[Federal Register Volume 84, Number 127 (Tuesday, July 2, 2019)]
[Rules and Regulations]
[Pages 31498-31511]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-14087]
[[Page 31498]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2, 7, and 11
[Docket No. PTO-T-2018-0021]
RIN 0651-AD30
Requirement of U.S. Licensed Attorney for Foreign Trademark
Applicants and Registrants
AGENCY: 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, the Rules of
Practice in Filings Pursuant to the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks, and the
rules regarding Representation of Others Before the United States
Patent and Trademark Office to require applicants, registrants, or
parties to a trademark proceeding whose domicile is not located within
the United States (U.S.) or its territories (hereafter foreign
applicants, registrants, or parties) to be represented by an attorney
who is an active member in good standing of the bar of the highest
court of a state in the U.S. (including the District of Columbia or any
Commonwealth or territory of the U.S.). A requirement that such foreign
applicants, registrants, or parties be represented by a qualified U.S.
attorney will instill greater confidence in the public that U.S.
trademark registrations that issue to foreign applicants are not
subject to invalidation for reasons such as improper signatures and use
claims and enable the USPTO to more effectively use available
mechanisms to enforce foreign applicant compliance with statutory and
regulatory requirements in trademark matters.
DATES: This rule is effective on August 3, 2019.
FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy
Commissioner for Trademark Examination Policy, [email protected],
(571) 272-8946.
SUPPLEMENTARY INFORMATION: The USPTO revises the rules in parts 2, 7,
and 11 of title 37 of the Code of Federal Regulations to require
foreign applicants, registrants, or parties to a proceeding to be
represented by an attorney, as defined in Sec. 11.1, 37 CFR 11.1, that
is, an attorney who is an active member in good standing of the bar of
the highest court of a U.S. state (including the District of Columbia
and any Commonwealth or territory of the U.S.) and who is qualified
under Sec. 11.14(a), 37 CFR 11.14(a), to represent others before the
Office in trademark matters. A requirement that such foreign
applicants, registrants, or parties be represented by a qualified U.S.
attorney will (1) instill greater confidence in the public that U.S.
registrations that issue to foreign applicants are not subject to
invalidation for reasons such as improper signatures and use claims and
(2) enable the USPTO to more effectively use available mechanisms to
enforce foreign applicant compliance with statutory and regulatory
requirements in trademark matters.
I. Integrity of the U.S. Trademark Register
The trademark register must accurately reflect marks that are
actually in use in commerce in the U.S. for the goods/services
identified in the registrations. By registering trademarks, the USPTO
has a significant role in protecting consumers, as well as providing
important benefits to U.S. commerce by allowing businesses to
strengthen and safeguard their brands and related investments.
The public relies on the register to determine whether a chosen
mark is available for use or registration. When a person's search of
the register discloses a potentially confusingly similar mark, that
person may incur a variety of resulting costs and burdens, such as
those associated with investigating the actual use of the disclosed
mark to assess any conflict, initiating proceedings to cancel the
registration or oppose the application of the disclosed mark, engaging
in civil litigation to resolve a dispute over the mark, or choosing a
different mark and changing business plans regarding its mark. In
addition, such persons may incur costs and burdens unnecessarily if the
disclosed registered mark is not actually in use in U.S. commerce, or
is not in use in commerce in connection with all the goods/services
identified in the registration. An accurate and reliable trademark
register helps avoid such needless costs and burdens.
A valid claim of use made as to a registered mark likewise benefits
the registrant. Fraudulent or inaccurate claims of use jeopardize the
validity of any resulting registration and may render it vulnerable to
cancellation. Furthermore, trademark documents submitted in support of
registration require statutorily prescribed averments and must be
signed in accordance with Sec. 2.193(e)(1), 37 CFR 2.193(e)(1). If
signed by a person determined to be an unauthorized signatory, a
resulting registration may be invalid.
Therefore, the USPTO anticipates that implementation of this rule
will have the benefit of generally reducing costs to applicants,
registrants, and other parties and providing greater value to consumers
who rely on registered marks.
As discussed below, in the past few years, the USPTO has seen many
instances of unauthorized practice of law (UPL) where foreign parties
who are not authorized to represent trademark applicants are improperly
representing foreign applicants before the USPTO. As a result,
increasing numbers of foreign applicants are likely receiving
inaccurate or no information about the legal requirements for trademark
registration in the U.S., such as the standards for use of a mark in
commerce, who can properly aver to matters and sign for the mark owner,
or even who the true owner of a mark is under U.S. law. This practice
raises legitimate concerns that affected applications and any resulting
registrations are potentially invalid, and thus negatively impacts the
integrity of the trademark register.
II. Enforce Compliance With U.S. Statutory and Regulatory Requirements
The requirement for representation by a qualified U.S. attorney is
also necessary to enforce compliance by all foreign applicants,
registrants, and parties with U.S. statutory and regulatory
requirements in trademark matters. It will not only aid the USPTO in
its efforts to improve and preserve the integrity of the U.S. trademark
register, but will also ensure that foreign applicants, registrants,
and parties are assisted only by authorized practitioners who are
subject to the USPTO's disciplinary rules.
The USPTO is implementing the requirement for representation by a
qualified U.S. attorney in response to the increasing problem of
foreign trademark applicants who purportedly are pro se (i.e., one who
does not retain a lawyer and appears for himself or herself) and who
are filing inaccurate and possibly fraudulent submissions that violate
the Trademark Act (Act) and/or the USPTO's rules. For example, such
foreign applicants file applications claiming use of a mark in
commerce, but frequently support the use claim with mocked-up or
digitally altered specimens that indicate the mark may not actually be
in use. Many appear to be doing so on the advice, or with the
assistance, of foreign individuals and entities who are not authorized
to represent trademark applicants before
[[Page 31499]]
the USPTO. This practice undermines the accuracy and integrity of the
U.S. trademark register and its utility as a means for the public to
reliably determine whether a chosen mark is available for use or
registration, and places a significant burden on the trademark
examining operation.
Current Mechanisms and Sanctions are Inadequate
(1) Show-Cause Authority: Under 35 U.S.C. 3(b)(2)(A), the
Commissioner for Trademarks (Commissioner) possesses the authority to
manage and direct all aspects of the activities of the USPTO that
affect the administration of trademark operations. The Commissioner may
use that authority to investigate and issue an order requiring an
applicant to show cause why the applicant's representative, or the
applicant itself, should not be sanctioned under Sec. 11.18(c), 37 CFR
11.18(c), for presenting a paper to the USPTO in violation of Sec.
11.18(b), 37 CFR 11.18(b). However, given the location of foreign
applicants and those acting on their behalf, as well as potential
language barriers, the show-cause authority has rarely been successful
in resolving the underlying issues. Although all those who sign
documents in trademark matters before the USPTO do so subject to
criminal penalties for knowing and willful false statements made to a
government agency under 18 U.S.C. 1001, the criminal perjury
prosecution option under 18 U.S.C. 1001 is similarly difficult to
enforce against those who are not subject, or are not easily subject,
to U.S. jurisdiction. Further, proof to support such sanctions under
Sec. 11.18 is often difficult to obtain. For these primary reasons,
when a foreign applicant fails to comply with statutory and regulatory
requirements in ex parte examination, it has been challenging and, in
some cases, impossible for the Commissioner to use her show-cause
authority to impose the sanctions available under Sec. 11.18(c).
(2) USPTO Disciplinary Authority Under 35 U.S.C. 32: Requiring
foreign applicants, registrants, and parties to retain U.S. counsel in
all trademark matters before the USPTO will likely reduce the instances
of UPL and misconduct. In addition, when UPL and/or misconduct does
occur, requiring foreign applicants, registrants, and parties to retain
U.S. counsel will enable the Office of Enrollment and Discipline (OED)
to more effectively pursue those who are engaged in UPL and/or
misconduct. OED's disciplinary jurisdiction extends to a
``Practitioner,'' as that term is defined in Sec. 11.1, 37 CFR 11.1,
or a non-practitioner who offers legal services to people seeking to
register trademarks with the USPTO. For practitioners, OED may
investigate and institute formal disciplinary proceedings, which can
result in discipline of the practitioner, including: (1) Exclusion from
practice before the Office; (2) suspension from practice before the
Office; (3) reprimand or censure; or (4) probation.
When formal discipline is issued against a U.S. practitioner, OED
may also notify other federal agencies and the U.S. state bar(s) where
the practitioner is licensed and/or authorized to practice law, as
appropriate. A number of states have criminal statutes penalizing UPL.
Depending on the state, the state bar, consumer-protection arm of the
state's attorney office, and/or state consumer-protection agency may
investigate UPL and take action to protect the public. Additionally,
consumer-protection organizations and law-enforcement agencies can
investigate possible civil or criminal fraud at the federal and state
level. OED's ability to refer a disciplinary matter to a state bar for
further action or to a federal or state consumer-protection agency, or
law-enforcement agency, thus effectively deters disciplined
practitioners from violating the terms of their disciplinary orders.
However, the threat of a claim of UPL has not been equally
effective with foreign applicants and the unqualified foreign
individuals, attorneys, or firms advising them. Although the USPTO
investigates possible UPL by such foreign parties, because these
parties are not practitioners authorized to practice before the USPTO,
the absence of any realistic threat of disciplinary action has impeded
the USPTO's efforts to deter foreign parties from engaging in UPL or
violating a USPTO exclusion order. In addition, while the USPTO can
send a letter to a foreign government regarding the USPTO's exclusion
order, foreign government officials have great discretion regarding
whether to pursue further sanctions against their own citizens.
