(484) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
Docket No. PTO-T-2010-0014
RIN 0651-AC39
Trademark Technical and Conforming Amendments
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Interim final rule with request for comments.
SUMMARY: The United States Patent and Trademark Office ("USPTO") is amending
the Rules of Practice in Trademark Cases to implement the Trademark Technical
and Conforming Amendment Act of 2010. The rule changes harmonize the framework
for submitting trademark registration maintenance filings to the USPTO by
permitting holders of international registrations with an extension of
protection to the United States under the Madrid Protocol ("Madrid Protocol
registrants") to file Affidavits or Declarations of Use or Excusable Nonuse
at intervals identical to those for nationally issued registrations. The
changes additionally allow all trademark owners to cure deficiencies in their
maintenance filings, including when the affidavit or declaration is not filed
in the name of the owner of the registration.
DATES: This rule is effective on June 24, 2010. Comments must be received by
August 23, 2010 to ensure consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic mail
message to TMFRNotices@uspto.gov. Written comments may also be submitted by
mail to Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451,
attention Cynthia Lynch; by hand-delivery to the Trademark Assistance Center,
Concourse Level, James Madison Building-East Wing, 600 Dulany Street,
Alexandria, Virginia, attention Cynthia Lynch; or by electronic mail message
via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web
site (http://www.regulations.gov) for additional instructions on providing
comments via the Federal eRulemaking Portal. The comments will be available
for public inspection on the Office's Web site at http://www.uspto.gov,
and will also be available at the Trademark Legal Policy Office, Madison
East, Fourth Floor, 600 Dulany Street, Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at (571) 272-8742.
SUPPLEMENTARY INFORMATION
Statutory Background
The Trademark Technical and Conforming Amendment Act of 2010 became
effective on March 17, 2010. Pub. L. No. 111-146, 124 Stat. 66 (2010). In
addition to making small technical and conforming corrections in Sections 7,
15, and 21 of the Lanham Act, 15 U.S.C. 1057, 1065, and 1071, the legislation
makes other more noteworthy changes to Sections 8 and 71, 15 U.S.C. 1058 and
1141k, regarding filing Affidavits or Declarations of Use or Excusable Nonuse
to maintain a registration.
Specifically, the legislation gives Madrid Protocol registrants the benefit
of six-month grace periods immediately following the statutory time periods
for filing their trademark registration maintenance documents under Section
71, 15 U.S.C. 1141k. Previously, no grace period existed at the end of the
six-year period following the date of registration in the U.S., and only a
three-month grace period existed following the expiration of each successive
10-year period following registration. The new grace periods match those
already provided to all other trademark owners for submitting maintenance
filings to the USPTO.
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In addition, the legislation allows all trademark owners to cure
deficiencies in their post-registration maintenance filings outside of the
statutory filing period upon payment of a deficiency surcharge, specifically
including when affidavits or declarations are not filed in the name of the
owner of the registration. Previously, the statute did not provide Madrid
Protocol registrants with the opportunity to correct deficiencies in their
maintenance filings and allowed all other trademark owners to correct
deficiencies outside of the statutory filing period upon payment of the
surcharge, except when an affidavit or declaration was not filed in the name
of the owner.
The interim final rule revises 37 CFR Parts 2 and 7 to implement the
Trademark Technical and Conforming Amendment Act of 2010, as referenced above.
It applies to all maintenance filings pending with the USPTO as of March 17,
2010, the effective date of the legislation.
References to "the Act," "the Lanham Act," "the Trademark Act," or "the
statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as
amended.
Rule Making Considerations
The changes made in this interim final rule constitute interpretative rules
or rules of agency practice and procedure and are not subject to the
requirement for the publication of prior notice of proposed rule making. See
The Administrative Procedure Act ("APA"), 5 U.S.C. 553(b)(3)(A). The rule
changes relate solely to the procedures for maintaining a Federal trademark
registration, and merely implement the Trademark Technical and Conforming
Amendment Act of 2010, so that the Rules of Practice in Trademark Cases are
consistent with the statutory revisions. Thus, they qualify as interpretative
rules or rules of agency practice and procedure under 5 U.S.C. 553(b)(A),
and prior notice and an opportunity for public comment are not required
pursuant to 5 U.S.C. 553(b)(A) (or any other law). See Cooper Techs. Co. v.
Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 1710 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require
notice and comment rule making for "`interpretative rules, general statements
of policy, or rules of agency organization, procedure, or practice.'" (quoting
5 U.S.C. 553(b)(A)), Bachow Communications Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are "rules of agency
organization, procedure, or practice" and are exempt from the APA's notice and
comment requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543,
1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice
promulgated under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C.
2(b)(2)) are not substantive rules (to which the notice and comment
requirements of the APA apply)), and Fressola v. Manbeck, 36 USPQ2d 1211,
1215 (D.D.C. 1995) ("[i]t is extremely doubtful whether any of the rules
formulated to govern patent or trade-mark practice are other than
`interpretive rules, general statements of policy, . . . procedure, or
practice.'") (quoting C.W. Ooms, The United States Patent Office and the
Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)). Accordingly,
prior notice and an opportunity for public comment are not required pursuant
to 5 U.S.C. 553(b)(A) (or any other law), and thirty-day advance publication
is not required pursuant to 5 U.S.C. 553(d) (or any other law).
The establishment of a statutory deficiency surcharge in the amount of
$100 for Madrid Protocol registrants, who under the new legislation are now
afforded the opportunity to correct a deficiency outside the statutory time
period, comes in the context of making the treatment of Madrid Protocol
registrants' maintenance filing deficiencies consistent with those of non-
Madrid Protocol registrants. The legislative history reflects that, with full
awareness of the maintenance filing framework, including the $100 deficiency
surcharge already in existence for non-Madrid Protocol registrants, Congress
sought to establish that same framework for Madrid Protocol registrants. See,
e.g., 156 Cong. Rec. H1080 (daily ed. Mar. 3, 2010) (statement of Rep.
Johnson) ("However, due to a technical mistake in the Lanham Act, our
trademark laws unintentionally prevent trademark owners who file these
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affidavits for registering extensions under the Madrid Protocol from having
the same rights as other U.S. trademark owners. Compliance with regulations
should not reduce the rights of trademark owners. Today, we will harmonize
our laws with the Madrid Protocol so that this particular injustice no longer
occurs.") and 156 Cong. Rec. H1081 (daily ed. Mar. 3, 2010) (statement of Rep.
Coble) ("The main purpose of the bill is to bring provisions for maintaining
extensions of protection under Madrid in conformity with provisions for
maintaining registrations."). Thus, even the establishment of the $100
deficiency surcharge for Madrid Protocol registrants constitutes an
interpretative rule.
In the alternative, in the event these rule changes were deemed to require
notice and comment, the USPTO has concluded that it has good cause, under 5
U.S.C. 553(b)(B), to adopt the changes made in this interim final rule
without prior notice and opportunity for public comment, as such prior notice
and comment procedures would be impracticable, unnecessary, and contrary to
the public interest. The amendments made to the Trademark Act by the Trademark
Technical and Conforming Amendment Act of 2010 became effective on March 17,
2010, and thus apply to maintenance filings for registrations currently
pending before the USPTO. The Rules of Practice in Trademark Cases, however,
are currently inconsistent with, and do not reflect the benefits provided
by, the new legislation. To delay the conforming rule changes for prior notice
and comment, and leave the inconsistency in place, is impracticable. In order
to rectify the inconsistency as quickly and efficiently as possible, an
interim final rule is issued to eliminate the inconsistency between the
statute and the rules, while still affording the public the opportunity to
comment on the rule changes.
In addition, delaying the rule changes for prior notice and comment is
unnecessary because of the nature of the rule changes. As described above,
the rule changes merely track the statutory changes, negating the need to
consider public input on the substance of the rule changes prior to a final
agency determination.
Finally, delaying the rule changes for prior notice and comment would be
contrary to the public interest, as it could delay the implementation of the
benefits established by the legislation or lead to public confusion caused by
the inconsistency between the statute and the rules. This interim final rule,
making conforming rule changes and establishing the amount of the statutory
deficiency surcharge for Madrid Protocol registrants who wish to correct a
deficiency after the statutory deadline, serves the public interest by quickly
and efficiently implementing the new legislation, while still affording the
public the opportunity to comment on the rule changes.
The USPTO is interested in the public's input and requests public comments
regarding these amendments. Therefore, although the interim final rule is
effective upon publication, the USPTO will publish in the Federal Register a
response to any significant adverse comments received along with modifications
to the rule, if any.
