[Federal Register Volume 83, Number 137 (Tuesday, July 17, 2018)]
[Rules and Regulations]
[Pages 33129-33132]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-15163]
=======================================================================
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
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: Final rule.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) amends the Rules of Practice in Trademark Cases to remove the
rules governing trademark interferences. This rule arises out of the
USPTO's work during FY 2017 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removal, modification, and streamlining because they are outdated,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 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: This rule is effective on August 16, 2018.
FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy
Commissioner for Trademark Examination Policy, by email at
[email protected], 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 charged the Task Force 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regulations and identifying those that should be repealed, replaced, or
modified because they are outdated, unnecessary, ineffective, costly,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. The Working Group reviewed
existing regulations, both discretionary rules and those 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 removes certain trademark-related regulations. Other rules
removing regulations on other subject areas may be published
separately.
[[Page 33130]]
II. Regulations Being Removed
This rule removes the regulations concerning trademark
interferences codified at 37 CFR 2.91-2.93, 2.96, and 2.98. The rule
also revises the authority citation for part 2 and revises the
undesignated center heading ``INTERFERENCES AND CONCURRENT USE
PROCEEDINGS'' to read ``CONCURRENT USE PROCEEDINGS'' to more accurately
reflect the final regulations. 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 a series of
opposition or cancellation proceedings involving substantially the same
issues. Trademark Manual of Examining Procedure Sec. 1507. The
promulgation of the interference regulations suggests that at that
time, the Office contemplated such situations arising with enough
frequency to merit particular regulations governing interference
proceedings. However, the rarity of interference proceedings over an
extended period of time indicates that the regulations are unnecessary.
To the extent that the USPTO's paper petition records are searchable,
the USPTO reviewed them and its electronic records of petitions and
found that since 1983, the USPTO has received an average of
approximately one petition for a trademark interference per year, and
almost all of them have been denied except for one petition that was
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 through the
general petition regulations, the USPTO considers the trademark
interference regulations unnecessary.
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 is still 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, even
after removal of these rules, parties retain an avenue for seeking a
declaration of interference.
Removal of the identified trademark interference regulations 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 USPTO's economic analysis shows that while the
removal of these regulations is not expected to substantially reduce
the burden on the impacted community, the regulations are nonetheless
being eliminated because they are ``outdated, unnecessary, or
ineffective'' regulations encompassed by the directives in Executive
Order 13777.
III. Proposed Rule: Comments and Responses
The USPTO published a proposed rule on October 18, 2017 at 82 FR
48469, soliciting comments on the proposed amendments. In response, the
USPTO received three comments relevant to the proposed rule. The
commenters generally supported the proposed amendments as meeting the
stated objectives. The USPTO appreciates the positive input, and these
comments require no response.
One commenter noted that the removal of the trademark interference
rules will not relieve any burden, as a party can petition the Director
to declare an interference with or without these rules, and suggested
``that there should be real amendments which actually mitigate
regulatory burden to incent entrepreneurship and market growth.'' As
noted above, removal of the identified regulations achieves the
objective of making the USPTO regulations more effective and more
streamlined, while enabling the USPTO to fulfill its mission goals.
Moreover, although removal of these regulations is not expected to
substantially reduce the burden on the impacted community, they are
being eliminated because they are ``outdated, unnecessary, or
ineffective'' regulations that are encompassed by the directives in
Executive Order 13777. The Office sought public suggestions on
regulatory changes to reduce burdens in order to benefit from the
public's input.
All comments are posted on the USPTO's website at https://www.uspto.gov/trademark/trademark-updates-and-announcements/comments-proposed-rulemaking-related-removal-rules.
IV. Discussion of Rules Changes
The USPTO revises the authority citation for part 2 to add ``Sec.
2.99 also issued under secs. 16, 17, 60 Stat. 434; 15 U.S.C. 1066,
1067.'' The USPTO revises the undesignated center heading
``INTERFERENCES AND CONCURRENT USE PROCEEDINGS'' to read ``CONCURRENT
USE PROCEEDINGS'' and removes the authority citation immediately
following that heading. The USPTO removes and reserves Sec. Sec. 2.91-
2.93, 2.96, and 2.98.
Rulemaking Considerations
A. Administrative Procedure Act: The changes in this 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 rulemaking are not required pursuant to 5 U.S.C.
553(b) or (c), or any other law. See Perez, 135 S.
[[Page 33131]]
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))). However, the Office chose to seek public comment
before implementing the rule to benefit from the public's input.
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Senior Counsel for Regulatory and Legislative Affairs, Office of
General Law, of the USPTO has certified to the Chief Counsel for
Advocacy of the Small Business Administration that this rule will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
This rule removes 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, the 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 one petition that was granted
in 1985 (32 years ago). Because these regulations have rarely been
invoked in the last 32 years and no trademark interference proceedings
occurred during that time, the USPTO considers these regulations
unnecessary and has determined to remove them. Removing the trademark
interference regulations 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 petition the Director under 37 CFR 2.146(a)(4) for
institution of an interference. 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 rule is not an Executive Order 13771 regulatory
action because this rule is not significant under Executive Order
12866.
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
[[Page 33132]]
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 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
amends part 2 of title 37 as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
0
1. The authority citation for part 2 is revised to read as follows:
Authority: 15 U.S.C. 1123 and 35 U.S.C. 2 unless otherwise
noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 434; 15
U.S.C. 1066, 1067.
0
2. Revise the undesignated center heading ``INTERFERENCES AND
CONCURRENT USE PROCEEDINGS'' above Sec. 2.91 to read ``CONCURRENT USE
PROCEEDINGS'' and remove the authority citation immediately following
that heading.
Sec. 2.91 [Reserved and Reserved]
0
3. Remove and reserve Sec. 2.91.
Sec. 2.92 [Reserved and Reserved]
0
4. Remove and reserve Sec. 2.92.
Sec. 2.93 [Reserved and Reserved]
0
5. Remove and reserve Sec. 2.93.
Sec. 2.96 [Reserved and Reserved]
0
6. Remove and reserve Sec. 2.96.
Sec. 2.98 [Reserved and Reserved]
0
7. Remove and reserve Sec. 2.98.
Dated: July 10, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2018-15163 Filed 7-16-18; 8:45 am]
BILLING CODE 3510-16-P