[Federal Register Volume 75, Number 121 (Thursday, June 24, 2010)]
[Rules and Regulations]
[Pages 35973-35977]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-15305]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. PTO-T-2010-0014]
RIN 0651-AC39
Trademark Technical and Conforming Amendments
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interim final rule with request for comments.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'') is
amending the Rules of Practice in Trademark Cases to implement the
Trademark Technical and Conforming Amendment Act of 2010. The rule
changes harmonize the framework for submitting trademark registration
maintenance filings to the USPTO by permitting holders of international
registrations with an extension of protection to the United States
under the Madrid Protocol (``Madrid Protocol registrants'') to file
Affidavits or Declarations of Use or Excusable Nonuse at intervals
identical to those for nationally issued registrations. The changes
additionally allow all trademark owners to cure deficiencies in their
maintenance filings, including when the affidavit or declaration is not
filed in the name of the owner of the registration.
DATES: This rule is effective on June 24, 2010. Comments must be
received by August 23, 2010 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 Cynthia Lynch; by hand-delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Cynthia Lynch; 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 Trademark Legal Policy Office, Madison
East, Fourth 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:
Statutory Background
The Trademark Technical and Conforming Amendment Act of 2010 became
effective on March 17, 2010. Public Law 111-146, 124 Stat. 66 (2010).
In addition to making small technical and conforming corrections in
Sections 7, 15, and 21 of the Lanham Act, 15 U.S.C. 1057, 1065, and
1071, the legislation makes other more noteworthy changes to Sections 8
and 71, 15 U.S.C. 1058 and 1141k, regarding filing Affidavits or
Declarations of Use or Excusable Nonuse to maintain a registration.
Specifically, the legislation gives Madrid Protocol registrants the
benefit of six-month grace periods immediately following the statutory
time periods for filing their trademark registration maintenance
documents under Section 71, 15 U.S.C. 1141k. Previously, no grace
period existed at the end of the six-year period following the date of
registration in the U.S., and only a three-month grace period existed
following the expiration of each successive 10-year period following
registration. The new grace periods match those already provided to all
other trademark owners for submitting maintenance filings to the USPTO.
In addition, the legislation allows all trademark owners to cure
deficiencies in their post-registration maintenance filings outside of
the statutory filing period upon payment of a deficiency surcharge,
specifically including when affidavits or declarations are not filed in
the name of the owner of the registration. Previously, the statute did
not provide Madrid Protocol registrants with the opportunity to correct
deficiencies in their maintenance filings and allowed all other
trademark owners to correct deficiencies outside of the statutory
filing period upon payment of the surcharge, except when an affidavit
or declaration was not filed in the name of the owner.
The interim final rule revises 37 CFR parts 2 and 7 to implement
the Trademark Technical and Conforming Amendment Act of 2010, as
referenced above. It applies to all maintenance filings pending with
the USPTO as of March 17, 2010, the effective date of the legislation.
References to ``the Act,'' ``the Lanham Act,'' ``the Trademark
Act,'' or ``the statute'' refer to the Trademark Act of 1946, 15 U.S.C.
1051 et seq., as amended.
Rule Making Considerations
The changes made in this interim final rule constitute
interpretative rules or rules of agency practice and procedure and are
not subject to the requirement for the publication of prior notice of
proposed rule making. See The Administrative Procedure Act (``APA''), 5
U.S.C. 553(b)(3)(A). The rule changes relate solely to the procedures
for maintaining a Federal trademark registration, and merely implement
the Trademark Technical and Conforming Amendment Act of 2010, so that
the Rules of Practice in Trademark Cases are consistent with the
statutory revisions. Thus, they qualify as interpretative 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 are not required
pursuant to 5 U.S.C. 553(b)(A) (or any other law). See Cooper Techs.
Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 1710 (Fed.
Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B),
does not require notice
[[Page 35974]]
and comment rule making for `` `interpretative rules, general
statements of policy, or rules of agency organization, procedure, or
practice.' '' (quoting 5 U.S.C. 553(b)(A)), Bachow Communications Inc.
v. FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an
application process are ``rules of agency organization, procedure, or
practice'' and are exempt from the APA's notice and comment
requirement); see also 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 APA apply)), and Fressola v. Manbeck, 36
USPQ2d 1211, 1215 (D.D.C. 1995) (``[i]t is extremely doubtful whether
any of the rules formulated to govern patent or trade-mark practice are
other than `interpretive 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)). Accordingly, prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553(b)(A) (or any
other law), and thirty-day advance publication is not required pursuant
to 5 U.S.C. 553(d) (or any other law).
The establishment of a statutory deficiency surcharge in the amount
of $100 for Madrid Protocol registrants, who under the new legislation
are now afforded the opportunity to correct a deficiency outside the
statutory time period, comes in the context of making the treatment of
Madrid Protocol registrants' maintenance filing deficiencies consistent
with those of non-Madrid Protocol registrants. The legislative history
reflects that, with full awareness of the maintenance filing framework,
including the $100 deficiency surcharge already in existence for non-
Madrid Protocol registrants, Congress sought to establish that same
framework for Madrid Protocol registrants. See, e.g., 156 Cong. Rec.
H1080 (daily ed. Mar. 3, 2010) (statement of Rep. Johnson) (``However,
due to a technical mistake in the Lanham Act, our trademark laws
unintentionally prevent trademark owners who file these affidavits for
registering extensions under the Madrid Protocol from having the same
rights as other U.S. trademark owners. Compliance with regulations
should not reduce the rights of trademark owners. Today, we will
harmonize our laws with the Madrid Protocol so that this particular
injustice no longer occurs.'') and 156 Cong. Rec. H1081 (daily ed. Mar.
3, 2010) (statement of Rep. Coble) (``The main purpose of the bill is
to bring provisions for maintaining extensions of protection under
Madrid in conformity with provisions for maintaining registrations.'').
Thus, even the establishment of the $100 deficiency surcharge for
Madrid Protocol registrants constitutes an interpretative rule.
In the alternative, in the event these rule changes were deemed to
require notice and comment, the USPTO has concluded that it has good
cause, under 5 U.S.C. 553(b)(B), to adopt the changes made in this
interim final rule without prior notice and opportunity for public
comment, as such prior notice and comment procedures would be
impracticable, unnecessary, and contrary to the public interest. The
amendments made to the Trademark Act by the Trademark Technical and
Conforming Amendment Act of 2010 became effective on March 17, 2010,
and thus apply to maintenance filings for registrations currently
pending before the USPTO. The Rules of Practice in Trademark Cases,
however, are currently inconsistent with, and do not reflect the
benefits provided by, the new legislation. To delay the conforming rule
changes for prior notice and comment, and leave the inconsistency in
place, is impracticable. In order to rectify the inconsistency as
quickly and efficiently as possible, an interim final rule is issued to
eliminate the inconsistency between the statute and the rules, while
still affording the public the opportunity to comment on the rule
changes.
In addition, delaying the rule changes for prior notice and comment
is unnecessary because of the nature of the rule changes. As described
above, the rule changes merely track the statutory changes, negating
the need to consider public input on the substance of the rule changes
prior to a final agency determination.
Finally, delaying the rule changes for prior notice and comment
would be contrary to the public interest, as it could delay the
implementation of the benefits established by the legislation or lead
to public confusion caused by the inconsistency between the statute and
the rules. This interim final rule, making conforming rule changes and
establishing the amount of the statutory deficiency surcharge for
Madrid Protocol registrants who wish to correct a deficiency after the
statutory deadline, serves the public interest by quickly and
efficiently implementing the new legislation, while still affording the
public the opportunity to comment on the rule changes.
The USPTO is interested in the public's input and requests public
comments regarding these amendments. Therefore, although the interim
final rule is effective upon publication, the USPTO will publish in the
Federal Register a response to any significant adverse comments
received along with modifications to the rule, if any.
Discussion of Specific Rules
The following amendments bring the Rules of Practice in Trademark
Cases into conformity with the Trademark Act, as amended by the
Trademark Technical and Conforming Amendment Act of 2010.
