[Federal Register Volume 67, Number 250 (Monday, December 30, 2002)]
[Rules and Regulations]
[Pages 79520-79523]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-32801]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 1, 2 and 3

[Docket No. 2003-T-005]
RIN 0651-AB58


Correspondence With the United States Patent and Trademark Office

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule; Technical Corrections Act of 2002 Rules Change.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (``USPTO'') is 
revising its rules of practice to simplify the requirements for: (1) 
Filing an application for registration based on a foreign registration 
under 15 U.S.C. 1126(e); and (2) designation of a domestic 
representative by a party who is not domiciled in the United States. 
These changes implement the changes to the Trademark Act of 1946, 15 
U.S.C. 1051 et seq., made by the Technical Corrections in Trademark Law 
Act, title III, subtitle B, sec. 13207 of Pub. L. 107-273, 116 Stat. 
1758. The USPTO is also making some minor technical corrections to the 
rules of practice.

EFFECTIVE DATE: December 30, 2002.

FOR FURTHER INFORMATION CONTACT: Mary E. Hannon, Office of the 
Commissioner for Trademarks, by telephone at (703) 308-8910, extension 
137, by e-mail at [email protected], or by facsimile at (703) 872-
9280.

SUPPLEMENTARY INFORMATION: The Technical Corrections in Trademark Law 
Act of 2002, Pub. L. 107-273, 116 Stat. 1758 (``Technical Corrections 
Act''), amended section 44(e) of the Trademark Act, 15 U.S.C. 1126(e), 
to eliminate the requirement that a foreign applicant who seeks 
registration in the United States based on a registration in the 
applicant's home country (country of origin) submit a certification or 
certified copy of the foreign registration. As amended, section 44(e) 
requires that the applicant submit ``a true copy, a photocopy, a 
certification, or a certified copy of the registration in the country 
of origin of the applicant.''
    The Technical Corrections Act also amended sections 1(e), 8(f), 
9(c), and 10 of the Trademark Act, 15 U.S.C. 1051(e), 1058(f), 1059(c) 
and 1060, to eliminate the requirement that an applicant or registrant 
who is not domiciled in the United States designate the name and 
address of a person resident in the United States on whom may be served 
notices or process in proceedings affecting the mark (``domestic 
representative''). As amended, these sections provide that the 
applicant or registrant ``may'' designate a domestic representative, 
and that if the applicant or registrant does not designate a domestic 
representative (or if the person designated cannot be found at the 
address in the designation), then notices or process in proceedings 
affecting the mark may be served on the Director of the USPTO 
(``Director''). In other words, the designation of a domestic 
representative in trademark proceedings is now optional, not mandatory.
    The Technical Corrections Act is effective November 2, 2002.

