[Federal Register Volume 82, Number 200 (Wednesday, October 18, 2017)]
[Proposed Rules]
[Pages 48469-48472]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2017-22394]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2017-0032]
RIN 0651-AD23


Removal of Rules Governing Trademark Interferences

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: Consistent with Executive Order 13777, ``Enforcing the 
Regulatory Reform Agenda,'' and Executive Order 13771, ``Reducing 
Regulation and Controlling Regulatory Costs,'' the United States Patent 
and Trademark Office (USPTO or Office) proposes to amend the Rules of 
Practice in Trademark Cases to remove the rules governing trademark 
interferences. This proposed rule implements the USPTO's work to 
identify and propose regulations for removal, modification, and 
streamlining because they are outdated, unnecessary, ineffective, 
costly, or unduly burdensome on the agency or the private sector. The 
revisions proposed herein would put into effect the work the USPTO has 
done, in part through its participation in the Regulatory Reform Task 
Force (Task Force) established by the Department of Commerce 
(Department or Commerce) pursuant to Executive Order 13777, to review 
and identify regulations that are candidates for removal.

DATES: Written comments must be received on or before November 17, 
2017.

ADDRESSES: Comments on the changes set forth in this proposed 
rulemaking should be sent by electronic mail message to 
TMFRNotices@uspto.gov. Written comments also may be submitted by mail 
to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 
22313-1451, attention Catherine Cain; by hand delivery to the Trademark 
Assistance Center, Concourse Level, James Madison Building-East Wing, 
600 Dulany Street, Alexandria, VA 22314, attention Catherine Cain. 
Comments concerning ideas to improve, revise, and streamline other 
USPTO regulations, not discussed in this proposed rulemaking, should be 
submitted to RegulatoryReformGroup@uspto.gov.
    Comments may also be submitted via the Federal eRulemaking Portal 
at http://www.regulations.gov. See the Federal eRulemaking Portal Web 
site for additional instructions on providing comments via the Federal 
eRulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because the Office may easily share such comments with the 
public. Electronic comments are preferred to be submitted in plain 
text, but also may be submitted in ADOBE[supreg] portable document 
format or MICROSOFT WORD[supreg] format. Comments not submitted 
electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Trademarks, Madison East, Tenth Floor, 600 
Dulany Street, Alexandria, VA 22314. Comments also will be available 
for viewing via the Office's Internet Web site (http://www.uspto.gov) 
and at http://www.regulations.gov. Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy 
Commissioner for Trademark Examination Policy, by email at 
TMFRNotices@uspto.gov, or by telephone at (571) 272-8946.

SUPPLEMENTARY INFORMATION: 

I. Background

    In accordance with Executive Order 13777, ``Enforcing the 
Regulatory Reform Agenda,'' the Department established a Task Force, 
comprising, among others, agency officials from the National Oceanic 
and Atmospheric Administration, the Bureau of Industry and Security, 
and the USPTO, and

[[Page 48470]]

charged with evaluating existing regulations and identifying those that 
should be repealed, replaced, or modified because they are outdated, 
unnecessary, ineffective, costly, or unduly burdensome to both 
government and private-sector operations.
    To support its regulatory reform efforts on the Task Force, the 
USPTO assembled a Working Group on Regulatory Reform (Working Group), 
consisting of subject-matter experts from each of the business units 
that implement the USPTO's regulations, to consider, review, and 
recommend ways that the regulations could be improved, revised, and 
streamlined. In considering the revisions, the USPTO, through its 
Working Group, incorporated into its analyses all presidential 
directives relating to regulatory reform, but primarily focused on 
Executive Order 13771, ``Presidential Executive Order on Reducing 
Regulation and Controlling Regulatory Costs.'' The Working Group 
reviewed existing regulations, both discretionary and required by 
statute or judicial order. The USPTO also solicited comments from 
stakeholders through a Web page established to provide information on 
the USPTO's regulatory reform efforts and through the Department's 
Federal Register Notice titled ``Impact of Federal Regulations on 
Domestic Manufacturing'' (82 FR 12786, Mar. 7, 2017), which addressed 
the impact of regulatory burdens on domestic manufacturing. These 
efforts led to the development of candidate regulations for removal 
based on the USPTO's assessment that these regulations were not needed 
and/or that elimination could improve the USPTO's body of regulations. 
This rule proposes to remove trademark-related regulations. Other 
proposals to remove regulations on other subject areas may be published 
separately.

