate
of mailing by "Express Mail," or with a deficient
certificate, and the correspondence is actually received at
the PTO bearing a clear indication on the "Express Mail"
label of the "date in," the paper will be stamped with the
"date in" as the date of receipt (unless the "date in" is a
Saturday, Sunday, or Federal holiday within the District of
Columbia).  See "Waiver of Certificate of Mailing
Requirement Under 37 CFR 1.10," 1174 TMOG 92 (May 16, 1995).



111.02  Requirements for Certificate

Trademark-related papers (except for trademark-related
documents sent to the Assignment Branch for recordation and
requests for certified copies of trademark application and
registration documents) filed by the certificate of mailing
by "Express Mail" procedure must:
     1.  Have the number of the "Express Mail" mailing label
placed thereon prior to mailing;
     2.  Be addressed to the Assistant Commissioner for
Trademarks, 2900 Crystal Drive, Arlington, Virginia 22202-
3513; and
     3.  Include a certificate of mailing by "Express Mail"
which states the date of mailing by "Express Mail" and is
signed by the person mailing the paper or fee.  See 37 CFR
1.10(b), and "Change of Address For Trademark Applications
and Trademark Related Papers," 1163 TMOG 80 (June 28, 1994).

Alternatively, until such time as 37 CFR 1.10 has been
amended to specify that trademark-related mail (except for
trademark-related documents sent to the Assignment Branch
for recordation and requests for certified copies of
trademark application and registration documents) must be
addressed to the Assistant Commissioner for Trademarks, 2900
Crystal Drive, Arlington, Virginia 22202-3513, such
correspondence may continue to be sent to the Commissioner
of Patents and Trademarks, Washington, D.C. 20231 address.
Any certificate of mailing by "Express Mail" used on
correspondence sent to the Washington, D.C. address should
specify that address.  See "Change of Address For Trademark
Applications and Trademark Related Papers," 1163 TMOG 80
(June 28, 1994).

Trademark-related documents sent to the Assignment Branch
for recordation, and requests for certified copies of
trademark application and registration documents, should be
addressed to the Commissioner of Patents and Trademarks,
Washington, D.C. 20231.  If a certificate of mailing by
"Express Mail" is used on such correspondence, it should
specify that address.

When a piece of mail is sent by the "Express Mail Post
Office to Addressee" service of the United States Postal
Service, the Postal Service applies a numbered mailing
label, with the date of mailing written thereon, to the
envelope.  Each paper or fee filed by the certificate of
mailing by "Express Mail" procedure must bear both the
number of this "Express Mail" mailing label and the required
certificate of mailing by "Express mail."

A party which wishes to send mail to the PTO by the "Express
Mail" service of the U.S. Postal Service should be careful
to use the "Express Mail Post Office to Addressee" service,
rather than the "Express Mail Post Office to Post Office"
service.  Mail sent to the PTO, pursuant to 37 CFR 1.10, by
the "Express Mail Post Office to Addressee" service of the
United States Postal Service is delivered to a PTO employee.
Mail sent to an addressee by the "Express Mail Post Office
to Post Office" service, on the other hand, is sent to a
post office near the addressee, where it is held for 15 days
for pickup by the addressee and then, if no pickup is made,
returned to the sender.  The PTO does not pick up mail from
post offices.  Thus, correspondence sent to the PTO by the
"Express Mail Post Office to Post Office" service will not
reach the PTO but instead will be returned to the sender.



111.03  Location of Certificate

When correspondence is filed with the PTO by the certificate
of mailing by "Express Mail" procedure provided in  37 CFR
1.10, the number of the "Express Mail" mailing label, and
the certificate of mailing by "Express Mail," should be
placed directly on the piece of correspondence itself, or,
if that is not feasible, on a separate paper securely
attached thereto.  Cf.: TBMP 110.04.  As in the case of a
certificate of mailing by first-class mail or a certificate
of transmission, the certificate of mailing by "Express
Mail" may be applied to a piece of correspondence by means
of a rubber stamp.



111.04  Suggested Format

Shown below is a suggested format for a certificate of
mailing by "Express Mail" under 37 CFR 1.10:

          Certificate of Mailing by "Express Mail"

     "Express Mail" mailing label number _______________

     I hereby certify that this correspondence is being
deposited with the United States Postal Service "Express
Mail Post Office to Addressee" service in an envelope
     addressed to the Assistant Commissioner for Trademarks,
     2900 Crystal Drive, Arlington, Virginia 22202-3513,
     on __________________.
          Date

               __________________________________
Signature of person mailing correspondence

               __________________________________
               Typed or printed name of person mailing
               correspondence



111.05  Questionable Date of Mailing

If more than a reasonable time has elapsed between the
"Express Mail" mailing date specified in a 37 CFR 1.10
certificate of mailing by "Express Mail" and the date of
receipt of the correspondence by the PTO, or if there are
other questions regarding the date of mailing, the party
filing the correspondence may be required to file a copy of
the "Express Mail" receipt (furnished by the Postal Service
at the time of mailing) showing the actual date of mailing,
together with a statement from the person who mailed the
correspondence averring to the fact that the mailing
occurred on the date specified.  If the person who makes the
statement is not registered to practice before the PTO, the
statement must be verified.  See 37 CFR 1.10(c).



112  Times for Taking Action

37 CFR 1.7 Expiration on Saturday, Sunday or Federal
holiday.
Whenever periods of time are specified in this part in days,
calendar days are intended.  When the day, or the last day
fixed by statute or by or under this part for taking any
action or paying any fee in the Patent and Trademark Office
falls on Saturday, Sunday or on a Federal holiday within the
District of Columbia, the action may be taken, or the fee
paid, on the next succeeding day which is not a Saturday,
Sunday or a Federal holiday.  See 1.304 for time for appeal
or for commencing civil action.

See also Lotus Development Corp. v. Narada Productions,
Inc., 23 USPQ2d 1310 (Comm'r 1991); and Strang Corp. v.
Stouffer Corp., 16 USPQ2d 1309 (TTAB 1990).

For example, if, as set by the Board, an answer to a
complaint falls due on a Saturday, Sunday, or Federal
holiday within the District of Columbia, an answer filed on
the next business day will be considered timely.  If, as set
by the Board, the close of discovery falls on a Saturday,
Sunday, or Federal holiday within the District of Columbia,
written requests for discovery (i.e., interrogatories,
requests for production of documents, and requests for
admission) may be served, and discovery depositions may be
taken, on the next business day.  Similarly, if, as set by
the Board, the close of a testimony period falls on a
Saturday, Sunday, or Federal holiday within the District of
Columbia, testimony depositions may be taken, and other
evidence may be offered, on the next business day.

If, because of some unscheduled event, such as adverse
weather conditions, the PTO is officially closed by
Executive Order of the President or by the Office of
Personnel Management for an entire day, that day will be
regarded by the PTO as a federal holiday within the District
of Columbia.  Any action due to be taken, or fee due to be
paid, on that day, will be considered timely if the action
is taken, or the fee paid, on the next succeeding business
day on which the PTO is open.  If, because of an unscheduled
event, the PTO is closed for part of a business day, but is
open for business for some part of the day between 8:30 a.m.
and 5:00 p.m., any action due to be taken, or fee due to be
paid, on that day remains due on that day.  See "Filing of
Papers During Unscheduled Closings of the Patent and
Trademark Office," 1076 TMOG 6 (March 10, 1987).



113  Service of Papers

37 CFR 2.119 Service and signing of papers.
(a) Every paper filed in the Patent and Trademark Office in
inter partes cases, including notice of appeal, must be
served upon the other parties except the notice of
interference (2.93), the notification of opposition
(2.105), the petition for cancellation (2.113), and the
notice of a concurrent use proceeding (2.99), which are
mailed by the Patent and Trademark Office.  Proof of such
service must be made before the paper will be considered by
the Office.  A statement signed by the attorney or other
authorized representative, attached to or appearing on the
original paper when filed, clearly stating the date and
manner in which service was made will be accepted as prima
facie proof of service.

(b) Service of papers must be on the attorney or other
authorized representative of the party if there be such or
on the party if there is no attorney or other authorized
representative, and may be made in any of the following
ways:
     (1) By delivering a copy of the paper to the person
served;
     (2) By leaving a copy at the usual place of business of
the person served, with someone in the person's employment;
     (3) When the person served has no usual place of
business, by leavina a copy at the person's residence, with
a member of the person's family over 14 years of age and of
discretion;
     (4) Transmission by the "Express Mail Post Offfice to
Addressee" service of the United States Postal Service or by
first-class mail, which may also be certified or registered;
     (5) Transmission by overnight courier.
Whenever it shall be satisfactorily shown to the
Commissioner that none of the above modes of obtaining
service or serving the paper is practicable, service may be
by notice published in the Official Gazette.

(c) When service is made by first-class mail, "Express
Mail," or overnight courier, the date of mailing or of
delivery to the overnight courier will be considered the
date of service.  Whenever a party is required to take some
action within a prescribed period after the service of a
paper upon the party by another party and the paper is
served by first-class mail, "Express Mail," or overnight
courier, 5 days shall be added to the prescribed period.