Discussion of Specific Rules

    The USPTO is amending rules 1.4(d)(1)(iii)(A), 2.6(b)(8), 2.18, 
2.24, 2.33(b)(2), 2.34, 2.119(d), 2.161(h), 2.183, 3.31(a), and 3.61.
    Section 1.4(d)(1)(iii)(A) is amended to delete the requirement that 
a party who signs a trademark document electronically print, sign, date 
and maintain a paper copy of the electronic submission. It is 
burdensome and inefficient for parties who file electronically to 
maintain both paper and electronic records of the filings. Paper 
records are unnecessary because electronic records would be sufficient 
proof of filing if a document filed electronically were to become lost 
within the USPTO.
    Section 2.6(b)(8) is amended to delete ``T-Search'' in both places 
in which it appears, and substitute ``X-Search.'' This merely updates 
the references to the USPTO's electronic search system.
    Section 2.18 is amended to provide that if an applicant, registrant 
or party to a proceeding who does not reside in the United States has 
not appointed a domestic representative and the application or 
proceeding is not being prosecuted by an attorney, the USPTO will send 
correspondence directly to the applicant, registrant or party, unless 
the applicant, registrant or party has designated a different address 
to which correspondence should be sent. The rule previously stated that 
the USPTO would send correspondence to the domestic representative 
unless the application was being prosecuted by an attorney, in which 
case the USPTO would send correspondence to the attorney. The amendment 
is necessary because designation of a domestic representative is no 
longer mandatory.
    Section 2.24 is amended to provide that an applicant not residing 
in the United States may designate a domestic representative, and that 
if the applicant does not designate a domestic representative (or if 
the person designated cannot be found at the address given in the 
designation), then notices or process in proceedings affecting the mark 
may be served on the Director of the USPTO. This incorporates the 
amendment of 15 U.S.C. 1051(e), and 1060.
    Section 2.33(b)(2) is amended to require that an application under 
15 U.S.C. 1051(b) or 15 U.S.C. 1126 include an allegation that the 
applicant believes it is entitled to use the mark ``in commerce''. This 
corrects an oversight in the rule (which previously omitted the 
language ``in commerce''), and makes it consistent with 15 U.S.C. 
1051(b)(3)(A), which requires an allegation that the applicant believes 
itself ``to be entitled to use the mark in commerce''. This amendment 
does not change current practice.
    Section 2.34(a)(2)(i) is amended to provide that in an application 
based on the applicant's bona fide intention to use the mark in 
commerce under 15 U.S.C. 1051(b), the ``applicant'' must verify that it 
has a bona fide intention to use the mark in commerce on or in 
connection with the goods or services listed in the application. The 
rule previously required verification by the ``trademark owner'', but 
this was inconsistent with 15 U.S.C. 1051(b)(3), which requires 
verification by the ``applicant''. An intent-to-use applicant who has 
not yet used a mark in commerce is not the ``owner'' of the mark. This 
amendment does not change current practice.
    Section 2.34(a)(3)(i) is amended to provide that in an application 
based on registration of a mark in a foreign applicant's country of 
origin under 15 U.S.C. 1126(e), the ``applicant'' must verify that it 
has a bona fide intention to use the mark in commerce on or in 
connection with the goods or services listed in the application. The 
rule

[[Page 79521]]

previously required verification by the ``trademark owner''. This 
amendment is consistent with Sec.  2.33 and does not change current 
practice.
    Section 2.34(a)(3)(ii) is amended to provide that an application 
for registration of a mark based on a foreign registration under 15 
U.S.C. 1126(e) must include a ``true copy, photocopy, certification, or 
certified copy'' of a registration in the applicant's country of 
origin. This incorporates the amendment of 15 U.S.C. 1126(e), which now 
permits submission of a photocopy of a foreign registration. 
Previously, the rule required a certification or certified copy of the 
foreign registration.
    Section 2.34(a)(3)(iii) is amended to provide that in an 
application for registration of a mark based on a foreign registration 
under 15 U.S.C. 1126(e), if the record indicates that the foreign 
registration will expire before the United States registration will 
issue, the applicant must submit a true copy, photocopy, certification, 
or certified copy from the country of origin showing that the foreign 
registration has been renewed and is still in force. This incorporates 
the amendment of 15 U.S.C. 1126(e). Previously, the rule required a 
certification or certified copy showing that the foreign registration 
had been renewed.
    Section 2.34(a)(4)(ii) is amended to provide that in an application 
based on an earlier-filed foreign application under 15 U.S.C. 1126(d), 
the ``applicant'' must verify that it has a bona fide intention to use 
the mark in commerce on or in connection with the goods or services 
listed in the application. The rule previously required verification by 
the ``trademark owner.'' This amendment is consistent with Sec.  2.33 
and does not change current practice.
    Section 2.119(d) is amended to provide that if a party to an inter 
partes proceeding who does not reside in the United States has 
appointed a domestic representative, the USPTO will send correspondence 
to the domestic representative unless the proceeding is being 
prosecuted by an attorney at law, in which case the USPTO will send 
correspondence to the attorney; and that if the party has not appointed 
a domestic representative and the proceeding is not being prosecuted by 
an attorney, the USPTO will send correspondence directly to the party. 
The rule previously stated that the USPTO would send correspondence to 
the domestic representative unless the application was being prosecuted 
by an attorney, in which case the USPTO would send correspondence to 
the attorney. The amendment is necessary because designation of a 
domestic representative is no longer mandatory.
    Section 2.161 is amended by deleting paragraph (h), which required 
that an affidavit of continued use or excusable nonuse under 15 U.S.C. 
1058 include a designation of domestic representative if the registrant 
is not domiciled in the United States. This incorporates the amendment 
of 15 U.S.C. 1058(f), which makes the designation of domestic 
representative optional.
    Section 2.183 is amended by deleting paragraph (d), which required 
that a renewal application under 15 U.S.C. 1059 include a designation 
of domestic representative if the registrant is not domiciled in the 
United States, and by redesignating paragraphs (e) and (f) as 
paragraphs (d) and (e). This incorporates the amendment of 15 U.S.C. 
1059(c), which makes the designation of domestic representative 
optional.
    Section 3.31 is amended by deleting paragraph (a)(7), which 
required that a trademark cover sheet under Sec.  3.28 include an 
indication that an assignee who is not domiciled in the United States 
had designated a domestic representative, and by redesignating 
paragraph (a)(8) as paragraph (a)(7). This incorporates the amendment 
of 15 U.S.C. 1060, which makes the designation of domestic 
representative optional.
    Section 3.61 is amended to provide that the assignee of a trademark 
application or registration who does not reside in the United States 
``may'' designate a domestic representative. This incorporates the 
amendment of 15 U.S.C. 1060. The rule previously provided that an 
assignee who does not reside in the United States ``must'' designate a 
domestic representative.

