[Federal Register Volume 84, Number 147 (Wednesday, July 31, 2019)]
[Rules and Regulations]
[Pages 37081-37099]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-16259]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2017-0004]
RIN 0651-AD15


Changes to the Trademark Rules of Practice To Mandate Electronic 
Filing

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 and the Rules 
of Practice in Filings Pursuant to the Protocol Relating to the Madrid 
Agreement Concerning the International Registration of Marks to mandate 
electronic filing of trademark applications and all submissions 
associated with trademark applications and registrations, and to 
require the designation of an email address for receiving USPTO 
correspondence, with limited exceptions. This rule advances the USPTO's 
IT strategy to achieve complete end-to-end electronic processing of 
trademark-related submissions, thereby improving administrative 
efficiency by facilitating electronic file management, optimizing 
workflow processes, and reducing processing errors.

DATES: This rule is effective on October 5, 2019.

FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy 
Commissioner for Trademark Examination Policy, [email protected], 
(571) 272-8946.

SUPPLEMENTARY INFORMATION: 
    Purpose: The USPTO revises the rules in parts 2 and 7 of title 37 
of the Code of Federal Regulations to require electronic filing through 
the USPTO's

[[Page 37082]]

Trademark Electronic Application System (TEAS) of all trademark 
applications based on section 1 and/or section 44 of the Trademark Act 
(Act), 15 U.S.C. 1051, 1126, and submissions filed with the USPTO 
concerning applications or registrations. These submissions include, 
for example, responses to Office actions, registration maintenance 
filings, international applications, subsequent designations, and 
direct filings with the USPTO relating to extensions of protection 
through the international registration system. In addition, this 
rulemaking requires the designation of an email address for receiving 
USPTO correspondence concerning these submissions.
    The requirement to file an initial application through TEAS does 
not apply to applications based on section 66(a) of the Act, 15 U.S.C. 
1141f, because these applications are initially filed with the 
International Bureau (IB) of the World Intellectual Property 
Organization and subsequently transmitted electronically to the USPTO. 
However, section 66(a) applicants and registrants are required to 
electronically file all subsequent submissions concerning their 
applications or registrations and to designate an email address for 
receiving USPTO correspondence. This rulemaking does not encompass 
electronic filing of submissions made to the Trademark Trial and Appeal 
Board (TTAB) in ex parte or inter partes proceedings. Such submissions 
are currently required to be filed through the USPTO's Electronic 
System for Trademark Trials and Appeals (ESTTA).
    This rule is intended to maximize end-to-end electronic processing 
of applications and related submissions, as well as registration 
maintenance filings. Achieving complete end-to-end electronic 
processing of all trademark submissions is an IT objective of the 
USPTO. End-to-end electronic processing means that an application and 
all application- and registration-related submissions are filed and 
processed electronically, and any related correspondence between the 
USPTO and the relevant party is conducted entirely electronically. 
Thus, an application that is processed electronically end to end would 
be filed through TEAS, and all submissions related to the application, 
such as voluntary amendments, responses to Office actions, or 
allegations of use, would also be filed through TEAS. With this change, 
outgoing USPTO correspondence regarding the application will be sent by 
email. Likewise, all submissions related to a registration must be 
filed through TEAS and outgoing USPTO correspondence regarding the 
registration will be sent by email.
    Although more than 99% of applications under section 1 or section 
44 are now filed electronically, just under 88% are currently 
prosecuted electronically from end to end. This means that 
approximately 12% of these filings still involve paper processing. 
Prior reductions in the filing fees for electronic submissions resulted 
in almost 100% of new applications being filed electronically, but have 
not achieved complete end-to-end electronic processing. By mandating 
