| Trademark Publications 2014 |
Referenced Items (503, 504, 505) |
(504) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2, 6, and 7
[Docket No. PTO-T-2013-0026]
RIN 0651-AC88
Miscellaneous Changes to
Trademark Rules of Practice and the
Rules of Practice in Filings Pursuant to the
Protocol Relating to the Madrid Agreement Concerning the
International Registration of Marks
AGENCY: United States Patent and Trademark Office, Commerce
ACTIONS: Notice of Proposed Rulemaking
SUMMARY: The United States Patent and Trademark Office ("Office") proposes
to amend the Trademark Rules of Practice and the Rules of Practice in
Filings Pursuant to the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks to benefit the public by
providing greater clarity as to certain requirements relating to
representation before the Office, applications for registration,
examination procedures, amendment of applications, publication and post
publication procedures, appeals, petitions, post registration practice,
correspondence in trademark cases, classification of goods and services,
and procedures under the Madrid Protocol. For the most part, the proposed
rule changes are intended to codify existing practice.
DATES: Comments must be received by April 23, 2014 to ensure consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to TMFRNotices@uspto.gov. Written comments also may be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Cynthia C. Lynch; by hand delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Cynthia C. 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. Written comments will be
available for public inspection on the Office's Web site at
http://www.uspto.gov, on the Federal eRulemaking Portal, and at the Office
of the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany
Street, Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by email at
TMPolicy@uspto.gov, or by telephone at (571) 272-8742.
SUPPLEMENTARY INFORMATION
Executive Summary: Purpose: The proposed rules will benefit the public
by providing more comprehensive and specific guidance regarding certain
requirements relating to representation before the Office, applications for
registration, examination procedures, amendment of applications,
publication and post publication procedures, appeals, petitions, post
registration practice, correspondence in trademark cases, classification of
goods and services, and procedures under the Madrid Protocol. For the most
part, the proposed rule changes are intended to codify existing practice.
Summary of Major Provisions: As stated above, the Office proposes to
revise the rules in parts 2, 6, and 7 of title 37 of the Code of Federal
Regulations to codify current Office practice and provide sufficient detail
regarding miscellaneous requirements relating to representation before the
Office, applications for registration, examination procedures, amendment of
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applications, publication and post publication procedures, appeals,
petitions, post registration practice, correspondence in trademark cases,
classification of goods and services, and procedures under the Madrid
Protocol.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
References below to "the Act," "the Trademark Act," or "the statute"
refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as amended.
References to "TMEP" or "Trademark Manual of Examining Procedure" refer to
the October 2013 edition.
Discussion of Proposed Rules Changes
Representation by Attorneys or Other Authorized Persons
The Office proposes to revise § 2.17(d)(1) to remove the reference to
the number of powers of attorney that can be filed via the Trademark
Electronic Application System ("TEAS") for existing applications or
registrations that have the identical owner and attorney. The TEAS
Revocation of Attorney/Domestic Representative and/or Appointment of
Attorney/Domestic Representative form currently indicates that up to 300
applications or registrations may be amended per request. The proposed
revision is intended to remove outdated information, and will allow more
flexibility for future enhancements to TEAS.
The Office proposes to revise § 2.19(b) to require compliance with
§ 11.116, rather than § 10.40, as part 10 of this chapter has been removed
and reserved (78 FR 20180 (April 3, 2013)) and § 11.116 now sets out the
requirements for terminating representation.
Applications for Registration
The Office proposes to revise § 2.22(a)(19) to indicate that if a TEAS
Plus applicant owns one or more registrations for the same mark shown in
the application, and the last listed owner of the prior registration(s)
differs from the owner of the application, the application must include a
claim of ownership for the prior registration(s) in order to be entitled to
the reduced filing fee under § 2.6(a)(1)(iii). This limits the
circumstances under which a TEAS Plus applicant is required to claim
ownership of a prior registration and is consistent with the proposed
revision to the claim of ownership requirements in § 2.36.
The Office proposes to revise § 2.36 to indicate that an applicant is
only required to claim ownership of prior registrations for the same or
similar marks if the owner listed in the application differs from the owner
last listed in the Office's database for such prior registrations. This is
consistent with existing practice.
The Office proposes to revise § 2.38(b) to remove the requirement that
an application indicate that, if the applied-for mark is not being used by
the applicant but is being used by one or more related companies whose use
inures to the benefit of the applicant under section 5 of the Act, such
fact must be indicated in the application.
The Office further proposes to redesignate § 2.38(c) as § 2.38(b), as
the requirement in current § 2.38(b) is being removed.
Examination of Application and Action by Applicants
The Office proposes to add new § 2.62(c) to specify that responses to
Office actions must be filed through TEAS, transmitted by facsimile,
mailed, or delivered by hand, and that responses sent by e-mail will not be
accorded a date of receipt. This is consistent with existing practice.