Administrative Procedure Act

    This final rule merely involves rules of agency practice and 
procedure within the meaning of 5 U.S.C. 553(b)(A), as the amendments 
merely incorporate changes to the statute enacted by the Technical 
Corrections Act, Public Law 107-273, 116 Stat. 1758, which simplify or 
eliminate existing procedural requirements. Therefore, this final rule 
may be adopted without prior notice and opportunity for public comment 
under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under 
5 U.S.C. 553(d).

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), a regulatory 
flexibility analysis under the Regulatory Flexibility Act (5 U.S.C. 601 
et seq.) is not required. See 5 U.S.C. 603 and 604.

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 making does not create any information collection 
requirements under the Paperwork Reduction Act (PRA) of 1995 (44 U.S.C. 
3501 et seq.); however, this rule making does contain information 
collection requirements subject to the PRA. This final rule eliminates 
the requirement to maintain a paper copy of an application that has 
been filed electronically. This rule also eliminates the requirement 
that applicants or registrants who are not domiciled in the United 
States must designate the name and address of a person resident in the 
United States on whom may be served notice or process in proceedings 
affecting the mark (``domestic representative''). The designation of a 
domestic representative is now an optional requirement. These 
requirements have been previously submitted to OMB for review and 
approval under OMB Control Number 0651-0009. The USPTO will update 
0651-0009 to reflect the change in the record keeping requirements 
associated with the amendment of section 1.4(d)(1)(iii)(A) and any 
possible burden changes associated with the optional designation of a 
domestic representative. The public reporting burden for these 
requirements averages three minutes, including the time for reviewing 
instructions and gathering the information. Send comments regarding 
this burden estimate to Mary E. Hannon, Office of the Commissioner for 
Trademarks, by telephone at (703) 308-8910, extension 137, by e-mail at 
[email protected], or by facsimile at (703) 872-9280 or to the OMB 
Office of Information and Regulatory Affairs, New Executive Office 
Bldg., 725 17th Street, NW., Washington, DC 20230 (Attn: USPTO Desk 
Officer).
    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

[[Page 79522]]

information displays a currently valid OMB control number.

List of Subjects

37 CFR Part 1

    Administrative practice and procedure, Trademarks.

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 3

    Administrative practice and procedure, Trademarks, Assignments.

    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 USPTO is 
amending parts 1, 2 and 3 of title 37 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

    2. Amend Sec.  1.4 by revising paragraph (d)(1)(iii)(A) to read as 
follows:


Sec.  1.4  Nature of correspondence and signature requirements.

