| Trademark Publications 2015 |
Referenced Items (513, 514, 515) |
(513) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 2
[Docket No. PTO-T-2014-0011]
RIN 0651-AC94
Reduction of Fees for Trademark Applications and Renewals
AGENCY: United States Patent and Trademark Office, Commerce.
ACTIONS: Final rule.
SUMMARY: The United States Patent and Trademark Office ("Office" or
"USPTO") is amending its regualtions to reduce certain trademark fees, as
authorized by the Leahy-Smith America Invents Act ("AIA"). The reductions
will reduce total trademark fee collections and promote efficiency for the
USPTO and customers. The reductions also will further USPTO strategic
objectives to increase the end-to-end electronic processing of trademark
applications by offering additional electronic application processing.
DATES: The changes in this final rule are effective on January 17, 2015.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by e-mail at
TMPolicy@uspto.gov, or by telephone at (571) 272-8742.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: Section 10 of the AIA authorizes the
Director of the USPTO ("Director") to set or adjust by rule any fee
established, authorized, or charged under the Trademark Act of 1946 (15
U.S.C. 1051 et seq.) for any services performed by, or materials furnished
by, the Office. See Section 10 of the AIA, Public Law 112-29, 125 Stat. at
316-17.
Section 10(c) of the AIA authorizes the Director to consult with the
Trademark Public Advisory Committee ("TPAC") on the advisability of
reducing trademark fees and, following the required consultation, to reduce
such fees. See Section 10(c) of the AIA, Public Law 112-29, 125 Stat. at
317. The Director consulted with the TPAC and thereafter determined that,
in order to both improve the alignment of Office costs with revenues and
incentivize electronic communications, it was advisable to propose
reductions in the filing fees for: (1) trademark, certification mark,
collective membership mark, and collective trademark applications for
registration on the Principal or Supplemental Register that are filed using
the Trademark Electronic Application System ("TEAS"), if applicants
authorize e-mail communication and file specified documents electronically
throughout the application process; (2) TEAS Plus applications for
registration; and (3) TEAS applications for renewal of a registration. In
addition, the reduction would also apply to TEAS requests for
transformation of an extension of protection to the United States into a
U.S. application, filed pursuant to 37 CFR 7.31.
Thereafter, a proposed rule was published in the Federal Register on May
9, 2014, at 79 FR 26664, and in the Official Gazette on June 3, 2014. The
USPTO received comments from three intellectual property organizations and
three attorneys and/or law firms. These comments are posted on the USPTO's
website at http://www.uspto.gov/trademarks/notices/TEAS_RF_comments.jsp and
are addressed below.
Prior to consulting with the TPAC, the USPTO also published a notice of
inquiry to provide the public, including user groups, with an opportunity
to comment on possible adjustments to trademark application fees (77 FR
49426 (Aug. 16, 2012)). The public comments overwhelmingly favored a fee
reduction, and many expressed a desire for a lower-cost electronic filing
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option without any restrictions on the nature of the identification of
goods and services, as is required under TEAS Plus.
The reduced fees will help to: (1) continue with an appropriate and
sustainable funding model; (2) support strategic objectives relating to
online filing, electronic file management, and workflow; and (3) improve
efficiency for USPTO operations and customers. The reductions will benefit
the public by lowering the costs of seeking and renewing federal
registration, including advantages to individual and pro se filers, who
make greater use of lower-cost filing options. In addition, the rule
includes an additional filing option for meeting applicants' needs and
preferences.
General Comments
Comment: All commenters expressed support of the USPTO's efforts to
increase the volume of end-to-end electronic processing of trademark
applications and agreed that the proposed fee reductions will make filing
for individuals and smaller entities more accessible and promote greater
efficiency through electronic filing and communication.
Response: The USPTO appreciates the commenters' support of the general
objectives of the rule changes.
Comment: One commenter suggested that the USPTO take additional steps to
both further the USPTO's strategic objective and reduce burdens on small
businesses. In particular, the commenter recommended that the USPTO collect
and track the filing and renewal information related to small businesses
and provide reduced filing fees to small entities and applicants that are
part of business incubators and other such organizations. In addition, the
commenter opined that providing small entities with reduced fees for
renewals and maintenance would help incentivize registrants to maintain and
renew their marks.