electronic filing of trademark applications and submissions concerning 
applications or registrations through TEAS, the amended rules will 
reduce paper processing to an absolute minimum and thus maximize end-
to-end electronic processing.
    End-to-end electronic processing of all applications, related 
correspondence, statutorily required registration maintenance 
submissions, and other submissions will benefit trademark customers and 
increase the USPTO's administrative efficiency by facilitating 
electronic file management, optimizing workflow processes, and reducing 
processing errors. Paper submissions hinder efficiency and accuracy and 
are more costly to process than electronic submissions because they 
require manual uploading of scanned copies of the documents into the 
USPTO electronic records system and manual data entry of information in 
the documents. Electronic submissions through TEAS, on the other hand, 
generally do not require manual processing and are automatically 
categorized, labeled, and uploaded directly into an electronic file in 
the USPTO electronic records system for review by USPTO employees and 
the public. If a TEAS submission contains amendments or other changes 
to the information in the record, often those amendments and changes 
are automatically entered into the electronic records system. 
Furthermore, TEAS submissions are more likely to include all necessary 
information because the USPTO can update its forms to specifically 
tailor the requirements for a particular submission and require that 
the information be validated prior to submission. Consequently, 
preparing and submitting an application or related document, or a 
registration maintenance filing, through TEAS is likely to result in a 
more complete submission and take less time than preparing and mailing 
the paper equivalent. Thus, TEAS submissions help ensure more complete 
filings, expedite processing, shorten pendency, minimize manual data 
entry and potential data-entry errors, and eliminate the potential for 
lost or missing papers.
    This rule also requires the designation of an email address for 
receiving USPTO correspondence concerning these submissions, which is 
either that of the applicant or registrant, if unrepresented, or an 
authorized attorney, if one has been appointed. Currently, in order to 
receive a filing date for a new application under section 1 or section 
44, the USPTO requires, among other things, that the applicant 
designate an ``address for correspondence.'' 37 CFR 2.21(a)(2). 
Applicants who filed using the TEAS Plus or TEAS Reduced Fee (TEAS RF) 
filing options have been required to designate an email address for 
correspondence, while those who filed on paper or through the regular 
TEAS application were permitted to designate a postal address. This 
rule requires applicants and registrants, and parties to a proceeding 
before the TTAB, to provide and maintain an email address for 
correspondence. The requirement to designate an email address for 
receiving USPTO correspondence benefits the USPTO and its customers by 
reducing costs and increasing efficiency. Email correspondence can be 
sent, received, and processed faster than paper correspondence, which 
must be printed, collated, scanned, and uploaded to the electronic 
records system, and mailed domestically or internationally, at greater 
expense. Under this rule, applicants and registrants, and parties to a 
proceeding before the TTAB, are also required to provide and maintain a 
postal address. The domicile address specified for an applicant, 
registrant, or party to a proceeding will be treated by the Office as 
the postal address for the applicant, registrant, or party. In the rare 
circumstance where mail cannot be delivered to its domicile address, 
the applicant, registrant, or party may request to designate a postal 
address where mail can be delivered.
    A qualified practitioner representing an applicant, registrant, or 
party also is required to provide and maintain a postal address. This 
requirement ensures the USPTO's ability to contact the applicant, 
registrant, party, or practitioner by mail in certain limited 
circumstances, such as when an appointed practitioner is suspended or 
excluded from practice before the USPTO and is no longer the 
correspondent, or when the Office sends a physical registration 
certificate.
    Previous Initiatives to Increase End-to-End Electronic Processing: 
The