* * * * *
    (d) * * *
    (1) * * *
    (iii) * * *
    (A) Place a symbol comprised of numbers and/or letters between two 
forward slash marks in the signature block on the electronic 
submission; or
* * * * *

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    3. 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.


    4. Amend Sec.  2.6 by revising paragraph (b)(8) to read as follows:


Sec.  2.6  Trademark fees.

* * * * *
    (b) * * *
    (8) Marginal cost, paid in advance, for each hour of terminal 
session time, including print time, using X-Search capabilities, 
prorated for the actual time used. The Director may waive the payment 
by an individual for access to X-Search upon a showing of need or 
hardship, and if such waiver is in the public interest $40.00
* * * * *

    5. Revise Sec.  2.18 to read as follows:


Sec.  2.18  Correspondence, with whom held.

    If papers are transmitted by an attorney at law, or a written power 
of attorney is filed, the United States Patent and Trademark Office 
will send correspondence to the attorney at law transmitting the 
papers, or to the attorney at law designated in the power of attorney. 
If an application or proceeding is not being prosecuted by an attorney 
at law, and the applicant, registrant or party to a proceeding before 
the Office has appointed a domestic representative, the Office will 
send correspondence to the domestic representative, unless the 
applicant, registrant or party designates in writing another address to 
which correspondence is to be sent. If the application or proceeding is 
not being prosecuted by an attorney and the applicant, registrant or 
party has not designated a domestic representative, the Office will 
send correspondence directly to the applicant, registrant or party, 
unless the applicant, registrant or party designates in writing another 
address to which correspondence is to be sent. Correspondence will 
continue to be sent to such address until the applicant, registrant or 
party, or the attorney or other authorized representative of the 
applicant, registrant or party, indicates in writing that 
correspondence is to be sent to another address. The Office will not 
undertake double correspondence, and if more than one attorney at law 
or other authorized representative appears or signs a paper, the 
Office's reply will be sent to the address already established in the 
record until another correspondence address is specified by the 
applicant, registrant or party or by the attorney or other authorized 
representative of the applicant, registrant or party.

    6. Revise Sec.  2.24 and its heading to read as follows:


Sec.  2.24  Designation of domestic representative by foreign 
applicant.

    If an applicant is not domiciled in the United States, the 
applicant may designate by a document filed in the United States Patent 
and Trademark Office the name and address of some person resident in 
the United States on whom may be served notices or process in 
proceedings affecting the mark. If the applicant does not file a 
document designating the name and address of a person resident in the 
United States on whom may be served notices or process in proceedings 
affecting the mark, or if the last person designated cannot be found at 
the address given in the designation, then notices or process in 
proceedings affecting the mark may be served on the Director. The mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the application unless qualified under 
paragraph (a), (b) or (c) of Sec.  10.14 of this subchapter and 
authorized under Sec.  2.17(b).

    7. Amend Sec.  2.33 by revising paragraph (b)(2) to read as 
follows:


Sec.  2.33  Verified statement.

* * * * *
    (b) * * *
    (2) In an application under section 1(b) or section 44 of the Act, 
the verified statement must allege:
    That the applicant has a bona fide intention to use the mark shown 
in the accompanying drawing in commerce on or in connection with the 
specified goods or services; that the applicant believes it is entitled 
to use the mark in commerce; that to the best of the declarant's 
knowledge and belief, no other person has the right to use the mark in 
commerce, either in the identical form or in such near resemblance as 
to be likely, when applied to the goods or services of the other 
person, to cause confusion or mistake, or to deceive; and that the 
facts set forth in the application are true.
* * * * *

    8. Amend Sec.  2.34 by revising paragraphs (a)(2)(i), (a)(3)(i), 
(a)(3)(ii), (a)(3)(iii), and (a)(4)(ii) to read as follows:


Sec.  2.34  Bases for filing.