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The Office proposes to amend the title of § 2.63 from "Reexamination" to
"Action after response," as revised § 2.63 incorporates a discussion of
reexamination, the filing of petitions and appeals, and abandonments.
The Office proposes to revise § 2.63(a) to clarify that after submission
of a response by the applicant, the examining attorney will review all
statutory refusal(s) and/or requirement(s) in light of the response. This
is consistent with TMEP section 713.
The Office proposes to add § 2.63(a)(1) to clarify that the applicant
may respond to a non-final action that maintains any requirement(s) or
substantive refusal(s) by filing a timely response to the examiner's
action. This is consistent with TMEP section 713.
The Office proposes to add § 2.63(a)(2) to clarify that the applicant
may respond to a non-final action that maintains any requirement(s) by
filing a petition to the Director under § 2.146 if the subject matter of
the requirement(s) is appropriate for petition, that if the petition is
denied, the applicant will have six months from the date of the Office
action which repeated the requirement(s), or thirty days from the date of
the decision on the petition, whichever is later, to comply with the
repeated requirement(s), and that a requirement which is the subject of a
petition to the Director subsequently may not be the subject of an appeal
to the Trademark Trial and Appeal Board ("TTAB"). This is consistent with
TMEP sections 713 and 1702.
The Office proposes to revise § 2.63(b) to clarify that the examining
attorney may make final a refusal or a requirement upon review of a
response or request for reconsideration. This is consistent with current
§ 2.64(a) and TMEP sections 713 and 714.03.
The Office proposes to add § 2.63(b)(1) to clarify that the applicant
may respond to a final action that maintains any substantive refusal(s)
under sections 2, 3, 4, 5, 6, or 23 of the Act by filing an appeal to the
TTAB under §§ 2.141 and 2.142. This is consistent with TMEP section
1501.01.
The Office proposes to add § 2.63(b)(2) to clarify that the applicant
may respond to a final action that withdraws all substantive refusals but
maintains any requirement(s) either by filing an appeal to the TTAB under
§§ 2.141 and 2.142, or by filing a petition to the Director under § 2.146,
if the subject matter of the requirement(s) is procedural, and therefore
appropriate for petition. This is consistent with current § 2.63(b) and
TMEP sections 1501.01 and 1704.
The Office proposes to add § 2.63(b)(3) to clarify that the applicant
may file a request for reconsideration of the final action prior to the
expiration of the time for filing an appeal to the TTAB or a petition to
the Director, that the request must be signed by a party authorized under
§ 2.193(e)(2), and that the request does not stay or extend the time for
filing an appeal or petition. This is consistent with current § 2.64(b) and
TMEP section 715.03.
The Office proposes to add § 2.63(b)(4) to clarify that the filing of a
request for reconsideration that does not result in the withdrawal of all
refusals and requirements, without the filing of a timely appeal or
petition, will result in abandonment of the application for incomplete
response. This is consistent with section 12(b) of the Act and current
§ 2.65(a).
The Office proposes to add § 2.63(c) to clarify both that if a petition
to the Director under § 2.146 is denied, the applicant will have until six
months from the date of issuance of the Office action that repeated the
requirement(s), or made it final, or thirty days from the date of the
decision on the petition, whichever date is later, to comply with the
requirement(s), and that a requirement that is the subject of a petition
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decided by the Director subsequently may not be the subject of an appeal to
the TTAB. This is consistent with current § 2.63(b) and TMEP section 1702.
The Office proposes to add § 2.63(d) to clarify that if an amendment to
allege use is filed during the six-month response period after issuance of
a final action, the examining attorney will examine the amendment, but the
filing of the amendment does not stay or extend the time for filing an
appeal to the TTAB or a petition to the Director. This is consistent with
current § 2.64(c)(1) and TMEP sections 711 and 1104.
The Office proposes to remove and reserve § 2.64 and incorporate updated
final action procedures into proposed revised § 2.63.
The Office proposes to revise § 2.65(a) both to clarify that an
application will be deemed abandoned if an applicant fails to respond, or
respond completely, to an Office action within six months of the issuance
date, but a timely petition to the Director or notice of appeal to the
TTAB, if appropriate, is considered to be a response that avoids
abandonment, and to revise the reference to § 2.63(b) so as to reference
§ 2.63(a) and (b). The clarification is consistent with TMEP section 718.03
and the revision to the reference accounts for the proposed amendment to
§ 2.63 which sets out the conditions for a petition under § 2.146 in
§ 2.63(a) and (b) instead of only § 2.63(b).
The Office proposes to add § 2.65(a)(1) to clarify that if an applicant
fails to timely respond to an Office action, but all refusals or
requirements are expressly limited to certain goods or services, the
application will be abandoned only as to those goods or services. This is
consistent with current § 2.65(a) and TMEP section 718.02(a).
The Office proposes to add § 2.65(a)(2) to clarify that an applicant
may, in certain situations, be granted thirty days, or to the end of the
response period set forth in the action, whichever is longer, to provide
information omitted from a response before the examining attorney considers
the issue of abandonment. This is consistent with current § 2.65(b) and
TMEP section 718.03(b).