Further, since foreign parties are representing foreign applicants,
there may be few U.S. stakeholders directly affected by UPL by the
foreign party. There is little incentive for a state or federal law-
enforcement or consumer-protection agency to take action against a
foreign party engaged in UPL to protect U.S. interests, or to pursue
further action with consumer-protection agencies in other countries
where the foreign national does business. Moreover, the threat of
criminal perjury prosecution in U.S. courtrooms does not have the same
deterrent effect for foreign nationals as it does for U.S. nationals
and domiciles.
As a practical matter, even if U.S. law enforcement is able to
devote resources toward prosecution of a foreign national for a
violation of 18 U.S.C. 1001, exerting jurisdiction over such a party is
not always possible. Furthermore, many foreign unauthorized parties
acting on behalf of foreign applicants and registrants who have been
excluded by a Commissioner's order typically continue to engage in UPL
before the USPTO, often increasing the scale of their efforts and
employing tactics intended to circumvent the USPTO's rules.
Under this rule, submissions must be made by practitioners subject
to the disciplinary jurisdiction of OED, making it less likely that
they will be signed by an unauthorized party or contain statements that
are inaccurate, particularly as to any averment of use of the mark in
U.S. commerce or intention to use the mark. Further, because it will
result in a more accurate and reliable trademark register, fewer U.S.
applicants, registrants, and parties will incur the costs associated
with investigating the actual use of a mark to assess any conflict,
initiating proceedings to cancel a registration or oppose an
application, engaging in civil litigation to resolve a dispute over a
mark, or changing business plans to avoid use of a chosen mark.
Surge in Foreign Filings
Contributing to concerns regarding UPL, in recent years the USPTO
has experienced a significant surge in foreign filings, with the number
of trademark applications from foreign applicants increasing as a
percentage of total filings, as shown in the following table. The
numbers in parentheses indicate the number of applications represented
by each percentage:
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Filings from foreign or U.S.
applicants as a percentage of FY15 FY16 FY17
total filings *
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Foreign....................... 19% (70,853).............. 22% (87,706)............. 26% (115,402)
[[Page 31500]]
U.S........................... 81% (301,098)............. 78% (306,281)............ 74% (320,885)
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* Data as of 12/10/2018.
The USPTO predicts that the number of foreign trademark filings
will continue to rise based on a variety of economic factors, including
the strength of the U.S. economy. This growth is coupled with a
significant growth in the number of filings by foreign pro se
applicants in FY15 through FY17, especially as compared with filings by
U.S. pro se applicants. The information shown below reflects the
representation status at the time the USPTO electronic record was
searched to obtain the data. Representation status may change over the
course of prosecution. However, system limitations only permit the
USPTO to retrieve representation status at the time a search is done.
----------------------------------------------------------------------------------------------------------------
Filings from foreign or U.S.
applicants--representation FY15 FY16 FY17
status *
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U.S.--Pro Se.................. 25.3% (76,140)............ 27.2% (83,161)........... 28.5% (91,593).
U.S.--Represented............. 74.7% (224,958)........... 72.8% (223,120).......... 71.5% (229,292).
Foreign--Pro Se............... 25.4% (17,967)............ 35.9% (31,475)........... 44.0% (50,742).
Foreign--Represented.......... 74.6% (52,886)............ 64.1% (56,231)........... 56.0% (64,660).
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* Data as of 12/10/2018.
The USPTO continues to address numerous instances of UPL by foreign
parties who engage in tactics designed to circumvent USPTO rules. When
the USPTO identifies UPL by foreign parties in an application, the
USPTO sends information to the applicant's address of record informing
the applicant that its appointed representative has been ``excluded''
from practice before the USPTO and cannot represent the applicant in
the matter. In addition, the USPTO publishes the orders excluding
foreign unauthorized individuals and entities on its website and
suggests that applicants review all application submissions previously
submitted on their behalf. However, in many applications, the address
information for the applicant is not legitimate (i.e., the address is
for the unauthorized individual or entity representing the applicant)
or is incomplete or inaccurate, and the USPTO cannot be sure that the
affected applicants receive the information regarding the excluded
representative. This fact raises concerns that the affected
applications are potentially invalid because they were signed by an
unauthorized party or contain statements that are inaccurate,
particularly as to any averment of use of the mark in U.S. commerce or
intention to use the mark, which forms the underlying statutory basis
for federal registration.
Efforts to educate foreign applicants about UPL or to impose
effective sanctions against the foreign unauthorized individuals or
entities have proved ineffective. The problem of foreign applicants who
violate U.S. legal and regulatory requirements in trademark matters and
do so largely on the advice of foreign unauthorized individuals or
entities grows each month. Within the last few years, the scale of the
problem has become massive, with the estimated number of total tainted
applications now in the tens of thousands. It also is becoming
increasingly difficult for the USPTO, with its limited resources, to
identify and prove misconduct and UPL, particularly as tactics and
technology to mask the misconduct evolve.
III. Rule Changes
(1) Requirement for Representation. Under this rule, Sec. 2.11 is
amended to require applicants, registrants, or parties to a trademark
proceeding whose domicile is not located within the U.S. or its
territories to be represented by an attorney who is an active member in
good standing of the bar of the highest court of any of the 50 states
of the U.S., the District of Columbia, or any Commonwealth or territory
of the U.S.
In this final rule, the USPTO has further revised Sec. 2.11 to add
paragraph (f), which limits an applicant's or registrant's remedy to a
petition to the Director in the situation when the USPTO issues an
Office action that maintains only a requirement under paragraphs (a),
(b), and/or (c) of this section, or maintains the requirement for the
processing fee under Sec. 2.22(c) in addition to one or all of those
requirements. These requirements are purely procedural in nature and
thus are appropriate subject matter for a petition to the Director.
They also raise narrow issues that can be more efficiently reviewed and
resolved by the Director on petition than by the Trademark Trial and
Appeal Board on appeal. Therefore, the USPTO believes that it will
streamline examination and expedite resolution of challenges to an
Office action that maintains only these requirements by requiring that
such challenge be made by a petition to the Director.
To ensure clarity regarding who is subject to the requirements of
Sec. 2.11, Sec. 2.2 is amended to define ``domicile'' and ``principal
place of business.'' Although it was not in the proposed rule, the
USPTO also amends Sec. 7.1(f) to clarify that the other definitions in
Sec. 2.2 apply to part 7. The requirement is similar to the
requirement that currently exists in many other countries. The majority
of countries with a similar requirement condition the requirement on
domicile and the USPTO is following this practice. Moreover, requiring
a qualified attorney to represent applicants, registrants, and parties
whose domicile is not located within the U.S. or its territories is an
effective tool for combatting the growing problem of foreign
individuals, entities, and applicants failing to comply with U.S. law.
For consistency with this requirement, the USPTO has clarified that the
address required in Sec. Sec. 2.22(a)(1) and 2.32(a)(2) is the
domicile address. Further, to authorize the USPTO to require an
applicant or registrant to provide and maintain a current domicile
address, the USPTO codifies a new regulatory section at 37 CFR 2.189.
An affected applicant is required to obtain U.S. counsel to
prosecute the application. Therefore, when the USPTO receives a
trademark application filed by a foreign domiciliary, with a filing
basis under section 1 and/or section 44 of the Act, 15 U.S.C. 1051,
1126, that does not comply with the requirements of Sec. 2.11(a), the
applicant will be informed in an Office action that appointment of a
qualified U.S. attorney is required. The applicant will have the
current usual period of six months to respond to an Office action
including the requirement, and failure to comply
[[Page 31501]]
will result in abandonment of the application. See 37 CFR 2.63,
2.65(a).
Foreign-domiciled applicants who submit an application based on
section 66(a) of the Act (Madrid application), 15 U.S.C. 1141f, are
also subject to the requirement to appoint a qualified U.S. attorney.
Madrid applications are initially filed with the International Bureau
(IB) of the World Intellectual Property Organization and subsequently
transmitted to the USPTO. There is currently no provision for
designating a U.S. or any other local attorney in an application
submitted to the IB. Therefore, the USPTO will waive the requirement to
appoint a qualified U.S. practitioner prior to publication for the
small subset of Madrid applications (2.9% of all Madrid applications in
fiscal year 2017) submitted with all formalities and statutory
requirements already satisfied and in condition for publication upon
first action until the Madrid system is updated to allow for the
designation of a U.S. attorney.
(2) Recognition of representatives and requirement for bar
information. Under Sec. 2.32(a)(4), a recognized representative must
provide his or her bar information as a requirement for a complete
trademark application. For consistency with requiring this information
as to pending applications, the requirement is added to Sec.
2.17(b)(3) to make clear that the requirement for attorney bar
information for recognized representatives also applies in post-
registration maintenance documents, submissions in Madrid applications,
and TTAB proceedings. Also, Sec. 2.17(b)(1)(iii) and (b)(2) is amended
to clarify the previous wording ``in person'' and ``personal
appearance'' regarding how a qualified practitioner is recognized as a
representative. Section 2.17(e) is revised to clarify that recognition
of all foreign attorneys and agents, not just those from Canada, is
governed by Sec. 11.14(c). The change to Sec. 2.17(g) was made in
response to a commenter who requested that the USPTO clarify how long
representation continues. Prior to implementation of this rule, Sec.
