[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]


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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.

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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removal, modification, and streamlining because they are outdated, 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regulations and identifying those that should be repealed, replaced, or 
modified because they are outdated, unnecessary, ineffective, costly, 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