                         *    *    *



113.01  Requirement for Service of Papers

Every paper filed in an inter partes proceeding before the
Board, including a notice of appeal from a decision of the
Board, must be served by the filing party upon every other
party to the proceeding.  The only exceptions to this rule
are the notice of opposition and petition for cancellation,
which are mailed by the Board to the defendant or
defendants; and any requests for discovery filed by an
opposer or petitioner with the notice of opposition or
petition for cancellation (i.e., the complaint) for service
by the Board along with the complaint.  See 37 CFR
2.119(a), and FRCP 33(a), 34(b), and 36(a).

The requirement for service of papers applies not only to
papers filed in an inter partes proceeding before the Board,
but also to papers filed in an application or registration
which is the subject of such a proceeding, if the papers
could have an effect on the inter partes proceeding.  For
example, a request to amend or correct an application or
registration which is the subject of an inter partes
proceeding; an abandonment of the application; or a
voluntary surrender of the registration, must all be served
by the defendant upon every other party to the proceeding.



113.02  Requirement for Proof of Service

When a party to an inter partes proceeding before the Board
files a paper required, by 37 CFR 2.119(a), to be served
upon every other party to the proceeding, proof that the
required service has been made ordinarily must be submitted
before the paper will be considered by the Board.
Occasionally, in order to expedite matters, and when the
interests of the other party or parties would be served
thereby, the Board itself will serve, along with an action
of the Board relating thereto, a copy of a paper which does
not include the required proof of service.  For example, if
an applicant in an opposition files an abandonment of its
involved application without the written consent thereto of
the opposer, and the abandonment does not include proof of
service upon the opposer, the Board does not send out an
action stating that the abandonment will not be considered
until proof of service has been submitted.  Rather, the
Board itself mails a copy of the abandonment to the opposer,
along with a copy of an action by the Board entering
judgment in opposer's favor pursuant to 37 CFR 2.135 (which
provides, in part, that after the commencement of an
opposition, if the applicant files a written abandonment of
its application or mark without the written consent of every
adverse party to the proceeding, judgment shall be entered
against the applicant).



113.03  Elements of Certificate of Service

The Board will accept, as prima facie proof that a party
filing a paper in a Board inter partes proceeding has served
a copy of the paper upon every other party to the
proceeding, a statement signed by the filing party, or by
its attorney or other authorized representative, clearly
stating the date and manner in which service was made.  The
statement should also specify the name of each party or
person upon whom service was made.  The statement must
appear on, or be securely attached to, the paper being
filed.  If the statement is on a separate sheet attached to
the paper being filed, it should clearly identify the paper
and proceeding to which it relates.  See 37 CFR 2.119(a).



113.04  Manner of Service

When a party to an inter partes proceeding before the Board
files a paper required, by 37 CFR 2.119(a), to be served
upon every other party to the proceeding, service may be
made in any of the ways specified in 37 CFR 2.119(b).  They
are:  (1) by hand delivering a copy of the paper to the
person being served; (2) by leaving a copy of the paper at
the usual place of business of the person being served, with
someone in the person's employment; (3) when the person
being served has no usual place of business, by leaving a
copy of the paper at the person's address, with a member of
the person's family over 14 years of age and of discretion;
(4) transmission by the "Express Mail Post Office to
Addressee" service of the United States Postal Service or by
first-class mail, which may also be certified or registered;
and (5) transmission by overnight courier.  In addition,
whenever it is satisfactorily shown to the Commissioner that
none of the specified modes of serving the paper is
practicable, service may be made by notice published in the
Official Gazette of the PTO.

When service of a paper is made by mail, pursuant to 37 CFR
2.119(b)(4), the Board considers the mailing date of the
paper to be the date when the paper is deposited with the
United States Postal Service, i.e., the date when custody of
the paper passes to the Postal Service.  As provided in 37
CFR 2.119(a),  the Board ordinarily accepts, as prima facie
proof of the date of mailing, the statement signed by the
filing party, or by its attorney or other authorized
representative, as to the date and manner of service.
However, where the prima facie proof of the certificate of
service is rebutted by other evidence, and the paper would
be timely served if mailed on the date specified in the
certificate of service, but untimely served if not mailed
until the date indicated by the rebutting evidence, the
Board may request that the person who signed the certificate
of service submit an affidavit specifying the date when the
paper was actually deposited with the United States Postal
Service.

A party filing a paper in a Board inter partes proceeding
may always, as a courtesy, send a copy of the paper to an
adverse party by telephonic facsimile transmission ("fax").
However, transmission of the paper by fax does not
constitute "service" thereof under the provisions of 37 CFR
2.119.  Notwithstanding the fax transmission, the paper
must still be served upon the adverse party by one of the
methods specified in 37 CFR 2.119(b), and the date of
service of the paper upon the adverse party is the date when
service is made by one of those specified methods.



113.05  Additional Time for Taking Action After Service by
Mail

Whenever a party to an inter partes proceeding before the
Board is required to take some action within a prescribed
period of time after the service of a paper upon that party
by another party to the proceeding, and the paper is served
by first-class mail, "Express Mail," or overnight courier,
the time for taking action is enlarged by 5 days.  See 37
CFR 2.119(c).

For example, if one party to a proceeding serves, upon
another party to the proceeding, a motion to compel
discovery, and service of the motion is made by first-class
mail, "Express Mail," or overnight courier, the served
party's time for filing a response to the motion will be 20
days from the date of service of the motion, that is, from
the date of mailing or of delivery to the overnight courier.
Because the service was made by first-class mail, "Express
Mail," or overnight courier, 5 days are added to the 15-day
period prescribed in 37 CFR 2.127(a) for filing a response
to a motion.

Trademark Rule 2.119(c), 37 CFR 2.119(c), applies only when
a party has to take some action within a prescribed period
after the service of a paper upon it by another party, and
service of the paper was made in one of three specified
ways.  It does not apply to an action which must be taken by
a party within a time set in a communication from the Board.
Thus, for example, when a Board letter notifying a defendant
of the filing of an opposition or petition to cancel allows
the defendant 40 days from the date of the notification
letter in which to file an answer to the complaint, the
answer is due on or before the 40th day, not on the 45th
day.



113.06  A Certificate of Service is Not...

A certificate of service is not the equivalent of a
certificate of mailing or transmission for any purpose.  Cf.
TBMP 110.08.



114  Representation of a Party

37 CFR 10.14 Individuals who may practice before the Office
in trademark and other non-patent cases.
(a) Attorneys.  Any individual who is an attorney may
represent others before the Office in trademark and other
non-patent cases.  An attorney is not required to apply for
registration or recognition to practice before the Office in
trademark and other non-patent cases.

(b) Non-lawyers.  Individuals who are not attorneys are not
recognized to practice before the Office in trademark and
other non-patent cases, except that individuals not
attorneys who were recognized to practice before the Office
in trademark cases under this chapter prior to Jan. 1, 1957,
will be recognized as agents to continue practice before the
Office in trademark cases.

(c) Foreigners.  Any foreign attorney or agent not a
resident of the United States who shall prove to the
satisfaction of the Director that he or she is registered or
in good standing before the patent or trademark office of
the country in which he or she resides and practices, may be
recognized for the limited purpose of representing parties
located in such country before the Office in the
presentation and prosecution of trademark cases, provided:
the patent or trademark office of such country allows
substantially reciprocal privileges to those permitted to
practice in trademark cases before the United States Patent
and Trademark Office.  Recognition under this paragraph
shall continue only during the period that the conditions
specified in this paragraph obtain.

(d) Recognition of any individual under this section shall
not be construed as sanctioning or authorizing the
performance of any act regarded in the jurisdiction where
performed as the unauthorized practice of law.

(e) No individual other than those specified in paragraphs
(a), (b), and (c) of this section will be permitted to
practice before the Office in trademark cases.  Any
individual may appear in a trademark or other non-patent
case in his or her own behalf.  Any individual may appear in
a trademark case for (1) a firm of which he or she is a
member or (2) a corporation or association of which he or
she is an officer and which he or she is authorized to
represent, if such firm, corporation, or association is a
party to a trademark proceeding pending before the Office.



114.01  Party May Represent Itself

A party may represent itself in an ex parte or inter partes
proceeding before the Board, or the party may be represented
by an attorney or other authorized representative.  See 37
CFR 10.14(e).

If a partnership which is a party to a Board proceeding
elects to represent itself, the partnership may act through
an individual who is a partner.  If a party electing to
represent itself is a corporation or an association, the
party may act through any individual who is an officer of
the party and who is authorized to represent it.  See 37 CFR
10.14(e).

However, because the governing practices and procedures in
proceedings before the Board are quite technical and highly
specialized, it is strongly recommended that a party be
represented by an attorney familiar with trademark law.



114.02  Selection of Attorney

The Board cannot aid a party in the selection of an
attorney, nor does the PTO maintain a register or list of
trademark attorneys.  See 37 CFR 2.11.