2.17(g) referred to the duration of a power of attorney. However, under
Sec. 2.17(b), a representative may be recognized by methods other than
the filing of a power of attorney. Therefore, in order to respond to
the commenter's inquiry and to clarify when recognition ends,
regardless of the how the representative was recognized, the USPTO felt
it was necessary to amend Sec. 2.17(g) to make clear that it refers to
the duration of recognition, not just to the duration of a power of
attorney. However, no changes were made to the current length of
representation. Conforming amendments are also made to Sec. 2.22, for
filing a TEAS Plus application.
(3) Reciprocal recognition. Under this rule, Sec. 11.14 is amended
to clarify that only registered and active foreign attorneys or agents
who are in good standing before the trademark office of the country in
which the attorney or agent resides and practices may be recognized for
the limited purpose of representing parties located in such country,
provided the trademark office of such country and the USPTO have
reached an official understanding to allow substantially reciprocal
privileges. This rule also requires that in any trademark matter where
an authorized foreign attorney or agent is representing an applicant,
registrant, or party to a proceeding, a qualified U.S. attorney must
also be appointed pursuant to Sec. 2.17(b) and (c) as the
representative who will file documents with the Office and with whom
the Office will correspond.
Currently, only Canadian attorneys and agents are reciprocally
recognized under Sec. 11.14(c). This rule removes from the regulations
at Sec. 11.14(c) the authorization for reciprocally recognized
Canadian patent agents to practice before the USPTO in trademark
matters, but continues to allow reciprocal recognition of Canadian
trademark attorneys and agents in trademark matters. Those Canadian
patent agents already recognized to practice in U.S. trademark matters
continue to be authorized to practice in pending trademark matters on
behalf of Canadian parties only (1) so long as the patent agent remains
registered and in good standing in Canada and (2) in connection with an
application or post-registration maintenance filing pending before the
Office on the effective date of this rule for which the recognized
patent agent is the representative. Recognized Canadian trademark
attorneys and agents continue to be authorized to represent Canadian
parties in U.S. trademark matters.
IV. Cost To Retain U.S. Counsel
The following tables estimate the costs for complying with this
rule, using FY17 filing numbers for pro se applicants and registrants
with a domicile outside the U.S. or its territories and for Madrid
applicants and registrants. The professional rates shown below are the
median charges for legal services in connection with filing and
prosecuting an application, or filing a post-registration maintenance
document, as reported in the 2017 Report on the Economic Survey,
published by the American Intellectual Property Law Association.
As noted above, applicants subject to this rule are required to
retain U.S. counsel to prosecute an application and to handle post-
registration maintenance requirements and proceedings before the
Trademark Trial and Appeal Board (TTAB). The tables below reflect two
sets of aggregate costs--those for applicants who filed pro se in FY17
and would have retained counsel prior to filing and those who would
have retained counsel after filing. As discussed above, the information
shown below reflects the representation status at the time the USPTO
electronic record was searched to obtain the data. Representation
status may change over the course of prosecution and after
registration. The USPTO does not collect information or statistics on
applicants who file pro se but subsequently retain counsel during the
prosecution of their application. The USPTO recognizes that there may
have been a higher number of pro se applicants at filing than is
reflected below because some of those applicants subsequently retained
counsel prior to the date the search report was generated. Therefore,
although it is possible that a higher number of pro se applicants may
incur the cost of having counsel prepare and file an application, some
applicants would have already incurred the additional cost for
prosecution of the application.
The following table sets out the estimated costs, based on filing
basis, if pro se applicants in FY17 with a domicile outside the U.S. or
its territories retained counsel prior to filing their applications. A
filing basis is the statutory basis for filing an application for
registration of a mark in the U.S. An applicant must specify and meet
the requirements of one or more bases in a trademark or service mark
application. 37 CFR 2.32(a)(5). There are five filing bases: (1) Use of
a mark in commerce under section 1(a) of the Act; (2) bona fide
intention to use a mark in commerce under section 1(b) of the Act; (3)
a claim of priority, based on an earlier-filed foreign application
under section 44(d) of the Act; (4) ownership of a registration of the
mark in the applicant's country of origin under section 44(e) of the
Act; and (5) extension of protection of an international registration
to the U.S. under section 66(a) of the Act. 15 U.S.C. 1051(a)-(b),
1126(d)-(e), 1141f(a). The number of applicants shown within each
filing-basis category in the tables below reflects the basis status at
the time the USPTO electronic record was
[[Page 31502]]
searched to obtain the representation status.
Although the USPTO believes that applicants who are subject to the
requirement should retain U.S. counsel prior to filing an application,
the USPTO recognizes that not all will do so. Therefore, the USPTO
expects that the total estimated costs reflected in the table below
would be reduced by the number of applicants within each filing-basis
category who file an application without retaining U.S. counsel.
FY 17 Pro se Applications by Basis (Excluding Madrid)--Cost if Counsel Retained Before Filing *
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1(a)
Activity performed by counsel Median [Dagger] 1(b) 4,010 1(a)/1(b) 44 1,142 44/1(b) 137 Total cost
charge 35,506 69
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Filing foreign origin registration $600 N/A N/A N/A $603,000 N/A.......................... $603,000
application received ready for filing.
Preparing and filing application........... 775 $27,517,150 $3,107,750 $53,475 N/A $106,175..................... 30,784,550
Prosecution, including amendments and 1,000 35,506,000 4,010,000 69,000 1,142,000 Included in 44 applications.. 40,727,000
interviews but not appeals.
Statement of use [dagger].................. 400 N/A 1,604,000 27,600 N/A 54,800....................... 1,686,400
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Total.................................. ........... 63,023,150 8,721,750 150,075 1,745,000 160,975...................... 73,800,950
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* Data as of 12/10/2018. In addition to the number of applications shown for each filing basis, an additional 62 applications did not indicate a basis
on the date of filing and currently have no filing basis, either because the application abandoned or because the applicant had not yet responded to
the requirement to indicate a basis.
[dagger] If an application is filed under section 1(b) of the Act, the applicant must file a statement of use prior to registration.
[Dagger] The numbers underneath the filing basis indicate the number of applications filed for that basis.
The cost shown is for 1,005 section 44 applications, which is the total number of section 44 applications minus the subset that also includes a
section 1(b) filing basis.
Alternatively, the table below sets out the estimated costs, based
on filing basis, if pro se applicants in FY17 with a domicile outside
the U.S. or its territories retained counsel after filing their
applications. As in the situation described above, the USPTO
anticipates that a certain number of these applicants would retain U.S.
counsel prior to filing an application. Therefore, the USPTO expects
that the total estimated costs reflected in the table below would be
increased by the number of applicants within each filing-basis category
who chose to do so.
FY17 Pro se Applications by Basis (Excluding Madrid)--Cost if Counsel Retained After Filing *
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Median 1(a) 35,506 1(a)/1(b)
Activity performed by counsel charge [Dagger] 1(b) 4,010 69 44 1,142 44/1(b) 137 Total cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Filing foreign origin registration $600 N/A N/A N/A N/A N/A..........................
application received ready for filing.
Preparing and filing application........... 775 N/A N/A N/A N/A N/A..........................
Prosecution, including amendments and 1,000 $35,506,000 $4,010,000 $69,000 $1,142,000 Included in prior column..... $40,727,000
interviews but not appeals.
Statement of use [dagger].................. 400 N/A 1,604,000 27,600 N/A $54,800...................... 1,686,400
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Total.................................. ........... 35,506,000 5,614,000 96,600 1,142,000 54,800....................... 42,413,400
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* Data as of 12/10/2018. In addition to the number of applications shown for each filing basis, an additional 62 applications did not indicate a basis
on the date of filing and currently have no filing basis, either because the application abandoned or because the applicant had not yet responded to
the requirement to indicate a basis.
[dagger] If an application is filed under section 1(b) of the Act, the applicant must file a statement of use prior to registration.
[Dagger] The numbers underneath the filing basis indicate the number of applications filed for that basis.
This column represents the subset of section 44 applications that also includes a section 1(b) filing basis.
As discussed above, Madrid applications are initially filed with
the IB and subsequently transmitted to the USPTO. In FY17, the USPTO
received 24,418 Madrid applications in which the applicant had an
address outside the U.S. or its territories, and thus would be subject
to the requirement to retain U.S. counsel. There is currently no
provision for designating a U.S. attorney in an application submitted
to the IB. Therefore, the USPTO presumes that none of the Madrid
applicants subject to the requirement retained U.S. counsel prior to
filing. However, USPTO records indicate that at some point after
filing, 14,602 of those FY17 Madrid applicants were represented by
counsel. Therefore, only the remaining 9,816 Madrid applicants would be
subject to the requirement to retain U.S. counsel to prosecute their
applications, as shown in the following table:
FY17 Madrid Applications--Cost if Counsel Retained After Filing *
----------------------------------------------------------------------------------------------------------------
Activity performed by counsel FY17 Median charge Total charge
----------------------------------------------------------------------------------------------------------------
Prosecution, including amendments and interviews but not appeals 9,816 $1,000 $9,816,000
-----------------------------------------------
Total....................................................... .............. .............. 9,816,000
----------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018.
The following table sets out the estimated costs to FY17 pro se
registrants who would be subject to Sec. 2.11(a) when filing a post-
registration maintenance document.