The Office proposes to revise § 2.65(b) to clarify that an application
will be abandoned if an applicant expressly abandons the application
pursuant to § 2.68. This is consistent with TMEP section 718.01.
The Office proposes to revise § 2.65(c) to clarify that an application
under section 1(b) of the Act will be abandoned if the applicant fails to
file a timely statement of use under § 2.88 or a request for an extension
of time for filing a statement of use under § 2.89. This is consistent
with section 1(d)(4) of the Act and TMEP sections 1108.01 and 1109.04.
The Office proposes to revise § 2.68(a) to indicate that a request for
abandonment or withdrawal may not subsequently be withdrawn. This is
consistent with TMEP section 718.01, and is intended to provide applicants,
registration owners, and the public assurance of the accuracy of the status
of applications or registrations after filings are received by the Office.
The Office proposes to revise § 2.68(b) for clarity by moving the "in
any proceeding before the Office" clause to the end of the sentence.
Amendment of Application
The Office proposes to revise § 2.77(b) to indicate that amendments not
listed in § 2.77(a) may be entered in the application in the time period
between issuance of the notice of allowance and submission of a statement
of use only with the express permission of the Director, after
consideration on petition under § 2.146. This is consistent with TMEP
sections 1107 and 1505.01(d), which currently require a waiver of § 2.77 on
petition.
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Publication and Post Publication
The Office proposes to revise § 2.81(b) to remove the list of items that
will be included on the notice of allowance. The proposed change allows
greater flexibility in the format of notices of allowance, to allow for
changes that may occur in conjunction with the Office's "Trademarks Next
Generation" information technology initiative. As a matter of practice,
at this time, the Office plans to continue to maintain the current format
of the notice of allowance.
The Office proposes to revise § 2.84(b) to clarify that an application
that is not the subject of an inter partes proceeding before the TTAB may
be amended after the mark has been published for opposition, but before the
certificate of registration has been issued under section 1(a), 44, or
66(a) of the Act, or before the notice of allowance has been issued in an
application under section 1(b) of the Act, if the amendment meets the
requirements of §§ 2.71, 2.72, and 2.74. This is consistent with existing
practice.
Appeals
The Office proposes to revise § 2.142(f)(3) and (f)(6) to remove the
references to § 2.64, as the Office is proposing to remove and reserve
§ 2.64, with the sections of § 2.64 relevant to § 2.142(f)(3) and (f)(6)
incorporated into proposed revised § 2.63.
The Office proposes to revise § 2.145(a) to add registrants who have
filed an affidavit or declaration under section 71 of the Act and are
dissatisfied with a decision of the Director to the list of parties
eligible to appeal to the U.S. Court of Appeals for the Federal Circuit.
This is consistent with TMEP section 1613.18(d).
The Office proposes to revise § 2.146(a)(1) and (g) to replace
references to § 2.63(b) with references to § 2.63(a) and (b), as the Office
is proposing to list conditions for a petition under § 2.146 in § 2.63(a)
and (b) instead of only § 2.63(b).
Post Registration
The Office proposes to revise § 2.172 to clarify that a surrender for
cancellation may not subsequently be withdrawn. This is consistent with
existing practice.
The Office proposes to revise § 2.185(a) to indicate that deficiencies
in renewal applications may be corrected after notification from the
Office. This is consistent with existing practice.
General Information and Correspondence in Trademark Cases
The Office proposes to amend § 2.198(a)(1) by adding § 2.198(a)(1)(viii)
to include affidavits under section 71 of the Act in the list of documents
excluded from the Office's Express Mail procedure. This is consistent with
the handling of corresponding affidavits under section 8 of the Act. In
connection with this addition, the Office proposes to revise
§ 2.198(a)(1)(vi) and § 2.198(a)(1)(vii) for clarity.
Classification of Goods and Services
The Office proposes to revise § 6.1(5) to add the wording "or
veterinary" to the entry "dietetic food and substances adapted for medical
use" in the listing of goods for International Class 5. This is consistent
with the current heading for the international class as established by the
Committee of Experts of the Nice Union and set forth in the
International Classification of Goods and Services for the Purposes of the
Registration of Marks published annually by the World Intellectual Property
Organization ("WIPO") on its web site.
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Madrid Protocol
The Office proposes to revise § 7.11(a)(3)(ii) to clarify that if the
mark in the basic application or registration is depicted in
black-and-white and includes a color claim, an international application
filed on paper must include both black-and-white and color reproductions of
the mark, and an international application filed electronically must
include a color reproduction of the mark. This is consistent with existing
practice as the WIPO paper application form requires the applicant to
submit both black-and-white and color reproductions of the mark, while the
Office's electronic application form requires only that the applicant
submit a color reproduction of the mark.
