[Federal Register Volume 76, Number 216 (Tuesday, November 8, 2011)]
[Rules and Regulations]
[Pages 69132-69133]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-28890]
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DEPARTMENT OF COMMERCE
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: Final rule.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'') is
adopting as a final rule, with minor changes, an interim final rule
amending the Rules of Practice in Trademark Cases and the Rules of
Practice in Filings Pursuant to the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks (``Madrid
Rules'') to implement the Trademark Technical and Conforming Amendment
Act of 2010. The interim final rule was published in the Federal
Register on June 24, 2010. This final rule makes minor changes to the
interim final rule to incorporate additional statutory language being
implemented.
DATES: This rule is effective on November 8, 2011.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at (571)
272-8742.
SUPPLEMENTARY INFORMATION:
Background
On June 24, 2010, the USPTO published an interim final rule at 75
FR 35973 amending the Rules of Practice in Trademark Cases and the
Madrid Rules to implement the Trademark Technical and Conforming
Amendment Act of 2010 (``TTCAA''), Public Law 111-146, 124 Stat. 66
(2010). This legislation and the implementing rule harmonized 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. In addition, all trademark owners may now cure
deficiencies in their maintenance filings outside of the statutory
filing period upon payment of a deficiency surcharge, specifically
including when the affidavit or declaration was not filed in the name
of the owner of the registration.
The interim final rule provided a 60-day comment period that ended
August 23, 2010. No comments were received. For the reasons given in
the interim final rule, the USPTO is adopting the interim final rule
amending 37 CFR parts 2 and 7 as a final rule, with minor changes.
The rule is changed slightly for purposes of clarification.
Specifically, 37 CFR 2.163(a), 2.164(a), and 7.39(c) are amended to
reflect that deficiencies may be corrected after notification from the
USPTO. These revisions reflect the amendments to Sections 8 and 71 of
the Lanham Act, 15 U.S.C. 1058 and 1141k, providing that deficiencies
may be corrected after notification of the deficiency.
Rule Making Considerations
This document adopts as a final rule, with minor procedural
changes, the interim final rule that is already in effect. The changes
from the interim rule contained in this final rule constitute
interpretative rules or rules of agency practice and procedure and
accordingly, are not subject to the requirements for prior notice and
comment. See 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 TTCAA, so that the Rules of Practice in Trademark
Cases and the Madrid Rules are consistent with the statutory revisions.
Thus, 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 USPQ2d 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 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 Administrative
Procedure Act's notice and comment requirement); see
[[Page 69133]]
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)).
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).
Executive Order 13563 (Improving Regulation and Regulatory Review):
The USPTO has complied with Executive Order 13563. Specifically, the
USPTO has, to the extent feasible and applicable: (1) Made a reasoned
determination that the benefits justify the costs of the rule; (2)
tailored the rule to impose the least burden on society consistent with
obtaining the regulatory objectives; (3) selected a regulatory approach
that maximizes net benefits; (4) specified performance objectives; (5)
identified and assessed available alternatives; (6) involved the public
in an open exchange of information and perspectives among experts in
relevant disciplines, affected stakeholders in the private sector and
the public as a whole, and provided online access to the rule making
docket; (7) attempted to promote coordination, simplification and
harmonization across government agencies and identified goals designed
to promote innovation; (8) considered approaches that reduce burdens
and maintain flexibility and freedom of choice for the public; and (9)
ensured the objectivity of scientific and technological information and
processes.
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 final rule. See 5 U.S.C. 603.
Paperwork Reduction Act: This 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 rule has
been reviewed and previously approved by OMB under control number 0651-
0051. Changes in this rule would not affect the information collection
requirements associated with the information collection under OMB
control number 0651-0051.
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.
Accordingly, the interim final rule amending 37 CFR parts 2 and 7,
which was published at 75 FR 35973 on June 24, 2010, is adopted as a
final rule with the following changes:
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. 2.163(a) to read as follows:
Sec. 2.163 Acknowledgment of receipt of 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 after notification from the Office if the requirements of
Sec. 2.164 are met.
* * * * *
0
3. Revise Sec. 2.164(a) introductory text 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 after notification from the Office, as follows:
* * * * *
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
0
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.
0
5. Revise Sec. 7.39(c) introductory text 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.
* * * * *
(c) If the affidavit or declaration is filed within the time
periods set forth in section 71 of the Act, deficiencies may be
corrected after notification from the Office, as follows:
* * * * *
Dated: November 1, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2011-28890 Filed 11-7-11; 8:45 am]
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