[[Page 31503]]
FY17 Pro se Post-Registration Filings--Cost if Counsel Retained Before Filing *
----------------------------------------------------------------------------------------------------------------
Activity performed by counsel FY17 Median charge Total charge
----------------------------------------------------------------------------------------------------------------
Section 8 and 15 [dagger]....................................... 976 $500 $488,000
Renewal [Dagger]................................................ 405 500 202,500
Section 71 ................................................... 522 500 261,000
Madrid Renewal [bond][bond]..................................... 134 500 67,000
-----------------------------------------------
Total....................................................... .............. .............. 1,018,500
----------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018.
[dagger] Under section 8 of the Act, 15 U.S.C. 1058, an affidavit or declaration of continued use is required
during the sixth year after the date of registration for registrations issued under section 1 or section 44 of
the Act. Section 15 of the Act, 15 U.S.C. 1065, provides a procedure by which the exclusive right to use a
registered mark in commerce on or in connection with the goods or services covered by the registration can
become ``incontestable,'' if the owner of the registration files an affidavit or declaration stating, among
other criteria, that the mark has been in continuous use in commerce for a period of five years after the date
of registration.
[Dagger] Section 9 of the Act, 15 U.S.C. 1059, requires that registrations resulting from applications based on
section 1 or section 44 be renewed at the end of each successive 10-year period following the date of
registration.
Under section 71 of the Act, 15 U.S.C. 1141k, an affidavit or declaration of use is required during the sixth
year after the date of registration for registered extensions of protection of international registrations to
the U.S.
[bond][bond]The term of an international registration is ten years, and it may be renewed for ten years upon
payment of the renewal fee. Articles 6(1) and 7(1) of the Common Regulations Under the Madrid Agreement
Concerning the International Registration of Marks and the Protocol Relating to That Agreement.
For applicants, registrants, and parties not subject to the
requirement to retain U.S. counsel, the USPTO anticipates that
implementation of this rule will result in a more accurate and reliable
trademark register, which will have the benefit of generally reducing
costs to applicants, registrants, and parties and providing greater
value to consumers who rely on registered marks. Under this rule,
submissions will be made by practitioners subject to the disciplinary
jurisdiction of OED, making it less likely that they will be signed by
an unauthorized party or contain statements that are inaccurate,
particularly as to any averment of use of the mark in U.S. commerce or
intention to use the mark. Because it will result in a more accurate
and reliable trademark register, fewer U.S. applicants, registrants,
and parties will incur the costs associated with investigating the
actual use of a mark to assess any conflict, initiating proceedings to
cancel a registration or oppose an application, engaging in civil
litigation to resolve a dispute over a mark, or changing business plans
to avoid use of a chosen mark.
Proposed Rule: Comments and Responses
The USPTO published a notice of proposed rulemaking (NPRM) on
February 15, 2019, at 84 FR 4393, soliciting comments on the proposed
amendments. In response, the USPTO received comments from five groups
and thirty-three commenters representing law firms, organizations,
individuals, and other interested parties. The majority (74%) expressed
support for the proposed requirement, with several noting that it was
long overdue. Other commenters objected to the proposed requirement and
suggested alternatives. In addition, some commenters raised concerns
regarding discrimination against foreign-domiciled applicants and
registrants while others were worried that applicants and registrants
would find ways to bypass the requirement. Similar or related comments
are grouped together and summarized below, followed by the USPTO's
responses. All comments are posted on the USPTO's website at https://www.uspto.gov/trademark/trademark-updates-and-announcements/comments-proposed-rulemaking-require-foreign-domiciled.
Comment: One commenter inquired about the ``international
considerations'' taken into account in drafting the rule to require
U.S. counsel for a complete application but not as a condition to
obtain a filing date.
Response: Two such considerations for not making the requirement
for U.S. counsel a filing date requirement are Article 5 (``Filing
Date'') of both the World Intellectual Property Organization's
Singapore Treaty on the Law of Trademarks (2006) and the Trademark Law
Treaty (1994). The U.S. is a contracting party to both treaties.
Comment: In response to the USPTO's invitation to submit comments
regarding whether the USPTO should defer full examination of an
application until the applicant complies with the requirement to
appoint U.S. counsel or should conduct a complete examination and issue
an Office action that includes the requirement along with other
applicable refusals and requirements, four commenters supported the
first option and two commenters supported the second. One commenter
also noted that the proposed rule was unclear on the effective date and
how the proposed rules would be implemented not only with regard to
newly filed trademark applications, but also as to pending applications
and existing registrations, pending proceedings before the TTAB,
petitions, and letters of protest.
Response: The USPTO is sympathetic to the comments submitted by
those who support deferred examination of an application filed by a
foreign applicant who is not represented by U.S. counsel and thus has
not complied with the requirements of Sec. 2.11. Having an application
reviewed by a U.S. licensed attorney prior to examination on the merits
would help ensure that the application was signed by an authorized
party and that all statements made in the application are accurate,
particularly as to any averment that the mark is in use or intended to
be used in U.S. commerce. However, the USPTO's internal electronic
systems currently are not designed to accommodate a deferred
examination workflow, and our current understanding is that
implementing changes to those systems would require substantial
investment and take at least a year or more to complete. The USPTO is
currently exploring ways in which it may be able to update its
electronic systems to accommodate deferred examination.
Therefore, upon the effective date of this rule and until such time
as the USPTO's electronic systems may be updated to accommodate
deferred examination, the USPTO will examine all newly filed
applications for compliance with this rule in accordance with current
examination guidelines by, in most cases, conducting a complete review
of the application and issuing an Office action that includes the
requirement for U.S. counsel and for domicile, when appropriate, as
well as
[[Page 31504]]
any other refusals and/or requirements. The USPTO retains its
discretion to defer substantive examination and examine only for this
or other requirements in appropriate circumstances. Similarly, upon the
effective date of this final rule, the USPTO will examine all newly
filed post-registration maintenance documents for compliance with this
rule in accordance with current examination guidelines.
Furthermore, the USPTO believes it is likely that most applicants
who would be subject to the requirement to appoint U.S. counsel will
make the appointment in their initial application filing. Most pro se
foreign applicants have historically filed their applications using
TEAS Plus, which is the lowest-cost filing option, requires a complete
application, and usually results in a quicker approval for publication
and registration. The revisions to Sec. 2.22(a) enacted herein require
foreign applicants who file using the TEAS Plus option to designate a
U.S. attorney as the applicant's representative in order to submit the
application. Assuming that these applicants continue to avail
themselves of this attractive lower-cost option, the USPTO will not
need to issue an Office action requiring the appointment of a U.S.
counsel for TEAS Plus applicants because the application will
necessarily include the required designation at filing in order to be
able to successfully file with TEAS Plus. If a foreign applicant does
not designate a U.S. attorney as the applicant's representative on the
TEAS Plus application, the applicant will be unable to validate and
file the application.
The USPTO will also implement the following procedures regarding
application and registration documents filed prior to the effective
date of this rule. If a document submitted by a foreign applicant or
registrant prior to the effective date of this rule requires no further
action by the applicant or registrant, the USPTO will not require
appointment of U.S. counsel as to that filing. For example, if a
foreign applicant submits a new application that is in condition for
approval for publication or issuance of a registration on first action,
the examining attorney will approve the application for publication or
issuance of the registration. Similarly, if a response to an Office
action that was filed prior to the effective date of the rule satisfies
all outstanding requirements or overcomes all outstanding refusals, the
examining attorney will approve the application for publication or
issuance of a registration. However, if a further Office action must be
issued, the Office action will include the requirement for appointment
of U.S. counsel and for domicile, when appropriate.
The same procedure will be followed for post-registration
maintenance documents. If a post-registration maintenance document
filed before the effective date of this rule is acceptable as filed,
the USPTO will not require appointment of U.S. counsel as to that
document. If a post-registration Office action must be issued, however,
the Office action will include the requirement for appointment of U.S.
counsel. The same procedures will be followed for petitions submitted
prior to the effective date of this rule. Note that third-parties who
submit letters of protest regarding pending applications, pursuant to
section 1715 of the Trademark Manual of Examining Procedure, are not
applicants, registrants, or parties to a proceeding. Therefore, they
are not subject to the requirement of this rule to appoint U.S.
counsel.
The TTAB generally will apply this rule to all proceedings filed on
or after the effective date of this rule, and to all proceedings
pending on the effective date of this rule in which the parties must
take further action. If it is necessary to require a foreign party to
obtain U.S. counsel, the TTAB will suspend the proceedings and inform
the party of the time frame within which it must obtain U.S. counsel.
Comment: The USPTO received five comments that raised concerns
about the rule discriminating against foreign-domiciled applicants and
registrants.
Response: The USPTO disagrees that the requirement for foreign-
domiciled applicants and registrants to retain U.S. counsel
discriminates against foreign-domiciled applicants and registrants.
This rule is necessary to ensure compliance with U.S. trademark law and
USPTO regulations. In order to maintain the integrity of the federal
trademark register, for the benefit of all its users, the USPTO must
have the appropriate tools to enforce compliance by all applicants and
registrants. As discussed in the NPRM and in the preamble, while the
USPTO has effective mechanisms to sanction U.S.-domiciled applicants
and registrants, the currently available mechanisms for the USPTO to
sanction foreign-domiciled applicants and registrants for violations
have proven to be ineffective. As the NPRM and preamble also note, a
significant number of trademark offices around the world require
foreign-domiciled applicants and registrants to obtain local counsel as
a condition for filing papers with those trademark offices.