The Office proposes to revise § 7.23(a)(5) to require that a request to
record an assignment of an international registration submitted through the
Office include a statement that, after making a good faith effort, the
assignee could not obtain the assignor's signature for the request to
record the assignment and be signed and verified or supported by
declaration under § 2.20. This revision is intended to ensure that
assignees make a good-faith effort to obtain the assignor's signature
before invoking this rule and requesting the Office to forward the
assignment document to the International Bureau ("IB") of WIPO.
The Office proposes to revise § 7.23(a)(6) to indicate that a request to
record an assignment of an international registration submitted through the
Office must include an indication that the assignment applies to the
designation to the United States or an international registration that was
originally based on a United States application or registration. This
revision is intended to ensure that an assignee of an international
registration based on a U.S. registration or application is treated the
same as an assignee of a designation to the U.S. Current practice is that
the owner of the international registration based on a U.S. registration or
application must file a petition to waive this subsection of the rule.
The Office proposes to revise § 7.24(b)(5)(ii) to require that a
request, submitted through the Office, to record a restriction, or the
release of a restriction, that is the result of an agreement between the
holder of the international registration and the party restricting the
holder's right of disposal must include a statement indicating that, after
making a good faith effort, the signature of the holder of the
international registration could not be obtained for the request to record
the restriction, or release of the restriction, and be signed and verified
or supported by declaration under § 2.20. This revision is intended to
ensure that assignees make a good faith effort to obtain the assignor's
signature before invoking this rule and requesting the Office to forward
the document to the IB.
The Office proposes to revise § 7.24(b)(7) to indicate that a request to
record a restriction, or the release of a restriction, must include an
indication that the restriction, or the release of the restriction, of the
holder's right of disposal of the international registration applies to the
designation to the United States or an international registration that was
originally based on a United States application or registration. This
revision is intended to ensure that an assignee of an international
registration based on a U.S. registration or application is treated the
same as an assignee of a designation to the U.S. Current practice is that
the owner of the international registration based on a U.S. registration or
application must file a petition to waive this subsection of the rule.
The Office proposes to revise § 7.25(a) to add §§ 2.21, 2.76, 2.88, and
2.89 to the list of sections in part 2 not applicable to an extension of
protection. This is consistent with existing practice as the section
relates to procedures only applicable to applications under sections 1 or
44 of the Act.
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The Office proposes to amend § 7.31 by revising the introductory text
and § 7.31(a)(3) to require that a request to transform an extension of
protection to the United States into a U.S. application specify the goods
and/or services to be transformed. This revision is intended to ensure that
the Office transforms an accurate listing of goods and/or services.
The Office further proposes to redesignate current § 7.31(a)(3) as
§ 7.31(a)(4) and current § 7.31(a)(4) as new § 7.31(a)(5) because current
§ 7.31(a)(3) is being revised to require that a request to transform an
extension of protection to the United States into a
U.S. application specify the goods and/or services to be transformed.
Rulemaking Considerations
Administrative Procedure Act: The changes proposed in this rulemaking
involve rules of agency practice and procedure, and/or interpretive rules.
See Nat'l Org. of Veterans' Advocates v. Sec'y of Veterans Affairs, 260
F.3d 1365, 1375 (Fed. Cir. 2001) (rule that clarifies interpretation of a
statute is interpretive); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690
(D.C. Cir. 2001) (rules governing an application process are procedural
under the Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
procedural where they did not change the substantive standard for reviewing
claims).
Accordingly, prior notice and opportunity for public comment for the
proposed rule changes are not required pursuant to 5 U.S.C. 553(b) or (c),
or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
(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 rulemaking for
"interpretative rules, general statements of policy, or rules of agency
organization, procedure, or practice," quoting 5 U.S.C. 553(b)(A)).
However, the Office has chosen to seek public comment before implementing
the rule.
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 Act analysis, nor a certification under
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), is required. See 5
U.S.C. 603.
In addition, for the reasons set forth herein, the Deputy General
Counsel for General Law of the United States Patent and Trademark Office
has certified to the Chief Counsel for Advocacy of the Small Business
Administration that rule changes proposed in this notice will not have a
significant economic impact on a substantial number of small entities. See
5 U.S.C. 605(b). This notice proposes changes to rules of agency practice
and procedure. The primary impact of the proposed rule changes is to
provide greater clarity as to certain requirements relating to
representation before the Office, applications for registration,
examination procedures, amendment of applications, publication and post
publication procedures, appeals, petitions, post registration practice,
correspondence in trademark cases, classification of goods and services,
and procedures under the Madrid Protocol. For the most part, the proposed
rule changes are intended to codify existing practice. The burdens, if any,
to all entities, including small entities, imposed by these proposed rule
changes would be minor. Additionally, in a number of instances, the
proposed rule changes would lessen the burdens on applicants. Therefore,
the proposed rule changes will not have a significant economic impact on a
substantial number of small entities.
Executive Order 12866: The proposed rulemaking has been determined to be
not significant for purposes of Executive Order 12866.
Executive Order 13563 (Improving Regulation and Regulatory Review):
The Office has complied with Executive Order 13563 (Jan. 18, 2011).