114.03  Representation by Attorney

Any attorney, as that term is defined in 37 CFR 10.1(c)
[i.e., "an individual who is a member in good standing of
the bar of any United States court or the highest court of
any state"], is eligible to represent others before the PTO
in trademark cases, including proceedings before the Board,
and in other non-patent cases.  Such an attorney is not
required to apply to the PTO for registration or recognition
to practice before the PTO in trademark and other non-patent
cases.  See 37 CFR 10.1(c) and 10.14(a), and Weiffenbach
v. Klempsay, 29 USPQ2d 2027 (Dep't Comm. 1993).

An attorney, as defined in 37 CFR 10.1(c), will be accepted
as a representative of a party in a proceeding before the
Board if the attorney either (1) makes an appearance in the
proceeding (as, for example, by filing a paper) on behalf of
the party and satisfactorily identifies himself or herself
as an attorney, see Djeredjian v. Kashi Co., 21 USPQ2d 1613
(TTAB 1991), or (2) files a written power of attorney signed
by the party the attorney represents.

When an attorney, as defined in 37 CFR 10.1(c), acting in a
representative capacity signs a paper or appears in person
in a proceeding before the Board, his or her personal
signature or appearance constitutes, inter alia, a
representation to the PTO that, under the provisions of 37
CFR 10.14 (which specifies the types of individuals who may
practice before the PTO in trademark and other non-patent
cases) and the laws he or she is authorized to represent the
particular party in whose behalf he or she acts.  If there
is some question as to whether an individual who makes such
an appearance is authorized to act in a representative
capacity, further proof of his or her authority may be
required.  See 37 CFR 2.17(a).

If a formal power of attorney is filed in a proceeding
before the Board, it should state the name and address of
the individual or individuals to whom the power is granted,
identify the party granting the power, indicate the power
being granted (e.g., "to represent Opposer in this
proceeding, with full power of substitution and revocation,
and to transact all business in the United States Patent and
Trademark Office in connection therewith" ), and be signed
by the party granting the power.  The PTO requires that a
power of attorney specify the names of one or more
individuals.  A power which specifies both the names of one
or more individuals and the name of a firm will be regarded
as a power to the individual(s).  A power which specifies
only the name of a firm will be regarded not as a power to
the firm but rather simply as a designation of an address to
which correspondence is to be sent.  See TMEP 602.01 and
TBMP 117.



114.04  Representation by Non-lawyer (i.e., "Other
Authorized Representative")

The only non-lawyers permitted to represent others in
trademark cases before the PTO, including proceedings before
the Board, are those who were recognized to practice before
the PTO in trademark cases under Chapter 1 of 37 CFR prior
to January 1, 1957.  See 37 CFR 10.14(b); Weiffenbach v.
Klempsay, 29 USPQ2d 2027 (Dep't Comm. 1993); and Weiffenbach
v. Frank, 18 USPQ2d 1397 (Comm'r 1991).  Before such a
representative may take any action of any kind in a
proceeding before the Board, however, the representative
must file in the proceeding a written authorization from the
party which he or she represents, or from another person
entitled to prosecute the case (e.g., the party's appointed
attorney of record).  See 37 CFR 2.17(b).



114.05  Representation by Foreign Attorney or Agent

Under certain conditions, specified in 37 CFR 10.14(c), a
foreign attorney or agent who is not a resident of the
United States may be recognized for the limited purpose of
representing, in trademark cases before the PTO, parties
located in the country in which the attorney or agent
resides or practices.  For information on how to meet the
specified conditions, contact the PTO's Office of Enrollment
and Discipline.



114.06  Individual Not Entitled to Represent Others

An individual who is not entitled, under 37 CFR 10.14(a),
(b), or (c), to practice before the PTO in trademark cases,
will not be permitted to represent a party in a proceeding
before the Board.  For information concerning who is
entitled to practice before the PTO in trademark cases, see
TBMP 114.03-114.05.

If it comes to the attention of the Board that an individual
who is not entitled, under 37 CFR 10.14(a), (b), or (c), to
practice before the PTO in trademark cases, is attempting to
represent a party in a Board proceeding, the Board will
notify the individual that he or she is not entitled to do
so.  If the individual signs and files a paper on behalf of
a party to a Board proceeding, the paper will not be
considered unless a new copy thereof, signed by the party or
by an authorized representative who is entitled to practice
before the PTO in trademark cases, is filed.  Moreover, no
Board correspondence intended for the party will be sent to
the individual.  Rather, such correspondence will be sent by
the Board to the party itself, or to the party's attorney or
other authorized representative entitled to practice before
the PTO in trademark cases.  See 37 CFR 2.18 and TBMP 117.



114.07  Designation of Domestic Representative

37 CFR 2.24 Designation of representative by foreign
applicant.
If an applicant is not domiciled in the United States, the
applicant must designate by a written document filed in the
Patent and Trademark Office the name and address of some
person resident in the United States on whom may be served
notices or process in proceedings affecting the mark.  If
this document does not accompany or form part of the
application, it will be required and registration refused
unless it is supplied.  Official communications of the
Patent and Trademark Office will be addressed to the
domestic representative unless the application is being
prosecuted by an attorney at law or other qualified person
duly authorized, in which event official communications will
be sent to the attorney at law or other qualified person
duly authorized.  The mere designation of a domestic
representative does not authorize the person designated to
prosecute the application unless qualified under paragraph
(a), (b) or (c) of 10.14 of this subchapter and authorized
under 2.17(b).

37 CFR 2.119(d) If a party to an inter partes proceeding is
not domiciled in the United States and is not represented by
an attorney or other authorized representative located in
the United States, the party must designate by written
document filed in the Patent and Trademark Office the name
and address of a person resident in the United States on
whom may be served notices or process in the proceeding.  In
such cases, official communications of the Patent and
Trademark Office will be addressed to the domestic
representative unless the proceeding is being prosecuted by
an attorney at law or other qualified person duly authorized
under 10.14(c) of this subchapter.  The mere designation of
a domestic representative does not authorize the person
designated to prosecute the proceeding unless qualified
under 10.14(a), or qualified under paragraph (b) or (c) of
10.14 and authorized under 2.17(b).

Shown below is a suggested format for the designation of a
domestic representative (the suggested format should appear
below information identifying the proceeding in connection
with which it is filed):

          Designation of Domestic Representative

     (Name of Domestic Representative), whose postal
     address is ______________________________
     ______________________________________,
     is hereby designated (Name of Designating Party)'s
     representative upon whom notice or process in this
     proceeding may be served.
                    __________________________
                    (Signature of  Designating Party)
                    __________________________
                    (Identification of Person Signing)
                    __________________________
                    (Date of Signature)

Once a party has appointed a domestic representative, all
correspondence in the case will be sent to the domestic
representative, unless the party is represented by an
attorney or other authorized representative located in the
United States, or by a foreign attorney or agent duly
qualified under 37 CFR 10.14(c).  See TBMP 117.06.



114.08  Adverse Parties Represented by Same Practitioner

37 CFR 10.66 Refusing to accept or continue employment if
the interests of another client may impair the independent
professional judgment of the practitioner.
(a) A practitioner shall decline proffered employment if the
exercise of the practitioner's independent professional
judgment in behalf of a client will be or is likely to be
adversely affected by the acceptance of the proffered
employment, or if it would be likely to involve the
practitioner in representing differing interests, except to
the extent permitted under paragraph (c) of this section.

(b) A practitioner shall not continue multiple employment if
the exercise of the practitioner's independent professional
judgment in behalf of a client will be or is likely to be
adversely affected by the practitioner's representation of
another client, or if it would be likely to involve the
practitioner in representing differing interests, except to
the extent permitted under paragraph (c) of this section.

(c) In the situations covered by paragraphs (a) and (b) of
this section a practitioner may represent multiple clients
if it is obvious that the practitioner can adequately
represent the interest of each and if each consents to the
representation after full disclosure of the possible effect
of such representation on the exercise of the practitioner's
independent professional judgment on behalf of each.

(d) If a practitioner is required to decline employment or
to withdraw from employment under a Disciplinary Rule, no
partner, or associate, or any other practitioner affiliated
with the practitioner or the practitioner's firm, may accept
or continue such employment unless otherwise ordered by the
Director or Commissioner.

As a general rule, a practitioner (i.e., attorney or other
authorized representative) may not represent parties with
conflicting interests in proceedings before the PTO.  That
is, a practitioner normally may not accept proffered
employment, or continue multiple employment, if the exercise
of the practitioner's independent professional judgment on
behalf of one client is likely to be adversely affected by
the practitioner's representation of another client, or if
the employment would be likely to involve the practitioner
in representing differing interests.  See 37 CFR 10.66(a)
and (b); Gilman Corp. v. Gilman Brothers Co., 20 USPQ2d 1238
(Comm'r 1991); Halcon International, Inc. v. Werbow, 228
USPQ 611 (Comm'r 1980); Unico American Corp. v. Unico
Banking Group, 223 USPQ 684 (Comm'r 1984); Sunkist Growers,
Inc. v. Benjamin Ansehl Co., 221 USPQ 1077 (Comm'r 1984);
and Plus Products v. Con-Stan Industries, Inc., 221 USPQ
1071 (Comm'r 1984).  See also Rules 1.7 and 1.9 of the
American Bar Association's Model Rules of Professional
Conduct.