Comment: One commenter did not agree with the proposal to waive the
requirement to appoint a qualified U.S. practitioner prior to
publication for the small subset of Madrid applications submitted with
all formalities and statutory requirements satisfied and in condition
for publication upon first action until the Madrid system is updated to
allow for the designation of a U.S. attorney. The commenter suggested
that Madrid applicants be subject to the requirement for U.S. counsel
to ensure compliance with the requirement for a bona fide intention to
use the mark in U.S. commerce in connection with the goods or services
identified in the application.
Response: The USPTO appreciates the concern raised by the commenter
and has given it careful consideration. However, there is currently no
mechanism for the USPTO to require a U.S. attorney to be appointed as a
condition for a foreign national to file an international application
under the Madrid Protocol that includes a request for extension of
protection into the U.S. Moreover, the subset of Madrid applications
that would not be subject to this rule is very small and, in the
interests of the Madrid System, the USPTO will waive the requirement
for U.S. counsel in this limited situation. Additionally, there are
existing mechanisms to challenge the bona fide intention to use of an
applicant filing via section 66 or section 44 of the Act.
Comment: Some commenters noted that the proposed rule may increase
costs for foreign applicants.
Response: The USPTO acknowledges that the costs to comply with this
rule will be incurred by foreign applicants, registrants, and parties.
However, the USPTO also agrees with the commenter who stated that ``the
costs created by misuse of our existing system is [sic] borne by all
good faith trademark users regardless of where they live or whether or
not they are represented.'' This rule provides qualitative value to all
applicants and registrants, as well as to consumers, because it will
result in a more accurate and reliable trademark register. As noted
above, fraudulent or inaccurate claims of use jeopardize the validity
of any registration and may render it vulnerable to cancellation. Under
this rule, submissions will be made by practitioners subject to the
disciplinary jurisdiction of OED, making it less likely that they will
be signed by an unauthorized party or contain statements that are
inaccurate, particularly as to any averment of use of the mark in U.S.
commerce or intention to use the mark in U.S. commerce. Because it will
result in a more accurate
[[Page 31505]]
and reliable trademark register, fewer applicants, registrants, and
parties will incur the costs associated with changing business plans to
avoid use of a chosen mark. As noted by one commenter, ``[b]eing forced
to adopt a different mark because a first choice is blocked by a bad
faith application or registration significantly adds to the cost of
adopting a new trademark. The cost of delaying a brand launch for years
pending the outcome of an opposition or cancellation action, however,
is much greater and, in most cases, not feasible.''
Comment: Some commenters suggested that the USPTO allow trademark
agents to represent others in trademark matters before the USPTO.
Response: Part 11 of title 37 of the Code of Federal Regulations
governs the practice of trademark law before the USPTO. Under Sec.
11.14(a), 37 CFR 11.14(a), only an attorney, as defined in Sec. 11.1,
may represent others before the USPTO in trademark matters. Under Sec.
11.1, an attorney is defined as an individual who is an active member
in good standing of the bar of the highest court of any State, which is
defined as any of the 50 states of the U.S., the District of Columbia,
and any Commonwealth or territory of the U.S. The only exception is
Sec. 11.14(c), which is amended under this rule to clarify that only
registered and active foreign attorneys or agents who are in good
standing before the trademark office of the country in which the
attorney or agent resides and practices may be recognized for the
limited purpose of representing parties located in such country,
provided the trademark office of such country and the USPTO have
reached an official understanding to allow substantially reciprocal
privileges. This rule also requires that in any trademark matter where
an authorized foreign attorney or agent is representing an applicant,
registrant, or party to a proceeding, a qualified U.S. attorney must
also be appointed pursuant to Sec. 2.17(b) and (c) as the
representative who will file documents with the USPTO and with whom the
Office will correspond. As noted above, currently, only Canadian
attorneys and agents are reciprocally recognized under Sec. 11.14(c).
Revising the USPTO's current rules to allow representation by other
trademark agents would not provide a solution to the ever-growing
problem of UPL in trademark matters.
Comment: One commenter suggested that the USPTO consider
instituting a secondary bar certification, as is required for patent
attorneys, in order for an attorney to provide trademark
representation. Another commenter expressed concern that the USPTO
might require such certification.
Response: Although the USPTO appreciates the first commenter's
rationale that a secondary bar certification would help to ensure that
practitioners who represent parties in trademark matters are
knowledgeable in this area of practice, the USPTO does not plan at this
time to require such certification. However, the USPTO will continue to
review such suggestions in light of the statutory framework set forth
in the Administrative Procedure Act. See 5 U.S.C. 500.
Comment: Some commenters expressed concerns regarding efforts by
foreign applicants and registrants to circumvent the proposed
requirement by using temporary or fraudulent U.S. addresses or by
fraudulently using the address and contact information of U.S.
attorneys. One commenter suggested that the USPTO train employees to
identify suspicious domicile, attorney, and email addresses and several
others suggested that the USPTO set up a secure system, similar to that
used for patent applications, for filing and prosecuting trademark
applications.
Response: The USPTO appreciates the concerns expressed by the
commenters regarding efforts to circumvent this rule. The USPTO does
not have the resources to investigate each U.S. domicile address
provided by a non-U.S. citizen to determine whether it legitimately
identifies a permanent legal residence or a principal place of
business. However, the USPTO will train examining attorneys on
identifying characteristics of applicant information that would warrant
inquiry as to whether the applicant is subject to the requirement.
Further, if the USPTO becomes aware of a potentially fictitious or
false domicile address or attorney information, the USPTO can, under
Sec. 2.61(b), require the applicant, registrant, or party to provide
proof of the validity of the domicile address or attorney information.
Currently, under Sec. 11.18(b), any party who signs, files, or
submits a paper to the USPTO is certifying that all statements made of
the party's own knowledge are true, or made on information and belief
are believed to be true and that the paper is not being presented for
an improper purpose. Under Sec. 2.189 of this rule, each applicant and
registrant must provide and keep current the address of its domicile.
Further, under Sec. 2.11(e) of this rule, a foreign applicant,
registrant, or party who attempts to circumvent the requirements of
Sec. 2.11(a) of this rule by providing false, fictitious, or
fraudulent information regarding its domicile address or its attorney
will be subject to the sanctions in Sec. 11.18(c), which includes
terminating the proceedings before the USPTO, for example, abandoning
an application or cancelling a registration.
The USPTO is also in the process of updating its electronic systems
to make them more secure, including to require login to take action in
trademark files.
Comment: One commenter stated that ``U.S. licensed attorneys are
not required to independently verify the validity of specimens
submitted by their clients when prosecuting a trademark application and
may rely on the sworn statements and specimens provided by their
clients.'' Another commenter inquired as to the due-diligence
requirements of U.S.-licensed attorneys to ensure that use claims are
valid in all of the trademark applications they file, not just those of
foreign applicants.
Response: Under USPTO rules, attorneys must conduct a reasonable
inquiry, before submitting any filing, to determine that the filing is
not being presented for any improper purpose and that the facts have
evidentiary support. 37 CFR 11.18. Thus, attorneys have an independent
obligation to ensure to the best of their knowledge, information, and
belief that the requirements for use in U.S. commerce are met in the
filings they sign or submit to the Office on behalf of their clients
and it is the responsibility of the applicant and the applicant's
attorney to determine whether an assertion of use in commerce has a
basis in existing law and is supported by the relevant facts, including
that the specimen of use is valid. 37 CFR 11.18; TMEP section 901.04.
Sanctions for violating these rules could include striking the
filing, terminating the proceedings, and referring the attorney to OED
for appropriate action. In addition, attorneys could be disciplined for
such violations, including exclusion or suspension from practice before
the USPTO, reprimand, censure, or probation. Attorneys disciplined by
the USPTO also may be disciplined by their state bar.
Comment: Some commenters recommended that the USPTO amend the
application form to reference the rule requirements in several
languages, to include a section for the attorney bar information, and
to mask the bar information.
Response: The USPTO has no plans to update the application form to
reference required information in languages other than English. Under
Sec. 2.21(a), which sets out the requirements for receiving a filing
date, an application under section 1 or section 44 of the Act must
[[Page 31506]]
be in the English language. Regarding bar information, on the effective
date of this rule, the application form will include specific fields to
enter attorney address and bar information, including attorney bar
numbers for those jurisdictions that provide them.
Attorney address and bar information is publicly available from
multiple sources such as firm websites, state boards of bar overseers,
and various bar associations. Because such information is so widely
available to the public, it appears unnecessary to mask the information
in the USPTO's publicly available records. However, because the USPTO
appreciates the concern that attorney bar information may be misused by
bad actors in trademark filings, the USPTO intends to mask in the
public database bar information that is entered in the dedicated fields
for such information on a Trademark Electronic Application System
(TEAS) form.
Comment: One commenter requested that the USPTO clarify whether,
under this rule, representation by U.S. counsel continues after
registration and through any TTAB proceedings unless properly withdrawn
under Sec. Sec. 2.19 and 11.116.
Response: Prior to implementation of this rule. Sec. 2.17(g)
referred to the duration of a power of attorney. However, under Sec.