[[Page 37083]]

USPTO previously amended its rules to encourage electronic filing 
through TEAS and email communication by establishing the TEAS Plus and 
TEAS RF filing options for applications based on section 1 and/or 
section 44. See 37 CFR 2.6. These filing options have lower application 
fees than a regular TEAS application, but, unlike a regular TEAS 
application, they require the applicant to (1) provide, authorize, and 
maintain an email address for receiving USPTO correspondence regarding 
the application and (2) file certain application-related submissions 
through TEAS. See 37 CFR 2.22, 2.23. If the applicant does not fulfill 
these requirements, the applicant must pay an additional processing 
fee. See 37 CFR 2.6, 2.22, 2.23.
    Despite these additional requirements, and the potential additional 
processing fee for noncompliance, the TEAS RF filing option is now the 
most popular filing option among USPTO customers, followed by TEAS 
Plus. These two filing options currently account for nearly 99% of all 
new trademark applications filed under section 1 and/or section 44, 
suggesting that applicants are comfortable with filing and 
communicating with the USPTO electronically.
    Furthermore, in January 2017, the USPTO revised its rules to 
increase fees for paper filings to bring the fees nearer to the cost of 
processing the filings and encourage customers to use lower-cost 
electronic options. As a result of these rule changes, the USPTO is now 
processing nearly 88% of applications filed under section 1 and/or 
section 44 electronically end to end.