Discussion of Specific Rules
The following amendments bring the Rules of Practice in Trademark Cases
into conformity with the Trademark Act, as amended by the Trademark Technical
and Conforming Amendment Act of 2010.
The Office is amending 37 CFR 2.160(a)(3), 2.161(d)(2), and 2.163(c) to
replace the references to "section 8(c)(1) of the Act" with "section 8(a)(3)
of the Act."
In addition, the Office is amending 37 CFR 2.160(a)(3) to add the wording
"per class" to be consistent with the requirements stated in 37 CFR
2.161(d)(2). Similarly, the Office is amending 37 CFR 2.161(d)(2) to replace
"late fee" with "grace period surcharge" to be consistent with the language
used in 37 CFR 2.160(a)(3) and 37 CFR 7.37(d)(2).
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The Office is amending 37 CFR 2.163(a) to replace "[i]f the owner of the
registration filed the affidavit or declaration" with "[i]f the affidavit
or declaration is filed." Similarly, the Office is amending 37 CFR 2.164(a)
to replace "[i]f the owner of the registration files the affidavit or
declaration" with "[i]f the affidavit or declaration is filed." These
revisions reflect the amendment to the Act providing that when an affidavit
or declaration is not filed in the name of the owner of the registration, it
is a correctable deficiency.
The Office is amending 37 CFR 2.163(b) to replace the reference to
"section 8(a) or section 8(b) of the Act" with "section 8(a) of the Act."
The Office is amending 37 CFR 2.164(a)(1) to replace the reference to
"sections 8(a) and 8(b) of the Act" with "sections 8(a)(1) and 8(a)(2) of the
Act," replace the reference to "section 8(a) or section 8(b) of the Act" with
"section 8(a)(1) or section 8(a)(2) of the Act," and replace the reference to
"the deficiency surcharge required by section 8(c)(2) of the Act" with "the
deficiency surcharge required by section 8(c) of the Act."
In addition, the Office is amending 37 CFR 2.164(a)(1) to replace "[i]f the
owner timely files the affidavit or declaration" with "[i]f the affidavit or
declaration is timely filed." This revision reflects the amendment to the Act
providing that when an affidavit or declaration is not filed in the name of
the owner of the registration, it is a correctable deficiency.
The Office is amending 37 CFR 2.164(a)(2) to replace the reference to
"grace period provided by section 8(c)(1) of the Act" with "grace period
provided by section 8(a)(3) of the Act" and replace the reference to
"deficiency surcharge required by section 8(c)(2) of the Act" with
"deficiency surcharge required by section 8(c) of the Act."
The Office is amending 37 CFR 2.164(b) to remove "or if it is filed within
that period by someone other than the owner," and "These deficiencies cannot
be cured." The deletions reflect the amendment to the Act providing that
when an affidavit or declaration is not filed in the name of the owner of the
registration, it is a correctable deficiency.
The Office is amending the heading for 37 CFR 2.168 to account for the
rule's applicability to affidavits or declarations under section 71 of the
Act.
The Office is amending 37 CFR 2.168(a) to add "[t]he affidavit or
declaration filed under section 15 of the Act may also be used as the
affidavit or declaration required by section 71, if the affidavit or
declaration meets the requirements of both sections 71 and 15." By allowing
Madrid Protocol registrants to combine their filings, the Office is
providing them with the same filing options available to all other trademark
owners.
The Office is adding 37 CFR 7.6(a)(8) to provide for the deficiency
surcharge for Madrid Protocol registrants now provided by the Act. Previously,
the Act did not confer authority on the USPTO to allow Madrid Protocol
registrants to correct deficiencies in their maintenance filings, but did
confer such authority with respect to the maintenance filings of other
trademark owners. The amendment of the Act eliminated this disparity, and
permits the USPTO to allow the correction of deficiencies in Madrid Protocol
registrants' maintenance filings after the statutory period with payment of
the deficiency surcharge. This surcharge is provided in order to give Madrid
Protocol registrants the same benefit available to all other trademark
owners, and the amount is the same as the deficiency surcharge applicable to
other trademark owners, provided in 37 CFR 2.6(a)(20).
