[Federal Register Volume 66, Number 165 (Friday, August 24, 2001)]
[Notices]
[Pages 44603-44605]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 01-21479]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. 010723184-118401]
RIN 0651-AB30


Establishment of a Database Containing the Official Insignia of 
Federally and State Recognized Native American Tribes

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Procedures for establishment and maintenance of a database of 
the official insignia of federally and state-recognized Native American 
tribes.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
announcing the procedures it will follow in creating and maintaining a 
database of the official insignia of federally and state-recognized 
Native American tribes. The database, recommended in a report required 
by the Trademark Law Treaty Implementation Act, will assist examining 
attorneys in their examinations of applications for registration.

SUPPLEMENTARY INFORMATION: The Trademark Law Treaty Implementation Act, 
Pub. L. 105-330, Sec. 302, 112 Stat. 3071 (1998) required the USPTO to 
study issues surrounding protection of the official insignia of 
federally and state-recognized Native American tribes. The study was 
conducted, and a report was presented to the Chairman of the Committee 
on the Judiciary of the Senate and to the Chairman of the Committee on 
the Judiciary of the House of Representatives on November 30, 1999 
(hereinafter ``the Report'').
    One of the recommendations set forth in the Report was that the 
USPTO create and maintain an accurate and comprehensive database of the 
official insignia of Native American tribes.
    On January 9, 2001, the USPTO published a notice in the Federal 
Register describing the proposed procedures for creating and 
maintaining the database (Federal Register, Vol. 66, No. 6), and 
requesting comments on these procedures.
    Two parties submitted responses to the January 9, 2001 Federal 
Register Notice. One party submitted a comment regarding the proposed 
procedures for creating and maintaining the database, a request that 
the USPTO extend the time for submitting comments regarding the 
database, and a suggestion that the USPTO allow third parties to object 
to particular requests for entries of insignia in the database. 
Additionally, that party, as well as the other party that submitted a 
response, objected to the creation of the database.

Acceptable Form for Insignias

    The proposed procedures published in the notice of January 9, 2001, 
provided that, if an insignia consists solely of a word or words, then 
the request to enter that insignia in the database should include a 
depiction of the word or words in uppercase letters.
    Comment: One comment suggested that the proposed procedures should 
not

[[Page 44604]]

have allowed parties to submit requests to record matter comprised 
solely of words. This comment noted that the Report suggested that 
words, by themselves, could not function as official insignia of Native 
American tribes. Instead, the Report provided that insignia would be 
defined as ``flag or coat of arms or other emblem or device of any 
federally or state-recognized Native American tribe, as adopted by 
tribal resolution and notified to the U.S. Patent and Trademark 
Office.'' Accordingly, the comment suggested that the database not 
include entries of matter comprised solely of words.
    Response: The suggestion has been adopted. The procedures for 
requesting entry of an insignia in the database have been modified to 
delete the reference to insignia composed solely of words, and to 
clarify that in order to be entered into the database, an insignia must 
consist of a flag or coat of arms or other emblem or device of any 
federally or state-recognized Native American tribe, as adopted by 
tribal resolution.

Propriety of Creating and Maintaining the Database of Insignia of 
Federally and State Recognized Native American Tribes

    Two comments suggested that the USPTO should not establish a 
database of insignia of federally and state-recognized Native American 
Tribes. Both of these comments argued that the establishment of the 
database will confer rights on Native American Tribes that are not 
enjoyed by other groups. Additionally, both comments also argued that 
the USPTO would incur substantial costs in maintaining the database.
    Response: The USPTO does not believe that entry of the official 
insignia of a Native American Tribe in the database will confer any 
rights on that tribe. The presence of an insignia in the database will 
not create any legal presumption of validity or priority, and none of 
the benefits of Federal trademark registration will accrue to a Native 
American tribe whose insignia is recorded pursuant to this notice. The 
sole function of the database will be to assist examining attorneys in 
their examination of applications for registration.
    The USPTO believes that it currently has adequate resources to 
create and maintain the database. Additionally, it is noted that the 
database is being created pursuant to one of the recommendations of the 
Report. The Senate Appropriations Committee directed the USPTO to 
comply with this recommendation by creating and maintaining the 
database. See Senate Report 106-404 and H. Report 106-1005.

Time for Submitting Comments

    One comment suggested that if comments regarding the proposed 
procedures were not received from each of the thirty-six entities who 
commented on the Report, then the USPTO should extend the period for 
commenting on the proposed procedures.
    Response: The USPTO does not believe that it is necessary to extend 
the comment period. The USPTO believes that the thirty-day period 
provided for submitting comments was sufficient to allow all interested 
parties to prepare and submit comments.

Third Party Objections to Entry of Insignia

    One comment suggested that establishment of the database would 
require the USPTO to accept and consider objections from third parties 
to the recordal of particular insignia.
    Response: The USPTO does not believe that it should consider third 
party objections to entries of insignia in the database. The entry of 
an insignia will not confer any rights on the tribe that submitted the 
insignia. The sole function of the database will be to assist examining 
attorneys in their examination of applications for registration. 
Because no rights will accrue from entries of insignia into the 
database, it is unlikely that there can be any grounds for objecting to 
these entries.