Response: The USPTO appreciates the commenter's suggestions and will
consider them in the future, but notes that they are outside the scope of
the current rulemaking. Moreover, the USPTO has considered whether and how
it is appropriate to reduce any burden on small businesses through
increased flexibility. The final rules provide streamlined and simplified
procedures for all small entities (and others), given the ease of filing
electronically through TEAS and communicating by e-mail. In addition, the
fee reductions promote greater efficiency from electronic filing and
communication, as the procedures are simpler and not burdensome.
Comment: One commenter noted that although the data that becomes the
equivalent of an application under Section 66(a) of the Trademark Act is
not submitted by applicants directly, the Office's goals of increasing
efficiency through electronic correspondence can be achieved with such
applications by requiring that the applicant use TEAS to respond to
provisional refusals and for subsequent prosecution.
Response: The USPTO notes that the reduced-fee option of filing using
TEAS Plus is not currently available for requests for an extension of
protection to the United States, i.e., a Section 66(a) application, 15
U.S.C. 1141f(a), nor will the TEAS RF option be available for these
applications. The USPTO has not required electronic communication by any
filers who have not voluntarily agreed to do so, and therefore the USPTO
would not be inclined to impose such a requirement on Section 66(a)
applicants.
Summary of Major Provisions: After reviewing the comments received in
response to the notice of proposed rulemaking, the USPTO reduces by $50 the
fee for an application filed using the regular TEAS application form, and a
TEAS request for transformation of an extension of protection to the United
States into a U.S. application pursuant to § 7.31, from $325 to $275 per
class if the applicant authorizes e-mail communication and agrees to file
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all responses and other specified documents electronically during the
prosecution of the application. This option will be known as a TEAS Reduced
Fee ("TEAS RF") application. The USPTO also reduces by $50 the fee for a
TEAS Plus application from $275 to $225 per class and reduces by $100 the
fee for a TEAS application for renewal of a registration from $400 to $300
per class. As has been the case since the inception of TEAS Plus, TEAS Plus
applicants who fail to fulfill the filing and examination requirements set
out in the rules will be subject to a processing fee of $50 per class, and
similarly, TEAS RF applicants who fail to fulfill the requirements under
the rules will be subject to the existing processing fee of $50 per class.
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 2014 edition.
Discussion of Rules Changes
The USPTO amends §§ 2.6, 2.22, and 2.23.
First, the USPTO amends § 2.6(a)(1) to enumerate the revised application
filing fee options. Section 2.6(a)(1)(iii) sets out the new, reduced fee of
$275 for filing a TEAS Reduced Fee (i.e., TEAS RF) application under
revised § 2.23. Revised § 2.6(a)(i)(iv) for TEAS Plus is the same as the
currently existing § 2.6(a)(1)(iii) except that the TEAS Plus fee is
reduced from $275 to $225 per class and there is minor rewording for
consistency with existing § 2.6(a)(1)(ii) and revised § 2.6(a)(1)(iii). The
§ 2.6(a)(l)(v) processing fee is the same as the currently existing
§ 2.6(a)(1)(iv) except for amended citations to revised §§ 2.22(c) and
2.23(c). The USPTO revises § 2.6(a)(5) to enumerate the revised fees for
renewal of a registration. The new § 2.6(a)(5)(i) maintains the current fee
of $400 as the fee for an application for renewal of a registration filed
on paper and the new § 2.6(a)(5)(ii) sets out the reduced fee of $300 per
class for a TEAS renewal of a registration.
Comment: Two commenters stated that they support efforts to reduce fees
where appropriate and consistent with a sustainable funding model and as
long as the current and future efficacy and efficiency of the USPTO will
not be compromised.
Response: The USPTO appreciates the commenters' concerns. As one
commenter noted, the Office has assured stakeholders that the reduction is
possible due to efficiencies that have allowed the USPTO to create an
operating reserve and that the revised fee structure maintains a reserve
sufficient to manage operations and address long-term investments. Also,
the Office regularly reviews fees, and may make adjustments in the future
as needed.
Comment: All commenters were in favor of the fee reductions. One noted
that in addition to reducing trademark application fees, which should lead
to more applications being filed, result in a more accurate Federal
Register, and thereby increase efficiency and value for everyone, the USPTO
should provide filing-fee discounts when an applicant files companion
applications together that feature overlapping information, so as to
incentivize businesses to file trademark applications that they may
otherwise not invest in and that would otherwise never become part of the
pending application database or the Register. Similarly, the commenter
suggested that when there are multiple classes in the same application, the
filing fees for subsequent classes be reduced by $100, to encourage
applicants to be comprehensive in listing the goods and services with which
they use or intend to use their marks, making for a more accurate and
complete Register. The commenter opined further that a discounted filing
fee for new businesses might increase the percentage of trademarks that are
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filed with the USPTO. Lastly, the commenter noted that the 10-year renewal
fee, even at a TEAS reduced rate, appears out of line with the initial
application filing fees and the 6-year Section 8 filing fees, since the
processing of the renewal by the USPTO is not nearly as substantial or
complex as the handling of initial applications.