Discussion of Rule Changes

    (1) New Applications. Under this rule, Sec.  2.21 is amended to 
require applicants to file electronically, through TEAS, any trademark, 
service mark, certification mark, collective membership mark, or 
collective trademark or service mark application for registration on 
the Principal or Supplemental Register under section 1 and/or section 
44. As noted above, the requirement to file an application through TEAS 
does not apply to applications based on section 66(a) because they are 
initially processed by the IB and subsequently transmitted 
electronically to the USPTO.
    The TEAS RF filing option, which required applicants to maintain an 
email address for receiving USPTO correspondence regarding the 
application and to file the application and related submissions through 
TEAS, will become the default, or ``standard,'' filing option and will 
be renamed ``TEAS Standard'' on the effective date of this rule. The 
filing fee for this option remains at $275 per class. The TEAS Plus 
option also remains at $225 per class, while the TEAS option under 37 
CFR 2.6(a)(1)(ii) at $400 per class is eliminated. However, the per-
class fee of $400 in Sec.  2.6(a)(1)(ii), which is the current filing 
fee for applications under section 66(a), is retained as the filing fee 
for such applications.
    Under this rule, an application filed on paper under section 1 and/
or section 44 will not receive a filing date unless it falls under one 
of the limited exceptions discussed below.
    (2) Additional Processing Fee. Previously, the additional 
processing fee under Sec.  2.6(a)(1)(v) applied to TEAS Plus and TEAS 
RF applications that failed to meet the requirements under Sec.  
2.22(a) or Sec.  2.23(a) at filing, and to TEAS Plus and TEAS RF 
applications when certain submissions were not filed through TEAS or 
when the applicant failed to maintain a valid email address for receipt 
of communications from the Office. Under this rule, the processing fee 
applies only to TEAS Plus applications that fail to meet the amended 
filing requirements under Sec.  2.22(a). All applicants and 
registrants, except those specifically exempted, are now required to 
electronically file any submissions in connection with an application 
or registration and to designate and maintain an email address for 
correspondence. A TEAS Plus or TEAS Standard (previously TEAS RF) 
applicant who meets the amended filing requirements, but thereafter 
seeks acceptance of a submission filed on paper, pursuant to new Sec.  
2.147, or a waiver of the requirement to file such submissions 
electronically, must then pay the relevant paper filing fee and the 
paper petition fee for any submission filed on paper.
    (3) Submissions Required to Be Filed Through TEAS. This rule amends 
Sec.  2.23 to also require that correspondence concerning a trademark 
application or registration under section 1, section 44, or section 
66(a) be filed through TEAS, except for correspondence required to be 
submitted to the Assignment Recordation Branch or through ESTTA. 
Although all correspondence is required to be filed electronically, the 
USPTO recognizes that there may be certain circumstances when a paper 
filing is necessary. For those instances, the Office codifies a new 
regulatory section, at 37 CFR 2.147, which sets out a procedure for 
requesting acceptance of paper submissions under particular 
circumstances. This section is discussed below in the explanation of 
the limited exceptions to the amended requirements.
    Although this rule requires correspondence to be filed through 
TEAS, current USPTO practice regarding informal communications is 
unchanged. Thus, for example, an applicant or an applicant's attorney 
may still conduct informal communications with an examining attorney 
regarding a particular application by telephone or email. See Trademark 
Manual of Examining Procedure (TMEP) Sec.  709.05.
    (4) Email Correspondence Address. This rule amends Sec. Sec.  2.21, 
2.23, and 7.4 to require that applicants and registrants provide a 
valid email address for themselves and any appointed practitioner for 
receipt of correspondence from the USPTO. Thus, except in the case of 
nationals from exempted treaty countries, as discussed below, the 
USPTO's required method of corresponding with applicants and 
registrants is via Office actions and notices sent to the designated 
email address. If the email transmission were to fail because, for 
example, the applicant or registrant provided an incorrect email 
address, the recipient's mailbox is full, or the email provider has a 
service outage, the USPTO will not attempt to contact the correspondent 
designated pursuant to Sec.  2.18(a) by other means. Instead, pursuant 
to amended Sec.  2.23(d), the applicant or registrant is responsible 
for monitoring the status of the application or registration using the 
USPTO's Trademark Status and Document Retrieval (TSDR) system, which 
displays any USPTO Office actions and notices that have issued, any 
submissions properly filed with the USPTO, and any other actions taken 
by the USPTO.
    As noted above, applications under section 66(a) are processed and 
transmitted electronically to the USPTO from the IB. These applications 
do not include an email address for receiving USPTO correspondence, and 
the USPTO does not anticipate the IB will update its systems to include 
email addresses prior to implementation of this rule. In addition, only 
2.9% of Madrid applications were approved for publication upon first 
action in fiscal year 2017. Therefore, the USPTO believes it is 
appropriate to waive the requirement for an email address prior to 
publication in this limited situation and until such time as the IB's 
systems are updated. However, Madrid applicants are subject to the 
requirements under Sec. Sec.  2.23(b) and 2.32(a)(2), (4) to file all 
submissions electronically and to provide an email