II. Regulations Proposed for Removal

    This proposed rule revises the regulations concerning trademark 
interferences codified at 37 CFR 2.91-2.93, 2.96, and 2.98. A trademark 
interference is a proceeding in which the Trademark Trial and Appeal 
Board (Board) determines which, if any, of the owners of conflicting 
applications (or of one or more applications and one or more 
conflicting registrations) is entitled to registration. 15 U.S.C. 1066. 
A trademark interference can be declared only upon petition to the 
Director of the USPTO (Director). However, the Director will grant such 
a petition only if the petitioner can show extraordinary circumstances 
that would result in a party being unduly prejudiced in the absence of 
an interference. 37 CFR 2.91(a). The availability of an opposition or 
cancellation proceeding to determine rights to registration ordinarily 
precludes the possibility of such undue prejudice to a party. Id. Thus, 
a petitioner must show that there is some extraordinary circumstance 
that would make the remedy of opposition or cancellation inadequate or 
prejudicial to the party's rights.
    Trademark interferences have generally been limited to situations 
where a party would otherwise be required to engage in successive or a 
series of opposition or cancellation proceedings involving 
substantially the same issues. Trademark Manual of Examining Procedure 
Sec.  1507. Where searchable, USPTO reviewed its paper and electronic 
records of petitions and found that since 1983, the USPTO has received 
an average of approximately 1 such petition a year, and almost all of 
them have been denied except for three petitions that were granted in 
1985 (32 years ago). The USPTO has been unable to identify a situation 
since that time in which the Director has granted a petition to declare 
a trademark interference. Given the extremely low rate of filing over 
this long period of time, and because parties would still retain an 
avenue for seeking a declaration of interference if the trademark 
interference regulations are removed, the USPTO considers them 
unnecessary.
    The trademark interference regulations proposed in this rule for 
removal achieve the objective of making the USPTO regulations more 
effective and more streamlined, while enabling the USPTO to fulfill its 
mission goals. The USPTO's analysis shows that while the removal of 
these regulations is not expected to substantially reduce the burden on 
the impacted community, they are nonetheless being eliminated because 
they are ``outdated, unnecessary, or ineffective'' regulations that are 
encompassed by the directives in Executive Order 13777.
    Section 16 of the Trademark Act, 15 U.S.C. 1066, states that the 
Director may declare an interference ``[u]pon petition showing 
extraordinary circumstances.'' Although eliminating Sec. Sec.  2.91-
2.93, 2.96, and 2.98 removes the regulations regarding the requirements 
for declaring a trademark interference, the statutory authority will 
remain. On the rare occasion that the Office receives a request that 
the Director declare a trademark interference, it is currently 
submitted as a petition under 37 CFR 2.146, a more general regulation 
on petitions. In the unlikely event that a need for an interference 
arose, it would still be possible for a party to seek institution of a 
trademark interference by petitioning the Director under 37 CFR 
2.146(a)(4), whereby a petitioner may seek relief in any case not 
specifically defined and provided for by Part 2 of Title 37. Thus, if 
the trademark interference regulations are removed, parties would still 
retain an avenue for seeking a declaration of interference.

III. Discussion of Proposed Rules Changes

    The USPTO proposes to remove and reserve Sec. Sec.  2.91-2.93, 
2.96, and 2.98.