Response: The USPTO appreciates the commenter's suggestions for possible
mechanisms by which to increase application filings and further reduce
fees. To the extent that the Office finds additional opportunities for fee
reductions in the future, these suggestions will be considered. They would
require further exploration and review by the Office.
Comment: Two commenters provided comments regarding the filing fee for
paper applications. One commenter suggested that increasing the filing fee
for paper applications may provide a more direct incentive for paper filers
to switch to filing electronically. A second commenter agreed with the
USPTO's decision to retain the existing filing fee for paper applications
and encouraged the USPTO to continue outreach efforts to identify and
address the reasons why applicants continue to file paper applications and
to develop an electronic solution to address those circumstances.
Response: At this time, the USPTO has no plan to increase any filing
fee, and prefers to rely on other mechanisms to encourage electronic
communication. It is anticipated that the TEAS RF reduced-fee option is a
mechanism that will encourage such applicants to switch from paper to
electronic filing.
Comment: One commenter sought to confirm that there was no intent to
decrease the fees for filing an application under Section 66 of the
Trademark Act and encouraged the Office to consider how the fee reduction
could alter the incentives of foreign applicants to seek U.S. registration
via national applications versus through the Madrid System.
Response: The USPTO confirms that no change is being made to the fee for
a request for an extension of protection under Section 66(a), 15 U.S.C.
1141f(a). The USPTO notes that if the only country in which a foreign
applicant sought extension of protection of a foreign registration was the
United States, it might make it more cost effective to file directly with
the U.S. using TEAS RF. However, as the vast majority of Madrid users
designate more than one country, they may determine that the benefits of
the Madrid System outweigh the $50 per-class savings available through the
TEAS RF option.
Second, the USPTO makes the following format revisions to § 2.22
concerning TEAS Plus applications: revise the rule title; in § 2.22(a),
cite to § 2.6(a)(1)(iv) instead of § 2.6(a)(l)(iii); in § 2.22(b), set
forth the additional examination requirements for a TEAS Plus application
that are currently set forth in existing § 2.23(a); in § 2.22(c), set forth
the current text in existing §§ 2.22(b) and 2.23(b), and cite to
§ 2.6(a)(l)(v) instead of to § 2.6(a)(l)(iv); and, in § 2.22(d), set forth
the text currently in existing § 2.22(c).
Comment: Three commenters expressed concerns regarding the TEAS Plus
requirements. Two commenters noted that the fee reduction for TEAS Plus
applications is not likely to cause applicants to switch from TEAS to TEAS
Plus since a majority of those who do not use TEAS Plus choose not to use
it because of the issues surrounding the identification of goods and
services and/or the accounting and other difficulties that may ensue if
TEAS Plus status is lost during the application process. For example,
applicants may need to submit identifications not found in the U.S.
Acceptable Identification of Goods and Services Manual (ID Manual) to
accurately identify their goods and services. Revisions to the ID Manual to
include all classes and types of goods and services, update recitations of
goods and services, and make it more easily navigable to help address these
concerns were suggested. The requirement to search for and select all
relevant goods and/or services and separately assign a basis to each, and
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where applicable, attach a separate specimen, was thought to make the TEAS
Plus application more time-consuming and cumbersome than regular TEAS
applications. The commenters encouraged the USPTO to investigate and
address the restrictions of TEAS Plus that currently lead some applicants
to file by TEAS and to provide other options, such as lifting the
identification requirement or providing expedited processing.
Response: The new TEAS RF option addresses these concerns. In response
to public input on potential adjustments to trademark application fees, the
comments overwhelmingly favored a fee reduction, and many expressed a
desire for a lower-cost electronic filing option without any restrictions
on the nature of the identification of goods and services, as is required
under TEAS Plus. Accordingly, the USPTO proposed the introduction of the
TEAS RF filing option. The filing fee for TEAS RF is the same as the
current TEAS Plus fee, but the application does not require that applicants
choose an identification of goods or services from the ID Manual. Nor are
applicants required to comply with any of the other TEAS Plus requirements
except the requirements to authorize e-mail communication and file
specified documents electronically throughout the application process.