[[Page 37084]]

address on such submissions for receipt of correspondence from the 
USPTO.
    Under Sec.  2.18(c), an applicant, registrant, or party to a 
proceeding must maintain a current and accurate correspondence address 
for itself and its qualified practitioner, if one is designated.
    (5) Changes from the Proposed Rule. The USPTO further amends Sec.  
2.22(a) by revising amended paragraph (a)(3) to limit the requirement 
for the names and citizenship of general partners to domestic 
partnerships and to add a requirement for the names and citizenship of 
active members of domestic joint ventures. These changes are added for 
consistency with current Sec. Sec.  2.32(a)(3)(iii) and (iv). The USPTO 
also revises Sec.  2.22(a)(4) to set out the requirements for sole 
proprietorships in order to further clarify the requirements for TEAS 
Plus applicants at filing.
    The USPTO amends Sec.  2.32(a)(3)(i) to require the applicant's 
legal entity type in addition to its citizenship and adds Sec.  
2.32(a)(1)(v) to require the state of organization of a sole 
proprietorship and the name and citizenship of the sole proprietor. 
These requirements are added for consistency with current Sec.  
2.22(a)(2) and new Sec.  2.22(a)(4).
    The USPTO further amends Sec.  2.56(a) to include cross references 
to Sec.  2.160 and Sec.  7.36 and also amends Sec.  2.56(b) and (c) to 
update these paragraphs with criteria for electronic submissions and 
better conform them to existing requirements in the Trademark Act and 
precedential case law for specimens of use, including that web pages 
must show the URL and access or print date. The amendments also more 
clearly conform the rule language to the statutory requirements for use 
in commerce by requiring that the specimen show use of the mark placed 
on the goods, on containers or packaging for the goods, or on labels or 
tags affixed to the goods.
    The USPTO further amends Sec.  2.147(b)(2) to require a copy of the 
previously mailed paper submission since the USPTO will not process the 
original submission and will destroy it after 90 days. This requirement 
is analogous to the requirements in Sec. Sec.  2.64(a)(2)(i), 
2.197(b)(2), and 2.198(e)(2) for a copy of previously submitted 
correspondence in order to establish timeliness.
    The USPTO further amends Sec.  7.25 to delete the proposed cross 
reference to Sec.  2.198 and to delete the cross reference to Sec.  
2.197 since these sections could be applicable to extensions of 
protection in some circumstances.
    Limited Exceptions for Paper Submissions: As discussed below, the 
USPTO will permit paper submissions of applications and correspondence 
in limited situations. This rule establishes a process for filing paper 
submissions in such situations.
    (1) International Agreements: The United States (U.S.) is a member 
of both the Trademark Law Treaty (TLT) and the subsequent Singapore 
Treaty on the Law of Trademarks (STLT), which treaties constitute two 
separate international instruments that may be ratified or acceded to 
independently by member countries. One provision of TLT mandates that 
its members accept paper trademark applications from nationals of other 
TLT members. STLT, on the other hand, allows its members to choose the 
means of transmittal of communications, whether on paper, in electronic 
form, or in any other form. This incongruity between the treaties was 
addressed in Article 27(2) of STLT, which provides that any Contracting 
Party to both STLT and TLT shall continue to apply TLT in its relations 
with Contracting Parties to TLT that are not parties to STLT. 
Accordingly, nationals of TLT members that are not also members of STLT 
at the time of submission of the relevant document to the USPTO are not 
required to file applications electronically or receive communications 
from the USPTO via email, nor are they required to submit a petition 
with a paper filing, until such time as their country joins STLT. 
Currently, the USPTO must accept paper trademark applications from 
nationals of the following countries: Bahrain, Bosnia and Herzegovina, 
Burkina Faso, Chile, Colombia, Costa Rica, Cyprus, Czech Republic, 
Dominican Republic, Egypt, El Salvador, Guatemala, Guinea, Honduras, 
Hungary, Indonesia, Monaco, Montenegro, Morocco, Nicaragua, Oman, 
Panama, Slovenia, Sri Lanka, Trinidad and Tobago, Turkey, and 
Uzbekistan.
    (2) Specimens for Scent, Flavor, or Other Non-Traditional Marks: 
This rule allows for the separate submission of physical specimens when 
it is not possible to submit the specimens using TEAS because of the 
nature of the mark. For example, if the application or registration is 
for a scent or flavor mark, because the required specimen must show 
use, or continued use, of the flavor or scent, it cannot be uploaded 
electronically. In that situation, the applicant may submit the 
application through TEAS and indicate that it is mailing the specimen 
to the USPTO. In these circumstances, all other requirements of this 
rulemaking apply. However, the applicant or registrant is not required 
to submit a petition requesting acceptance of a specimen filed on paper 
or waiver of the requirement to file the specimen electronically. This 
exception does not apply to specimens for sound marks, which can be 
attached to the TEAS form as an electronic file.
    (3) Petition to Accept a Paper Submission: This rule includes a new 
regulatory section titled ``Petition to the Director to accept a paper 
submission,'' which is codified at Sec.  2.147. Under this section, an 
applicant or registrant may file a petition to the Director requesting 
acceptance of a submission filed on paper in three situations.
    Under new Sec.  2.147(a), the petition may be submitted if TEAS is 
unavailable on the date of the deadline for the submission specified in 
a regulation in parts 2 or 7 of this chapter or in a section of the 
Act. Under this provision, the applicant or registrant is required to 
submit proof that TEAS was unavailable because a technical problem, on 
either the USPTO's part or the user's part, prevented the user from 
submitting the document electronically. Generally, if users receive an 
error message the first time they attempt to submit a filing 
electronically, the USPTO expects that they will try to resolve any 
failures due to user error. In situations where the inability to submit 
the filing was not due to user error, the USPTO encourages users to try 
to submit the document again electronically before resorting to the 
paper petition process.
    The second scenario applies to the specific documents with 
statutory deadlines identified in new Sec.  2.147(b) when such a 
document was timely submitted on paper, but not examined by the Office 
because it was not submitted electronically in accordance with Sec.  
2.21(a) or Sec.  2.23(a). The Office will issue a notice informing the 
applicant, registrant, or petitioner for cancellation that the paper 
submission will not be processed or examined because it was not 
submitted electronically. The applicant, registrant, or party may file 
a petition to request that the timely filed paper submission be 
accepted only if the applicant, registrant, or party is unable to 
timely resubmit the document electronically by the statutory deadline.
    Finally, under new Sec.  2.147(c), when an applicant or registrant 
does not meet the requirements under Sec.  2.147(a) or (b) for 
requesting acceptance of the paper submission, the applicant or 
registrant may petition the Director under Sec.  2.146(a)(5), 
requesting a waiver of Sec.  2.21(a) or Sec.  2.23(a) and documenting 
the nature of the extraordinary situation that prevented the party from

