| Trademark Post-Registration |
Referenced Items (444, 445, 446) |
(444) DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 2
[Docket No. 2003-T-023]
RIN 0651-AB67
Changes in the Requirements for Amendment and
Correction of Trademark Registrations
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
SUMMARY: The United States Patent and
Trademark Office ("Office") is amending its rules to eliminate the
requirement that a request for amendment or correction of a
registration be accompanied by the original certificate of registration
or a certified copy thereof, and the requirement that an application to
surrender a registration for cancellation be accompanied by the
original certificate or a certified copy.
DATES: Effective September 20, 2004.
FOR FURTHER INFORMATION CONTACT: Cheryl Black,Office of the Commissioner
for Trademarks, by telephone at (703) 308-8910, ext. 153; or by e-mail
to cheryl.black@uspto.gov<mailto:cheryl.black@uspto.gov>.
SUPPLEMENTARY INFORMATION: A Notice of Proposed Rule Making was published
in the Federal Register (68 FR 70482) on December 18, 2003. No public
hearing was held. Two organizations, two law firms and two attorneys
submitted written comments.
The Office is amending its rules to eliminate the requirement that the
original certificate of registration or a certified copy thereof accompany
a request for amendment of a registration, a request for correction of a
registration, or an application to surrender a registration for
cancellation.
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.
Requirement for Submission of Original Certificate of Registration or
Certified Copy
The Office is eliminating the requirement under Secs. 2.173, 2.174,
and 2.175(b) that a request for amendment or correction of a registration
under section 7 of the Trademark Act be accompanied by the original
certificate of registration or a certified copy thereof. Under the current
rules, the Office attaches an updated registration certificate showing the
amendment or correction to the original certificate and returns it to the
registrant. However, the Office believes that requiring the registrant to
submit the original certificate or a certified copy for the purpose of
physically attaching an updated registration certificate, only to return
the original certificate (or certified copy thereof) to the owner of record
is unnecessary and inefficient. Instead, the Office will send the updated
registration certificate showing the amendment or correction to the
registrant, and instruct the registrant to attach it to the certificate
of registration. The Office will update its own records to show the
amendment or correction and attach an updated registration certificate
to the printed copy of the registration on file in the Office.
The Office is also eliminating the requirement under Sec. 2.172, that
an application for surrender of a registration for cancellation under
section 7 of the Trademark Act be accompanied by the original certificate,
if not lost or destroyed. The requirement is unnecessary and inefficient.
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The Office will process a request for cancellation regardless of whether
the original registration certificate accompanies the request. If the
original certificate is submitted, the Office will destroy the certificate
once the registration is cancelled.
One-Year Time Limit for Requests for Correction of Registrations
The proposed amendment to Secs. 2.174 and 2.175 required registrants to
file all requests for correction of a registration within one year after
the date of registration, even where a mistake in a registration resulted
from an Office error. This change in practice was proposed because granting
requests to correct errors in registrations years after the date of
registration caused confusion to examining attorneys and third parties who
might have previously searched Office records and relied on information
about existing registrations.
Four comments stated that many of the mistakes go unnoticed for years
after issuance and are not discovered until it is time to file an
affidavit of use or excusable nonuse under Section 8 of the Trademark Act.
In an example provided by one commenter, a registrant received an
error-free registration certificate and years later after preparing an
affidavit of use discovered an error on the registration in the Office's
Trademark electronic database. Two comments stated that denying requests
to correct errors in registrations after the one-year limit could result
in the loss of substantive trademark rights and that maintaining a
registration with inaccurate information could cause problems for
registrants in establishing a complete chain of title, seeking foreign and
international trademark rights, and protecting against trademark
infringement. Accordingly, the Office has reconsidered this proposed change
and at this time is not imposing a time limit for requests for corrections
to registrations under Secs. 2.174 and 2.175. The benefits of providing
accurate information about registrations in the records of the Office,
protecting the rights of owners to seek correction of errors in
registrations and avoiding possible loss of substantive trademark rights
due to mistakes in the registration outweigh the concerns that would
warrant a time limit on filing requests for corrections.
Discussion of Specific Rules
The Office is amending Secs. 2.172, 2.173, 2.174, 2.175, and 2.176.
The Office is amending Sec. 2.172 to eliminate the requirement that an
application to surrender a trademark registration for cancellation be
accompanied by the original certificate of registration.
The Office is amending Sec. 2.173 to eliminate the requirement that the
original certificate of registration or a certified copy thereof accompany
a request for amendment of a trademark registration.
The Office is amending Sec. 2.174 to eliminate the requirement that the
original certificate of registration or a certified copy thereof accompany
a request for correction of a mistake by the Office in a trademark
registration pursuant to section 7(g) of the Trademark Act.
The Office is amending Sec. 2.175 to eliminate the requirement that the
original certificate of registration or a certified copy thereof accompany
a request for correction of a mistake by a registrant in a trademark
registration pursuant to section 7(g) of the Trademark Act.
The Office is amending Sec. 2.176 to change "Examiner of Trademarks"
to "Post Registration Examiners."