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Specifically, the Office has, to the extent feasible and applicable:
(1) made a reasoned determination that the benefits justify the costs of
the proposed rule changes; (2) tailored the proposed rules to impose the
least burden on society consistent with obtaining the regulatory
objectives; (3) selected a regulatory approach that maximizes net benefits;
(4) specified performance objectives; (5) identified and assessed available
alternatives; (6) provided the public with a meaningful opportunity to
participate in the regulatory process, including soliciting the views of
those likely affected prior to issuing a notice of proposed rulemaking, and
provided on-line access to the rulemaking docket; (7) attempted to promote
coordination, simplification, and harmonization across government agencies
and identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific and
technological information and processes, to the extent applicable.
Executive Order 13132: The proposed rulemaking does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
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 Office will submit a
report containing the final rule and other required information to the U.S.
Senate, the U.S. House of Representatives, and the Comptroller General of
the Government Accountability Office. The changes in this proposed
rulemaking are not expected to result in an annual effect on the economy of
100 million dollars or more, a major increase in costs or prices, or
significant adverse effects on competition, employment, investment,
productivity, innovation, or the ability of United States-based enterprises
to compete with foreign-based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a "major rule" as
defined in 5 U.S.C. 804(2).
Unfunded Mandate Reform Act of 1995: The Unfunded Mandates Reform Act
(2 U.S.C. 1501 et seq.) 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 proposed rulemaking would have no such
effect on State, local, and tribal governments or the private sector.
Paperwork Reduction Act: This proposed rulemaking involves information
collection requirements which are subject to review by the U.S. Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44
U.S.C. 3501 et seq.). The Office has determined that there would be no new
information collection requirements or impacts to existing information
collection requirements associated with this proposed rulemaking. The
collections of information involved in this proposed rulemaking have been
reviewed and previously approved by OMB under control numbers 0651-0009,
0651-0050, 0651-0051, 0651-0054, 0651-0055, 0651-0056, and 0651-0061.
The Office is soliciting comments to: (1) evaluate whether the proposed
collection of information is necessary for the proper performance of the
functions of the agency, including whether the information will have
practical utility; (2) evaluate the accuracy of the agency's estimate of
the burden of the proposed collection of information, including the
validity of the methodology and assumptions used; (3) enhance the quality,
utility, and clarity of the information to be collected; and (4) minimize
the burden of information on those who are to respond, including through
the use of appropriate automated, electronic, mechanical, or other
technological collection techniques or other forms of information
technology, e.g., permitting electronic submission of responses.
Interested persons are requested to send comments regarding this
information collection by April 23, 2014, to: (1) The Office of Information
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and Regulatory Affairs, Office of Management and Budget, New Executive
Office Building, Room 10202, 725 17th Street, NW, Washington, DC 20503,
Attention: Nicholas A. Fraser, the Desk Officer for the United States
Patent and Trademark Office; and (2) by mail to Commissioner for
Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, attention
Cynthia C. Lynch; by hand delivery to the Trademark Assistance Center,
Concourse Level, James Madison Building-East Wing, 600 Dulany Street,
Alexandria, Virginia, attention Cynthia C. Lynch; or by electronic mail
message via the Federal eRulemaking Portal. All comments submitted
directly to the Office or provided on the Federal eRulemaking Portal
should include the docket number (PTO-T-2013-0026).
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.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 6
Administrative practice and procedure, Classification, Trademarks.
37 CFR Part 7
Administrative practice and procedure, International registration,
Trademarks.
For the reasons given in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office proposes to amend
parts 2, 6, 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 § 2.17(d)(1) to read as follows:
§ 2.17 Recognition for representation.
* * * * *
(d) * * *
(1) The owner of an application or registration may appoint a
practitioner(s) qualified to practice under § 11.14 of this chapter to
represent the owner for all existing applications or registrations that
have the identical owner name and attorney through TEAS.
* * * * *
3. Revise § 2.19(b) introductory text to read as follows:
§ 2.19 Revocation or withdrawal of attorney.
* * * * *
(b) Withdrawal of attorney. If the requirements of § 11.116 of this
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chapter are met, a practitioner authorized to represent an applicant,
registrant, or party to a proceeding in a trademark case may withdraw upon
application to and approval by the Director or, when applicable, upon
motion granted by the Trademark Trial and Appeal Board. The practitioner
should file the request to withdraw soon after the practitioner notifies
the client of his/her intent to withdraw. The request must include
the following:
* * * * *
4. Revise § 2.22(a)(19) to read as follows:
§ 2.22 Filing requirements for a TEAS Plus application
(a) * * *
(19) If the applicant owns one or more registrations for the same mark,
and the owner(s) last listed in Office records of the prior registration(s)
for the same mark differs from the owner(s) listed in the application, a
claim of ownership of the registration(s) identified by the registration
number(s), pursuant to § 2.36; and
* * * * *
5. Revise § 2.36 to read as follows:
§ 2.36 Identification of prior registrations.