In addition, the USPTO is implementing improvements to the ID Manual,
such as basic and advanced search options, highlighting of search terms in
results, inclusion of Notes in results table, and displaying initial
results according to a "relevance" priority rather than by Class number.
The USPTO notes that the additional requirements of TEAS Plus cited by
the commenter, i.e., to search for and select all relevant goods and
services, assign a basis to each, and, if applicable, attach a separate
specimen for each class, merit the lower fee of TEAS Plus because they
lower the cost of examination and reduce pendency in large part because
most such applications are complete when filed, and will therefore,
typically result in the issuance of fewer Office actions.
Third, the USPTO revises current § 2.23 to establish a TEAS RF option in
the amount of $275. Existing § 2.23 lists the additional examination
requirements for a TEAS Plus application. As noted above, the provisions in
previous § 2.23 are consolidated into revised § 2.22. Filers using either
the TEAS Plus or the new TEAS RF option are required to authorize e-mail
communication from the USPTO and submit specified documents electronically
using TEAS during the prosecution of the application. However, filers using
the new TEAS RF option are not required to comply with the additional TEAS
Plus requirements.
Comment: One commenter also noted that the new TEAS RF application
addresses many concerns applicants have with the TEAS Plus application and
presents an option that its clients, many of which are small businesses,
will likely use and benefit from.
Response: The USPTO appreciates the commenter's statement that the TEAS
RF option will benefit applicants.
Comment: One commenter recommended that the Office confirm that informal
communications with the examining attorney, including telephone and e-mail
communications, would not violate the requirement of an "electronic
communication" for purposes of retaining TEAS RF status.
Response: The USPTO confirms that informal communications by telephone
or e-mail with an examining attorney would not violate the requirement that
the applicant submit documents via TEAS during the prosecution of the
application. Informal communications are not substitutes for formal
responses to Office actions, but rather are conducted only if they serve to
develop and clarify specific issues and lead to a mutual understanding
between the examining attorney and the applicant regarding a particular
application. See TMEP section 709.05. Therefore, such an informal
communication need not be filed through TEAS to comply with the final rule.
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Notably, § 2.23 lists all the specific communications that TEAS RF
applicants must file through TEAS or be subject to the processing fee of
$50 per class.
Rulemaking Considerations
Administrative Procedure Act: This rulemaking reduces fees under Section
10(c) of the AIA. See also 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2. The
other changes in this rulemaking establish procedures for applicants
seeking these reduced fees. The procedural changes 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) (stating that a rule that clarifies
interpretation of a statute is interpretive); Bachow Commc'ns Inc. v. FCC,
237 F.3d 683, 690 (D.C. Cir. 2001) (stating that 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)
(stating that 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
procedural 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)(3)(A))). The Office, however,
published these changes for comment as it sought the benefit of the
public's views. The Office has also undertaken a Final Regulatory
Flexibility Act Analysis of the final rule.
Final Regulatory Flexibility Analysis:
1. Description of the reasons that action by the USPTO is being undertaken:
The USPTO is reducing certain trademark fees as authorized by Section
10(c) of the AIA. The reductions will reduce total trademark fee
collections and promote efficiency for the USPTO and customers through
increased electronic communication. Specifically, the USPTO amends its
rules to reduce application filing fees for certain applications for
registration on the Principal or Supplemental Register under Section 1
and/or Section 44 of the Trademark Act, and for TEAS requests for
transformation of an extension of protection to the United States into a
U.S. application filed pursuant to § 7.31, and to reduce the fee for
renewal of a trademark registration that is filed through TEAS.
2. Succinct statement of the objectives of, and legal basis for, the final
rulemaking:
The objectives of the final rulemaking are to reduce total trademark
filing and renewal fees and fee collections, improve the alignment of
Office costs with revenues, and promote efficiency for the USPTO and
customers through electronic communication. Filing through TEAS and
authorizing e-mail communication expedites processing, shortens pendency,
minimizes manual processing and the potential for data entry errors, and
is more efficient for both the filer and the USPTO. TEAS-filed documents
are automatically uploaded into the USPTO database. They require no manual
scanning or creation of a paper file wrapper, and they often reduce or
eliminate the need for manual data entry of amendments to the filings.