The Office is amending 37 CFR 2.160(a)(3), 2.161(d)(2), and
2.163(c) to replace the references to ``section 8(c)(1) of the Act''
with ``section 8(a)(3) of the Act.''
In addition, the Office is amending 37 CFR 2.160(a)(3) to add the
wording ``per class'' to be consistent with the requirements stated in
37 CFR 2.161(d)(2). Similarly, the Office is amending 37 CFR
2.161(d)(2) to replace ``late fee'' with ``grace period surcharge'' to
be consistent with the language used in 37 CFR 2.160(a)(3) and 37 CFR
7.37(d)(2).
The Office is amending 37 CFR 2.163(a) to replace ``[i]f the owner
of the registration filed the affidavit or declaration'' with ``[i]f
the affidavit or declaration is filed.'' Similarly, the Office is
amending 37 CFR 2.164(a) to replace ``[i]f the owner of the
registration files the affidavit or declaration'' with ``[i]f the
affidavit or declaration is filed.'' These revisions reflect the
amendment to the Act providing that when an affidavit or declaration is
not filed in the name of the owner of the registration, it is a
correctable deficiency.
The Office is amending 37 CFR 2.163(b) to replace the reference to
``section 8(a) or section 8(b) of the Act'' with ``section 8(a) of the
Act.''
The Office is amending 37 CFR 2.164(a)(1) to replace the reference
to ``sections 8(a) and 8(b) of the Act'' with ``sections 8(a)(1) and
8(a)(2) of the Act,'' replace the reference to ``section 8(a) or
section 8(b) of the Act'' with ``section 8(a)(1) or section 8(a)(2) of
the Act,'' and replace the reference to ``the deficiency surcharge
required by section 8(c)(2) of the Act'' with ``the deficiency
surcharge required by section 8(c) of the Act.''
In addition, the Office is amending 37 CFR 2.164(a)(1) to replace
``[i]f the owner timely files the affidavit or declaration'' with
``[i]f the affidavit or declaration is timely filed.'' This revision
reflects the amendment to the
[[Page 35975]]
Act providing that when an affidavit or declaration is not filed in the
name of the owner of the registration, it is a correctable deficiency.
The Office is amending 37 CFR 2.164(a)(2) to replace the reference
to ``grace period provided by section 8(c)(1) of the Act'' with ``grace
period provided by section 8(a)(3) of the Act'' and replace the
reference to ``deficiency surcharge required by section 8(c)(2) of the
Act'' with ``deficiency surcharge required by section 8(c) of the
Act.''
The Office is amending 37 CFR 2.164(b) to remove ``or if it is
filed within that period by someone other than the owner,'' and ``These
deficiencies cannot be cured.'' The deletions reflect the amendment to
the Act providing that when an affidavit or declaration is not filed in
the name of the owner of the registration, it is a correctable
deficiency.
The Office is amending the heading for 37 CFR 2.168 to account for
the rule's applicability to affidavits or declarations under section 71
of the Act.
The Office is amending 37 CFR 2.168(a) to add ``[t]he affidavit or
declaration filed under section 15 of the Act may also be used as the
affidavit or declaration required by section 71, if the affidavit or
declaration meets the requirements of both sections 71 and 15.'' By
allowing Madrid Protocol registrants to combine their filings, the
Office is providing them with the same filing options available to all
other trademark owners.
The Office is adding 37 CFR 7.6(a)(8) to provide for the deficiency
surcharge for Madrid Protocol registrants now provided by the Act.
Previously, the Act did not confer authority on the USPTO to allow
Madrid Protocol registrants to correct deficiencies in their
maintenance filings, but did confer such authority with respect to the
maintenance filings of other trademark owners. The amendment of the Act
eliminated this disparity, and permits the USPTO to allow the
correction of deficiencies in Madrid Protocol registrants' maintenance
filings after the statutory period with payment of the deficiency
surcharge. This surcharge is provided in order to give Madrid Protocol
registrants the same benefit available to all other trademark owners,
and the amount is the same as the deficiency surcharge applicable to
other trademark owners, provided in 37 CFR 2.6(a)(20).