[[Page 37085]]

submitting the correspondence electronically. The Office addresses 
petitions under Sec.  2.146(a)(5) on a case-by-case basis because the 
assessment of what would qualify as an extraordinary situation depends 
on the specific facts and evidence presented.
    With respect to USPTO technical problems that render TEAS 
unavailable, the USPTO intends to continue to follow its current 
approach. For example, when verifiable issues with USPTO systems 
prevent electronic filing for extended periods, the Office has waived 
non-statutory deadlines on petition, such as the deadline for response 
to a post-registration Office action, as well as petition fees. Such 
measures help avoid negatively impacting applicants and registrants in 
the event of USPTO technical problems. Because the impact of technical 
problems varies depending on the specific facts, the USPTO cannot 
provide advance guidance about all possibilities or specific measures 
the USPTO may take in the future. Moreover, applicants and registrants 
must be mindful of the fact that statutory deadlines, such as those for 
submission of a statement of use or an affidavit or declaration of use 
under section 8 or section 71, cannot be waived. The USPTO strongly 
encourages applicants and registrants to ensure that they are able to 
timely submit the relevant document by mail using the certificate of 
mailing or Priority Mail procedures in Sec.  2.197 and Sec.  2.198 in 
the event of an unexpected technical problem to avoid missing a 
statutory deadline.
    Furthermore, the inability to submit an application or submission 
electronically due to USPTO regularly scheduled system maintenance 
generally does not qualify for relief under new Sec.  2.147 or as an 
extraordinary situation under Sec.  2.146. The USPTO routinely performs 
system maintenance between midnight and 5:30 a.m. Eastern Time on 
weeknights and at all hours on Saturdays, Sundays, and holidays. 
Advance notice of the maintenance is generally posted on the USPTO 
Systems Status and Availability page on the USPTO website.
    (4) Postal-service Interruptions or Emergencies. The Office intends 
to continue the approach it has employed when there has been a postal-
service interruption or emergency related to a natural disaster. In 
such events, the Office has generally waived certain requirements of 
the rules for those in the affected area, such as non-statutory 
deadlines and petition fees. The Office also issues notices regarding 
the specific procedures to be followed in such circumstances and posts 
the notices on the ``Operating Status'' page of the USPTO website.
    (5) Applications and Post-Registration Maintenance Documents Filed 
Prior to the Effective Date of this Rule. Paper, TEAS Regular, and 
Madrid applications filed prior to the effective date of this rule are 
not subject to the requirements to provide an email address for the 
applicant and its attorney, if represented, or to communicate with the 
USPTO electronically. Such applications are ``grandfathered'' under the 
prior rules until the application registers or is abandoned and cannot 
be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146. 
Similarly, post-registration maintenance documents submitted prior to 
the effective date of the rule are not subject to the requirements and 
are grandfathered under the prior rules until the document has been 
accepted or the registration has been cancelled or expired and cannot 
be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146.
    However, on the effective date of this rule, because all new 
applications and post-registration maintenance documents are required 
to be filed electronically through TEAS, all TEAS forms will be updated 
to require the applicant's or registrant's email address and the email 
address of applicant's or registrant's attorney, if represented. 
Therefore, if a grandfathered applicant or registrant files a TEAS 
document after the effective date of this rule, the TEAS form will not 
validate for submission without the email address(es) being provided. 
Furthermore, if such an applicant, registrant, or attorney chooses to 
correspond electronically with the Office using one of the TEAS forms, 
the USPTO will presume that email communication is authorized and will 
send all future correspondence to the email address of the applicant, 
registrant, or attorney, as appropriate.
    Applicants who filed an application prior to the effective date of 
the rule using the TEAS RF or TEAS Plus option are currently subject to 
the requirement to correspond electronically with the USPTO, as well as 
all the other requirements in current Sec.  2.22(a)-(b) and Sec.  
2.23(a)-(b). After the effective date of this rule, if a TEAS Plus or 
TEAS RF applicant submits a response to an Office action or other 
document on paper, the applicant will no longer be charged the 
additional processing fee under prior Sec.  2.22(c) or Sec.  2.23(c), 
but must submit a petition requesting acceptance of the paper filing 
under Sec.  2.146 or Sec.  2.147, as appropriate.
    Requirements for Paper Submissions: Because paper submissions are 
permitted in the limited circumstances described above, the current 
rules addressing the requirements for paper submissions are retained 
and modified, as necessary, for consistency with the other revisions in 
this rulemaking. In addition, the rules governing the certificate-of-
mailing and Priority Mail Express[supreg] procedures, 37 CFR 2.197 and 
2.198, are amended to make filing with a certificate of mailing or via 
Priority Mail Express[supreg] available for all submissions, including 
new applications, on the rare occasions when filing on paper is 
permitted. This rule also simplifies how the filing date of a 
submission utilizing these procedures is determined. Streamlining the 
requirements for filing with a certificate of mailing or via Priority 
Mail Express[supreg] provides greater clarity to parties who seek to 
use these procedures and make the rules easier to administer for the 
Office. Although the certificate-of-mailing and Priority Mail 
Express[supreg] procedures are retained, facsimile transmissions, which 
are currently permitted for certain types of trademark correspondence, 
are not permitted under this rule for any applications or submissions. 
Continuing to accept fax transmissions would be counterproductive to 
maximizing end-to-end electronic processing because such submissions 
require manual processing similar to paper submissions.