Prior registrations of the same or similar marks owned by the applicant
should be identified in the application if the owner(s) last listed in
Office records of the prior registrations differs from the owner(s) listed
in the application.
6. Amend § 2.38 by revising paragraph (b) to read as follows, and
removing paragraph (c):
§ 2.38 Use by predecessor or by related companies.
* * * * *
(b) The Office may require such details concerning the nature of the
relationship and such proofs as may be necessary and appropriate for the
purpose of showing that the use by related companies inures to the benefit
of the applicant and does not affect the validity of the mark.
7. Amend § 2.62 by adding new paragraph (c), to read as follows:
§ 2.62 Procedure for filing response.
* * * * *
(c) Form. Responses must be filed through TEAS, transmitted by
facsimile, mailed or delivered by hand, as set out in § 2.190(a). Responses
sent via e-mail will not be accorded a date of receipt.
8. Revise § 2.63 to read as follows:
§ 2.63 Action after response.
(a) Repeated non-final refusal or requirement. After response by the
applicant, the examining attorney will review all statutory refusals and/or
requirement(s) in light of the response.
(1) If, after review of the applicant's response, the examining attorney
issues a non-final action that maintains any previously issued substantive
refusal(s) to register or repeats any requirement(s), the applicant may
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submit a timely response to the action.
(2) If, after review of the applicant's response, the examining attorney
issues a non-final action that contains no substantive refusals to
register, but maintains any requirement(s), the applicant may respond to
such repeated requirement(s) by filing a timely petition to the Director
for relief from the repeated requirement(s) if the subject matter of the
repeated requirement(s) is appropriate for petition to the Director (see
§ 2.146(b)). If the petition is denied, the applicant shall have until six
months from the date of the Office action which repeated the requirement(s)
or thirty days from the date of the decision on the petition, whichever
date is later, to comply with the repeated requirement(s). A requirement
which is the subject of a petition decided by the Director subsequently may
not be the subject of an appeal to the Trademark Trial and Appeal Board.
(b) Final refusal or requirement. Upon review of a response or request
for reconsideration, the examining attorney may state that the refusal(s)
to register, or the requirement(s), is final.
(1) If the examining attorney issues a final action that maintains any
substantive refusal(s) to register, the applicant may respond by filing a
timely appeal to the Trademark Trial and Appeal Board under §§ 2.141 and
2.142.
(2) If the examining attorney issues a final action that contains no
substantive refusals to register, but maintains any requirement(s), the
applicant may respond by filing: (i) a timely appeal of the requirement(s)
to the Trademark Trial and Appeal Board under §§ 2.141 and 2.142; or (ii)
a timely petition to the Director under § 2.146 to review the
requirement(s), if the subject matter of the requirement(s) is procedural,
and therefore appropriate for petition.
(3) Prior to the expiration of the time for filing an appeal or a
petition, the applicant may file a request for reconsideration of the final
action. The request must be signed by the applicant, someone with legal
authority to bind the applicant, or a practitioner qualified to practice
under § 11.14, in accordance with the requirements of § 2.193(e)(2).
Filing a request for reconsideration does not stay or extend the time for
filing an appeal or petition.
(4) Filing a request for reconsideration that does not result in the
withdrawal of all refusals and requirements, without the filing of a timely
appeal or petition, will result in abandonment of the application for
incomplete response, pursuant to § 2.65(a).
(c) If a petition to the Director under § 2.146 is denied, the applicant
will have until six months from the date of issuance of the Office action
that repeated the requirement(s), or made it final, or thirty days from the
date of the decision on the petition, whichever date is later, to comply
with the requirement(s). A requirement that is the subject of a petition
decided by the Director subsequently may not be the subject of an appeal to
the Trademark Trial and Appeal Board.
(d) If an applicant in an application under section 1(b) of the Act
files an amendment to allege use under § 2.76 during the six-month response
period after issuance of a final action, the examining attorney will
examine the amendment. The filing of such an amendment does not stay or
extend the time for filing an appeal or petition.
§ 2.64 [Removed and Reserved]
9. Remove and reserve § 2.64.
10. Revise § 2.65 to read as follows:
§ 2.65 Abandonment.
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(a) An application will be abandoned if an applicant fails to respond to
an Office action, or to respond completely, within six months from the date
of issuance. A timely petition to the Director pursuant to §§ 2.63(a) and
(b) and 2.146 or notice of appeal to the Trademark Trial and Appeal Board
pursuant to § 2.142, if appropriate, is a response that avoids abandonment.
(1) If all refusals and/or requirements are expressly limited to certain
goods and/or services, the application will be abandoned only as to those
goods and/or services.
(2) When a timely response by the applicant is a bona fide attempt to
advance the examination of the application and is a substantially complete
response to the examining attorney's action, but consideration of some
matter or compliance with a requirement has been omitted, the applicant may
be granted thirty days, or to the end of the response period set forth in
the action to which the substantially complete response was submitted,
whichever is longer, to explain and supply the omission before considering
the question of abandonment.