The Office is amending 37 CFR 7.25(a) to remove the reference to
Sec. 2.168 since Sec. 2.168 now applies to registered extensions of
protection.
The Office is amending 37 CFR 7.36(b)(2) to account for the new
time periods provided by the Act for filing the affidavits or
declarations due each successive ten-year period following
registration. Previously, Madrid Protocol registrants had a six-month
window in which to make such filings. They now have the benefit of a
full year to make such filings, not including the grace period. The new
time periods match those given to other trademark owners.
The Office is adding 37 CFR 7.36(b)(3) to account for the new grace
periods provided by the Act. Previously, for Madrid Protocol
registrants, no grace period existed at the end of the six-year period
following the date of registration and only a three-month grace period
existed following the expiration of each successive ten-year period
following registration. Now, Madrid Protocol registrants have the
benefit of six-month grace periods immediately following the statutory
time periods. The newly enacted grace periods match those given to
other trademark owners.
The Office is adding 37 CFR 7.36(c) to be analogous to 37 CFR
2.160(b).
The Office is amending 37 CFR 7.37(d)(2) to replace the reference
to ``section 71(a)(2)(B) of the Act'' with ``section 71(a)(3) of the
Act.''
The Office is amending the heading for 37 CFR 7.39 to account for
the ability of Madrid Protocol registrants to correct deficiencies in
their maintenance filings as provided by the Act.
The Office is adding introductory text to 37 CFR 7.39 that is
analogous to the introductory text for 37 CFR 2.163 and includes text
previously in 37 CFR 7.39(a).
The Office is amending 37 CFR 7.39(a) to include text previously in
37 CFR 7.39(b) and to state who must sign an Office action response.
This is analogous to 37 CFR 2.163(b) and is consistent with the
requirements of 37 CFR 2.193(e)(2).
The Office is amending 37 CFR 7.39(b) to account for the grace
period provided by the Act and a Madrid Protocol registrant's option of
filing a new affidavit or declaration if time remains in the grace
period. This is analogous to 37 CFR 2.163(c) as applied to all other
trademark owners.
The Office is adding 37 CFR 7.39(c), (c)(1), and (c)(2) to account
for the ability of Madrid Protocol registrants to correct deficiencies
in their maintenance filings as provided by the Act. This is analogous
to 37 CFR 2.164 as applied to all other trademark owners.
The Office is adding Sec. 7.39(d) to be analogous to Sec.
2.164(b).
Rule Making Requirements
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 to be
not 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.) is required
for this interim final rule. See 5 U.S.C. 603. Nevertheless, the Deputy
General Counsel for General Law of the United States Patent and
Trademark Office certifies to the Chief Counsel for Advocacy of the
Small Business Administration that this interim final rule will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
The principal impact of this rule making is to ensure that holders
of international registrations are provided with greater flexibility to
maintain their marks. Furthermore, this increased flexibility
harmonizes the requirements between international registrations and
nationally issued registrations. The only fee ($100.00) associated with
this rule making is to enable international registrants to receive the
benefit of correcting a deficiency in their maintenance filings outside
the statutory time period. Of the approximately 126,000 affidavits
filed under the national registration process, less than 800 (or less
than two-thirds of one percent) paid the $100.00 deficiency surcharge.
In 2010, the Office estimates approximately 2,700 affidavits will be
filed under the international registration process. Assuming that a
similar percentage of international registrants would pay the
deficiency surcharge, the Office estimates only a small number of
registrants would be subject to the fee. For these reasons, the Office
has concluded that this interim final rule will not have a significant
economic impact on a substantial number of small entities.
Paperwork Reduction Act: This proposed rule 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 collection of information involved in
this
[[Page 35976]]
proposed rule has been reviewed and previously approved by OMB under
control number 0651-0051. The United States Patent and Trademark Office
is not resubmitting an information collection request to OMB for its
review and approval because the changes in this proposed rule would not
affect the information collection requirements associated with the
information collection under OMB control number 0651-0051.