Procedures for Submitting Requests for Entry of Insignia in the 
Database of Insignia of Federally and State Recognized Native 
American Tribes

    All requests to enter an official insignia of a Native American 
tribe into the USPTO database must be in writing, addressed to the 
Commissioner for Trademarks, and must include the following:
    (1) A depiction of the insignia. This depiction should not be 
larger than 4 inches by 4 inches (10.3 cm. by 10.3 cm.), and should be 
placed at or near the center of a sheet of white paper 8 to 8\1/2\ 
inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long. The paper 
should have a heading that includes the name of the tribe and the 
address for correspondence;
    (2) A copy of the tribal resolution adopting the insignia in 
question as the official insignia of the tribe;
    (3) A statement, signed by an official with authority to bind the 
tribe, confirming that the insignia included with the request is 
identical to the official insignia adopted by tribal resolution; and
    (4) For all entities not recognized as Native American tribes by 
the Bureau of Indian Affairs (BIA), either: (a) a document issued by a 
state official that evidences the state's determination that the entity 
is a Native American tribe, or (b) a citation to a state statute 
designating the entity as a Native American tribe.
    The request should be sent by facsimile to (703) 872-9192, or 
mailed to the Commissioner for Trademarks at the following address: 
P.O. Box 16471, Arlington, Virginia 22215.
    The insignia must consist of a flag or coat of arms or other emblem 
or device of any federally or state-recognized Native American tribe, 
as adopted by tribal resolution. A word or words alone will not be 
considered an insignia, and will not be entered in the insignia 
database.
    The USPTO will record any official insignia of a Native American 
tribe submitted in the manner described above, if the Commissioner 
determines that the entity that submitted the request is a Native 
American tribe recognized by the Federal Government or by one or more 
state governments.
    The Commissioner will determine whether the entity that submitted 
the request is a federally recognized Native American tribe by 
consulting the list of Native American tribes maintained by the BIA.
    If an entity seeking recordal of its insignia wishes to demonstrate 
that it is a state-recognized Native American tribe rather than a 
federally recognized Native American tribe, that entity must provide 
the Commissioner with either: (1) A document issued by a state official 
that evidences the state's determination that the entity is a Native 
American tribe, or (2) a citation to a state statute designating the 
entity as a Native American tribe.
    The USPTO will begin to accept requests to record insignia one week 
after the publication of this notice.

Legal Significance of Recordal

    The recordal of an official insignia of a Native American tribe at 
the USPTO will not be the equivalent of registering that insignia as a 
trademark pursuant to 15 U.S.C. 1051 et seq. Thus, including an 
insignia in the USPTO's database will not create any legal presumption 
of validity or priority, and none of the benefits of federal trademark 
registration will accrue to a Native American tribe whose insignia is 
recorded pursuant to this notice.
    Acceptance of the insignia for recordal will not be a determination 
as

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to whether a particular insignia for which recordal has been requested 
would be refused registration as a trademark pursuant to 15 U.S.C. 1051 
et seq., or to some provision of Chapter 37 of the Code of Federal 
Regulations, or to any requirement of the USPTO.
    The USPTO will use the official insignia recorded by the USPTO as 
information useful in the examination of certain applications for 
registration of trademarks and as evidence of what a federally or 
state-recognized tribe considers to be its official insignia.
    The database of official insignia of Native American tribes will be 
included, for informational purposes, within the USPTO's database of 
material that is not registered but is searched to make determinations 
regarding the registrability of marks. This database is available at 
the USPTO's web site. Inclusion of official insignia in this database 
will ensure that an examining attorney, who is searching a mark that is 
confusingly similar to an official insignia will find and consider the 
official insignia before making a determination of registrability.
    For correspondence pertaining to the database of official insignia 
of Native American tribes, the Under Secretary of Commerce for 
Intellectual Property and Director of the United States Patent and 
Trademark Office has waived the requirement of 37 CFR 1.1 that all 
correspondence intended for the United States Patent and Trademark 
Office be mailed to one of the addresses identified in 37 CFR 1.1.
    The USPTO is in the process of requesting approval for 
establishment of the database under the Paperwork Reduction Act from 
the Office of Management and Budget.
    The USPTO has determined that the proposed establishment of the 
database has no federalism implications affecting the relationship 
between the National Government and the State as outlined in Executive 
Order 13132. The USPTO has further determined that the proposed 
establishment of the database has no tribal implications as described 
in Executive Order 13175.

FOR FURTHER INFORMATION CONTACT: Ari Leifman by telephone at (703) 308-
8900, or by mail addressed to: P.O. Box 16471, Arlington, Virginia, 
22215, or by facsimile to (703) 872-9285, marked to the attention of 
Ari Leifman.

    Dated: August 20, 2001.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 01-21479 Filed 8-23-01; 8:45 am]
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