2.17(b), a representative may be recognized by methods other than the
filing of a power of attorney. Therefore, in order to respond to the
commenter's inquiry and to clarify when recognition ends, regardless of
the how the representative was recognized, the USPTO felt it was
necessary to amend Sec. 2.17(g) to make clear that it refers to the
duration of recognition, not just to the duration of a power of
attorney. However, no changes were made to the current length of
representation. Under Sec. 2.17(g), representation during the pendency
of an application ends when the mark registers, when ownership changes,
or when the application is abandoned. Representation by a practitioner
recognized after registration ends when the mark is cancelled or
expired, when ownership changes, or when an affidavit under section 8,
12(c), 15, or 71 of the Act, renewal application under section 9 of the
Act, or request for amendment or correction under section 7 of the Act,
is accepted or finally rejected. Representation in TTAB proceedings may
end when a written revocation of the authority to represent a party is
filed with the TTAB or when the TTAB grants permission for the
practitioner to withdraw. The USPTO notes that even after
representation is considered to have ended under these rules, if the
attorney does not formally withdraw as representative, the USPTO's
systems may still reflect the attorney's information and the USPTO may
send courtesy reminders of post-registration filing deadlines to the
attorney.
Comment: One commenter stated that it supports the USPTO's proposal
to seek more reciprocal agreements with other countries, but requested
information regarding how the USPTO identifies, negotiates, and
implements reciprocal agreements. Another commenter indicated that he
was in favor of the rule because it ``adds reciprocity.''
Response: The USPTO notes that the NPRM did not include a proposal
to seek or add additional reciprocal agreements.
Discussion of Regulatory Changes
The USPTO revises Sec. 2.2 to add Sec. 2.2(o), defining
``domicile'' and Sec. 2.2(p), defining ``principal place of
business.''
The USPTO revises Sec. 2.11 to change the heading to ``Requirement
for representation,'' deletes the first sentence, includes the
remaining sentence in new Sec. 2.11(a) and adds Sec. 2.11(b)-(f),
which set out the requirements regarding representation of applicants,
registrants, or parties to a proceeding whose domicile is not located
within the U.S. or its territories.
The USPTO revises Sec. 2.17(b)(1)(iii) and (b)(2) to clarify how a
qualified practitioner is recognized and authorized as a
representative. The USPTO adds Sec. 2.17(b)(3) to require the bar
information of recognized representatives. The USPTO revises Sec.
2.17(e) to change the word ``Canadian'' in the heading to ``Foreign,''
to state that recognition of foreign attorneys and agents is governed
by Sec. 11.14(c) of this chapter, and to delete current Sec.
2.17(e)(1) and (2). The USPTO also revises Sec. 2.17(g) to change the
heading to ``Duration of recognition'' and to amend paragraphs (g)(1)
and (2) to clarify when recognition of a representative ends.
The USPTO revises Sec. 2.22(a)(1) to require the applicant's
domicile address and adds Sec. 2.22(a)(21) to require representation
by a U.S. attorney for applicants, registrants, or parties to a
proceeding whose domicile is not located within the U.S. or its
territories as well as the attorney's name, postal address, email
address, and bar information.
The USPTO revises Sec. 2.32(a)(2) to include the requirement for
the domicile address of each applicant and Sec. 2.32(a)(4) to delete
the current text and to indicate that when the applicant is, or must
be, represented by an attorney, the attorney's name, postal address,
email address, and bar information are required.
The USPTO adds Sec. 2.189 to require applicants and registrants to
provide and keep current their domicile addresses.
The USPTO revises Sec. 7.1(f) to indicate that all definitions in
Sec. 2.2 apply to part 7 and not just paragraphs (k) and (n) in Sec.
2.2.
The USPTO redesignates current Sec. 11.14(c) as Sec. 11.14(c)(1)
and clarifies the requirements for reciprocal recognition in revised
paragraph (c)(1). The USPTO also adds Sec. 11.14(c)(2) to require that
in any trademark matter where an authorized foreign attorney or agent
is representing an applicant, registrant, or party to a proceeding, a
qualified U.S. attorney must also be appointed pursuant to Sec.
2.17(b) and (c) as the representative who will file documents with the
Office and with whom the Office will correspond. The USPTO revises
Sec. 11.14(e) to add the heading ``Appearance,'' and the prefatory
phrase ``Except as specified in Sec. 2.11(a) of this chapter'' and the
wording ``or on behalf of'' to the second sentence, and deletes the
third sentence. The USPTO also deletes the wording ``if such firm,
partnership, corporation, or association is a party to a trademark
proceeding pending before the Office'' from Sec. 11.14(e)(3).
Rulemaking Requirements
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 (DC 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. Ct. at 1206 (Notice-
and-comment
[[Page 31507]]
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 has chosen to seek public comment before implementing the rule
to benefit from the public's input.
B. Final Regulatory Flexibility Analysis: The USPTO publishes this
Final Regulatory Flexibility Analysis (FRFA) as required by the
Regulatory Flexibility Act (RFA) (5 U.S.C. 601 et seq.) to examine the
impact of the Office's changes to require U.S. counsel for foreign-
domiciled applicants, registrants, and parties to a proceeding. Under
the RFA, whenever an agency is required by 5 U.S.C. 553 (or any other
law) to publish a notice of proposed rulemaking (NPRM), the agency must
prepare and make available for public comment a FRFA, unless the agency
certifies under 5 U.S.C. 605(b) that the proposed rule, if implemented,
will not have a significant economic impact on a substantial number of
small entities. 5 U.S.C. 603, 605. The USPTO published an Initial
Flexibility Analysis (IRFA), along with the NPRM, on February 15, 2019
(84 FR 4393). The USPTO received no comments from the public directly
applicable to the IFRA, as stated below in Item 2.
Items 1-6 below discuss the six items specified in 5 U.S.C.
604(a)(1)-(6) to be addressed in a FRFA. Item 6 below discusses
alternatives considered by the Office.
1. Succinct statement of the need for, and objectives of, the rule:
This rule requires applicants, registrants, or parties to a
proceeding whose domicile is not located within the U.S. or its
territories to be represented by an attorney who is an active member in
good standing of the bar of the highest court of a U.S. state
(including the District of Columbia and any Commonwealth or territory
of the U.S.) and who is qualified to represent others before the Office
in trademark matters.
The requirement for representation by a qualified U.S. attorney is
in response to the increasing problem of foreign trademark applicants
who purportedly are pro se and who are filing what appear to be
inaccurate and even fraudulent submissions that violate the Act and/or
the USPTO's rules. In the past few years, the USPTO has seen many
instances of UPL where foreign parties who are not authorized to
represent trademark applicants are improperly representing foreign
applicants before the USPTO. As a result, increasing numbers of foreign
applicants are likely receiving inaccurate or no information about the
legal requirements for trademark registration in the U.S., such as the
standards for use of a mark in commerce, who can properly aver to
matters and sign for the mark owner, or even who the true owner of a
mark is under U.S. law. This practice raises legitimate concerns that
affected applications and any resulting registrations are potentially
invalid, particularly as to averments of use of the mark in U.S.
commerce or intention to use the mark, and thus negatively impacts the
integrity of the federal trademark register.
The requirement is also necessary to enforce compliance by all
foreign applicants, registrants, and parties with U.S. statutory and
regulatory requirements in trademark matters. Thus, it will not only
aid the USPTO in its efforts to improve and preserve the integrity of
the U.S. trademark register, but will also ensure that foreign
applicants, registrants, and parties are assisted only by authorized
practitioners who are subject to the USPTO's disciplinary rules.
The policy objectives of this rule are to: (1) Instill greater
confidence in the public that U.S. registrations that issue to foreign
applicants are not subject to invalidation for reasons such as improper
signatures and use claims and (2) enable the USPTO to more effectively
use available mechanisms to enforce foreign applicant compliance with
statutory and regulatory requirements in trademark matters. As to the
legal basis for this rule, section 41 of the Act, 15 U.S.C. 1123, as
well as 35 U.S.C. 2, provide the authority for the Director to make
rules and regulations for the conduct of proceedings in the Office.
2. A statement of the significant issues raised by the public
comments in response to the initial regulatory flexibility analysis, a
statement of the assessment of the Agency of such issues, and a
statement of any changes made in the proposed rule as a result of such
comments:
The USPTO did not receive any public comments in response to the
IRFA. However, the Office received comments about the proposed
requirement for U.S. counsel, which are discussed in the preamble.
3. The response of the Agency to any comments filed by the Chief
Counsel for Advocacy of the Small Business Administration in response
to the proposed rule, and a detailed statement of any change made to
the proposed rule in the final rule as a result of the comments:
The USPTO did not receive any comments filed by the Chief Counsel
for Advocacy of the Small Business Administration in response to the
proposed rule.
4. Description of and an estimate of the number of small entities
to which the rule will apply or an explanation of why no such estimate
is available:
To comply with this rule, foreign applicants, registrants, or
parties are required to be represented by an attorney who is an active
member in good standing of the bar of the highest court of a U.S. state
(including the District of Columbia and any Commonwealth or territory
of the U.S.). Applicants for a trademark are not industry specific and
may consist of individuals, small businesses, non-profit organizations,
and large corporations. The USPTO does not collect or maintain
statistics on small- versus large-entity applicants, registrants, or
parties, and this information would be required in order to determine
the number of small entities that would be affected by the proposed
rule.
