[Federal Register Volume 69, Number 160 (Thursday, August 19, 2004)]
[Rules and Regulations]
[Pages 51362-51364]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 04-19016]


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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: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'') is 
amending 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.

DATES: Effective September 20, 2004.

FOR FURTHER INFORMATION CONTACT: Cheryl Black, Office of the 
Commissioner for Trademarks, by telephone at (703) 308-8910, ext. 153; 
or by e-mail to [email protected].

SUPPLEMENTARY INFORMATION: A Notice of Proposed Rule Making was 
published in the Federal Register (68 FR 70482) on December 18, 2003. 
No public hearing was held. Two organizations, two law firms and two 
attorneys submitted written comments.
    The Office is amending its rules to eliminate the requirement that 
the original certificate of registration or a certified copy thereof 
accompany a request for amendment of a registration, a request for 
correction of a registration, or an application to surrender a 
registration for cancellation.
    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.

Requirement for Submission of Original Certificate of Registration or 
Certified Copy

    The Office is eliminating the requirement under Sec. Sec.  2.173, 
2.174, and 2.175(b) that a request for amendment or

[[Page 51363]]

correction of a registration under section 7 of the Trademark Act be 
accompanied by the original certificate of registration or a certified 
copy thereof. Under the current rules, the Office attaches an updated 
registration certificate showing the amendment or correction to the 
original certificate and returns it to the registrant. However, the 
Office believes that requiring the registrant to submit the original 
certificate or a certified copy for the purpose of physically attaching 
an updated registration certificate, only to return the original 
certificate (or certified copy thereof) to the owner of record is 
unnecessary and inefficient. Instead, 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 update its own records to show the 
amendment or correction and attach an updated registration certificate 
to the printed copy of the registration on file in the Office.
    The Office is also eliminating the requirement under Sec.  2.172, 
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. The requirement is unnecessary 
and inefficient. The Office will process a request for cancellation 
regardless of whether the original registration certificate accompanies 
the request. If the original certificate is submitted, the Office will 
destroy the certificate once the registration is cancelled.

One-Year Time Limit for Requests for Correction of Registrations

    The proposed amendment to Sec. Sec.  2.174 and 2.175 required 
registrants to file all requests for correction of a registration 
within one year after the date of registration, even where a mistake in 
a registration resulted from an Office error. This change in practice 
was proposed because granting requests to correct errors in 
registrations years after the date of registration caused confusion to 
examining attorneys and third parties who might have previously 
searched Office records and relied on information about existing 
registrations.
    Four comments stated that many of the mistakes go unnoticed for 
years after issuance and are not discovered until it is time to file an 
affidavit of use or excusable nonuse under Section 8 of the Trademark 
Act. In an example provided by one commenter, a registrant received an 
error-free registration certificate and years later after preparing an 
affidavit of use discovered an error on the registration in the 
Office's Trademark electronic database. Two comments stated that 
denying requests to correct errors in registrations after the one-year 
limit could result in the loss of substantive trademark rights and that 
maintaining a registration with inaccurate information could cause 
problems for registrants in establishing a complete chain of title, 
seeking foreign and international trademark rights, and protecting 
against trademark infringement. Accordingly, the Office has 
reconsidered this proposed change and at this time is not imposing a 
time limit for requests for corrections to registrations under 
Sec. Sec.  2.174 and 2.175. The benefits of providing accurate 
information about registrations in the records of the Office, 
protecting the rights of owners to seek correction of errors in 
registrations and avoiding possible loss of substantive trademark 
rights due to mistakes in the registration outweigh the concerns that 
would warrant a time limit on filing requests for corrections.

Discussion of Specific Rules

    The Office is amending Sec. Sec.  2.172, 2.173, 2.174, 2.175, and 
2.176.
    The Office is amending 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 is amending Sec.  2.173 to eliminate the requirement 
that the original certificate of registration or a certified copy 
thereof accompany a request for amendment of a trademark registration.
    The Office is amending Sec.  2.174 to eliminate the requirement 
that the original certificate of registration or a certified copy 
thereof accompany a request for correction of a mistake by the Office 
in a trademark registration pursuant to section 7(g) of the Trademark 
Act.
    The Office is amending Sec.  2.175 to eliminate the requirement 
that the original certificate of registration or a certified copy 
thereof accompany a request for correction of a mistake by a registrant 
in a trademark registration pursuant to section 7(g) of the Trademark 
Act.
    The Office is amending Sec.  2.176 to change ``Examiner of 
Trademarks'' to ``Post Registration Examiners.''

Rule Making Requirements

Regulatory Flexibility Act

    The changes in this final rule relate solely to the procedure to be 
followed in requesting an amendment or correction of a registration. 
Therefore, these rule changes involve interpretive rules, or rules of 
agency practice and procedure under 5 U.S.C. 553(b)(A), and prior 
notice and an opportunity for public comment were not required pursuant 
to 5 U.S.C. 553(b)(A) (or any other law). See 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 exempt from the Administrative Procedure Act's notice 
and comment requirement); 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 Administrative Procedure Act apply)); 
Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) (``it is 
doubtful whether any of the rules formulated to govern patent and 
trade-mark practice are other than `interpretative 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)).
    Nevertheless, the Office published a notice of proposed rule making 
in the Federal Register, 68 FR 70482 (Dec. 18, 2003), and in the 
Official Gazette of the United States Patent Office on January 13, 
2004, in order to solicit public participation with regard to this rule 
package. Pursuant to the notice of proposed rule making, the Deputy 
General Counsel for General Law of the United States Patent and 
Trademark Office certified to the Chief Counsel for Advocacy of the 
Small Business Administration under the provisions of section 605(b) of 
the Regulatory Flexibility Act that the proposed rule would not have a 
significant economic impact on a substantial number of small entities. 
No comments were received which referenced any impact the proposed 
rules would have on small entities.
    This final rule package does not impose any new fees on members of 
the public. In fact, because this final rule eliminates the requirement 
that registrants must submit the original certificate of registration 
or a certified copy thereof with a request for amendment, correction, 
or surrender of a registration, this final rule will lessen the 
financial burden on many registrants. In situations where a registrant 
does not have a certified copy of his or her own registration, the

[[Page 51364]]

registrant, whether a large or small entity, will no longer be required 
to pay fees to the USPTO to obtain a certified copy of his or her own 
registration.
    Accordingly, 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 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.


0
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 amends part 2 
of title 37 as follows:
0
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.


0
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. An 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).

0
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.
* * * * *

0
4. Revise Sec.  2.174 to read as follows:


Sec.  2.174  Correction of Office mistake.

    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.

0
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) An application for such action must:
    (1) 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;
    (2) Be signed by the registrant and verified or include a 
declaration in accordance with Sec.  2.20; and
    (3) Be accompanied by the required fee.
* * * * *

0
6. Revise 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 Examiners. If the action of the 
Examiner is adverse, registrant may petition the Director to review the 
action under Sec.  2.146. If the registrant does not respond to an 
adverse action of the Examiner within 6 months of the mailing date, the 
matter will be considered abandoned.

    Dated: August 13, 2004.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 04-19016 Filed 8-18-04; 8:45 am]
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