Authorizing e-mail communication provides similar benefits, by reducing the
need for mailing and the creation of, or addition to, a file wrapper. Paper
filings, on the other hand, necessitate: (1) manual scanning and uploading
of the documents into the USPTO database; (2) manual data entry of
information; and (3) the creation of paper file wrappers in which to store
the originals of the paper filings. Thus, the final rulemaking facilitates
efficiency in numerous ways. As to the legal basis for the revisions,
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Section 10(c) of the AIA provides the authority for the Director to reduce
trademark fees after consultation with the TPAC. See also Section 31 of the
Trademark Act, 15 U.S.C. 1113. Both 15 U.S.C. 1123 and 35 U.S.C. 2 provide
the authority for the Director to establish regulations for the conduct of
trademark proceedings at the USPTO.
3. Description of and, where feasible, estimate of the number of affected
small entities:
The USPTO does not collect or maintain statistics in trademark cases on
small-versus large-entity applicants, and this information would be
required in order to determine the number of small entities that would be
affected by the final rulemaking. However, the USPTO will provide projected
estimates of each type of filing affected by the final rulemaking. The
overall impact of the lower fees on applicants and registrants will be
overwhelmingly positive, as they will be afforded the opportunity to obtain
a trademark registration for a reduced fee.
The final rulemaking could apply to any entity filing a trademark
application, except those filing under Section 66(a), 15 U.S.C. 1141f(a).
The USPTO estimates that during the first year under the final rulemaking,
the USPTO would receive 103,633 classes of TEAS RF applications that,
absent the rule change, likely would have been filed as regular TEAS
applications, as well as 204,682 classes of TEAS Plus applications. Thus,
the estimated financial impact of the reduced fees will be: (1) a
$10,234,100 reduction in fees for TEAS Plus applicants; and (2) a
$5,181,650 reduction in fees for TEAS RF applicants, or $5,065,100, when
the estimated 2,331 classes of TEAS RF applicants who likely will be
required to pay the $50 processing fee are taken into consideration.
Turning to the renewal fee, the USPTO estimates that during the first year
under the final rulemaking, the USPTO would receive 62,315 classes of
renewals, 61,193 of which will be filed through TEAS, such that the
financial impact will be a $6,119,300 reduction in fees for trademark
owners. The USPTO does not collect or maintain statistics in trademark
cases on small- versus large-entity applicants to determine what subset of
applicants would be small entities impacted by the final rule.
4. Description of the reporting, recordkeeping, and other compliance
requirements of the final rulemaking, including an estimate of the classes
of small entities that will be subject to the requirement and the type of
professional skills necessary for preparation of the report or record:
The final rules impose no new reporting or recordkeeping requirements.
The final rules reduce fees for applications, requests for
transformation of an extension of protection to the United States into a
U.S. application, and renewals of trademark registrations. The USPTO does
not anticipate that the final rulemaking will have a disproportionate
impact upon any particular class of small or large entities. Any entity
that applies for or renews a registered trademark may choose to benefit
from the final rules. The final rulemaking merely offers lower fees based
on electronic filing of the renewal or application and other documents, and
authorization for e-mail communication from the USPTO. Because the fees for
filing a paper application, a regular TEAS application, a paper request for
transformation of an extension of protection to the United States into a
U.S. application, and a paper application for renewal of a registration
remain unchanged under the final rules, and applicants may continue to file
on paper or via the regular TEAS application form, the filer may choose
whether to undertake the requirements for the reduced-fee options in the
final rules. Procedures for TEAS Plus filers remain the same, as the final
rules merely reduce fees and consolidate the TEAS Plus procedures within
one rule, without imposing any change in practice. Filers using the new
TEAS RF option must submit specified documents electronically using TEAS
during the prosecution of the application and must authorize e-mail
communication from the USPTO.
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The USPTO estimates that filing electronically likely will take less
time than filing the same type of document on paper and will not take any
more time. The USPTO further estimates that communicating by e-mail will
not take any more time than receiving and reviewing a USPTO communication
sent by regular mail and is likely to take less time.
5. Description of any significant alternatives to the final rulemaking
which accomplish the stated objectives of applicable statutes and which
minimize any significant economic impact of the rules on small entities:
The USPTO has considered whether and how it is appropriate to reduce any
burden on small businesses through increased flexibility. The following
options have been considered, but rejected, by the USPTO, since they are
less protective of small businesses.
