[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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