[Federal Register Volume 72, Number 206 (Thursday, October 25, 2007)]
[Proposed Rules]
[Pages 60609-60611]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E7-21075]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2007-0035]
RIN 0651-AC17


Changes in the Requirement for a Description of the Mark in 
Trademark Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'') 
proposes to amend the Rules of Practice in Trademark Cases to require a 
description of the mark in all applications to register a mark not in 
standard characters.

DATES: Comments must be received by December 24, 2007 to ensure 
consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic 
mail message to TM Description [email protected]. Written comments 
may also be submitted by mail to Commissioner for Trademarks, P.O. Box 
1451, Alexandria, VA 22313-1451, attention Cynthia C. Lynch; or by hand 
delivery to the Trademark Assistance Center, Concourse Level, James 
Madison Building-East Wing, 600 Dulany Street, Alexandria, Virginia, 
attention Cynthia C. Lynch; or by

[[Page 60610]]

electronic mail message via the Federal eRulemaking Portal. See the 
Federal eRulemaking Portal Web site (http://www.regulations.gov) for 
additional instructions on providing comments via the Federal 
eRulemaking Portal.
    The comments will be available for public inspection on the 
Office's Web site at http://www.uspto.gov. and will also be available 
at the Office of the Commissioner for Trademarks, Madison East, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia.

FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy 
Commissioner for Trademark Examination Policy, by telephone at (571) 
272-8742.

SUPPLEMENTARY INFORMATION: The USPTO proposes to amend 37 CFR 2.37 to 
require trademark applicants to include a description of the mark for 
all marks not in standard characters and to make conforming amendments 
to 37 CFR 2.32(a) and 2.52(b)(5). The requirement will facilitate 
greater accuracy and efficiency in design coding and in pseudo-mark 
data determinations. Therefore, the revised rules will promote more 
accurate and complete searchability of marks in the USPTO records.
    The current rule regarding descriptions of marks provides that a 
description ``may be included in the application and must be included 
if required by the trademark examining attorney.'' 37 CFR 2.37. Because 
the USPTO has concluded that the description contributes to the 
accuracy of design coding and pseudo-mark determinations that are made 
before the application reaches the examining attorney, and ultimately 
to more complete searches, the USPTO proposes a rule change to 
facilitate initial design coding and to make available a description of 
the mark in all files where it is likely to be useful. Thus, any 
applicant whose mark is not in standard characters would be required to 
provide a description of the mark as an application requirement.
    Trademarks may consist of words, designs, or both. Both the USPTO 
and the public search USPTO trademark records for purposes of assessing 
likelihood of confusion with proposed trademarks. Words in trademarks 
generally can be searched directly. In contrast, designs in trademarks 
must be classified based on the elements they contain (e.g., stars or 
trees), so that they can be searched. In its electronic systems, the 
USPTO applies a coding system based on the Vienna Agreement 
Establishing an International Classification of the Figurative Elements 
of Marks. Codes established under the system are assigned to trademark 
applications that contain designs at the time they are filed. The 
design classification system used is unique to the USPTO, and is 
applied only to marks with design elements.
    Design coding of marks in new applications initially occurs before 
the applications are assigned to examining attorneys. When the mark in 
an application contains a design element, USPTO employees or 
contractors in the Pre-Examination section designate and apply the 
appropriate design codes for the mark. To improve searchability, the 
USPTO has also created a pseudo-mark field for some marks in the 
electronic database. The pseudo-mark field shows the literal equivalent 
of a pictorial representation in a design mark, or spellings that are 
similar or phonetically equivalent to wording in a word mark. The USPTO 
has engaged in a variety of efforts to improve the accuracy of its 
design code and pseudo-mark data, and continues to explore options for 
further improvement.
    The USPTO has determined that requiring the applicant to describe 
any design elements proves very useful for determining the proper 
design codes and pseudo-mark data. For example, the applicant's 
description of its design elements can clarify ambiguous design 
elements or ``double entendres'' created by design elements, and will 
help to ensure that the design coding and pseudo-mark determinations 
have been comprehensive.

Discussion of Specific Rules

    The Office proposes to revise 37 CFR 2.37 and to make conforming 
amendments to 37 CFR 2.32(a) and 2.52(b)(5). These rules concern 
descriptions of marks in trademark applications (37 CFR 2.37), the 
requirements for a complete application (37 CFR 2.32), and the 
requirements for drawings (37 CFR 2.52). Trademark Rule 2.37 currently 
provides that a description of the mark may be mandated by the 
trademark examining attorney. The proposed revisions make the inclusion 
of a description mandatory for all applications where the mark is not 
in standard characters. The remainder of Sec.  2.37 would not change, 
in that a description may be included for standard character mark 
applications, and must be included if the trademark examining attorney 
so requires. The conforming amendments make the inclusion of a 
description a requirement for a complete application and remove 
discretion from applicants as to whether a description is necessary for 
non-standard character marks.

Rulemaking Requirements

    Executive Order 13132: This rule 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 has been determined not to be 
significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    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), neither a regulatory flexibility analysis nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are 
required. See 5 U.S.C. 603.
    Paperwork Reduction Act: This notice involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collections of information involved in 
this notice have been reviewed and previously approved by OMB under OMB 
control numbers 0651-0009 and 0651-0050. This notice proposes to amend 
37 CFR 2.37 to require a description of the mark in all applications to 
register a mark not in standard characters. The USPTO is not 
resubmitting information collection packages to OMB for its review and 
approval because the changes in this proposed rule do not affect the 
information collection requirements associated with OMB control numbers 
0651-0009 and 0651-0050.
    The estimated annual reporting burden for OMB control number 0651-
0009 Applications for Trademark Registration is 253,801 responses and 
74,593 burden hours. The estimated time per response ranges from 15 to 
23 minutes, depending on the nature of the information. The time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information is included in 
the estimate. The collection is approved through September of 2008.
    The estimated annual reporting burden for OMB control number 0651-
0050 Electronic Response to Office Action and Preliminary Amendment 
Forms is 117,400 responses and 19,958 burden hours. The estimated time 
per response is 10 minutes. The time for reviewing instructions, 
gathering and maintaining the data needed, and completing and reviewing 
the collection of information is included in the estimate. The 
collection is approved through April of 2009.

[[Page 60611]]

    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, 
VA 22313-1451 (Attn: Cynthia C. Lynch), and to the Office of 
Information and Regulatory Affairs, Office of Management and Budget, 
New Executive Office Building, Room 10202, 725 17th Street, NW., 
Washington, DC 20503 (Attn: Desk Officer for the Patent and Trademark 
Office).
    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 stated, 37 CFR part 2 is proposed to be amended 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.  2.37 to read as follows:


Sec.  2.37  Description of mark.

    A description of the mark must be included if the mark is not in 
standard characters. In an application where the mark is in standard 
characters, a description may be included and must be included if 
required by the trademark examining attorney.
    3. Add Sec.  2.32(a)(8) to read as follows:


Sec.  2.32  Requirements for a complete application.

    (a) * * *
    (8) If the mark is not in standard characters, a description of the 
mark.
* * * * *
    4. Revise Sec.  2.52(b)(5) to read as follows:


Sec.  2.52  Types of drawings and format for drawings.

* * * * *
    (b) * * *
    (5) Description of mark. A description of the mark must be 
included.
* * * * *

    Dated: October 19, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. E7-21075 Filed 10-24-07; 8:45 am]
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