[Federal Register Volume 73, Number 41 (Friday, February 29, 2008)]
[Proposed Rules]
[Pages 11079-11081]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E8-3929]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2007-0051]
RIN 0651-AC18


Changes in Rules Regarding Filing Trademark Correspondence by 
Express Mail or Under a Certificate of Mailing or Transmission

AGENCY: United States Patent and Trademark Office, Commerce.

ACTIONS: Proposed rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'') 
proposes to amend the Trademark Rules of Practice to provide that the 
procedures for filing trademark correspondence by Express Mail or under 
a certificate of mailing or transmission do not apply to certain 
specified documents for which an electronic form is available in the 
Trademark Electronic Application System (``TEAS''). The purpose of the 
rule change is to promote electronic filing, increase efficiency, and 
improve the quality and integrity of critical data in the Office's 
automated systems.

DATES: Comments must be received by April 29, 2008 to ensure 
consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic 
mail message to [email protected]. Written comments may also be 
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Mary Hannon; by hand delivery to 
the Trademark Assistance Center, Concourse Level, James Madison 
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention 
Mary Hannon; or by 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 Mary Hannon, Office of the 
Commissioner for Trademarks, by telephone at (571) 272-9569.

SUPPLEMENTARY INFORMATION: 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. References to ``TMEP'' or 
``Trademark Manual of Examining Procedure'' refer to the 5th edition, 
September 2007.

Express Mail Procedure

    Section 2.198 of the Trademark Rules of Practice provides a 
procedure for obtaining a filing date as of the date that 
correspondence is deposited with the United States Postal Service 
(``USPS'') as ``Express Mail.'' Currently, Sec.  2.198(a)(1) provides 
that the Express Mail procedure does not apply to the following 
documents for which an electronic form is available in TEAS: 
applications for registration of marks; amendments to allege use under 
section 1(c) of the Trademark Act; statements of use under section 1(d) 
of the Act; requests for extension of time to file a statement of use 
under section 1(d) of the Act; affidavits or declarations of use under 
section 8 of the Act; renewal applications under section 9 of the Act; 
and requests to change or correct addresses. If any of these documents 
are filed by Express Mail, they are given a filing date as of the date 
of receipt in the Office (Eastern time) rather than the date of deposit 
with the USPS. These exclusions have been in effect since June 24, 
2002. See notice at 67 FR 36099 (May 23, 2002). The Express Mail 
procedure also does not apply to responses to notices of irregularity 
under Sec.  7.14 and requests for transformation under Sec.  7.31, 
pursuant to Sec.  7.4(b)(2).
    The Office proposes to amend Sec.  2.198(a)(1) to add exclusions 
for the following additional documents for which a form is available in 
TEAS: Preliminary amendments; responses to examining attorneys' Office 
actions; requests for reconsideration after final action; responses to 
suspension inquiries or letters of suspension; petitions to revive 
abandoned applications under 37 CFR 2.66; requests for express 
abandonment of applications; affidavits or declarations of 
incontestability under section 15 of the Act; requests for amendment of 
registrations under section 7(e) of the Act; requests for correction of 
applicants' mistakes under section 7(h) of the Act; Madrid-related 
correspondence filed under Sec.  7.11, Sec.  7.14, Sec.  7.21, Sec.  
7.28 or Sec.  7.31; appointments or revocations of attorney or domestic 
representative; and notices of withdrawal of attorney.
    The Office further proposes to amend Sec.  7.4 to provide that 
international applications under Sec.  7.11 and subsequent designations 
under Sec.  7.21, when filed by mail, will be accorded a filing date as 
of the date of receipt in the Office (Eastern time) rather than the 
date of deposit as Express Mail.

Certificate of Mailing or Transmission Procedure

     Under 37 CFR 2.197, a ``certificate of mailing or transmission'' 
procedure exists to avoid lateness due to mail delay. Correspondence is 
given a filing date as of the date of receipt in the Office, but is 
considered to be timely even if received after the due date, if the 
correspondence was: (1) Deposited with the USPS as first class mail or 
transmitted to the Office by facsimile transmission on or before the 
due date; and (2) accompanied by a certificate attesting to the date of 
deposit or transmission. Currently, this procedure may be used for all 
trademark correspondence except applications for