The alternative of not offering the identified reduced fees, or not
offering them to small entities, would retain the status quo for small
entities and therefore produce no economic impact on them, but that
alternative has been rejected because the economic effect of the final
rules will be favorable to small businesses, rather than burdensome. In
addition, the alternative of not reducing fees would fail to accomplish the
stated objectives of reducing overall trademark fee collections and
increasing efficiency for the USPTO and filers.
The final rulemaking provides streamlined and simplified procedures for
all small entities, as well as others, given the ease of filing
electronically through TEAS and communicating by e-mail. Thus, compliance
will be streamlined and simplified for all affected entities. The fee
reductions promote greater efficiency from electronic filing and
communication, as the procedures are simpler and not burdensome.
Use of performance rather than design standards is not applicable to the
final rulemaking because the USPTO is not issuing any sort of standard.
Rather, the final rulemaking offers reduced fees to applicants and
registrants who file and communicate electronically with the USPTO.
6. Identification, to the extent practicable, of all relevant Federal rules
which may duplicate, overlap, or conflict with the final rules:
The final rules do not duplicate, overlap, or conflict with any other
Federal rules.
Executive Order 12866 (Regulatory Planning and Review): This rulemaking
has been determined to be not significant for purposes of Executive Order
12866 (Sept. 30, 1993).
Executive Order 13563 (Improving Regulation and Regulatory Review): The
USPTO has complied with Executive Order 13563 (Jan. 18, 2011).
Specifically, the USPTO has, to the extent feasible and applicable: (1)
made a reasoned determination that the benefits justify the costs of the
rules; (2) tailored the 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 online
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 (Federalism): This rule does not contain policies
with federalism implications sufficient to warrant preparation of a
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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 this final rule, the USPTO submitted 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. The changes in
this final rule 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 indomestic and export
markets. Therefore, this is not a "major rule" as defined in 5 U.S.C.
804(2).
Unfunded Mandates Reform Act of 1995: The changes set forth in this
rulemaking do not involve a Federal intergovernmental mandate that will
result in the expenditure by State, local, and tribal governments, in the
aggregate, of 100 million dollars (as adjusted) or more in any one year, or
a Federal private sector mandate that will result in the expenditure by the
private sector of 100 million dollars (as adjusted) or more in any one
year, and will not significantly or uniquely affect small governments.
Therefore, no actions are necessary under the provisions of the Unfunded
Mandates Reform Act of 1995. See 2 U.S.C. 1501 et seq.
Paperwork Reduction Act: This 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.). An information collection request was submitted to OMB under control
numbers 0651-0009 and 0651-0055 at the time of the Notice of Proposed
Rulemaking, and a pre-approval was given. Since that time no substantive
changes to the burden have been made. Additionally, the agency will follow
up with a change worksheet submission to reconcile any burden estimate
adjustments, especially as regards OMB Control Number 0651-0051.
I. Summary: The USPTO is reducing certain trademark fees, as authorized by
the AIA. The reductions will reduce total trademark fee collections and
promote efficiency for the USPTO and customers through electronic
communication and will further the USPTO's strategic objective to increase
the end-to-end electronic processing of trademark applications including
online filing, electronic file management, and workflow. Specifically, the
USPTO amends its rules to permit a trademark applicant using the regular
TEAS application form to file an application for registration on the
Principal or Supplemental Register under Section 1 and/or Section 44 of the
Trademark Act, and an applicant who files a TEAS request for transformation
of an extension of protection to the United States into a U.S. application,
to pay a reduced fee under certain circumstances. The reduced fee is
available to a TEAS applicant if the applicant agrees to receive
communications concerning the application by e-mail and to file all
responses and other documents through TEAS during the prosecution of the
application. The reduced-fee option does not apply to applications filed
pursuant to Section 66(a) of the Act because they cannot be filed through
TEAS. The USPTO also amends its rules to reduce the filing fees for an
application filed using the TEAS Plus form and a TEAS application for
renewal of a registration.
II. Data
Needs and Uses: The public uses the various applications to apply
for the registration of trademarks/service marks, collective trademarks/
service marks, collective membership marks, and certification marks that
identify goods and services classified in single or multiple classes. The
public also uses applications under Section 44 to apply for a priority
filing date and/or for registration based upon foreign registration of a
mark. The USPTO uses information from the public to receive and process
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applications for registration of trademarks/service marks, collective
trademarks/service marks, collective membership marks, and certification
marks. The USPTO uses information from the public in response to Section 44
applications to process applications for registration of a mark based upon
earlier-filed foreign applications or a foreign registration. In addition,
the USPTO also uses the application information to determine whether the
marks may be registered. The public uses the application for renewal to
apply for the renewal of a registration. The USPTO uses information from
the public to receive and process applications for renewal of a
registration.
