DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. 010723184-118401]
RIN 0651-AB30
Establishment of a Database Containing the
Official Insignia of Federally and State Recognized
Native American Tribes
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Procedures for establishment and maintenance of a database of the
official insignia of federally and state-recognized Native American tribes.
SUMMARY: The United States Patent and Trademark Office (USPTO) is
announcing the procedures it will follow in creating and maintaining
a database of the official insignia of federally and state-recognized
Native American tribes. The database, recommended in a report required
by the Trademark Law Treaty Implementation Act, will assist examining
attorneys in their examinations of applications for registration.
SUPPLEMENTARY INFORMATION: The Trademark Law Treaty Implementation Act,
Pub. L. 105-330, 302, 112 Stat. 3071 (1998) required the USPTO to
study issues surrounding protection of the official insignia of federally
and state-recognized Native American tribes. The study was conducted,
and a report was presented to the Chairman of the Committee on the
Judiciary of the Senate and to the Chairman of the Committee on the
Judiciary of the House of Representatives on November 30, 1999
(hereinafter "the Report").
One of the recommendations set forth in the Report was that the
USPTO create and maintain an accurate and comprehensive database of the
official insignia of Native American tribes.
On January 9, 2001, the USPTO published a notice in the Federal Register
describing the proposed procedures for creating and maintaining the
database (Federal Register, Vol. 66, No. 6), and requesting comments on
these procedures.
Two parties submitted responses to the January 9, 2001
Federal Register Notice. One party submitted a comment
regarding the proposed procedures for creating and maintaining the
database, a request that the USPTO extend the time for submitting
comments regarding the database, and a suggestion that the USPTO allow
third parties to object to particular requests for entries of insignia
in the database. Additionally, that party, as well as the other party
that submitted a response, objected to the creation of the database.
Acceptable Form for Insignias
The proposed procedures published in the notice of January 9, 2001,
provided that, if an insignia consists solely of a word or words,
then the request to enter that insignia in the database should include
a depiction of the word or words in uppercase letters.
Comment: One comment suggested that the proposed procedures should not
have allowed parties to submit requests to record matter comprised solely
of words. This comment noted that the Report suggested that words, by
themselves, could not function as official insignia of Native American
tribes. Instead, the Report provided that insignia would be defined as
"flag or coat of arms or other emblem or device of any federally or
state-recognized Native American tribe, as adopted by tribal resolution
and notified to the U.S. Patent and Trademark Office." Accordingly, the
comment suggested that the database not include entries of matter comprised
solely of words.
Response: The suggestion has been adopted. The procedures
for requesting entry of an insignia in the database have been modified
to delete the reference to insignia composed solely of words, and to
clarify that in order to be entered into the database, an insignia must
consist of a flag or coat of arms or other emblem or device of any
federally or state-recognized Native American tribe, as adopted by
tribal resolution.
Propriety of Creating and Maintaining the Database of
Insignia of Federally and State Recognized Native American Tribes
Two comments suggested that the USPTO should not establish a
database of insignia of federally and state-recognized Native American
Tribes. Both of these comments argued that the establishment of the
database will confer rights on Native American Tribes that are not
enjoyed by other groups. Additionally, both comments also argued that
the USPTO would incur substantial costs in maintaining the database.
Response: The USPTO does not believe that entry of the
official insignia of a Native American Tribe in the database will
confer any rights on that tribe. The presence of an insignia in the
database will not create any legal presumption of validity or priority,
and none of the benefits of Federal trademark registration will accrue
to a Native American tribe whose insignia is recorded pursuant to this
notice. The sole function of the database will be to assist examining
attorneys in their examination of applications for registration.
The USPTO believes that it currently has adequate resources to create
and maintain the database. Additionally, it is noted that the database
is being created pursuant to one of the recommendations of the Report.
The Senate Appropriations Committee directed the USPTO to comply with
this recommendation by creating and maintaining the database. See
Senate Report 106-404 and H. Report 106-1005.
Time for Submitting Comments
One comment suggested that if comments regarding the proposed
procedures were not received from each of the thirty-six entities who
commented on the Report, then the USPTO should extend the period for
commenting on the proposed procedures.
Response: The USPTO does not believe that it is necessary to
extend the comment period. The USPTO believes that the thirty-day
period provided for submitting comments was sufficient to allow all
interested parties to prepare and submit comments.
Third Party Objections to Entry of Insignia
One comment suggested that establishment of the database would
require the USPTO to accept and consider objections from third parties
to the recordal of particular insignia.
Response: The USPTO does not believe that it should consider
third party objections to entries of insignia in the database. The
entry of an insignia will not confer any rights on the tribe that
submitted the insignia. The sole function of the database will be to
assist examining attorneys in their examination of applications for
registration. Because no rights will accrue from entries of insignia
into the database, it is unlikely that there can be any grounds for
objecting to these entries.
