[Federal Register Volume 68, Number 243 (Thursday, December 18, 2003)]
[Proposed Rules]
[Pages 70482-70484]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 03-31094]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No. 2003-T-023]
RIN 0651-AB67


Changes in the Requirements for Amendment and Correction of 
Trademark Registrations

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Proposed rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'') 
proposes to amend its rules to eliminate the requirement that a request 
for amendment or correction of a registration be accompanied by the 
original certificate of registration or a certified copy thereof, and 
the requirement that an application to surrender a registration for 
cancellation be accompanied by the original certificate or a certified 
copy; and add a requirement that a request for correction of a mistake 
in a registration be filed within one year of the date of registration.

DATES: To be ensured of consideration, written comments must be 
received on or before February 2, 2004. No public hearing will be held.

ADDRESSES: The Office prefers that all comments be sent by electronic 
mail to [email protected]. Written comments may also be 
submitted by mail or hand delivery to: Commissioner for Trademarks, 
2900 Crystal Drive, Arlington, VA 22202-3514, attention Mary Hannon. 
Copies of all comments will be available for public inspection in Suite 
10B10, South Tower Building, 10th floor, 2900 Crystal Drive, Arlington, 
Virginia 22202-3514, from 8:30 a.m. until 5 p.m., Monday through 
Friday.

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

SUPPLEMENTARY INFORMATION: The Office proposes to amend its rules to 
(1) eliminate the requirement that a request for amendment or 
correction of a registration be accompanied by the original certificate 
of registration or a certified copy thereof, and the requirement that 
an application to surrender a registration for cancellation be 
accompanied by the original certificate or a certified copy; and (2) 
add a requirement that a request for correction of a mistake in a 
registration be filed within one year of the date of registration.
    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.

One Year Time Limit for Requests for Correction of Registrations

    Currently, there is no time limit set forth in Sec. Sec.  2.174 and 
2.175 for filing a request for correction of a mistake in a 
registration under section 7(g) or 7(h) of the Trademark Act. Some 
registrants have filed requests to correct an error in a mark years 
after the date of registration. Granting these requests is harmful to 
examining attorneys and third parties who search Office records, 
because they do not have accurate information about existing 
registrations. Therefore, the Office proposes to amend Sec. Sec.  2.174 
and 2.175 to require that all requests for correction of a registration 
be filed within one year after the date of registration, even where a 
mistake in

[[Page 70483]]

a registration resulted from an Office error.
    Applicants and registrants are advised to carefully review notices 
of publication, notices of allowance, and certificates of registration 
to ensure that the data is correct, so that any necessary requests for 
correction can be filed within one year of the date of registration.

Requirement For Submission of Original Certificate of Registration or 
Certified Copy

    Currently, Sec.  2.172 requires that an application for surrender 
of a registration for cancellation under section 7 of the Trademark Act 
be accompanied by the original certificate, if not lost or destroyed. 
If the original certificate is submitted, the Office will destroy the 
certificate once the registration is cancelled. If the original 
certificate does not accompany the request, the Office assumes that the 
certificate is lost or destroyed, and processes the request for 
cancellation.
    Sections 2.173, 2.174, and 2.175(b) currently require that a 
request for amendment or correction of a registration under section 7 
of the Trademark Act be accompanied by the original certificate of 
registration or a certified copy thereof. The Office amends or corrects 
the registration by attaching an updated registration certificate, 
showing the amendment or correction, to the original certificate of 
registration and to the printed copies of the registration in the 
Office. See 37 CFR 2.173(c), 2.174 and 2.175(c). The Office returns the 
original registration certificate, or certified copy thereof, with the 
updated registration certificate attached, to the owner of record. TMEP 
Sec. Sec.  1609.01 and 1609.09.
    The Office believes that requiring the registrant to submit the 
original certificate or a certified copy is unnecessary and 
inefficient. The Office proposes to eliminate this requirement. When 
amending or correcting a registration, the Office will send the updated 
registration certificate showing the amendment or correction to the 
registrant, and instruct the registrant to attach it to the certificate 
of registration. The Office will also update its own records to show 
the amendment or correction. The Office will send an updated 
registration certificate to the owner of record.

Discussion of Specific Rules

    The Office proposes to amend Sec. Sec.  2.172, 2.173, 2.174, 2.175, 
and 2.176.
    The Office proposes to amend Sec.  2.172 to eliminate the 
requirement that an application to surrender a trademark registration 
for cancellation be accompanied by the original certificate of 
registration.
    The Office proposes to amend Sec.  2.173 to eliminate the 
requirement that a request for amendment of a trademark registration be 
accompanied by the original certificate of registration or a certified 
copy thereof.
    The Office proposes to amend Sec.  2.174 to: (1) Eliminate the 
requirement that a request for correction of a mistake by the Office in 
a trademark registration pursuant to section 7(g) of the Trademark Act 
be accompanied by the original certificate of registration or a 
certified copy thereof; and (2) add a requirement that a request for 
correction of a mistake by the Office be filed within one year of the 
date of registration.
    The Office proposes to amend Sec.  2.175 to: (1) Eliminate the 
requirement that a request for correction of a mistake by a registrant 
in a trademark registration pursuant to section 7(g) of the Trademark 
Act be accompanied by the original certificate of registration or a 
certified copy thereof; and (2) add a requirement that a request for 
correction of a mistake by a registrant be filed within one year of the 
date of registration.
    The Office proposes to amend Sec.  2.176 to change ``Examiner of 
Trademarks'' to ``Post Registration Examiner.''