Rulemaking Considerations

    A. Administrative Procedure Act: The changes in this proposed 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 
1204 (2015) (Interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers.'' 
(citation and internal quotation marks omitted)); Nat'l Org. of 
Veterans' Advocates v. Sec'y of Veterans Affairs, 260 F.3d 1365, 1375 
(Fed. Cir. 2001) (Rule that clarifies interpretation of a statute is 
interpretive.); Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. 
Cir. 2001) (Rules governing an application process are procedural under 
the Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 
244 F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims.).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this proposed rulemaking are not required pursuant to 5 
U.S.C. 553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 
(Notice-and-comment procedures are required neither when an agency 
``issue[s] an initial interpretive rule'' nor ``when it amends or 
repeals that interpretive rule.''); Cooper Techs. Co. v. Dudas, 536 
F.3d 1330, 1336-37 (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 
rulemaking for ``interpretative rules, general statements of policy, or 
rules of agency organization, procedure, or practice'' (quoting 5 
U.S.C. 553(b)(A))). The Office, however, is publishing these proposed 
changes for comment as it seeks the benefit of the public's views on 
the Office's proposed implementation of the proposed rule changes.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, of the

[[Page 48471]]

USPTO has certified to the Chief Counsel for Advocacy of the Small 
Business Administration that changes proposed in this notice will not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    This proposed rule would remove the regulations addressing 
trademark interferences codified at 37 CFR 2.91-2.93, 2.96, and 2.98. 
In trademark interferences, the Board determines which, if any, of the 
owners of conflicting applications (or of one or more applications and 
one or more conflicting registrations) is entitled to registration. 15 
U.S.C. 1066. Where searchable, USPTO reviewed its paper and electronic 
records of petitions and found that since 1983, USPTO has received an 
average of approximately 1 such petition a year, and almost all of them 
have been denied except for three petitions that were granted in 1985 
(32 years ago). Because these regulations have rarely been invoked in 
the last 32 years, the USPTO considers these regulations unnecessary 
and has determined to remove them. Removing the trademark interference 
regulations proposed in this rule achieves the objective of making the 
USPTO regulations more effective and more streamlined, while enabling 
the USPTO to fulfill its mission goals. The removal of these 
regulations is not expected to substantively impact parties as, in the 
unlikely event that a need for a trademark interference arose, a party 
would be able to institute an interference by petitioning the Director 
under 37 CFR 2.146(a)(4). For these reasons, this rulemaking will not 
have a significant economic impact on a substantial number of small 
entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866.
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The Office has complied with Executive Order 13563. 
Specifically, the Office 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 on-line access to the rulemaking 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.
    E. Executive Order 13771 (Reducing Regulation and Controlling 
Regulatory Costs): This proposed rule is expected to be an Executive 
Order 13771 deregulatory action.
    F. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    G. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    H. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    I. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    J. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    K. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    L. 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. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    M. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    N. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    O. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    P. Paperwork Reduction Act: This rulemaking 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 0651-0054.
    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

[[Page 48472]]

information displays a currently valid OMB control number.

List of Subjects for 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

    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 
proposes to amend part 2 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for part 2 continues to read as follows:

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

0
2. Remove and reserve Sec.  2.91.


Sec.  2.91  [Reserved]

0
3. Remove and reserve Sec.  2.92.


Sec.  2.92  [Reserved]

0
4 . Remove and reserve Sec.  2.93.


Sec.  2.93  [Reserved]

0
5. Remove and reserve Sec.  2.96.


Sec.  2.96  [Reserved]

0
6. Remove and reserve Sec.  2.98.


Sec.  2.98  [Reserved]

    Dated: October 10, 2017.
Joseph D. Matal,
Associate Solicitor, Performing the Functions and Duties of the Under 
Secretary of Commerce for Intellectual Property and Director of the 
United States Patent and Trademark Office.
[FR Doc. 2017-22394 Filed 10-17-17; 8:45 am]
BILLING CODE 3510-16-P