[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.
* * * * *
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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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