Rule Making Requirements

Regulatory Flexibility Act

    The Deputy General Counsel for General Law of the United States 
Patent and Trademark Office has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that the proposed rule 
changes will not have a significant impact on a substantial number of 
small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).

Executive Order 13132

    This rule making does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

    This rule making has been determined not to be significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).

Paperwork Reduction Act

    This rule contains no new information collection or recordkeeping 
requirements under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 
et seq.). Existing collections of information and recordkeeping 
requirements have been reviewed and approved by OMB under OMB Control 
Number 0651-0009, Trademark Processing. Notwithstanding any other 
provision of law, no person is required to respond to nor shall a 
person be subject to a penalty for failure to comply with a collection 
of information subject to the requirements of the Paperwork Reduction 
Act unless that collection of information displays a currently valid 
OMB control number.

List of Subjects in 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

    For the reasons given in the preamble and under the authority 
contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office 
proposes to amend part 2 of title 37 as follows:

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 Sec.  2.172 to read as follows:


Sec.  2.172  Surrender for cancellation.

    Upon application by the registrant, the Director may permit any 
registration to be surrendered for cancellation. Application for 
surrender must be signed by the registrant. When there is more than one 
class in a registration, one or more entire class(es) but less than the 
total number of classes may be surrendered. Deletion of less than all 
of the goods or services in a single class constitutes amendment of 
registration as to that class (see Sec.  2.173).
    3. Amend Sec.  2.173 by revising paragraph (a) to read as follows:


Sec.  2.173  Amendment of registration.

    (a) A registrant may apply to amend a registration or to disclaim 
part of the mark in the registration. The registrant must submit a 
written request specifying the amendment or disclaimer. This request 
must be signed by the registrant and verified or supported by a 
declaration under Sec.  2.20, and accompanied by the required fee. If 
the amendment involves a change in the mark, the registrant must submit 
a new specimen showing the mark as used on or in connection with the 
goods or services, and a new drawing of the amended mark. The 
registration as amended must still contain registrable matter, and the 
mark as amended must be registrable as a whole. An amendment or 
disclaimer must not materially alter the character of the mark.
* * * * *

[[Page 70484]]

    4. Revise Sec.  2.174 to read as follows:


Sec.  2.174  Correction of Office mistake.

    (a) Whenever a material mistake in a registration, incurred through 
the fault of the United States Patent and Trademark Office, is clearly 
disclosed by the records of the Office, a certificate of correction 
stating the fact and nature of the mistake, signed by the Director or 
by an employee designated by the Director, shall be issued without 
charge and recorded. A printed copy of the certificate of correction 
shall be attached to each printed copy of the registration certificate. 
Thereafter, the corrected certificate shall have the same effect as if 
it had been originally issued in the corrected form. In the discretion 
of the Director the Office may issue a new certificate of registration 
without charge.
    (b) A request for correction of an Office error in a registration 
must be filed within one year after the date of registration.
    5. Amend Sec.  2.175 by revising paragraphs (a) and (b) to read as 
follows:


Sec.  2.175  Correction of mistake by registrant.

    (a) Whenever a mistake has been made in a registration and a 
showing has been made that the mistake occurred in good faith through 
the fault of the registrant, the Director may issue a certificate of 
correction. In the discretion of the Director, the Office may issue a 
new certificate upon payment of the required fee, provided that the 
correction does not involve such changes in the registration as to 
require republication of the mark.
    (b) Application for such action must:
    (1) Be filed within one year after the date of registration;
    (2) Include the following:
    (i) Specification of the mistake for which correction is sought;
    (ii) Description of the manner in which it arose; and
    (iii) A showing that it occurred in good faith;
    (3) Be signed by the registrant and verified or include a 
declaration in accordance with Sec.  2.20; and
    (4) Be accompanied by the required fee.
* * * * *
    6. Amend Sec.  2.176 to read as follows:


Sec.  2.176  Consideration of above matters.

    The matters in Sec. Sec.  2.171 to 2.175 will be considered in the 
first instance by the Post Registration Examiner. If the action of the 
Examiner is adverse, registrant may request the Director to review the 
action under Sec.  2.146. If the registrant does not respond to an 
adverse action of the Examiner within six months of the mailing date, 
the matter will be considered abandoned.

    Dated: December 9, 2003.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of 
the Patent and Trademark Office.
[FR Doc. 03-31094 Filed 12-17-03; 8:45 am]
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