Procedures for Submitting Requests for Entry of Insignia in the Database
of Insignia of Federally and State Recognized Native American Tribes
All requests to enter an official insignia of a Native American
tribe into the USPTO database must be in writing, addressed to the
Commissioner for Trademarks, and must include the following:
(1) A depiction of the insignia. This depiction should not be larger
than 4 inches by 4 inches (10.3 cm. by 10.3 cm.), and should be placed
at or near the center of a sheet of white paper 8 to 8 1/2 inches (20.3
to 21.6 cm.) wide and 11 inches (27.9 cm.) long. The paper should have
a heading that includes the name of the tribe and the address for
correspondence;
(2) A copy of the tribal resolution adopting the insignia in question
as the official insignia of the tribe;
(3) A statement, signed by an official with authority to bind the
tribe, confirming that the insignia included with the request is
identical to the official insignia adopted by tribal resolution; and
(4) For all entities not recognized as Native American tribes by the
Bureau of Indian Affairs (BIA), either: (a) a document issued by a
state official that evidences the state's determination that the entity
is a Native American tribe, or (b) a citation to a state statute
designating the entity as a Native American tribe.
The request should be sent by facsimile to (703) 872-9192, or mailed to
the Commissioner for Trademarks at the following address: P.O. Box
16471, Arlington, Virginia 22215.
The insignia must consist of a flag or coat of arms or other emblem or
device of any federally or state-recognized Native American tribe, as
adopted by tribal resolution. A word or words alone will not be
considered an insignia, and will not be entered in the insignia
database.
The USPTO will record any official insignia of a Native American tribe
submitted in the manner described above, if the Commissioner determines
that the entity that submitted the request is a Native American tribe
recognized by the Federal Government or by one or more state
governments.
The Commissioner will determine whether the entity that submitted the
request is a federally recognized Native American tribe by consulting
the list of Native American tribes maintained by the BIA.
If an entity seeking recordal of its insignia wishes to demonstrate
that it is a state-recognized Native American tribe rather than a
federally recognized Native American tribe, that entity must provide
the Commissioner with either: (1) A document issued by a state official
that evidences the state's determination that the entity is a Native
American tribe, or (2) a citation to a state statute designating the
entity as a Native American tribe.
The USPTO will begin to accept requests to record insignia one week
after the publication of this notice.
Legal Significance of Recordal
The recordal of an official insignia of a Native American tribe
at the USPTO will not be the equivalent of registering that insignia as
a trademark pursuant to 15 U.S.C. 1051 et seq. Thus,
including an insignia in the USPTO's database will not create any legal
presumption of validity or priority, and none of the benefits of
federal trademark registration will accrue to a Native American tribe
whose insignia is recorded pursuant to this notice.
Acceptance of the insignia for recordal will not be a determination as
to whether a particular insignia for which recordal has been requested
would be refused registration as a trademark pursuant to 15 U.S.C. 1051
et seq., or to some provision of Chapter 37 of the Code of
Federal Regulations, or to any requirement of the USPTO.
The USPTO will use the official insignia recorded by the USPTO as
information useful in the examination of certain applications for
registration of trademarks and as evidence of what a federally or
state-recognized tribe considers to be its official insignia.
The database of official insignia of Native American tribes will be
included, for informational purposes, within the USPTO's database of
material that is not registered but is searched to make determinations
regarding the registrability of marks. This database is available at
the USPTO's web site. Inclusion of official insignia in this database
will ensure that an examining attorney, who is searching a mark that is
confusingly similar to an official insignia will find and consider the
official insignia before making a determination of registrability.
For correspondence pertaining to the database of official insignia of
Native American tribes, the Under Secretary of Commerce for
Intellectual Property and Director of the United States Patent and
Trademark Office has waived the requirement of 37 CFR 1.1 that all
correspondence intended for the United States Patent and Trademark
Office be mailed to one of the addresses identified in 37 CFR 1.1.
The USPTO is in the process of requesting approval for establishment of
the database under the Paperwork Reduction Act from the Office of
Management and Budget.
The USPTO has determined that the proposed establishment of the
database has no federalism implications affecting the relationship
between the National Government and the State as outlined in Executive
Order 13132. The USPTO has further determined that the proposed
establishment of the database has no tribal implications as described
in Executive Order 13175.
FOR FURTHER INFORMATION CONTACT: Ari Leifman by
telephone at (703) 308-8900, or by mail addressed to: P.O. Box 16471,
Arlington, Virginia, 22215, or by facsimile to (703) 872-9285, marked
to the attention of Ari Leifman.
August 20, 2001 NICHOLAS P. GODICI
Acting Under Secretary of
Commerce for Intellectual Property and
Acting Director of the
United States Patent and Trademark Office