However, a practitioner may represent multiple clients under
the particular circumstances specified in 37 CFR 10.66(c).

If it comes to the attention of the Board that two or more
parties whose interests are in conflict appear to be
represented by the same practitioner, or by different
practitioners within the same firm, each of the parties and
their practitioner(s) will be notified by the Board, in
writing, of the possible conflict of interest.

It is the responsibility of a practitioner to ensure that
there is no violation of the rules cited above.  If an
impermissible conflict exists, a practitioner should take
appropriate action immediately.  A practitioner who fails to
do so may be subjected to disciplinary action.  See 37 CFR
10.20(b).



115  Conduct of Practitioner

115.01  Applicable Rules

The conduct of an attorney or other authorized
representative in proceedings before the Board is governed
by Part 10 of 37 CFR.  Part 10 contains both Canons (set out
in Rules 10.21, 10.30, 10.46, 10.56, 10.61, 10.76, 10.83,
10.100, and 10.110) and Disciplinary Rules (set out in Rules
10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77,
10.78, 10.84, 10.85, 10.87-10.89, 10.92, 10.93, 10.101-
10.103, 10.111, and 10.112).  Canons are "statements of
axiomatic norms, expressing in general terms the standards
of professional conduct expected of practitioners in their
relationships with the public, with the legal system, and
with the legal profession," while Disciplinary Rules are
"mandatory in character and state the minimum level of
conduct below which no practitioner can fall without being
subjected to disciplinary action."  See 37 CFR 10.20.



115.02  Disciplinary Proceedings

37 CFR 10.130 Reprimand, suspension or exclusion.
(a) The Commissioner may, after notice and opportunity for a
hearing, (a) reprimand or (b) suspend or exclude, either
generally or in any particular case, any individual,
attorney, or agent shown to be incompetent or disreputable,
who is guilty of gross misconduct, or who violates a
Disciplinary Rule.

                        *     *     *

See Klein v. Peterson, 866 F.2d 412, 9 USPQ2d 1558 (Fed.
Cir. 1989); Weiffenbach v. Logan, 27 USPQ2d 1870 (Comm'r
1993); McCandlish v. Doe, 22 USPQ2d 1223 (Comm'r 1992);
Weiffenbach v. Turner, 20 USPQ2d 1103 (Comm'r 1991);
Weiffenbach v. Frank, 18 USPQ2d 1397 (Comm'r 1991); Small v.
Weiffenbach, 10 USPQ2d 1898 (Comm'r 1989); In re Kalil, 2
USPQ2d 1614 (Dep't Comm. 1986); and In re Slater, 231 USPQ
497 (Comm'r 1985).  See also Weiffenbach v. Klempay, 29
USPQ2d 2027 (Dep't Comm. 1993).

The rules governing disciplinary proceedings are set out in
37 CFR 10.130-10.170.  Such a proceeding is instituted
only under the circumstances specified in 37 CFR 10.131-
10.132.



115.03  Petitions to Disqualify

37 CFR 10.130(b) Petitions to disqualify a practitioner in
ex parte or inter partes cases in the Office are not
governed by 10.130 through 10.170 and will be handled on a
case-by-case basis under such conditions as the Commissioner
deems appropriate.

Petitions to disqualify practitioners representing parties
in ex parte or inter partes cases before the Board are not
disciplinary proceedings and hence are not governed by 37
CFR 10.130-10.170.  Rather, petitions to disqualify are
governed by 37 CFR 10.130(b).  For examples of cases
involving petitions to disqualify, see the decisions cited
in TBMP 114.08.

When a petition to disqualify is filed in connection with a
proceeding pending before the Board, the Board immediately
issues an action suspending proceedings in the case and
advising the parties that no additional papers should be
filed by the parties until further notice, pending
consideration of the petition.

For further information concerning petitions to disqualify,
see TBMP 513.02.



116  Termination of Representation

116.01  Revocation of Authority

37 CFR 2.19 Revocation of power of attorney or of other
authorization to represent; withdrawal.
(a) Authority to represent an applicant or a party to a
proceeding may be revoked at any stage in the proceedings of
a case upon notification to the Commissioner; and when it is
so revoked, the Office will communicate directly with the
applicant or party to the proceeding or with such other
qualified person as may be authorized.  The Patent and
Trademark Office will notify the person affected of the
revocation of his or her authorization.

                        *     *     *

Authority to represent a party in a proceeding before the
Board may be revoked, at any stage of the proceeding, by
filing a written revocation with the Board.  Thereafter, the
Board will not recognize that person as a representative in
the case, or give any consideration to any papers which he
or she may file therein, unless a new written authorization
of that person, signed by the party, is filed in the
proceeding.



116.02  Withdrawal as Representative--In General

37 CFR 2.19(b) An individual authorized to represent an
applicant or party in a trademark case may withdraw upon
application to and approval by the Commissioner.

37 CFR 10.40 Withdrawal from employment.
(a) A practitioner shall not withdraw from employment in a
proceeding before the Office without permission from the
Office (see 1.36 and 2.19 of this subchapter).  In any
event, a practitioner shall not withdraw from employment
until the practitioner has taken reasonable steps to avoid
foreseeable prejudice to the rights of the client, including
giving due notice to his or her client, allowing time for
employment of another practitioner, delivering to the client
all papers and property to which the client is entitled, and
complying with applicable laws and rules.  A practitioner
who withdraws from employment shall refund promptly any part
of a fee paid in advance that has not been earned.

(b) Mandatory withdrawal.  A practitioner representing a
client before the Office shall withdraw from employment if:
     (1) The practitioner knows or it is obvious that the
client is bringing a legal action, commencing a proceeding
before the Office, conducting a defense, or asserting a
position in litigation or any proceeding pending before the
Office, or is otherwise having steps taken for the client,
merely for the purpose of harassing or maliciously injuring
any person;
     (2) The practitioner knows or it is obvious that the
practitioner's continued employment will result in violation
of a Disciplinary Rule;
     (3) The practitioner's mental or physical condition
renders it unreasonably difficult for the practitioner to
carry out the employment effectively; or
     (4) The practitioner is discharged by the client.

(c) Permissive withdrawal.  If paragraph (b) of this section
is not applicable, a practitioner may not request permission
to withdraw in matters pending before the Office unless such
request or such withdrawal is because:
     (1) The petitioner's client:
          (i) Insists upon presenting a claim or defense
that is not warranted under existing law and cannot be
supported by good faith argument for an extension,
modification, or reversal of existing law;
          (ii) Personally seeks to pursue an illegal course
of conduct;
          (iii) Insists that the practitioner pursue a
course of conduct that is illegal or that is prohibited
under a Disciplinary Rule;
          (iv) By other conduct renders it unreasonably
difficult for the practitioner to carry out the employment
effectively;
          (v) Insists, in a matter not pending before a
tribunal, that the practitioner engage in conduct that is
contrary to the judgment and advice of the practitioner but
not prohibited under the Disciplinary Rule; or
          (vi) Has failed to pay one or more bills rendered
by the practitioner for an unreasonable period of time or
has failed to honor an agreement to pay a retainer in
advance of the performance of legal services.
     (2) The practitioner's continued employment is likely
to result in a violation of a Disciplinary Rule;
     (3) The practitioner's inability to work with co-
counsel indicates that the best interests of the client
likely will be served by withdrawal;
     (4) The practitioner's mental or physical condition
renders it difficult for the practitioner to carry out the
employment effectively;
     (5) The practitioner's client knowingly and freely
assents to termination of the employment; or
     (6) The practitioner believes in good faith, in a
proceeding pending before the Office, that the Office will
find the existence of other good cause for withdrawal.

Under certain circumstances, a practitioner may withdraw
from employment as the attorney or other authorized
representative of a party to a proceeding before the Board.
A practitioner who wishes to withdraw must file a written
request with the Board for permission to do so.  The
practitioner may not withdraw until he or she has complied
with the conditions specified in 37 CFR 10.40(a).



116.03  When Withdrawal is Mandatory

Withdrawal from employment as the attorney or other
authorized representative of a party to a Board proceeding
is mandatory under the circumstances specified in 37 CFR
10.40(b).



116.04  When Withdrawal is Permissive

Withdrawal from employment as the attorney or other
authorized representative of a party to a Board proceeding
is permissive under the circumstances specified in 37 CFR
10.40(c).



116.05  Request to Withdraw

A practitioner who wishes to withdraw from employment as the
attorney or other authorized representative of a party to a
proceeding before the Board must file a written request with
the Board for permission to do so.  The request to withdraw
must be based upon one of the grounds for mandatory or
permissive withdrawal listed in 37 CFR 10.40(b) and (c).
Moreover, the practitioner must comply with the requirements
of 37 CFR 10.40(a).  See 37 CFR 2.19(b) and 10.40.  Cf.
In re Legendary Inc., 26 USPQ2d 1478 (Comm'r 1992).

For further information concerning the requirements for a
request to withdraw as representative, and the action taken
by the Board when such a request is granted, see TBMP
513.01.