5. Description of the projected reporting, recordkeeping, and other
compliance requirements of the rule, including an estimate of the
classes of small entities which will be subject to the requirement and
the type of professional skills necessary for preparation of the report
or record:
There are no recordkeeping requirements imposed by this rule. The
reporting requirement of this rule consists of entering the attorney
name, address, and bar information in the required fields on the
USPTO's electronic forms or providing the information on documents
submitted to the USPTO by other methods. There are no professional
skills necessary for the reporting of the attorney name, address, and
bar information.
To comply with this rule, applicants, registrants, and parties to a
proceeding whose domicile is not located within the U.S. must hire an
attorney who is an active member in good standing of the bar of the
highest court of a U.S. state (including the District of Columbia and
any Commonwealth or territory of the U.S.) and who is qualified under
Sec. 11.14(a), 37 CFR 11.14(a), to represent them before the Office in
trademark matters.
[[Page 31508]]
6. Description of the steps the Agency has taken to minimize the
significant economic impact on small entities consistent with the
stated objectives of applicable statutes, including a statement of the
factual, policy, and legal reasons for selecting the alternative
adopted in the final rule and why each one of the other significant
alternatives to the rule considered by the Agency which affect the
impact on small entities was rejected:
The USPTO considered three alternatives before recommending that
foreign applicants, registrants, or parties be represented by a
qualified U.S. attorney. The USPTO chose the alternative herein because
it will enable the Office to achieve its goals effectively and
efficiently. Those goals are to (1) instill greater confidence in the
public that U.S. registrations that issue to foreign applicants are not
subject to invalidation for reasons such as improper signatures and use
claims and (2) enable the USPTO to more effectively use available
mechanisms to enforce foreign applicant compliance with statutory and
regulatory requirements in trademark matters.
Due to the difficulty in quantifying the intangible benefits
associated with the preferred alternative, the Office provides below a
discussion of the qualitative benefits to trademark applicants and
registrants. One of the primary benefits of the preferred alternative
is ensuring the accuracy of the trademark register. The accuracy of the
trademark register as a reflection of marks that are actually in use in
commerce in the U.S. for the goods/services identified in the
registrations listed therein serves a critical purpose for the public
and for all registrants. By registering trademarks, the USPTO has a
significant role in protecting consumers, as well as providing
important benefits to American businesses, by allowing them to
strengthen and safeguard their brands and related investments. Such
benefits would be especially valuable for small entities for the
following reasons. The public relies on the register to determine
whether a chosen mark is available for use or registration. When a
person's search of the register discloses a potentially confusingly
similar mark, that person may incur a variety of resulting costs and
burdens, such as those associated with investigating the actual use of
the disclosed mark to assess any conflict, initiating proceedings to
cancel the registration or oppose the application of the disclosed
mark, engaging in civil litigation to resolve a dispute over the mark,
or changing business plans to avoid use of the party's chosen mark. In
addition, such persons may incur costs and burdens unnecessarily if a
registered mark is not actually in use in commerce in the U.S., or is
not in use in commerce in connection with all the goods/services
identified in the registration. An accurate and reliable trademark
register helps avoid such needless costs and burdens. A valid claim of
use made as to a registered mark likewise benefits the registrant.
Fraudulent or inaccurate claims of use jeopardize the validity of any
resulting registration and may subject it to attack and render it
vulnerable to cancellation.
The chosen alternative also addresses the increasing problem of
foreign trademark applicants who purportedly are pro se and who are
filing what appear to be inaccurate and possibly even fraudulent
submissions that violate the Act and/or the USPTO's rules. Requiring
foreign applicants, registrants, and parties to retain U.S. counsel in
all trademark matters before the USPTO will likely reduce the instances
of UPL and misconduct and, when misconduct does occur, it will enable
OED to more effectively pursue those who are engaged in UPL and/or
misconduct. The threat of a claim of UPL has not been effective with
foreign applicants and the unqualified foreign individuals, attorneys,
or firms advising them.
The USPTO estimated the costs for complying with the rule using
FY17 filing numbers for pro se applicants and registrants with a
domicile outside the U.S. or its territories, and for Madrid applicants
and registrants. As discussed in the preamble, the cost estimates
reflect the representation status at the time the USPTO electronic
record was searched to obtain the data.
Applicants under section 1 or section 44 of the Act who are subject
to this rule are required to retain U.S. counsel to meet the
requirements for a complete application under Sec. 2.32(a)(4). Based
on FY17 filing numbers, if such applicants did not retain counsel prior
to filing an application, the USPTO estimates that the cost for
representation would be $42,413,400. The estimated cost if such
applicants had retained counsel prior to filing their applications
would be $73,800,950. Madrid applications, which are based on section
66(a) of the Act, are initially filed with the IB and subsequently
transmitted to the USPTO. In FY17, the USPTO received 24,418 Madrid
applications in which the applicant had an address outside the U.S. or
its territories, and thus would be subject to the requirement. There is
currently no provision for designating a U.S. attorney in an
application submitted to the IB. Therefore, the USPTO presumes that
none of the Madrid applicants subject to the requirement would have
retained U.S. counsel prior to filing. However, USPTO records indicate
that at some point after filing, 14,602 of those FY17 Madrid applicants
were represented by counsel. Therefore, only the remaining 9,816 Madrid
applicants would be subject to the requirement to retain U.S. counsel
to prosecute their applications. Therefore, the USPTO estimates the
cost to all FY17 Madrid applicants to retain counsel after filing their
applications as $9,816,000. The estimated costs to FY17 pro se
registrants who registered under section 1, section 44, or section
66(a) of the Act and who would be subject to the requirement to retain
U.S. counsel when filing a post-registration maintenance document is
$1,018,500.
The costs to comply with this rule would be incurred by foreign
applicants, registrants, and parties. This rule does not impact
individuals or large or small entities with a domicile within the U.S.
Moreover, this rule provides qualitative value to all applicants and
registrants, as well as to consumers, because it will result in a more
accurate and reliable trademark register. Under this rule, submissions
will be made by practitioners subject to the disciplinary jurisdiction
of OED, making it less likely that they will be signed by an
unauthorized party or contain statements that are inaccurate,
particularly as to any averment of use of the mark in U.S. commerce or
intention to use the mark. Because it will result in a more accurate
and reliable trademark register, fewer applicants, registrants, and
parties will incur the costs associated with investigating the actual
use of a mark to assess any conflict, initiating proceedings to cancel
a registration or oppose an application, engaging in civil litigation
to resolve a dispute over a mark, or changing business plans to avoid
use of a chosen mark.
The second alternative considered would be to take no action at
this time. This alternative was rejected because the Office has
determined that the requirement is needed to accomplish the stated
objectives of instilling greater confidence in the public that U.S.
registrations that issue to foreign applicants are not subject to
invalidation for reasons such as improper signatures and use claims and
enabling the USPTO to more effectively use available mechanisms to
enforce foreign applicant compliance with statutory and regulatory
requirements in trademark matters.
A third alternative considered was to propose a revision to Sec.
2.22 that would require foreign applicants to retain U.S.
[[Page 31509]]
counsel in order to obtain a filing date for an application under
section 1 and/or section 44 of the Act. This alternative was rejected
due to international considerations. Thus, when the USPTO receives an
application filed by a foreign domiciliary, with a filing basis under
section 1 and/or section 44 of the Act that does not comply with the
requirements of Sec. 2.11(a), the USPTO must inform the applicant that
appointment of a qualified U.S. attorney is required. Although this
places an additional burden on the USPTO, it minimizes the impact of
this rule on small entities. Although such entities may choose to incur
the cost of retaining counsel to prepare and file an application, they
would not be required to do so.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563 (Jan. 18,
2011). 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 subject to the requirements of
Executive Order 13771 (Jan. 30, 2017) because it is expected to result
in no more than de minimis costs to citizens and residents of the
United States.
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 that 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 numbers 0651-0009, 0651-0050, 0651-0051, 0651-0054, 0651-0055,
0651-0056, and 0651-0061. We estimate that 41,000 applications will
have an additional burden of 5 minutes due to this rulemaking, adding
in 3,000 burden hours across all trademark collections.
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
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 7
Administrative practice and procedure, International registration,
Trademarks.
37 CFR Part 11
Administrative practice and procedure, Inventions and patents,
[[Page 31510]]
Lawyers, Reporting and recordkeeping requirements, 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 parts 2, 7, and 11 of title 37 as follows:
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 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. Amend Sec. 2.2 by adding paragraphs (o) and (p) to read as follows:
Sec. 2.2 Definitions.
* * * * *
(o) The term domicile as used in this part means the permanent
legal place of residence of a natural person or the principal place of
business of a juristic entity.
(p) The term principal place of business as used in this part means
the location of a juristic entity's headquarters where the entity's
senior executives or officers ordinarily direct and control the
entity's activities and is usually the center from where other
locations are controlled.
0
3. Revise Sec. 2.11 to read as follows:
Sec. 2.11 Requirement for representation.
(a) An applicant, registrant, or party to a proceeding whose
domicile is not located within the United States or its territories
must be represented by an attorney, as defined in Sec. 11.1 of this
chapter, who is qualified to practice under Sec. 11.14 of this
chapter. The Office cannot aid in the selection of an attorney.
(b) The Office may require an applicant, registrant, or party to a
proceeding to furnish such information or declarations as may be
reasonably necessary to the proper determination of whether the
applicant, registrant, or party is subject to the requirement in
paragraph (a) of this section.
(c) An applicant, registrant, or party to a proceeding may be
required to state whether assistance within the scope of Sec.