    (a) * * *
    (2) * * *
    (i) In an application under section 1(b) of the Act, the applicant 
must verify that it has a bona fide intention to use the mark in 
commerce on or in connection with the goods or services listed in the 
application. If the verification is not filed with the initial 
application, the verified statement must allege that the applicant had 
a bona fide intention to use the mark in commerce as of the filing date 
of the application.
* * * * *
    (3) * * *
    (i) The applicant's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the 
goods or services listed in the application. If the verification is not 
filed with the initial application, the verified statement must allege 
that the applicant had a bona fide intention to use the mark in 
commerce as of the filing date of the application.
    (ii) A true copy, a photocopy, a certification, or a certified copy 
of a registration in the applicant's country of origin showing that the 
mark has been

[[Page 79523]]

registered in that country, and that the registration is in full force 
and effect. The certification or copy of the foreign registration must 
show the name of the owner, the mark, and the goods or services for 
which the mark is registered. If the foreign registration is not in the 
English language, the applicant must submit a translation.
    (iii) If the record indicates that the foreign registration will 
expire before the United States registration will issue, the applicant 
must submit a true copy, a photocopy, a certification, or a certified 
copy from the country of origin to establish that the foreign 
registration has been renewed and will be in force at the time the 
United States registration will issue. If the foreign registration is 
not in the English language, the applicant must submit a translation.
* * * * *
    (4) * * *
    (ii) The applicant's verified statement that it has a bona fide 
intention to use the mark in commerce on or in connection with the 
goods or services listed in the application. If the verification is not 
filed with the initial application, the verified statement must allege 
that the applicant had a bona fide intention to use the mark in 
commerce as of the filing date of the application.
* * * * *

    9. Amend Sec.  2.119 by revising paragraph (d) to read as follows:


Sec.  2.119  Service and signing of papers.

* * * * *
    (d) If a party to an inter partes proceeding is not domiciled in 
the United States and is not represented by an attorney or other 
authorized representative located in the United States, the party may 
designate by document filed in the United States Patent and Trademark 
Office the name and address of a person resident in the United States 
on whom may be served notices or process in the proceeding. If the 
party has appointed a domestic representative, official communications 
of the United States Patent and Trademark Office will be addressed to 
the domestic representative unless the proceeding is being prosecuted 
by an attorney at law or other qualified person duly authorized under 
Sec.  10.14(c) of this subchapter. If the party has not appointed a 
domestic representative and the proceeding is not being prosecuted by 
an attorney at law or other qualified person, the Office will send 
correspondence directly to the party, unless the party designates in 
writing another address to which correspondence is to be sent. The mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the proceeding unless qualified under Sec.  
10.14(a), or qualified under Sec.  10.14(b) and authorized under Sec.  
2.17(b).
* * * * *

    10. Amend Sec.  2.161 by removing paragraph (h), and by revising 
paragraph (g)(2) to read as follows:
* * * * *
    (g) * * *
    (2) Be flat and no larger than 8\1/2\ inches (21.6 cm.) wide by 
11.69 inches (29.7 cm.) long. If a specimen exceeds these size 
requirements (a ``bulky specimen''), the Office will create a facsimile 
of the specimen that meets the requirements of the rule (i.e., is flat 
and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7 
cm.) long) and put it in the file wrapper.

    11. Amend Sec.  2.183 by removing paragraph (d); and redesignating 
paragraphs (e) and (f) as (d) and (e).

PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE

    12. The authority citation for 37 CFR part 3 continues to read as 
follows:

    Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).


    13. Amend Sec.  3.31 by removing paragraph (a)(7) and redesignating 
paragraph (a)(8) as paragraph (a)(7).

    14. Revise Sec.  3.61 to read as follows:


Sec.  3.61  Domestic representative.

    If the assignee of a patent, patent application, trademark 
application or trademark registration is not domiciled in the United 
States, the assignee may designate a domestic representative in a 
document filed in the United States Patent and Trademark Office. The 
designation should state the name and address of a person residing 
within the United States on whom may be served process or notice of 
proceedings affecting the application, patent or registration or rights 
thereunder.

    Dated: December 20, 2002.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 02-32801 Filed 12-27-02; 8:45 am]
BILLING CODE 3510-16-P