[[Page 11080]]

registration of marks and correspondence related to the Madrid Protocol 
under Sec. Sec.  7.11, 7.14, 7.21, 7.23, 7.24 and 7.31. In limited 
circumstances, certificates of transmission by electronic mail are 
permissible. See Trademark Manual of Examining Procedure (``TMEP'') 
sections 304.01 and 304.02 regarding the types of trademark 
correspondence that can be filed by e-mail.
    The Office proposes to amend Sec.  2.197(a)(2) to provide that the 
certificate of mailing and certificate of transmission procedures do 
not apply to the following documents for which an electronic form is 
available in TEAS: Amendments to allege use; statements of use; 
requests for extension of time to file a statement of use; preliminary 
amendments; responses to examining attorneys' Office actions; requests 
for reconsideration after final action; responses to suspension 
inquiries or letters of suspension; petitions to revive abandoned 
applications under 37 CFR 2.66; requests for express abandonment of 
applications; affidavits or declarations of use under section 8 of the 
Act; renewal applications under section 9 of the Act; affidavits or 
declarations of incontestability under section 15 of the Act; requests 
for amendment of registrations under section 7(e) of the Act; requests 
for correction of applicants' mistakes under section 7(h) of the Act; 
appointments or revocations of attorney or domestic representative; 
notices of withdrawal of attorney; and requests to change or correct 
addresses.

Benefits of Proposed Change

     The certificate of mailing, certificate of transmission, and 
Express Mail procedures were created to respond to public concern about 
the loss of filing dates due to mail delays or loss of documents within 
the Office. These procedures are no longer necessary because electronic 
filing provides a better alternative.
    Applicants, registrants, and their attorneys can ensure a ``date 
certain'' for a document by filing through TEAS, which is available 24 
hours a day, 7 days a week. Under Sec.  2.195(a)(2), correspondence 
filed via TEAS is considered to have been filed on the date that the 
Office receives a complete transmission of the correspondence, 
regardless of whether that date is a Saturday, Sunday, or a Federal 
holiday within the District of Columbia.
    Unlike Express Mail and certificates of mailing/transmission, TEAS 
assures filers that the Office actually received the document 
submitted. When a document is filed electronically, the Office receives 
it within seconds after filing, and TEAS almost immediately displays a 
``Success'' page confirming receipt, which may be printed or copied and 
pasted into an electronic record for storage. This page provides the 
filer with evidence of filing should any question ever arise as to the 
filing date of the document. If the ``Success'' page does not appear 
within seconds, then the filing was not completed successfully. Thus, 
no doubt exists as to whether a document was transmitted successfully. 
TEAS also sends a separate e-mail acknowledgment of receipt that 
includes a summary of the filed information and general processing 
information.
    TEAS documents are extremely unlikely to be lost or misplaced 
within the Office. Electronic filing creates an automatic entry of 
receipt of the filing into the Office's automated system, which 
prevents improper abandonment or cancellation due to delays in matching 
papers with files. The Office has experienced very few situations in 
which parties claim that electronically filed documents have been lost. 
In fact, in almost all instances in which parties have claimed that 
electronically filed documents have been lost, the Office has later 
determined that although the party successfully validated the intended 
filing, the party never successfully completed the actual electronic 
transmission process and never got a ``Success'' page.
    When a document is filed electronically, the data provided by the 
applicant is transferred directly into the Office's databases, so very 
few, if any, data entry errors arise. This assures customers that their 
application/registration files are complete; and improves the quality, 
accuracy and completeness of the information available to the public in 
Office databases.
    Because electronic filing eliminates delays caused by mailing, 
manual data capture and paper processing, TEAS documents are processed 
more quickly and entered into the automated systems (and therefore made 
available to Office employees and members of the public who search 
Office records for conflicting marks) sooner than their paper 
counterparts. This increases efficiency, reduces pendency, and enables 
the Office to provide a higher level of customer service to all 
applicants and registrants. Electronic filing provides a level of 
consistency, accuracy, and predictability that a paper-based process 
cannot.
    In those rare situations when TEAS is unavailable due to technical 
problems, mechanisms are in place to obtain a filing date as of the 
date of the attempted filing. The filer may provide evidence that the 
filing was attempted through TEAS but TEAS was unavailable due to 
technical problems, such as a computer screen printout showing receipt 
of a ``Fatal Error--Access Denied'' error message, or a copy of an e-
mail message from the TEAS Help Desk stating that the TEAS application 
forms were temporarily unavailable. See TMEP sections 1711, 1712.01 and 
1712.02.

Rule Making Requirements

     Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Administrative Procedure Act: This rule merely involves rules of 
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A). 
Therefore, this 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). However, the 
Office has chosen to seek public comment before implementing the rule.
    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.) is 
required. See 5 U.S.C. 603.
    Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 
U.S.C. 1532, that agencies prepare an assessment of anticipated costs 
and benefits before issuing any rule that may result in expenditure by 
State, local, and tribal governments, in the aggregate, or by the 
private sector, of $100 million or more (adjusted annually for 
inflation) in any given year. This rule would have no such effect on 
State, local, and tribal governments or the private sector.
    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).
    Paperwork Reduction Act: This notice involves information 
collection requirements which are subject to review by the Office of 
Management and Budget under the Paperwork Reduction Act of 1995 (44 
U.S.C. 3501 et seq.). The collection of information in this notice have 
been reviewed and approved by the OMB under OMB control numbers: 0651-
0009, 0651-0054, 0651-0055 and 0651-0056.
    The agency is not resubmitting an information collection package to 
OMB

[[Page 11081]]

for its review and approval because the changes in this notice are 
limited to amending the rules of practice to support further 
implementation of the Office's Trademark Electronic Application System.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reduction of this 
burden to: (1) 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, Attention: Desk Officer for 
the Patent and Trademark Office; and (2) Commissioner for Trademarks, 
P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
    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

37 CFR Part 2

     Administrative practice and procedure, Trademarks.