117  Correspondence - With Whom Held

37 CFR 2.18 Correspondence, with whom held.
Correspondence will be sent to the applicant or a party to a
proceeding at its address unless papers are transmitted by
an attorney at law, or a written power of attorney is filed,
or written authorization of other person entitled to be
recognized is filed, or the applicant or party designates in
writing another address to which correspondence is to be
sent, in which event correspondence will be sent to the
attorney at law transmitting the papers, or to the attorney
at law designated in the power of attorney, or to the other
person designated in the written authorization, or to the
address designated by the applicant or party for
correspondence.  Correspondence will continue to be sent to
such address until the applicant or party, or the attorney
at law or other authorized representative of the applicant
or party, indicates in writing that correspondence is to be
sent to another address.  Correspondence will be sent to the
domestic representative of a foreign applicant unless the
application is being prosecuted by an attorney at law or
other qualified person duly authorized, in which event
correspondence will be sent to the attorney at law or other
qualified person duly authorized.  Double correspondence
will not be undertaken by the Patent and Trademark Office,
and if more than one attorney at law or other authorized
representative appears or signs a paper, the Office reply
will be sent to the address already established in the file
until another correspondence address is specified by the
applicant or party or by the attorney or other authorized
representative of the applicant or party.

37 CFR 2.24 Designation of representative by foreign
applicant.
If an applicant is not domiciled in the United States, the
applicant must designate by a written document filed in the
Patent and Trademark Office the name and address of some
person resident in the United States on whom may be served
notices or process in proceedings affecting the mark.  If
this document does not accompany or form part of the
application, it will be required and registration refused
unless it is supplied.  Official communications of the
Patent and Trademark Office will be addressed to the
domestic representative unless the application is being
prosecuted by an attorney at law or other qualified person
duly authorized, in which event official communications will
be sent to the attorney at law or other qualified person
duly authorized.  The mere designation of a domestic
representative does not authorize the person designated to
prosecute the application unless qualified under paragraph
(a), (b) or (c) of 10.14 of this subchapter and authorized
under 2.17(b).

37 CFR 2.119(d) If a party to an inter partes proceeding is
not domiciled in the United States and is not represented by
an attorney or other authorized representative located in
the United States, the party must designate by written
document filed in the Patent and Trademark Office the name
and address of a person resident in the United States on
whom may be served notices or process in the proceeding.  In
such cases, official communications of the Patent and
Trademark Office will be addressed to the domestic
representative unless the proceeding is being prosecuted by
an attorney at law or other qualified person duly authorized
under 10.14(c) of this subchapter.  The mere designation of
a domestic representative does not authorize the person
designated to prosecute the proceeding unless qualified
under 10.14(a), or qualified under paragraph (b) or (c) of
10.14 and authorized under 2.17(b).



117.01  In General

Whenever the Board takes an action in a proceeding before
it, the Board sends a copy of the action to each party or to
the party's attorney or other authorized representative.  If
a party is domiciled in the United States, such
correspondence will be sent to the party at the party's
address of record in the proceeding, unless an appearance is
made on behalf of the party by an attorney (as defined in 37
CFR 10.1(c)), or a written power of attorney is filed, or
written authorization of some other person entitled to be
recognized is filed, or the party designates in writing
another address to which correspondence is to be sent.  If
one of these events occurs, correspondence will be sent not
to the party's address of record, but rather to the attorney
who makes the appearance, or to the attorney designated in
the power of attorney, or to the other person designated in
the written authorization, or to the address designated by
the party for correspondence.  See Societe des Produits
Nestle S.A. v. Basso Fedele & Figli, 24 USPQ2d 1079 (TTAB
1992) (power of attorney); and Djeredjian v. Kashi Co., 21
USPQ2d 1613 (TTAB 1991) (appearance).  Correspondence will
continue to be sent to such address until the party, or the
party's attorney or other representative, indicates in
writing that correspondence is to be sent to another
address.  See 37 CFR 2.18.



117.02  When There is More Than One Attorney or Other
Authorized Representative

If a power of attorney names more than one individual, and
does not specify which of them is to have primary
responsibility for the case and receive correspondence, the
name(s) of the individual attorney(s) in the signature block
of the covering transmittal letter will be used by the Board
on the proceeding file, on correspondence for the party, and
on the final decision of the Board, to identify counsel for
the party, unless the party or one of the named attorneys
requests otherwise in writing.  This is because the typing
of a large number of names on a proceeding file,
correspondence, and final decision consumes an excessive
amount of space and time, and hence is impractical and
burdensome.  If there is no transmittal letter, and no other
indication as to which of the named attorneys is to have
primary responsibility for the case and receive
correspondence, the name of the first listed attorney will
be used by the Board on the proceeding file, on
correspondence for the party, and on the Board's final
decision, unless the party or one of the named attorneys
requests otherwise in writing.

Double correspondence, that is, the mailing of
correspondence to two addresses on behalf of a single party,
ordinarily will not be undertaken by the Board.  If more
than one attorney or other authorized representative makes
an appearance on behalf of a party, the papers filed by the
additional attorney(s) or other authorized representative(s)
will be accepted, but the Board will send correspondence to
only one of them, to be determined according to the
circumstances in the case.  See 37 CFR 2.18.

For example, if one attorney or other authorized
representative ("A") makes an appearance on behalf of a
party, and his or her address is thus established in the
proceeding file as the correspondence address, following
which a second attorney or other authorized representative
("B") makes an appearance on behalf of the party, and files
a written request that correspondence be sent to him or her,
the correspondence address on the proceeding file will be
changed, and future correspondence will be sent to B, rather
than A.  No requirement will be made that B submit
authorization, from the party or from A, for the change of
correspondence address, nor will B be required to serve a
copy of the request upon A.  If B does not file a written
request that correspondence be sent to him or her,
correspondence will continue to be sent to A.

If a power of attorney from a party to one attorney ("A")
has been filed, and thereafter another attorney or other
authorized representative ("B") makes an appearance on
behalf of the party and files a written request that
correspondence be sent to him or her, B ordinarily will be
required to submit authorization, from the party or from A,
for the requested change in the correspondence address.
However, if B's request for change of correspondence address
bears proof of service of a copy thereof upon both the party
and A, and neither files an objection to the request, the
correspondence address will be changed, and future
correspondence will be sent to B, rather than to A.

If a power of attorney from a party to one attorney ("A")
has been filed, and thereafter a power of attorney from the
party to another attorney ("B") is filed, the second power
of attorney will be construed, even if there is no
revocation of the first power, as a written request to
change the correspondence address from A to B, unless the
party or A directs otherwise.  Cf. TMEP 603.  Likewise, if
an attorney makes an appearance on behalf of a party, and
thereafter the party files a written power of attorney to
another attorney, the Board will send subsequent
correspondence to the appointed attorney.

If a power of attorney from a party to one attorney ("A")
has been filed, and thereafter A files an "associate power
of attorney" to another attorney ("B"), the correspondence
address will remain unchanged, and the Board will continue
to send correspondence to A, unless A or the party directs
otherwise.  Cf. TMEP 603.

If a power of attorney from a party to several attorneys
("A," "B," and "C") in the same firm ("XYZ") has been filed,
and thereafter A leaves the firm but does not file a request
that all future correspondence be sent to him or her, rather
than to B and/or C, the Board will continue to send
correspondence to B and/or C.  If A, after leaving firm XYZ,
does file a request that all future correspondence be sent
to him or her, rather than to B and/or C, the correspondence
address will be changed as requested.  If, however, B and C
object, and maintain that it is they, rather than A, who
continue to represent the party and are entitled to receive
correspondence, proceedings in the case will be suspended
until a designation of correspondence address by the party
has been submitted.

If oppositions or petitions for cancellation filed by
different opposers or petitioners against the same
application or registration are consolidated, or if an
opposition or petition for cancellation is filed by joint
opposers or petitioners, and the different plaintiffs are
represented by different attorneys or other authorized
representatives, rather than by the same one(s), the Board,
in its discretion, may request that the plaintiffs appoint
one lead counsel, to whom the Board may send correspondence
intended for the plaintiffs.  After the lead counsel has
been appointed, the Board will send one copy of any
forthcoming Board order, decision, or other communication to
the applicant or its attorney or other authorized
representative, and one copy to plaintiffs' lead counsel.
Lead counsel in turn will be responsible for making and
distributing copies of such Board correspondence to each
plaintiff or its attorney or other authorized
representative.  In these cases, the lead counsel is not
substituted for the separate counsel of each plaintiff, but
rather is responsible for coordinating the conduct of the
plaintiffs' cases.  A Board letter requesting the
appointment of lead counsel normally includes a detailed
explanation of the anticipated duties and responsibilities
of lead counsel.

In special circumstances, the Board, in its discretion, may
send a particular item of correspondence to more than one
address on behalf of a single party.  However, the Board
will not send correspondence to more than one address on
behalf of a single party on a continuing basis.



117.03  Continuation of Correspondence With Representative
in Application or Registration When Inter Partes Proceeding
Commences

In the case of a party whose application is the subject of a
Board proceeding, any appearance or power of attorney (or
designation of other authorized representative) of record in
the application file at the time of the commencement of the
Board proceeding is considered to be effective for purposes
of the proceeding, and correspondence will be sent initially
to that address.  See 37 CFR 2.105.  Thereafter, the
correspondence address may be changed in appropriate
circumstances.