The Office is amending 37 CFR 7.25(a) to remove the reference to § 2.168
since § 2.168 now applies to registered extensions of protection.
The Office is amending 37 CFR 7.36(b)(2) to account for the new time
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periods provided by the Act for filing the affidavits or declarations due
each successive ten-year period following registration. Previously, Madrid
Protocol registrants had a six-month window in which to make such filings.
They now have the benefit of a full year to make such filings, not including
the grace period. The new time periods match those given to other trademark
owners.
The Office is adding 37 CFR 7.36(b)(3) to account for the new grace periods
provided by the Act. Previously, for Madrid Protocol registrants, no grace
period existed at the end of the six-year period following the date of
registration and only a three-month grace period existed following the
expiration of each successive ten-year period following registration. Now,
Madrid Protocol registrants have the benefit of six-month grace periods
immediately following the statutory time periods. The newly enacted grace
periods match those given to other trademark owners.
The Office is adding 37 CFR 7.36(c) to be analogous to 37 CFR 2.160(b).
The Office is amending 37 CFR 7.37(d)(2) to replace the reference to
"section 71(a)(2)(B) of the Act" with "section 71(a)(3) of the Act."
The Office is amending the heading for 37 CFR 7.39 to account for the
ability of Madrid Protocol registrants to correct deficiencies in their
maintenance filings as provided by the Act.
The Office is adding introductory text to 37 CFR 7.39 that is analogous to
the introductory text for 37 CFR 2.163 and includes text previously in 37 CFR
7.39(a).
The Office is amending 37 CFR 7.39(a) to include text previously in 37 CFR
7.39(b) and to state who must sign an Office action response. This is
analogous to 37 CFR 2.163(b) and is consistent with the requirements of 37 CFR
2.193(e)(2).
The Office is amending 37 CFR 7.39(b) to account for the grace period
provided by the Act and a Madrid Protocol registrant's option of filing a new
affidavit or declaration if time remains in the grace period. This is
analogous to 37 CFR 2.163(c) as applied to all other trademark owners.
The Office is adding 37 CFR 7.39(c), (c)(1), and (c)(2) to account for the
ability of Madrid Protocol registrants to correct deficiencies in their
maintenance filings as provided by the Act. This is analogous to 37 CFR 2.164
as applied to all other trademark owners.
The Office is adding § 7.39(d) to be analogous to § 2.164(b).
Rule Making Requirements
Executive Order 13132: This rule making does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be not
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Regulatory Flexibility Act: As prior notice and an opportunity for public
comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither
a regulatory flexibility analysis nor a certification under the Regulatory
Flexibility Act (5 U.S.C. 601 et seq.) is required for this interim final
rule. See 5 U.S.C. 603.
Nevertheless, the Deputy General Counsel for General Law of the United
States Patent and Trademark Office certifies to the Chief Counsel for
Advocacy of the Small Business Administration that this interim final rule
will not have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
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The principal impact of this rule making is to ensure that holders of
international registrations are provided with greater flexibility to maintain
their marks. Furthermore, this increased flexibility harmonizes the
requirements between international registrations and nationally issued
registrations. The only fee ($100.00) associated with this rule making is to
enable international registrants to receive the benefit of correcting a
deficiency in their maintenance filings outside the statutory time period.
Of the approximately 126,000 affidavits filed under the national registration
process, less than 800 (or less than two-thirds of one percent) paid the
$100.00 deficiency surcharge. In 2010, the Office estimates approximately
2,700 affidavits will be filed under the international registration process.
Assuming that a similar percentage of international registrants would pay the
deficiency surcharge, the Office estimates only a small number of registrants
would be subject to the fee. For these reasons, the Office has concluded that
this interim final rule will not have a significant economic impact on a
substantial number of small entities.
Paperwork Reduction Act: This proposed rule involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.
collection of information involved in this proposed rule has been reviewed and
previously approved by OMB under control number 0651-0051. The United States
Patent and Trademark Office is not resubmitting an information collection
request to OMB for its review and approval because the changes in this
proposed rule would not affect the information collection requirements
associated with the information collection under OMB control number 0651-0051.
Comments are invited on: (1) whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency's estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and (4)
ways to minimize the burden of the collection of information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reduction of this burden,
to: (1) The Office of Information and Regulatory Affairs, Office of Management
and Budget, New Executive Office Building, Room 10202, 725 17th Street, NW,
Washington, DC 20503, Attention: Desk Officer for the Patent and Trademark
Office; and (2) Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA
22313-1451 (Attn: Cynthia Lynch).
