(516) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
Docket No. PTO-T-2010-0014
RIN 0651-AC39
Trademark Technical and Conforming Amendments
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Final rule.
SUMMARY: The United States Patent and Trademark Office ("USPTO") is
adopting as a final rule, with minor changes, an interim final rule
amending the Rules of Practice in Trademark Cases and the Rules of Practice
in Filings Pursuant to the Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks ("Madrid Rules") to
implement the Trademark Technical and Conforming Amendment Act of 2010. The
interim final rule was published in the Federal Register on June 24, 2010.
This final rule makes minor changes to the interim final rule to
incorporate additional statutory language being implemented.
DATES: This rule is effective on June 24, 2010.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at (571)
272-8742.
SUPPLEMENTARY INFORMATION
Background
On June 24, 2010, the USPTO published an interim final rule at 75 FR
35973 amending the Rules of Practice in Trademark Cases and the Madrid
Rules to implement the Trademark Technical and Conforming Amendment Act of
2010 ("TTCAA"), Pub. L. No. 111-146, 124 Stat. 66 (2010). This legislation
and the implementing rule harmonized the framework for submitting trademark
registration maintenance filings to the USPTO by permitting holders of
international registrations with an extension of protection to the United
States under the Madrid Protocol ("Madrid Protocol registrants") to file
Affidavits or Declarations of Use or Excusable Nonuse at intervals
identical to those for nationally issued registrations. In addition, all
trademark owners may now cure deficiencies in their maintenance filings
outside of the statutory filing period upon payment of a deficiency
surcharge, specifically including when the affidavit or declaration was not
filed in the name of the owner of the registration.
The interim final rule provided a 60-day comment period that ended
August 23, 2010. No comments were received. For the reasons given in the
interim final rule, the USPTO is adopting the interim final rule amending
37 CFR Parts 2 and 7 as a final rule, with minor changes.
The rule is changed slightly for purposes of clarification.
Specifically, 37 CFR 2.163(a), 2.164(a), and 7.39(c) are amended to reflect
that deficiencies may be corrected after notification from the USPTO. These
revisions reflect the amendments to Sections 8 and 71 of the Lanham Act, 15
U.S.C. 1058 and 1141k, providing that deficiencies may be corrected after
notification of the deficiency.
Rule Making Considerations
This document adopts as a final rule, with minor procedural changes, the
interim final rule that is already in effect. The changes from the interim
rule contained in this final rule constitute interpretative rules or rules
of agency practice and procedure and accordingly, are not subject to the
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requirements for prior notice and comment. See 5 U.S.C. 553(b)(3)(A). The
rule changes relate solely to the procedures for maintaining a Federal
trademark registration, and merely implement the TTCAA, so that the Rules
of Practice in Trademark Cases and the Madrid Rules are consistent with the
statutory revisions. Thus, prior notice and an opportunity for public
comment are not required pursuant to 5 U.S.C. 553(b)(A) (or any other law).
See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 USPQ2d 1705,
1710 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C.
2(b)(2)(B), does not require notice and comment rule making for
"'interpretative rules, general statements of policy, or rules of agency
organization, procedure, or practice.'" (quoting 5 U.S.C. 553(b)(A)),
Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001)
(rules governing an application process are "rules of agency organization,
procedure, or practice" and are exempt from the Administrative Procedure
Act's notice and comment requirement); see also Merck & Co., Inc. v.
Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the
rules of practice promulgated under the authority of former 35 U.S.C. 6(a)
(now in 35 U.S.C. 2(b)(2)) are not substantive rules (to which the notice
and comment requirements of the APA apply)), and Fressola v. Manbeck, 36
USPQ2d 1211, 1215 (D.D.C. 1995) ("[i]t is extremely doubtful whether any of
the rules formulated to govern patent or trademark practice are other than
'interpretive rules, general statements of policy, procedure, or
practice.'") (quoting C.W. Ooms, The United States Patent Office and the
Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)).
Rule Making Requirements
Executive Order 13132: This rule making does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined to be not
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Executive Order 13563 (Improving Regulation and Regulatory Review): The
USPTO has complied with Executive Order 13563. Specifically, the USPTO has,
to the extent feasible and applicable: (1) made a reasoned determination
that the benefits justify the costs of the rule; (2) tailored the rule 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) involved the public in an open exchange of information
and perspectives among experts in relevant disciplines, affected
stakeholders in the private sector and the public as a whole, and provided
online access to the rule making 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.
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), neither a regulatory flexibility analysis nor a certification under
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required for this
final rule. See 5 U.S.C. 603.
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.). The collection of information involved in this rule has been
reviewed and previously approved by OMB under control number 0651-0051.
Changes in this rule would not affect the information collection
requirements associated with the information collection under OMB control
number 0651-0051.
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Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
Unfunded Mandates: The Unfunded Mandates Reform Act, at 2 U.S.C. 1532,
requires that agencies prepare an assessment of anticipated costs and
benefits before issuing any rule that may result in expenditure by State,
local, and tribal governments, in the aggregate, or by the private sector,
of $100 million or more (adjusted annually for inflation) in any given
year. This rule would have no such effect on State, local, and tribal
governments or the private sector.
Congressional Review Act: Under the Congressional Review Act provisions
of the Small Business Regulatory Enforcement Fairness Act of 1996 (5 U.S.C.
801 et seq.), prior to issuing any final rule, the USPTO will submit a
report containing the final rule and other required information to the
United States Senate, the United States House of Representatives, and the
Comptroller General of the Government Accountability Office. However, this
action is not a major rule as defined by 5 U.S.C. 804(2).
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks, International
Registration.
Accordingly, the interim final rule amending 37 CFR parts 2 and 7, which
was published at 75 FR 35973 on June 24, 2010, is adopted as a final rule
with the following changes:
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 § 2.163(a) to read as follows:
§ 2.163 Acknowledgment of receipt of affidavit or declaration.
* * * * *
(a) If the affidavit or declaration is filed within the time periods
set forth in section 8 of the Act, deficiencies may be corrected after
notification from the Office if the requirements of § 2.164 are met.
* * * * *
3. Revise § 2.164(a) introductory text to read as follows:
§ 2.164 Correcting deficiencies in affidavit or declaration.
(a) If the affidavit or declaration is filed within the time periods
set forth in section 8 of the Act, deficiencies may be corrected after
notification from the Office, as follows:
* * * * *
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PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO
THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
4. 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.
5. Revise § 7.39(c) introductory text to read as follows:
§ 7.39 Acknowledgment of receipt of and correcting deficiencies in
affidavit or declaration of use in commerce or excusable nonuse.
* * * * *
(c) If the affidavit or declaration is filed within the time periods
set forth in section 71 of the Act, deficiencies may be corrected after
notification from the Office, as follows:
* * * * *
November 1, 2011 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1373 TMOG 44]