However, in the case of a party whose registration is the
subject of a proceeding before the Board, any representation
which may be of record in the registration file at the time
of the commencement of the Board proceeding is not
considered to be effective for purposes of the Board
proceeding.  Rather, correspondence is sent to the
registrant itself unless and until an attorney makes an
appearance in the Board proceeding in the registrant's
behalf, or a written power of attorney is filed in the
proceeding by the registrant, or written authorization of
some other person entitled to be recognized is filed in the
proceeding by the registrant, or the registrant designates
in writing another address to which correspondence is to be
sent.  See 37 CFR 2.18 and 2.113.



117.04  Continuation of Correspondence with Representative
of Potential Opposer After Opposition is Filed

When an attorney is appointed in a power of attorney
accompanying an opposition, or makes an appearance by filing
an opposition on behalf of the opposer, correspondence will
be sent by the Board to that attorney, notwithstanding the
fact that another attorney or attorneys may have obtained
one or more extensions of time to oppose on behalf of the
opposer.  If, however, a power of attorney filed with an
opposition names several attorneys, and there is no
transmittal letter and no other indication as to which of
them is to have primary responsibility for the case and
receive correspondence, but one of the named attorneys
obtained an extension of time to oppose, correspondence will
be sent to that attorney; if none of the named attorneys
obtained an extension of time to oppose, correspondence will
be sent to the first named attorney.  Thereafter, the
correspondence address may be changed in appropriate
circumstances.



117.05  Correspondence After Revocation or Withdrawal

If the authority of a practitioner (i.e., attorney or other
authorized representative) to represent a party in a
proceeding before the Board is revoked, or the practitioner
is granted permission to withdraw upon request therefor to
the Board, and the party is not represented by any other
practitioner, correspondence will be sent to the party at
its address of record unless another practitioner puts in an
appearance, or a written appointment of another practitioner
is filed, or the party designates in writing another address
to which correspondence is to be sent.



117.06  Correspondence With Foreign Party

If a party to a Board proceeding is not domiciled in the
United States and is not represented by an attorney or other
authorized representative located in the United States, or
by a foreign attorney or agent duly qualified under 37 CFR
10.14(c), correspondence will be sent to the party's
domestic representative.  See 37 CFR 2.24 and 2.119(d).



117.07  Change of Address

If a party to a Board proceeding or its attorney or other
authorized representative moves, a separate written notice
of the change of address should be filed with the Board.  It
is the responsibility of a party to a proceeding before the
Board to ensure that the Board has the party's current
correspondence address.  If a party fails to notify the
Board of a change of address, with the result that the Board
is unable to serve correspondence on the party, default
judgment may be entered against the party.

A party or its attorney or other authorized representative
should not assume that the inclusion of a new address on a
paper directed to another matter, or on the envelope in
which the paper is filed, is sufficient to notify the Board
of a change of address.  Mail sent to the PTO is opened in
the PTO Mail Room, and ordinarily the envelopes are
discarded there before the mail is sent on to its ultimate
destination within the PTO.  Thus, the Board rarely sees the
return addresses on the mailing envelopes of papers filed in
Board proceedings.  Moreover, while it is the normal
practice of the Board to check the address on newly filed
papers and to change its records to reflect any noted change
of address, the Board has no obligation to do so.  The
responsibility for any failure to receive correspondence due
to a change of address of which the Board has not been given
separate written notice lies with the party or its attorney
or other authorized representative.



117.08  Individual Not Entitled to Represent Others

An individual who is not entitled, under 37 CFR 10.14(a),
(b), or (c), to practice before the PTO in trademark cases,
will not be permitted to represent a party in a proceeding
before the Board, and may not file papers on behalf of the
party.  Cf. TMEP 602.04.  If it comes to the attention of a
Board attorney that such an individual is attempting to
represent a party in a Board proceeding, the Board attorney
will bring the matter to the attention of the Chairman of
the Board, who will coordinate appropriate action with the
Office of Enrollment and Discipline.  Moreover, no Board
correspondence intended for the party will be sent to the
individual.  Rather, such correspondence will be sent by the
Board to the party itself, or to the party's attorney or
other authorized representative entitled to practice before
the PTO in trademark cases.  See 37 CFR 2.18.



118  Payment of Fees

118.01  Lists of Fees and Charges

A list of the fees and charges established by the PTO for
trademark cases may be found in 37 CFR 2.6.

A list of fees and charges established by the PTO for
miscellaneous services may be found in 37 CFR 1.21.



118.02  Fees Payable in Advance

37 CFR 1.22 Fees payable in advance.
(a) Patent and trademark fees and charges payable to the
Patent and Trademark Office are required to be paid in
advance, that is, at the time of requesting any action by
the Office for which a fee or charge is payable with the
exception that under 1.53 applications for patent may be
assigned a filing date without payment of the basic filing
fee.

(b) All patent and trademark fees paid to the Patent and
Trademark Office should be itemized in each individual
application, patent or other proceeding in such a manner
that it is clear for which purpose the fees are paid.



118.03  Method of Payment--In General

37 CFR 1.23 Method of Payment.
All payments of money required for Patent and Trademark
Office fees, including fees for the processing of
international applications ( 1.445), should be made in U.S.
specie, Treasury notes, national bank notes, post office
money orders, or by certified check.  If sent in any other
form, the Office may delay or cancel the credit until
collection is made.  Money orders and checks must be made
payable to the Commissioner of Patents and Trademarks.
Remittances from foreign countries must be payable and
immediately negotiable in the United States for the full
amount of the fee required.  Money sent by mail to the
Patent and Trademark Office will be at the risk of the
sender; letters containing money should be registered.

It is the practice of the PTO to routinely accept, as
"conditional" payment of a fee, a signed uncertified check.
If such a check is returned for insufficient funds, the fee
remains unpaid, and the filing date of the fee will be the
filing date of any resubmitted adequate payment.  See In re
Cantatore, 231 USPQ 742 (Comm'r 1986).  An unsigned check
will be returned to its sender, but the Commissioner has the
discretion to accept such a check, as "conditional" payment,
upon petition showing sufficient cause therefor.  See Dubost
v. U.S. Patent and Trademark Office, 777 F.2d 1561, 227 USPQ
977 (Fed. Cir. 1985), on remand, In re Dubost, 231 USPQ 887
(Comm'r 1986).

For further information concerning how and where to file
fees, see TBMP 107.



118.04  Method of Payment--Deposit Accounts

For the convenience of attorneys and the general public in
paying fees and charges to the PTO, deposit accounts may be
established in the PTO.  For information concerning the
establishment of a deposit account in the PTO, see 1.25.

The fees for filing an ex parte appeal to the Board, an
opposition, and a petition for cancellation, may all be
charged to a deposit account, provided that the requirements
of 37 CFR 1.25 are met.  However, the charging of a fee
against an account that does not contain sufficient funds to
cover it cannot be regarded as payment of the fee.  See 37
CFR 1.25(b).  Thus, the overdrawing of a deposit account
may result in the loss of a vital date.  See  notice at 824
TMOG 1200 (February 23, 1966)..



118.05  Method of Payment--Coupons

For the convenience of the general public, the PTO sells
coupons for use in purchasing copies of trademark
registrations, patents, designs, defensive publications, and
statutory invention registrations.  For information
concerning these coupons, see 37 CFR 1.24.



119  Papers and Fees Generally Not Returnable

119.01  Fee Refunds--General Rule

37 CFR 1.26 Refunds.
(a) Money paid in excess will be refunded, but a mere change
of purpose after the payment of money, as when a party
desires to withdraw an application, an appeal, or a request
for oral hearing, will not entitle a party to demand such a
return.  Amounts of twenty-five dollars or less will not be
returned unless specifically requested within a reasonable
time, nor will the payer be notified of such amount; amounts
over twenty-five dollars may be returned by check or if
requested, by credit to a deposit account.

                        *     *     *



119.02  Papers and Fees--Ex Parte Cases

After an application has received a filing date, papers
filed in connection therewith, including ex parte appeal
papers, will not normally be returned.  See  37 CFR 2.25.

If a notice of appeal to the Board from an Examining
Attorney's final refusal is late filed, the appeal will not
be entertained, the application will be abandoned, the
notice of appeal will be retained in the application file,
and any appeal fee submitted therewith will be refunded.  If
a notice of appeal is filed prematurely, the appeal will not
be entertained, the notice of appeal will be retained in the
application file, the application will be returned to the
Examining Attorney for further appropriate action, and
applicant will be advised that if a timely appeal is
subsequently filed in the case, any fee submitted with the
premature appeal will be applied thereto, or, if no timely
appeal is filed, applicant may request a refund of any such
fee.

If a final refusal to register is withdrawn by the Examining
Attorney, and the application is approved for publication,
following which the applicant, not knowing that the
application has been approved for publication, files a
notice of appeal, the appeal will not be instituted, the
notice of appeal will be retained in the application file,
and any appeal fee submitted therewith will be refunded.  In
such a case, the notice of appeal, and appeal fee, are
considered to have been filed in excess, rather than by
change of purpose, since at the time of its filing, the
appeal was unnecessary.  If, however, the Examining Attorney
withdraws the refusal to register, and approves the
application for publication, after an appeal to the Board
has been filed, the appeal will be dismissed as moot, and
the appeal fee will not be refunded (the appeal having been
necessary at the time of its filing).