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the Paperwork
Reduction Act unless that collection of information displays a currently valid
OMB control number.
Unfunded Mandates: The Unfunded Mandates Reform Act, at 2 U.S.C. 1532,
requires that agencies prepare an assessment of anticipated costs and benefits
before issuing any rule that may result in expenditure by State, local, and
tribal governments, in the aggregate, or by the private sector, of $100
million or more (adjusted annually for inflation) in any given year. This rule
would have no such effect on State, local, and tribal governments or the
private sector.
Congressional Review Act: Under the Congressional Review Act provisions of
the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C. 801
et seq.), prior to issuing any final rule, the USPTO will submit a report
containing the final rule and other required information to the United States
Senate, the United States House of Representatives, and the Comptroller
General of the Government Accountability Office. However, this action is not
a major rule as defined by 5 U.S.C. 804(2).
List of Subjects
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37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks, International
Registration.
For the reasons stated in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is amending parts 2
and 7 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR Part 2 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Revise § 2.160(a)(3) to read as follows:
§ 2.160 Affidavit or declaration of continued use or excusable nonuse
required to avoid cancellation of registration.
(a) * * *
(3) The affidavit or declaration may be filed within a grace period of six
months after the end of the deadline set forth in paragraphs (a)(1) and (a)(2)
of this section, with payment of the grace period surcharge per class required
by section 8(a)(3) of the Act and § 2.6.
* * * * *
3. Revise § 2.161(d)(2) to read as follows:
§ 2.161 Requirements for a complete affidavit or declaration of continued use
or excusable nonuse.
* * * * *
(d) * * *
(2) If the affidavit or declaration is filed during the grace period under
section 8(a)(3) of the Act, include the grace period surcharge per class
required by 2.6;
* * * * *
4. Revise § 2.163 to read as follows:
§ 2.163 Acknowledgment of receipt of affidavit or declaration.
The Office will issue a notice as to whether an affidavit or declaration
is acceptable, or the reasons for refusal.
(a) If the affidavit or declaration is filed within the time periods set
forth in section 8 of the Act, deficiencies may be corrected if the
requirements of § 2.164 are met.
(b) A response to the refusal must be filed within six months of the date
of issuance of the Office action, or before the end of the filing period set
forth in section 8(a) of the Act, whichever is later. The response must be
signed by the owner, someone with legal authority to bind the owner (e.g., a
corporate officer or general partner of a partnership), or a practitioner
qualified to practice under § 11.14 of this chapter, in accordance with the
requirements of § 2.193(e)(2).
(c) If no response is filed within this time period, the registration will
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be cancelled, unless time remains in the grace period under section 8(a)(3) of
the Act. If time remains in the grace period, the owner may file a complete,
new affidavit.
5. Revise § 2.164 to read as follows:
§ 2.164 Correcting deficiencies in affidavit or declaration.
(a) If the affidavit or declaration is filed within the time periods set
forth in section 8 of the Act, deficiencies may be corrected, as follows:
(1) Correcting deficiencies in affidavits or declarations timely filed
within the periods set forth in sections 8(a)(1) and 8(a)(2) of the Act. If
the affidavit or declaration is timely filed within the relevant filing period
set forth in section 8(a)(1) or section 8(a)(2) of the Act, deficiencies may
be corrected before the end of this filing period without paying a deficiency
surcharge. Deficiencies may be corrected after the end of this filing period
with payment of the deficiency surcharge required by section 8(c) Act and
§ 2.6.
(2) Correcting deficiencies in affidavits or declarations filed during
the grace period. If the affidavit or declaration is filed during the
six-month grace period provided by section 8(a)(3) of the Act, deficiencies
may be corrected before the expiration of the grace period without paying a
deficiency surcharge. Deficiencies may be corrected after the expiration of
the grace period with payment of the deficiency surcharge required section
8(c) of the Act and § 2.6.
(b) If the affidavit or declaration is not filed within the time periods
set forth in section 8 of the Act, the registration will be cancelled.
6. In § 2.168, revise the heading and paragraph (a) to read as follows:
2.168 Affidavit or declaration under section 15 combined with affidavit or
declaration under sections 8 or 71, or with renewal application.