(b) An application will be abandoned if an applicant expressly abandons
the application pursuant to § 2.68.
(c) An application will be abandoned if an applicant in an application
under section 1(b) of the Act fails to timely file either a statement of
use under § 2.88 or a request for an extension of time for filing a
statement of use under § 2.89.
11. Revise § 2.68 to read as follows:
§ 2.68 Express abandonment (withdrawal) of application.
(a) Written document required. An applicant may expressly abandon an
application by filing a written request for abandonment or withdrawal of
the application, signed by the applicant, someone with legal authority to
bind the applicant (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). A request
for abandonment or withdrawal may not subsequently be withdrawn.
(b) Rights in the mark not affected. Except as provided in § 2.135, the
fact that an application has been expressly abandoned shall not affect any
rights that the applicant may have in the mark set forth in the abandoned
application in any proceeding before the Office.
12. Revise § 2.77(b) to read as follows:
§ 2.77 Amendments between notice of allowance and statement of use.
* * * * *
(b) Other amendments may be entered during this period only with the
express permission of the Director, after consideration on petition under
§ 2.146. If the Director determines that the amendment requires review by
the examining attorney, the petition will be denied and the amendment may
be resubmitted with the statement of use in order for the applicant to
preserve its right for review.
13. Revise § 2.81(b) to read as follows:
§ 2.81 Post publication.
* * * * *
(b) In an application under section 1(b) of the Act for which no
amendment to allege use under § 2.76 has been submitted and accepted, if no
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opposition is filed within the time permitted or all oppositions filed are
dismissed, and if no interference is declared, a notice of allowance will
issue. Thereafter, the applicant must submit a statement of use as provided
in § 2.88.
14. Revise § 2.84(b) to read as follows:
§ 2.84 Jurisdiction over published applications.
* * * * *
(b) After publication, but before the certificate of registration is
issued in an application under section 1(a), 44, or 66(a) of the Act, or
before the notice of allowance is issued in an application under section
1(b) of the Act, an application that is not the subject of an inter partes
proceeding before the Trademark Trial and Appeal Board may be amended if
the amendment meets the requirements of §§ 2.71, 2.72 and 2.74. Otherwise,
an amendment to such an application may be submitted only upon petition to
the Director to restore jurisdiction over the application to the examining
attorney for consideration of the amendment and further examination. The
amendment of an application that is the subject of an inter partes
proceeding before the Trademark Trial and Appeal Board is governed by
§ 2.133.
15. Revise § 2.142(f)(3) and (6) to read as follows:
§ 2.142 Time and manner of ex parte appeals.
* * * * *
(f) * * *
(3) If the further examination does result in an additional ground for
refusal of registration, the examiner and appellant shall proceed as
provided by §§ 2.61, 2.62, and 2.63. If the ground for refusal is made
final, the examiner shall return the application to the Board, which shall
thereupon issue an order allowing the appellant sixty days from the date of
the order to file a supplemental brief limited to the additional ground for
the refusal of registration. If the supplemental brief is not filed by the
appellant within the time allowed, the appeal may be dismissed.
* * * * *
(6) If, during an appeal from a refusal of registration, it appears to
the examiner that an issue not involved in the appeal may render the mark
of the appellant unregistrable, the examiner may, by written request, ask
the Board to suspend the appeal and to remand the application to the
examiner for further examination. If the request is granted, the examiner
and appellant shall proceed as provided by §§ 2.61, 2.62, and 2.63. After
the additional ground for refusal of registration has been withdrawn or
made final, the examiner shall return the application to the Board, which
shall resume proceedings in the appeal and take further appropriate action
with respect thereto.
* * * * *
16. Revise § 2.145(a) to read as follows:
§ 2.145 Appeal to court and civil action.
(a) Appeal to U.S. Court of Appeals for the Federal Circuit. An
applicant for registration, or any party to an interference, opposition, or
cancellation proceeding, or any party to an application to register as a
concurrent user, hereinafter referred to as inter partes proceedings, who
is dissatisfied with the decision of the Trademark Trial and Appeal Board,
and any registrant who has filed an affidavit or declaration under section
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8 or section 71 of the Act or who has filed an application for renewal and
is dissatisfied with the decision of the Director (§§ 2.165, 2.184), may
appeal tothe U.S. Court of Appeals for the Federal Circuit. The appellant
must take the following steps in such an appeal:
* * * * *
17. Revise § 2.146(a)(1) and (g) to read as follows:
§ 2.146 Petitions to the Director.
(a) * * *
(1) From any repeated or final formal requirement of the examiner in the
ex parte prosecution of an application if permitted by § 2.63(a) and (b);
* * * * *
(g) The mere filing of a petition to the Director will not act as a stay
in any appeal or inter partes proceeding that is pending before the
Trademark Trial and Appeal Board nor stay the period for replying to an
Office action in an application except when a stay is specifically
requested and is granted or when §§ 2.63(a) and (b) and 2.65 are applicable
to an ex parte application.