119.03  Papers and Fees--Inter Partes Cases

After an inter partes proceeding before the Board has been
filed, papers and other materials filed in connection
therewith normally will not be returned, except that
exhibits to testimony, and confidential materials filed
under a protective order, ordinarily are returned, after the
conclusion of a proceeding, to the party which filed them.
Cf. TBMP 806.

However, if, because of a defect in an opposition or a
petition for cancellation filed with the Board, a proceeding
is not instituted, the papers will be returned to the party
which filed them, and any fee submitted therewith will be
refunded.

For example, if an opposition is filed after the time for
opposing has expired; or is filed unsigned, and a signed
copy is not submitted within the time limit set in the
notification of this defect by the Board; or is filed
without the required fee, and the fee is not submitted
within the time allowed by the Board; or if the opposed
application was abandoned before the opposition was filed
(see TBMP 307.11), no proceeding will be instituted, the
opposition papers will be returned, and any fee submitted
therewith will be refunded.

If an opposition filed during an extension of time to oppose
is in the name of someone other than the person who obtained
the extension, and the opposer is unable to show, pursuant
to 37 CFR 2.102(b), that it is in privity with the person
who obtained the extension, or that the person in whose name
the extension was requested was misidentified by mistake, no
proceeding will be instituted, the opposition papers will be
returned, and any fee submitted therewith will be refunded.

If an opposition or a petition for cancellation is filed
prematurely (i.e., prior to publication of the subject mark
in the Official Gazette for purposes of opposition, or prior
to issuance of a registration of the subject mark,
respectively), no proceeding will be instituted, the papers
will be returned, and any fee submitted therewith will be
refunded.

If a petition to cancel a Principal Register registration
that is more than five years old does not allege any ground
upon which such a registration can be cancelled (see Section
14 of the Act of 1946, 15 U.S.C. 1064), no proceeding will
be instituted, the petition papers will be returned, and any
fee submitted therewith will be refunded.

If a petition for cancellation is filed with respect to a
registration which, at the time of the filing of the
petition, was not a "live" registration (i.e., the time for
filing an affidavit of use under Section 8 of the Act of
1946, 15 U.S.C. 1058, had expired, and no acceptable
affidavit had been filed; the registration had already been
cancelled as the result of a previous cancellation
proceeding; etc.), no proceeding will be instituted, the
petition papers will be returned, and any fee submitted
therewith will be refunded.

If a party files an opposition or a petition for
cancellation, and immediately thereafter changes its mind,
and requests that the opposition or petition for
cancellation not be instituted and that the papers be
returned, the request ordinarily will be denied, and the
proceeding will be instituted, unless there is a defect in
the opposition or petition for cancellation which precludes
institution, in which case no proceeding will be instituted,
the papers will be returned, and any fee submitted therewith
will be refunded..




120  Proceeding Files and Exhibits

120.01  Description of Files

Papers in proceedings before the Board (both those filed by
parties, and those mailed by the Board) are kept in three-
fold manila file wrappers or jackets, known simply as
"files."  In the case of an ex parte appeal, the papers are
simply added to the existing application file (described in
TMEP 710).

In the case of a "potential opposition," that is, when the
mark in an application has been published in the Official
Gazette for purposes of opposition, and a request for
extension of time to oppose has been filed pursuant to 37
CFR 2.102, but no opposition has yet been filed, the papers
relating to the potential opposition are fastened by the
Board to the inner left-hand side of the application file in
question.  In the event that an opposition is ultimately
filed, the potential opposition papers are removed from the
application file and placed instead in the file of the new
opposition.

When an inter partes proceeding is commenced, a proceeding
file is set up by the Board, and the proceeding papers are
placed on prongs at the top of the inside center portion of
the file, in inverse order by date of receipt in the PTO or
mailing by the Board, so that the oldest paper is on the
bottom of the prongs, and the most recent paper is on top.
A numbered chronological list of proceeding docket entries,
that is, of the papers and other materials filed and mailed
in the proceeding, appears on the inside right-hand side of
the file.  The outside center portion, or "front," of the
file bears information identifying the proceeding to which
the file pertains, i.e., the proceeding name and number, the
number(s) of the application(s) or registration(s) which is
(are) the subject matter of the proceeding, the initials of
the Board interlocutory attorney to whom the case has been
assigned, etc.  The outer left-hand side of the file bears
the name of each party and each party's correspondence
address (if a party is represented by counsel, the
correspondence address usually consists of the name and
address of such counsel).

Because of their bulkiness, deposition transcripts, exhibits
thereto, and inter partes briefs on the case are not placed
on the prongs in the proceeding file, and hence may be filed
in bound form..  If a proceeding paper, other than a
deposition transcript, an exhibit thereto, or an inter
partes brief on the case, is filed in bound form, the Board
must remove the binding in order to place the paper on the
proceeding file prongs.  Thus, proceeding papers, with the
noted exceptions, should not be filed in bound form.

For information concerning the disposition of inter partes
proceeding files and exhibits after the proceeding has
ended, see TBMP 806.



120.02  Storage of Files and Exhibits

The files of pending Board inter partes proceedings,
together with the files of the applications or registrations
which are the subject matter of the proceedings, are stored
in the Board's offices.  They are kept on shelves, where
they are arranged in terminal two-digit numerical order.
When a paper is filed in connection with a proceeding, or it
is time for the Board to take some action in the proceeding,
the proceeding file is removed from the shelf for entry and
consideration of the paper, drafting of the action, etc.
When a case is ready for a final decision on the merits,
everything pertaining to the proceeding is given to the
Board Member assigned to draft the decision.

The files of applications which are on appeal to the Board,
and the files of applications with "potential oppositions,"
are also stored at the offices of the Board.  They too are
kept on shelves, in terminal two-digit numerical order.

Exhibits (and the like), filed in connection with pending
Board inter partes and ex parte proceedings, often are too
bulky to put in the proceeding files.  These exhibits are
kept in the boxes or envelopes in which they were mailed,
or, sometimes, in PTO inter-office envelopes.  Information
clearly identifying the proceedings to which the packages of
exhibits pertain is prominently written on the outside of
each box and envelope.  Those bulky exhibits which are kept
in envelopes are stored together on shelves (separate from
the proceeding files) in terminal two-digit numerical order.
Those bulky exhibits which are so large that they must be
kept in boxes are stored together in a room at the offices
of the Board.

For information concerning the disposition of inter partes
proceeding files and exhibits after the proceeding has
ended, see TBMP 806.



120.03  Storage of Confidential Materials

Confidential materials filed under seal pursuant to a
protective order (see 37 CFR 2.27, 2.120(f), and 2.125(e);
and TBMP 416, 526, and 713.16) in a pending Board
proceeding are stored by the Board in a locked file cabinet.
These materials may include certain responses to discovery
requests, exhibits, portions of deposition transcripts, or
portions of briefs.  As in the case of nonconfidential
exhibits, the boxes or envelopes in which these materials
are kept are clearly marked with information identifying the
proceedings to which the materials pertain.  In addition,
the designation "Cab." is written both on the boxes or
envelopes and on the numbered list of docket entries in the
pertinent proceeding files, next to the entry relating to
the confidential materials.



121  Access to Files

37 CFR 2.27(d) Except as provided in paragraph (e) of this
section, after a mark has been registered, or published for
opposition, the file of the application and all proceedings
relating thereto are available for public inspection and
copies of the papers may be furnished upon paying the fee
therefor.

37 CFR 2.27(e) Anything ordered to be filed under seal
pursuant to a protective order issued or made by any court
or by the Trademark Trial and Appeal Board in any proceeding
involving an application or a registration shall be kept
confidential and shall not be made available for public
inspection or copying unless otherwise ordered by the court
or the Board, or unless the party protected by the order
voluntarily discloses the matter subject thereto.  When
possible, only confidential portions of filings with the
Board shall be filed under seal.



121.01  Nonconfidential Files

Except for materials filed under seal pursuant to a
protective order, the files of applications and
registrations which are the subject matter of pending
proceedings before the Board, all pending proceeding files
and exhibits thereto, and the files of applications which
are the subject matter of "potential oppositions," are
available for public inspection and copying at the offices
of the Board.  See 37 CFR 2.27.

An individual who wishes to inspect and/or copy one of the
these files may come to the Board's reception desk, where
the Board keeps a log of file requests, and ask for the
file.  The individual must identify the file by its number,
so that it may be located by the Board.  Once the file has
been located, the Board will call the individual and tell
him or her that the file is available.  When the individual
returns, the file will be given to him or her for inspection
and/or copying on the premises of the Board.  Files or
portions thereof may not be taken away from the offices of
the Board, and a person who removes papers from a file for
copying at the offices of the Board should always return the
papers to the file in their proper order.

To save time, an individual who wishes to inspect a file
which is in the possession of the Board may call and ask
that the file be located.  When the file has been located,
the Board will call the individual back to tell him or her
that the file is available.