(a) The affidavit or declaration filed under section 15 of the Act may
also be used as the affidavit or declaration required by section 8, if the
affidavit or declaration meets the requirements of both sections 8 and 15.
The affidavit or declaration filed under section 15 of the Act may also be
used as the affidavit or declaration required by section 71, if the affidavit
or declaration meets the requirements of both sections 71 and 15.
* * * * *
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO
THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
7. The authority citation for 37 CFR Part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
8. In § 7.6, add paragraph (a)(8) to read as follows:
§ 7.6 Schedule of U.S. process fees.
(a) * * *
(8) For correcting a deficiency in a section 71 affidavit-$100.00
* * * * *
9. Revise § 7.25(a) to read as follows:
§ 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for §§ 2.22-2.23, 2.130-2.131, 2.160-2.166, 2.173, and
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2.181-2.186, all sections in parts 2, 10, and 11 of this chapter shall apply
to an extension of protection of an international registration to the United
States, including sections related to proceedings before the Trademark Trial
and Appeal Board, unless otherwise stated.
* * * * *
10. In § 7.36, revise paragraph (b)(2) and add paragraphs (b)(3) and (c)
to read as follows:
§ 7.36 Affidavit or declaration of use in commerce or excusable nonuse
required to avoid cancellation of an extension of protection to the United
States.
* * * * *
(b) * * *
(2) Within the year before the end of every ten-year period after the
date of registration in the United States.
(3) The affidavit or declaration may be filed within a grace period of
six months after the end of the deadline set forth in paragraphs (b)(1) and
(b)(2) of this section, with payment of the grace period surcharge per class
required by section 71(a)(3) of the Act and § 7.6.
(c) For the requirements for the affidavit or declaration, see § 7.37.
11. Revise § 7.37(d)(2) to read as follows:
7.37 Requirements for a complete affidavit or declaration of use in
commerce or excusable nonuse.
* * * * *
(d) * * *
(2) If the affidavit or declaration is filed during the grace period
under section 71(a)(3) of the Act, include the grace period surcharge per
class required by § 7.6;
* * * * *
12. Revise § 7.39 to read as follows:
§ 7.39 Acknowledgment of receipt of and correcting deficiencies in affidavit
or declaration of use in commerce or excusable nonuse.
The Office will issue a notice as to whether an affidavit or declaration
is acceptable, or the reasons for refusal.
(a) A response to the refusal must be filed within six months of the date
of issuance of the Office action, or before the end of the filing period set
forth in section 71(a) of the Act, whichever is later. The response must be
signed by the holder, someone with legal authority to bind the holder (e.g.,
a corporate officer or general partner of a partnership), or a practitioner
qualified to practice under 11.14 of this chapter, in accordance with the
requirements of § 2.193(e)(2).
(b) If no response is filed within this time period, the extension of
protection will be cancelled, unless time remains in the grace period under
section 71(a)(3) of the Act. If time remains in the grace period, the holder
may file a complete, new affidavit.
(c) If the affidavit or declaration is filed within the time periods set
forth in section 71 of the Act, deficiencies may be corrected, as follows:
(1) Correcting deficiencies in affidavits or declarations timely filed
within the periods set forth in sections 71(a)(1) and 71(a)(2) of
the Act. If the affidavit or declaration is timely filed within the
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US PATENT AND TRADEMARK OFFICE |
1445 CNOG 3534 |
relevant filing period set forth in section 71(a)(1) or section
71(a)(2) of the Act, deficiencies may be corrected before the end
of this filing period without paying a deficiency surcharge.
Deficiencies may be corrected after the end of this filing period
with payment of the deficiency surcharge required by section 71(c)
of the Act and § 7.6.
(2) Correcting deficiencies in affidavits or declarations filed during
the grace period. If the affidavit or declaration is filed during
the six-month grace period provided by section 71(a)(3) of the Act,
deficiencies may be corrected before the expiration of the grace
period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of
the deficiency surcharge required by section 71(c) of the Act and
§ 7.6.
(d) If the affidavit or declaration is not filed within the time periods
set forth in section 71 of the Act, the registration will be cancelled.
June 18, 2010 DAVID J. KAPPOS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
[1356 TMOG 180]