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 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: Cynthia
Lynch).
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.
Unfunded Mandates: The Unfunded Mandates Reform Act, at 2 U.S.C.
1532, requires 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.
Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO
will submit a report containing the final rule and other required
information to the United States Senate, the United States House of
Representatives, and the Comptroller General of the Government
Accountability Office. However, this action is not a major rule as
defined by 5 U.S.C. 804(2).
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks, International
registration.
0
For the reasons stated in the preamble and under the authority
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is
amending parts 2 and 7 of title 37 as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
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. 2.160(a)(3) to read as follows:
Sec. 2.160 Affidavit or declaration of continued use or excusable
nonuse required to avoid cancellation of registration.
(a) * * *
(3) The affidavit or declaration may be filed within a grace period
of six months after the end of the deadline set forth in paragraphs
(a)(1) and (a)(2) of this section, with payment of the grace period
surcharge per class required by section 8(a)(3) of the Act and Sec.
2.6.
* * * * *
0
3. Revise Sec. 2.161(d)(2) to read as follows:
Sec. 2.161 Requirements for a complete affidavit or declaration of
continued use or excusable nonuse.
* * * * *
(d) * * *
(2) If the affidavit or declaration is filed during the grace
period under section 8(a)(3) of the Act, include the grace period
surcharge per class required by Sec. 2.6;
* * * * *
0
4. Revise Sec. 2.163 to read as follows:
Sec. 2.163 Acknowledgment of receipt of affidavit or declaration.
The Office will issue a notice as to whether an affidavit or
declaration is acceptable, or the reasons for refusal.
(a) If the affidavit or declaration is filed within the time
periods set forth in section 8 of the Act, deficiencies may be
corrected if the requirements of Sec. 2.164 are met.
(b) A response to the refusal must be filed within six months of
the date of issuance of the Office action, or before the end of the
filing period set forth in section 8(a) of the Act, whichever is later.
The response must be signed by the owner, someone with legal authority
to bind the owner (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec. 11.14
of this chapter, in accordance with the requirements of Sec.
2.193(e)(2).
(c) If no response is filed within this time period, the
registration will be cancelled, unless time remains in the grace period
under section 8(a)(3) of the Act. If time remains in the grace period,
the owner may file a complete, new affidavit.
0
5. Revise Sec. 2.164 to read as follows:
Sec. 2.164 Correcting deficiencies in affidavit or declaration.
(a) If the affidavit or declaration is filed within the time
periods set forth in section 8 of the Act, deficiencies may be
corrected, as follows:
(1) Correcting deficiencies in affidavits or declarations timely
filed within the periods set forth in sections 8(a)(1) and 8(a)(2) of
the Act. If the affidavit or declaration is timely filed within the
relevant filing period set forth in section 8(a)(1) or section 8(a)(2)
of the Act, deficiencies may be corrected before the end of this filing
period without paying a deficiency surcharge. Deficiencies may be
corrected after the end of this filing period with payment of the
deficiency surcharge required by section 8(c) of the Act and Sec. 2.6.
(2) Correcting deficiencies in affidavits or declarations filed
during the grace period. If the affidavit or declaration is filed
during the six-month grace period provided by section 8(a)(3) of the
Act, deficiencies may be corrected before the expiration of the grace
period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of the
deficiency surcharge required by section 8(c) of the Act and Sec. 2.6.
(b) If the affidavit or declaration is not filed within the time
periods set forth in section 8 of the Act, the registration will be
cancelled.
0
6. In Sec. 2.168, revise the heading and paragraph (a) to read as
follows:
Sec. 2.168 Affidavit or declaration under section 15 combined with
affidavit or declaration under sections 8 or 71, or with renewal
application.
(a) The affidavit or declaration filed under section 15 of the Act
may also be used as the affidavit or declaration required by section 8,
if the affidavit or declaration meets the requirements of
[[Page 35977]]
both sections 8 and 15. The affidavit or declaration filed under
section 15 of the Act may also be used as the affidavit or declaration
required by section 71, if the affidavit or declaration meets the
requirements of both sections 71 and 15.