Rule Making Requirements
Regulatory Flexibility Act
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The changes in this final rule relate solely to the procedure to be
followed in requesting an amendment or correction of a registration.
Therefore, these rule changes involve interpretive 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 were not required pursuant to 5
U.S.C. 553(b)(A) (or any other law). See 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 exempt from
the Administrative Procedure Act's notice and comment requirement); 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 Administrative Procedure
Act apply)); Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) ("it
is doubtful whether any of the rules formulated to govern patent and
trademark practice are other than `interpretative 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)).
Nevertheless, the Office published a notice of proposed
rule making in the Federal Register, 68 FR 70482 (Dec. 18, 2003), and
in the Official Gazette of the United States Patent Office on January
13, 2004, in order to solicit public participation with regard to this
rule package. Pursuant to the notice of proposed rule making, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office certified to the Chief Counsel for Advocacy of the
Small Business Administration under the provisions of section 605(b) of
the Regulatory Flexibility Act that the proposed rule would not have a
significant economic impact on a substantial number of small entities.
No comments were received which referenced any impact the proposed
rules would have on small entities.
This final rule package does not impose any new fees on members of the
public. In fact, because this final rule eliminates the requirement that
registrants must submit the original certificate of registration or a
certified copy thereof with a request for amendment, correction, or
surrender of a registration, this final rule will lessen the financial
burden on many registrants. In situations where a registrant does not have
a certified copy of his or her own registration, the registrant, whether a
large or small entity, will no longer be required to pay fees to the USPTO
to obtain a certified copy of his or her own registration.
Accordingly, 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 the rule changes will
not have a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)).
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 not to be significant for purposes
of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This rule contains no new information collection or recordkeeping
requirements under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). Existing collections of information and recordkeeping requirements
have been reviewed and approved by OMB under OMB Control Number 0651-0009,
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Trademark Processing. 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 in 37 CFR Part 2
Administrative practice and procedure, Trademarks.
. For the reasons given in the preamble and under the authority contained
in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office amends part 2 of
title 37 as follows:
. 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 Sec. 2.172 to read as follows:
Sec. 2.172 Surrender for cancellation.
Upon application by the registrant, the Director may permit any
registration to be surrendered for cancellation. An application for
surrender must be signed by the registrant. When there is more than one
class in a registration, one or more entire class(es) but less than the
total number of classes may be surrendered. Deletion of less than all of
the goods or services in a single class constitutes amendment of
registration as to that class (see Sec. 2.173).
. 3. Amend Sec. 2.173 by revising paragraph (a) to read as follows:
Sec. 2.173 Amendment of registration.
(a) A registrant may apply to amend a registration or to disclaim part
of the mark in the registration. The registrant must submit a written
request specifying the amendment or disclaimer. This request must be signed
by the registrant and verified or supported by a declaration under Sec.
2.20, and accompanied by the required fee. If the amendment involves a
change in the mark, the registrant must submit a new specimen showing the
mark as used on or in connection with the goods or services, and a new
drawing of the amended mark. The registration as amended must still
contain registrable matter, and the mark as amended must be registrable as
a whole. An amendment or disclaimer must not materially alter the character
of the mark.
* * * * *
. 4. Revise Sec. 2.174 to read as follows:
Sec. 2.174 Correction of Office mistake.
Whenever a material mistake in a registration, incurred through the
fault of the United States Patent and Trademark Office, is clearly
disclosed by the records of the Office, a certificate of correction
stating the fact and nature of the mistake, signed by the Director or by
an employee designated by the Director, shall be issued without charge and
recorded. A printed copy of the certificate of correction shall be attached
to each printed copy of the registration certificate. Thereafter, the
corrected certificate shall have the same effect as if it had been
originally issued in the corrected form. In the discretion of the Director,
the Office may issue a new certificate of registration without charge.
. 5. Amend Sec. 2.175 by revising paragraphs (a) and (b) to read as
follows:
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Sec. 2.175 Correction of mistake by registrant.
(a) Whenever a mistake has been made in a registration and a showing
has been made that the mistake occurred in good faith through the fault
of the registrant, the Director may issue a certificate of correction.
In the discretion of the Director, the Office may issue a new certificate
upon payment of the required fee, provided that the correction does not
involve such changes in the registration as to require republication of
the mark.
(b) An application for such action must:
(1) Include the following:
(i) Specification of the mistake for which correction is sought;
(ii) Description of the manner in which it arose; and
(iii) A showing that it occurred in good faith;
(2) Be signed by the registrant and verified or include a declaration
in accordance with Sec. 2.20; and
(3) Be accompanied by the required fee.
* * * * *
. 6. Revise Sec. 2.176 to read as follows:
Sec. 2.176 Consideration of above matters.
The matters in Secs. 2.171 to 2.175 will be considered in the first
instance by the Post Registration Examiners. If the action of the Examiner
is adverse, registrant may petition the Director to review the action
under Sec. 2.146. If the registrant does not respond to an adverse action
of the Examiner within 6 months of the mailing date, the matter will be
considered abandoned.
August 13, 2004 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office
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