* * * * *
18. Revise § 2.172 to read as follows:
§ 2.172 Surrender for cancellation.
Upon application by the owner, the Director may permit any registration
to be surrendered for cancellation. The application for surrender must be
signed by the owner of the registration, 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. When a registration has more than one class, one or more entire
class(es) but fewer than the total number of classes may be surrendered.
Deletion of fewer than all the goods or services in a single class
constitutes amendment of the registration as to that class (see § 2.173),
rather than surrender. A surrender for cancellation may not subsequently be
withdrawn.
19. Revise § 2.185(a) to read as follows:
§ 2.185 Correcting deficiencies in renewal application.
(a) If the renewal application is filed within the time periods set
forth in section 9(a) of the Act, deficiencies may be corrected after
notification from the Office, as follows:
* * * * *
20. Amend § 2.198(a)(1) by revising paragraphs (a)(1)(vi) and
(a)(1)(vii), and adding new paragraph (a)(1)(viii), to read as follows:
§ 2.198 Filing of correspondence by "Express Mail."
(a)(1) * * *
(vi) Renewal requests under section 9 of the Act;
(vii) Requests to change or correct addresses; and
(viii) Affidavits of use under section 71 of the Act.
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* * * * *
PART 6 - CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK ACT
21. The authority citation for 37 CFR Part 6 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
22. Revise § 6.1, paragraph 5., to read as follows:
§ 6.1 International schedule of classes of goods and services.
* * * * *
5. Pharmaceutical and veterinary preparations; sanitary preparations
for medical purposes; dietetic food and substances adapted for medical or
veterinary use, food for babies; dietary supplements for humans and
animals; plasters, materials for dressings; material for stopping teeth,
dental wax; disinfectants; preparations for destroying vermin; fungicides,
herbicides.
* * * * *
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO
THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
23. 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.
24. Revise § 7.11(a)(3)(ii) to read as follows:
§ 7.11 Requirements for international application originating from the
United States.
(a) * * *
(3) * * *
(ii) If the mark in the basic application or registration is depicted in
black-and-white and includes a color claim, an international application
filed on paper must include both a black-and-white reproduction of the mark
and a color reproduction of the mark, and an international application
filed electronically must include a color reproduction of the mark.
* * * * *
25. Revise § 7.23(a)(5) and (6) to read as follows:
§ 7.23 Requests for recording assignments at the International Bureau.
* * * * *
(a) * * *
(5) A statement that, after a good faith effort, the assignee could not
obtain the assignor's signature for the request to record the assignment,
signed and verified (sworn to) or supported by a declaration under § 2.20
of this chapter;
(6) An indication that the assignment applies to the designation to the
United States or an international registration that is based on a U.S.
application or registration;
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* * * * *
26. Revise § 7.24(b)(5)(ii) and (b)(7) to read as follows:
§ 7.24 Requests to record security interest or other restriction of
holder's rights of disposal or release of such restriction submitted
through the Office.
* * * * *
(b) * * *
(5) * * *
(ii) Where the restriction is the result of an agreement between the
holder of the international registration and the party restricting the
holder's right of disposal, a statement that after a good faith effort,
the signature of the holder of the international registration could not be
obtained for the request to record the restriction, or release of the
restriction, signed and verified (sworn to) or supported by a declaration
under § 2.20 of this chapter;
* * * * *
(7) An indication that the restriction, or the release of the
restriction, of the holder's right of disposal of the international
registration applies to the designation to the United States or an
international registration that is based on a U.S. application or
registration; and
* * * * *
27. Revise § 7.25(a) to read as follows:
§ 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for §§ 2.21 - 2.23, 2.76, 2.88, 2.89, 2.130 - 2.131,
2.160 - 2.166, 2.168, 2.173, 2.175, 2.181 - 2.186 and 2.197, all sections
in part 2 and all sections in part 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.
* * * * *
28. Amend § 7.31 by revising the introductory text and paragraphs
(a)(3) and (a)(4), and adding new paragraph (a)(5) to read as follows:
§ 7.31 Requirements for transformation of an extension of protection to
the United States into a U.S. application.
If the International Bureau cancels an international registration in
whole or in part, under Article 6(4) of the Madrid Protocol, the holder of
that international registration may file a request to transform the goods
and/or services to which the cancellation applies in the corresponding
pending or registered extension of protection to the United States into an
application under section 1 or 44 of the Act.
(a) * * *
(3) Identify the goods and/or services to be transformed, if other than
all the goods and/or services that have been cancelled;
(4) The application filing fee for at least one class of goods or
services required by § 2.6(a)(1) of this chapter; and
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(5) An e-mail address for receipt of correspondence from the Office.
* * * * *
January 15, 2014 MICHELLE K. LEE
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director
United States Patent and Trademark Office
[1401 TMOG 122]
[1401 TMOG 122]