* * * * *
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
0
7. 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.
0
8. In Sec. 7.6, add paragraph (a)(8) to read as follows:
Sec. 7.6 Schedule of U.S. process fees.
(a) * * *
(8) For correcting a deficiency in a section 71 affidavit--$100.00
* * * * *
0
9. Revise Sec. 7.25(a) to read as follows:
Sec. 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for Sec. Sec. 2.22-2.23, 2.130-2.131, 2.160-2.166,
2.173, and 2.181-2.186, all sections in parts 2, 10, and 11 of this
chapter shall apply to an extension of protection of an international
registration to the United States, including sections related to
proceedings before the Trademark Trial and Appeal Board, unless
otherwise stated.
* * * * *
0
10. In Sec. 7.36, revise paragraph (b)(2) and add paragraphs (b)(3)
and (c) to read as follows:
Sec. 7.36 Affidavit or declaration of use in commerce or excusable
nonuse required to avoid cancellation of an extension of protection to
the United States.
* * * * *
(b) * * *
(2) Within the year before the end of every ten-year period after
the date of registration in the United States.
(3) The affidavit or declaration may be filed within a grace period
of six months after the end of the deadline set forth in paragraphs
(b)(1) and (b)(2) of this section, with payment of the grace period
surcharge per class required by section 71(a)(3) of the Act and Sec.
7.6.
(c) For the requirements for the affidavit or declaration, see
Sec. 7.37.
0
11. Revise Sec. 7.37(d)(2) to read as follows:
Sec. 7.37 Requirements for a complete affidavit or declaration of use
in commerce or excusable nonuse.
* * * * *
(d) * * *
(2) If the affidavit or declaration is filed during the grace
period under section 71(a)(3) of the Act, include the grace period
surcharge per class required by Sec. 7.6;
* * * * *
0
12. Revise Sec. 7.39 to read as follows:
Sec. 7.39 Acknowledgment of receipt of and correcting deficiencies in
affidavit or declaration of use in commerce or excusable nonuse.
The Office will issue a notice as to whether an affidavit or
declaration is acceptable, or the reasons for refusal.
(a) A response to the refusal must be filed within six months of
the date of issuance of the Office action, or before the end of the
filing period set forth in section 71(a) of the Act, whichever is
later. The response must be signed by the holder, someone with legal
authority to bind the holder (e.g., a corporate officer or general
partner of a partnership), or a practitioner qualified to practice
under Sec. 11.14 of this chapter, in accordance with the requirements
of Sec. 2.193(e)(2).
(b) If no response is filed within this time period, the extension
of protection will be cancelled, unless time remains in the grace
period under section 71(a)(3) of the Act. If time remains in the grace
period, the holder may file a complete, new affidavit.
(c) If the affidavit or declaration is filed within the time
periods set forth in section 71 of the Act, deficiencies may be
corrected, as follows:
(1) Correcting deficiencies in affidavits or declarations timely
filed within the periods set forth in sections 71(a)(1) and 71(a)(2) of
the Act. If the affidavit or declaration is timely filed within the
relevant filing period set forth in section 71(a)(1) or section
71(a)(2) of the Act, deficiencies may be corrected before the end of
this filing period without paying a deficiency surcharge. Deficiencies
may be corrected after the end of this filing period with payment of
the deficiency surcharge required by section 71(c) of the Act and Sec.
7.6.
(2) Correcting deficiencies in affidavits or declarations filed
during the grace period. If the affidavit or declaration is filed
during the six-month grace period provided by section 71(a)(3) of the
Act, deficiencies may be corrected before the expiration of the grace
period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of the
deficiency surcharge required by section 71(c) of the Act and Sec.
7.6.
(d) If the affidavit or declaration is not filed within the time
periods set forth in section 71 of the Act, the registration will be
cancelled.
Dated: June 18, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2010-15305 Filed 6-23-10; 8:45 am]
BILLING CODE 3510-16-P