Title of Collection: Applications for Trademark Registration.
OMB Control Number: 0651-0009.
Form Number(s): PTO Forms 1478, 1480, 1481, 1482.
Type of Review: Revised Collection.
Method of Collection: By mail, facsimile, hand delivery, or electronically
to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Responses: 359,560.
Estimated Time per Response: The Office estimates that the responses in
this collection will take the public approximately 18 to 30 minutes (0.3 to
0.5 hours).
Estimated Total Annual Respondent Burden Hours: 125,373 hours per year.
Estimated Total Annual Respondent Cost Burden: $48,770,097 per year.
Estimated Total Annual Non-hour Respondent Cost Burden: $97,548,226 per
year.
Title of Collection: Post Registration (Trademark Processing).
OMB Control Number: 0651-0055.
Form Number(s): PTO Form 1963.
Type of Review: Revised Collection.
Method of Collection: By mail, facsimile, hand delivery, or electronically
to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Responses: 51,929.
Estimated Time per Response: The Office estimates that the responses in
this collection will take the public approximately 12 to 14 minutes (0.20
to 0.23 hours).
Estimated Total Annual Respondent Burden Hours: 10,414 hours per year.
Estimated Total Annual Respondent Cost Burden: $4,050,988 per year.
Estimated Total Annual Non-hour Respondent Cost Burden: $20,865,550 per
year.
Title of Collection: Madrid Protocol.
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OMB Control Number: 0651-0051.
Form Number(s): PTO Global Form.
Type of Review: Revised Collection.
Method of Collection: By mail, facsimile, hand delivery, or electronically
to the Office.
Affected Public: Individuals or households; businesses or other
for-profits; and not-for-profit institutions.
Estimated Number of Responses: 6,623.
Estimated Time per Response: The Office estimates that the responses in
this collection will take the public approximately 15 minutes to one hour
and 15 minutes (0.25 to 1.25 hours).
Estimated Total Annual Respondent Burden Hours: 1,711 hours per year.
Estimated Total Annual Respondent Cost Burden: $634,781 per year.
Estimated Total Annual Non-hour Respondent Cost Burden: $743,875 per year.
III. Solicitation
Comments were solicited to: (1) evaluate whether the information
requirement 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; (3) enhance
the quality, utility, and clarity of the information to be collected; and
(4) minimize the burden of collecting the information on those who are to
respond, including by using appropriate automated, electronic, mechanical,
or other technological collection techniques or other forms of information
technology.
Regarding whether the collection of information enhances the quality,
utility, and clarity of the information to be collected, the USPTO received
two comments.
Comment: The commenters noted that the proposed changes will result in
more accurate and carefully tailored trademark applications by allowing
applicants to submit the most accurate and comprehensive designation of
goods and services since they will not have to choose designations from the
ID Manual, which the commenter contends results in inefficiencies not only
for the companies seeking to register a mark, but also for the USPTO and
other companies conducting trademark searches. The commenter also asserts
that the proposed changes would help applicants receive the maximum
benefits of the USPTO system. One commenter noted that requests for
extensions of protection encounter a number of inefficiencies arising from
the data transfer from WIPO to the Office and recommended that these
inefficiencies be addressed by the Office as part of the rule or in a
separate request for comment.
Response: The USPTO agrees with the commenters regarding the benefits of
providing a reduced-fee option while permitting applicants to submit their
own identifications of goods and services.
The USPTO appreciates the suggestions regarding requests for extension
of protection but notes that the Office is unaware of the alleged
inefficiencies of using an entry from the ID Manual and notes that these
requests are not part of the information collection impacted by this final
rulemaking. Any more detailed comments about this subject outside the scope
of this final rulemaking may be submitted to the USPTO through
TMFeedback@USPTO.gov.
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As to whether changes minimize the burden of collecting the information
on those who are to respond, including by using appropriate automated,
electronic, mechanical, or other technological collection techniques or
other forms of information technology, the USPTO received no comments.
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 stated in the preamble and under the authority contained
in Section 10(c) of the AIA, 15 U.S.C. 1113, 15 U.S.C. 1123, and 35 U.S.C.