11.5(b)(2) of this chapter was received in a trademark matter before
the Office and, if so, to disclose the name(s) of the person(s)
providing such assistance and whether any compensation was given or
charged.
(d) Failure to respond to requirements issued pursuant to
paragraphs (a) through (c) of this section is governed by Sec. 2.65.
(e) Providing false, fictitious, or fraudulent information in
connection with the requirements of paragraphs (a) through (c) of this
section shall be deemed submitting a paper for an improper purpose, in
violation of Sec. 11.18(b) of this chapter, and subject to the
sanctions and actions provided in Sec. 11.18(c).
(f) Notwithstanding Sec. 2.63(b)(2)(ii), if an Office action
maintains only requirements under paragraphs (a), (b), and/or (c) of
this section, or only requirements under paragraphs (a), (b), and/or
(c) of this section and the requirement for a processing fee under
Sec. 2.22(c), the requirements may be reviewed only by filing a
petition to the Director under Sec. 2.146.
0
4. Revise Sec. 2.17 to read as follows:
Sec. 2.17 Recognition for representation.
(a) Authority to practice in trademark cases. Only an individual
qualified to practice under Sec. 11.14 of this chapter may represent
an applicant, registrant, or party to a proceeding before the Office in
a trademark case.
(b)(1) Recognition of practitioner as representative. To be
recognized as a representative in a trademark case, a practitioner
qualified under Sec. 11.14 of this chapter may:
(i) File a power of attorney that meets the requirements of
paragraph (c) of this section;
(ii) Sign a document on behalf of an applicant, registrant, or
party to a proceeding who is not already represented by a practitioner
qualified under Sec. 11.14 of this chapter from a different firm; or
(iii) Appear by being identified as the representative in a
document submitted to the Office on behalf of an applicant, registrant,
or party to a proceeding who is not already represented by a
practitioner qualified under Sec. 11.14 of this chapter from a
different firm.
(2) Authorization to represent. When a practitioner qualified under
Sec. 11.14 of this chapter signs a document or appears pursuant to
paragraph (b) of this section, his or her signature or appearance shall
constitute a representation to the Office that he or she is authorized
to represent the person or entity on whose behalf he or she acts. The
Office may require further proof of authority to act in a
representative capacity.
(3) Bar information required. A practitioner qualified under Sec.
11.14(a) of this chapter will be required to provide the name of a
State, as defined in Sec. 11.1 of this chapter, in which he or she is
an active member in good standing, the date of admission to the bar of
the named State, and the bar license number, if one is issued by the
named State. The practitioner may be required to provide evidence that
he or she is an active member in good standing of the bar of the
specified State.
(c) Requirements for power of attorney. A power of attorney must:
(1) Designate by name at least one practitioner meeting the
requirements of Sec. 11.14 of this chapter; and
(2) Be signed by the individual applicant, registrant, or party to
a proceeding pending before the Office, or by someone with legal
authority to bind the applicant, registrant, or party (e.g., a
corporate officer or general partner of a partnership). In the case of
joint applicants or joint registrants, all must sign. Once the
applicant, registrant, or party has designated a practitioner(s)
qualified to practice under Sec. 11.14 of this chapter, that
practitioner may sign an associate power of attorney appointing another
qualified practitioner(s) as an additional person(s) authorized to
represent the applicant, registrant, or party. If the applicant,
registrant, or party revokes the original power of attorney (Sec.
2.19(a)), the revocation discharges any associate power signed by the
practitioner whose power has been revoked. If the practitioner who
signed an associate power withdraws (Sec. 2.19(b)), the withdrawal
discharges any associate power signed by the withdrawing practitioner
upon acceptance of the request for withdrawal by the Office.
(d) Power of attorney relating to multiple applications or
registrations. (1) The owner of an application or registration may
appoint a practitioner(s) qualified to practice under Sec. 11.14 of
this chapter to represent the owner for all existing applications or
registrations that have the identical owner name and attorney through
TEAS.
(2) The owner of an application or registration may file a power of
attorney that relates to more than one trademark application or
registration, or to all existing and future applications and
registrations of that owner, on paper. A person relying on such a power
of attorney must:
(i) Include a copy of the previously filed power of attorney; or
(ii) Refer to the power of attorney, specifying the filing date of
the previously filed power of attorney; the application serial number
(if known), registration number, or inter partes proceeding number for
which the original power of attorney was filed; and the name of the
person who signed the power of attorney; or, if the application serial
number is not known, submit a
[[Page 31511]]
copy of the application or a copy of the mark, and specify the filing
date.
(e) Foreign attorneys and agents. Recognition to practice before
the Office in trademark matters is governed by Sec. 11.14(c) of this
chapter.
(f) Non-lawyers. A non-lawyer may not act as a representative
except in the limited circumstances set forth in Sec. 11.14(b) of this
chapter. Before any non-lawyer who meets the requirements of Sec.
11.14(b) of this chapter may take action of any kind with respect to an
application, registration or proceeding, a written authorization must
be filed, signed by the applicant, registrant, or party to the
proceeding, or by someone with legal authority to bind the applicant,
registrant, or party (e.g., a corporate officer or general partner of a
partnership).
(g) Duration of recognition. (1) The Office considers recognition
as to a pending application to end when the mark registers, when
ownership changes, or when the application is abandoned.
(2) The Office considers recognition obtained after registration to
end when the mark is cancelled or expired, or when ownership changes.
If a practitioner was recognized as the representative in connection
with an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal
application under section 9 of the Act, or request for amendment or
correction under section 7 of the Act, recognition is deemed to end
upon acceptance or final rejection of the filing.
0
5. Amend Sec. 2.22 by revising paragraphs (a)(1), (19), and (20) and
adding paragraph (a)(21) to read as follows:
Sec. 2.22 Requirements for a TEAS Plus application.
(a) * * *
(1) The applicant's name and domicile address;
* * * * *
(19) If the applicant owns one or more registrations for the same
mark, and the owner(s) last listed in Office records of the prior
registration(s) for the same mark differs from the owner(s) listed in
the application, a claim of ownership of the registration(s) identified
by the registration number(s), pursuant to Sec. 2.36;
(20) If the application is a concurrent use application, compliance
with Sec. 2.42; and
(21) An applicant whose domicile is not located within the United
States or its territories must designate an attorney as the applicant's
representative, pursuant to Sec. 2.11(a), and include the attorney's
name, postal address, email address, and bar information.
* * * * *
0
6. Amend Sec. 2.32 by revising paragraphs (a)(2) and (4) to read as
follows:
Sec. 2.32 Requirements for a complete trademark or service mark
application.
(a) * * *
(2) The name and domicile address of each applicant;
* * * * *
(4) When the applicant is, or must be, represented by an attorney,
as defined in Sec. 11.1 of this chapter, who is qualified to practice
under Sec. 11.14 of this chapter, the attorney's name, postal address,
email address, and bar information;
* * * * *
0
7. Add Sec. 2.189 to read as follows:
Sec. 2.189 Requirement to provide domicile address.
An applicant or registrant must provide and keep current the
address of its domicile, as defined in Sec. 2.2(o).
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
0
8. 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
9. Amend Sec. 7.1 by revising paragraph (f) to read as follows:
Sec. 7.1 Definitions of terms as used in this part.
* * * * *
(f) The definitions specified in Sec. 2.2 of this chapter apply to
this part.
PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT
AND TRADEMARK OFFICE
0
10. The authority citation for 37 CFR part 11 continues to read as
follows:
Authority: 5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32,
41; Sec. 1, Pub. L 113-227, 128 Stat. 2114.
0
11. Amend Sec. 11.14 by revising paragraphs (c) and (e) to read as
follows:
Sec. 11.14 Individuals who may practice before the Office in
trademark and other non-patent matters.
* * * * *
(c) Foreigners. (1) Any foreign attorney or agent not a resident of
the United States who shall file a written application for reciprocal
recognition under paragraph (f) of this section and prove to the
satisfaction of the OED Director that he or she is a registered and
active member in good standing before the trademark office of the
country in which he or she resides and practices and possesses good
moral character and reputation, may be recognized for the limited
purpose of representing parties located in such country before the
Office in the presentation and prosecution of trademark matters,
provided: The trademark office of such country and the USPTO have
reached an official understanding to allow substantially reciprocal
privileges to those permitted to practice in trademark matters before
the Office. Recognition under this paragraph (c) shall continue only
during the period that the conditions specified in this paragraph (c)
obtain.
(2) In any trademark matter where a foreign attorney or agent
authorized under paragraph (c)(1) of this section is representing an
applicant, registrant, or party to a proceeding, an attorney, as
defined in Sec. 11.1 and qualified to practice under paragraph (a) of
this section, must also be appointed pursuant to Sec. 2.17(b) and (c)
of this chapter as the representative who will file documents with the
Office and with whom the Office will correspond.
* * * * *
(e) Appearance. No individual other than those specified in
paragraphs (a), (b), and (c) of this section will be permitted to
practice before the Office in trademark matters on behalf of a client.
Except as specified in Sec. 2.11(a) of this chapter, an individual may
appear in a trademark or other non-patent matter in his or her own
behalf or on behalf of:
(1) A firm of which he or she is a member;
(2) A partnership of which he or she is a partner; or
(3) A corporation or association of which he or she is an officer
and which he or she is authorized to represent.
* * * * *
Dated: June 27, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2019-14087 Filed 7-1-19; 8:45 am]
BILLING CODE 3510-16-P