For information concerning access to the files of cases
which are on appeal from a decision of the Board, see TBMP
904.



121.02  Confidential Materials

Materials filed with the Board under seal pursuant to a
protective order issued by any court or by the Board will be
kept confidential and will not be made available for public
inspection or copying unless otherwise ordered by the court
or the Board, or unless the party protected by the order
voluntarily discloses the matter subject thereto.  These
materials may be inspected only by those individuals who are
entitled, under the terms of the protective order, to have
access to the protected information.  See 37 CFR 2.27(e).



121.03  Files of Terminated Proceedings

When an inter partes proceeding has been finally determined,
i.e., when the proceeding is over, the PTO takes certain
further steps based on the final decision, including those
steps necessary to give effect to the decision.  This
process is referred to as the "termination" of the
proceeding.  For example, when a decision dismissing an
opposition has become final, the word "TERMINATED" is
stamped on the file of the opposition proceeding, the
opposition file is sent to the warehouse where the files of
terminated proceedings are stored, and the registration
sought by the applicant is issued.  See TBMP 806.

The files of terminated inter partes proceedings are stored
by the PTO in a warehouse.  The files of existing
registrations; registrations which expired or were cancelled
within the last two years; and applications abandoned within
the last two years, are also stored in a warehouse.

The files of cancelled and expired registrations are
destroyed two years after the date of cancellation or
expiration; the files of abandoned applications are
destroyed two years after the date of abandonment.  In
addition, the files of terminated opposition proceedings
numbered from 30,000 through 53,999, and of terminated
cancellation proceedings numbered from 1 through 9399, have
been destroyed.

An individual who wishes to inspect and/or copy a file
stored by the PTO in a warehouse can go to the Public
Service Window located on the second floor of the South
Tower building, 2900 Crystal Drive, Arlington, Virginia, and
place an order for the file.  Alternatively, the individual
can order the file electronically from a computer terminal
located in the Trademark Search Library, or from a computer
terminal located in the Patent Search Room.  Within a few
days, the PTO will obtain the ordered file from the
warehouse, and make it available to the individual for
inspection and/or copying at the Trademark Search Library.
The file may not be taken away from the premises of the
Trademark Search Library.  See TMEP 303.02.



122  Copying of Files

The Board has, on its office premises, a photocopier which
is intended for use by members of the public who wish to
photocopy files, exhibits, or other materials in the
possession of the Board.  Payment for use of the machine is
made by way of a magnetic card, known as a "copy card,"
which may be purchased at, inter alia, the PTO Finance
Window located on the third floor of the South Tower
Building, 2900 Crystal Drive, Arlington, Virginia, or from a
machine located in the Trademark Search Library on the
second floor of the South Tower Building..  The photocopier
will not operate until such a card has been inserted in it.

Files or portions thereof may not be taken away from the
offices of the Board, and a person who removes papers from a
file for copying at the offices of the Board should always
return the papers to the file in their proper order.

Alternatively, the PTO will furnish photocopies (either
certified or uncertified) of trademark application and
registration files, or of one or more papers therefrom, or
of papers from the files of Board proceedings, upon written
request and payment of the fee prescribed in 37 CFR 2.6.
The PTO will also furnish, upon written request and payment
of the fee prescribed in 37 CFR 2.6, printed copies of
trademark registrations, certified copies of registrations
with information as to the current status and title of the
registration, and abstracts of title to trademark
applications and registrations.

All requests for certified and uncertified copies of
trademark documents relating to applications or
registrations, including copies of papers from the files of
Board proceedings, and abstracts of title, are handled by
the PTO's Certification Division, Office of Public Records.
If a written request (with the required fee) for copies is
mailed to the PTO, it should be addressed to the
Commissioner of Patents and Trademarks, Box 10,
Certification Division, Washington, D.C. 20231.  The written
request, with fee, may also be delivered by hand to the
Public Service Window at 2900 Crystal Drive, South Tower
Building, Second Floor, Arlington, Virginia 22202-3513; or
to the Office of Public Records, 2800 Crystal Drive, North
Tower Building, Tenth Floor, Arlington, Virginia 22202-3513;
or to the Attorneys' Window at 2201 S. Clark Place, Crystal
Plaza Building 4, First Floor, Arlington, Virginia 22202.
Finally, if the written request includes an authorization to
charge the required fee to a deposit account, the request
may be sent by facsimile transmission to (703) 308-7048.
See "Notice of a Change in Procedure Regarding Requests for
Certification Services," 1165 TMOG 13 (August 2, 1994).



123  Certification

123.01  Court Requirements

If a copy of a Board proceeding file, or a portion thereof,
is needed for use before a district court, the court may
require a certified copy (which bears a seal).  Some
district courts, however, will accept a verification letter
(which does not bear a seal) by the Board, together with a
plain photocopy of the proceeding file or portion thereof.

An individual who needs a copy of a Board proceeding file,
or a portion thereof, for use in a district court should
contact the clerk of the court to determine whether the
court will accept a Board verification letter, or will
require a formal certified copy.

A paper cannot be certified or verified by the PTO as being
a true copy of a paper filed in a Board proceeding unless
and until it has, in fact, been filed therein.  The paper
may be filed at the same time that the request for
certification or verification is made.



123.02  Certified Copies

Certified copies, bearing a seal, of PTO proceeding files,
including Board proceeding files, or portions thereof, may
be ordered from the PTO's Certification Division, Office of
Public Records, upon written request and payment of the
required fee.  See TBMP 122.



123.03  Verified Copies

The Board, upon proper request, will prepare a verification
letter, signed by the Board's Administrator (or, in the
Administrator's absence, by a Member of the Board), stating
that a particular proceeding (identified in the letter by
name and number), involving a specified application(s) or
registration(s), is pending before the Board, and that
attached to the letter is a true and correct copy of a paper
or papers (identified in the letter by title and filing
date) filed in connection with that proceeding.

An individual who wishes to obtain a verification letter
from the Board may bring to the Offices of the Board a
photocopy of the matter to be verified, or make a photocopy
thereof at the Board's offices (see TBMP 122).  The Board
Administrator or Member will compare the photocopy with the
file original, to verify that it is a true copy, before
signing the verification letter.  If necessary (that is, if
required by the court before which the verification letter
is to be used), the signature of the Board Administrator or
Member may be notarized.

Board verification letters normally will be prepared by the
Board immediately, on a "while you wait" basis.  To save
time, it is recommended that an individual seeking such a
letter call the Board in advance of his or her visit and ask
that the involved proceeding file be located and pulled
prior to the visit.

An individual who is unable to come to the offices of the
Board, or to send a local representative, but needs to
obtain a Board verification letter quickly, may send a
written request therefor (addressed to the Board at its
physical location and including a photocopy of the matter to
be verified) by any overnight courier service, and enclose a
prepaid self-addressed overnight courier return envelope.
In those cases where time is not of the essence, a written
request for a verification letter may be sent to the Board
by mail.  When a request for a verification letter is sent
to the Board by mail or by overnight courier, the individual
sending the request should notify the Board's Administrator
thereof by telephone so that the Administrator can watch for
the request and respond to it as soon as it arrives at the
offices of the Board.

The Board will issue other types of verification letters as
well.  For example, the Board may issue, upon request
therefor, a verification letter stating simply that a
particular proceeding (identified in the letter by name and
number) involving a specified application or registration is
pending before the Board; or that a specified application or
registration is not the subject of any proceeding presently
pending before the Board; or that a particular opposition
(identified in the letter) to a specified application is
pending before the Board, and no certificate of registration
can be issued to the applicant unless and until the
opposition is ultimately terminated in applicant's favor.

There is no fee for a Board verification letter.



124  Application and Registration Status Information

The PTO maintains a Trademark Status Line which provides
access, by push-button telephone, to current status, status
date (i.e., the date that a record entered its current
status), and status location information for all active
Federal trademark application and registration records
maintained in the automated Trademark Reporting and
Monitoring (TRAM) System.  See In re Sovran Financial Corp.,
25 USPQ2d 1537 (Comm'r 1992).  The line is available on
(703) 305-8747 from 6:30 a.m. until midnight, Eastern Time,
Monday through Friday (except for Federal holidays).

For further information concerning the Trademark Status
Line, see TMEP 413, and notices at 1112 TMOG 49 (March 27,
1990) and 1132 TMOG 33 (November 19, 1991).



125  Action by Assignee

When a mark which is the subject of a Federal application or
registration has been assigned, together with the
application or registration, in accordance with Section 10
of the Act, 15 U.S.C. 1060, any action with respect to the
application or registration which may or must be taken by
the applicant or registrant may be taken by the assignee
(acting itself, or through its attorney or other authorized
representative), provided that the assignment has been
recorded or that proof of the assignment has been submitted.
See 37 CFR 3.71 and 3.73(b).  Similarly, when a mark which
is not the subject of a Federal application or registration,
but which is owned and pleaded by a plaintiff in a Board
inter partes proceeding, has been assigned, the assignee may
act in the proceeding (either itself, or through its
attorney or other authorized representative) in place of the
assignor, provided that proof of the assignment has been
submitted in the proceeding.  See  TBMP 512.01.