2, as amended, the USPTO amends part 2 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for part 2 is revised to read as follows:
Authority:15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section 10(c)
of Pub. L. 112-29, unless otherwise noted.
2. Amend § 2.6 by revising paragraphs (a)(1)(iii) and (iv), adding
paragraph (a)(1)(v), and revising paragraph (a)(5) to read as follows:
§ 2.6 Trademark fees.
* * * * *
(a) * * *
(1) * * *
(iii) For filing a TEAS Reduced Fee (RF) application through TEAS
under § 2.23, per class-$275
(iv) For filing a TEAS Plus application through TEAS under § 2.22,
per class-$225.00
(v) Additional processing fee under §§ 2.22(c) or 2.23(c), per
class-$50.00
* * * * *
(5) Application for renewal of a registration fees.
(i) For filing an application for renewal of a registration on paper,
per class-$400.00
(ii) For filing an application for renewal of a registration through
TEAS, per class-$300.00
* * * * *
3. Amend § 2.22 by revising the section heading, paragraph (a)
introductory text, and paragraphs (b) and (c) and adding paragraph (d) to
read as follows:
§ 2.22 Requirements for a TEAS Plus application.
(a) A trademark/service mark application for registration on the
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Principal Register under section 1 and/or section 44 of the Act will be
entitled to a reduced filing fee under § 2.6(a)(1)(iv) if it is filed
through TEAS and includes:
* * * * *
(b) In addition to the filing requirements under paragraph (a) of this
section, the applicant must:
(1) File the following communications through TEAS:
(i) Responses to Office actions (except notices of appeal under section
20 of the Trademark Act);
(ii) Requests to change the correspondence address and owner's address;
(iii) Appointments and/or revocations of power of attorney;
(iv) Appointments and/or revocations of domestic representative;
(v) Voluntary amendments;
(vi) Amendments to allege use under section 1(c) of the Act or
statements of use under section 1(d) of the Act;
(vii) Requests for extensions of time to file a statement of use under
section 1(d) of the Act; and
(viii) Requests to delete a section 1(b) basis.
(2) Maintain a valid e-mail correspondence address and continue to
receive communications from the Office by e-mail.
(c) If an application does not fulfill the requirements of paragraphs
(a) and (b) of this section, the applicant must pay the processing fee
required by § 2.6(a)(1)(v). The application will retain its original
filing date, provided that when filed, the application met the filing
date requirements of § 2.21.
(d) The following types of applications cannot be filed as TEAS Plus
applications:
(1) Applications for certification marks (see § 2.45);
(2) Applications for collective trademarks and service marks
(see § 2.44);
(3) Applications for collective membership marks (see § 2.44); and
(4) Applications for registration on the Supplemental Register
(see § 2.47).
4. Revise § 2.23 to read as follows:
§ 2.23 Requirements for a TEAS RF application.
(a) A trademark, service mark, certification mark, collective membership
mark, or collective trademark application for registration on the
Principal or Supplemental Register under section 1 and/or section 44 of
the Act will be entitled to a reduced filing fee under § 2.6(a)(1)(iii)
if it is filed through TEAS and includes:
(1) An e-mail address for correspondence; and
(2) An authorization for the Office to send correspondence concerning
the application to the applicant or applicant's attorney by e-mail.
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(b) In addition to the filing requirements under paragraph (a) of this
section, the applicant must:
(1) File the following communications through TEAS:
(i) Responses to Office actions (except notices of appeal under section
20 of the Trademark Act);
(ii) Requests to change the correspondence address and owner's address;
(iii) Appointments and/or revocations of power of attorney;
(iv) Appointments and/or revocations of domestic representative;
(v) Voluntary amendments;
(vi) Amendments to allege use under section 1(c) of the Act or
statements of use under section 1(d) of the Act;
(vii) Requests for extensions of time to file a statement of use under
section 1(d) of the Act; and
(viii) Requests to delete a section 1(b) basis.
(2) Maintain a valid e-mail correspondence address, and continue to
receive communications from the Office by e-mail.
(c) If an application does not meet the requirements of paragraphs (a)
and (b) of this section, the applicant must pay the processing fee
required by § 2.6(a)(1)(v). The application will retain its original
filing date, provided that when filed, the application met the filing
date requirements of § 2.21.
December 10, 2014 MICHELLE K. LEE
Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director
United States Patent and Trademark Office
[1410 TMOG 54]