37 CFR Part 7

     Administrative practice and procedure, Trademarks.

     For the reasons given in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office 
proposes to amend parts 2 and 7 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. Amend Sec.  2.197 by revising paragraph (a)(2) to read as 
follows:


Sec.  2.197  Certificate of mailing or transmission.

    (a) * * *
    (2) The procedure described in paragraph (a)(1) of this section 
does not apply to:
    (i) Applications for the registration of marks;
    (ii) Amendments to allege use under section 1(c) of the Act;
    (iii) Statements of use under section 1(d) of the Act;
    (iv) Requests for extension of time to file a statement of use 
under section 1(d) of the Act;
    (v) Preliminary amendments;
    (vi) Responses to examining attorneys' Office actions;
    (vii) Requests for reconsideration after final action;
    (viii) Responses to suspension inquiries or letters of suspension;
    (ix) Petitions to revive abandoned applications under Sec.  2.66;
    (x) Requests for express abandonment of applications;
    (xi) Affidavits or declarations of use under section 8 of the Act;
    (xii) Renewal applications under section 9 of the Act;
    (xiii) Affidavits or declarations of incontestability under section 
15 of the Act;
    (xiv) Requests for amendment of registrations under section 7(e) of 
the Act;
    (xv) Requests for correction of applicants' mistakes under section 
7(h) of the Act;
    (xvi) Madrid-related correspondence filed under Sec.  7.11, Sec.  
7.14, Sec.  7.21, Sec.  7.23, Sec.  7.24, Sec.  7.28 or Sec.  7.31;
    (xvii) Appointments or revocations of attorney or domestic 
representative;
    (xviii) Notices of withdrawal of attorney; and
    (xix) Requests to change or correct addresses.
* * * * *
    3. Amend Sec.  2.198 by revising paragraphs (a)(1)(v), (vi) and 
(vii), and adding new paragraphs (a)(1)(viii) through (xix), to read as 
follows:


Sec.  2.198  Filing of correspondence by ``Express Mail.''

    (a)(1) * * *
    (v) Preliminary amendments;
    (vi) Responses to examining attorneys' Office actions;
    (vii) Requests for reconsideration after final action;
    (viii) Responses to suspension inquiries or letters of suspension;
    (ix) Petitions to revive abandoned applications under Sec.  2.66;
    (x) Requests for express abandonment of applications;
    (xi) Affidavits or declarations of use under section 8 of the Act;
    (xii) Renewal applications under section 9 of the Act;
    (xiii) Affidavits or declarations of incontestability under section 
15 of the Act;
    (xiv) Requests for amendment of registrations under section 7(e) of 
the Act;
    (xv) Requests for correction of applicants' mistakes under section 
7(h) of the Act;
    (xvi) Madrid-related correspondence filed under Sec.  7.11, Sec.  
7.14 Sec.  7.21, Sec.  7.28 or Sec.  7.31;
    (xvii) Appointments or revocations of attorney or domestic 
representative;
    (xviii) Notices of withdrawal of attorney; and
    (xix) Requests to change or correct addresses.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

    4. The authority citation for 37 CFR Part 7 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

    5. Amend Sec.  7.4 by revising paragraphs (b)(1) and (2) to read as 
follows:


Sec.  7.4  Receipt of correspondence.

* * * * *
    (b) * * *
    (1) Requests to record changes in the International Register under 
Sec.  7.23 and Sec.  7.24, and petitions to the Director to review an 
action of the Office's Madrid Processing Unit, when filed by mail, will 
be accorded the date of receipt in the Office, unless they are sent by 
Express Mail pursuant to Sec.  2.198 of this chapter, in which case 
they will be accorded the date of deposit with the United States Postal 
Service.
    (2) International applications under Sec.  7.11, responses to 
notices of irregularity under Sec.  7.14, subsequent designations under 
Sec.  7.21, requests to note replacement under Sec.  7.28, and requests 
for transformation under Sec.  7.31, when filed by mail, will be 
accorded the date of receipt in the Office.
* * * * *

    Dated: February 22, 2008.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E8-3929 Filed 2-28-08; 8:45 am]
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