Proposed Rule: Comments and Responses

    The USPTO published a proposed rule on May 30, 2018, at 83 FR 
24701, soliciting comments on the proposed amendments. In response, the 
USPTO received comments from four groups and ten individual commenters, 
representing law firms, organizations, individuals, and other 
interested parties. Some commenters expressed general support for the 
amendments, while raising concerns or providing suggestions about 
particular provisions. Other commenters objected to the amendments 
mandating electronic filing because of concerns about the stability and 
usability of the USPTO's current electronic filing systems or the 
possibility that some parties may not have adequate access to the 
internet. In addition, some commenters objected to the requirement that 
an email address be provided for correspondence, because of concerns 
that this would be burdensome to applicants or that the public 
availability of email addresses will be misused by third parties 
engaging in scams or unwanted solicitations. Similar or related

[[Page 37086]]

comments have been 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-related-changes-trademark.
    Comment: Several commenters objected to the requirement to file 
submissions electronically because they believe it will adversely 
affect parties who do not have adequate internet access or are 
otherwise unable to file electronically.
    Response: The USPTO appreciates the concerns raised in these 
comments and has given them careful consideration. As noted above, more 
than 99% of all initial applications based on section 1 and/or section 
44 of the Act are now filed electronically. For example, in fiscal year 
2018, a total of 468,926 applications were filed, with only 144 
applications filed on paper. Accordingly, the USPTO has determined 
that, as a general matter, the requirement to file all submissions 
electronically would not be impracticable or burdensome for the USPTO's 
customers, most of whom already file electronically.
    Customers who do not have personal access to the internet have the 
option to use the internet at one of the 85 Patent and Trademark 
Resource Centers (PTRC) around the U.S. to electronically file 
submissions with the USPTO. A PTRC is part of a nationwide network of 
public, state, and academic libraries designated by the USPTO to 
support the public with federal trademark- and patent-filing 
assistance. Although PTRC representatives are not attorneys and cannot 
provide legal advice, they can provide access to USPTO resources and 
explain the application process and fee schedule. Public libraries 
provide another resource for parties without internet access. According 
to the American Library Association Fact Sheet 26, ``Internet Access 
and Digital Holdings in Libraries,'' 98% of libraries offer free public 
internet access and 76% of libraries assist patrons in using online 
government programs and services (http://www.ala.org/tools/libfactsheets/alalibraryfactsheet26; accessed Sept. 24, 2018). 
Applicants, registrants, or parties also have the option to hire an 
attorney to file electronically on their behalf. Finally, if an 
extraordinary situation requires a particular applicant, registrant, or 
party to file on paper, the rule allows such submissions to be 
considered on petition by the USPTO on a case-by-case basis.
    Comment: A commenter suggested that the USPTO has already 
sufficiently advanced its objective of electronic filing by increasing 
the fees associated with paper filing.
    Response: As noted above, the USPTO previously revised its rules to 
increase fees for paper filings to bring the fees nearer to the cost of 
processing the filings and to encourage customers to use lower-cost 
electronic options. Despite these fee increases, approximately 12% of 
applications and registrations under section 1 and/or section 44 of the 
Act still involve some paper processing. Fee increases have not been 
effective in eliminating the volume of non-application paper 
submissions. Therefore, the USPTO has determined that mandatory 
electronic filing is necessary to attain, as closely as possible, its 
goal of end-to-end electronic processing.
    Comment: The USPTO received several comments regarding its 
electronic systems. Some commenters expressed concerns that the USPTO's 
current electronic systems, including the payment system, are not 
sufficiently reliable to support a mandate of electronic filing, noting 
that removing the paper filing option eliminates a failsafe way to file 
if the internet or the electronic filing system is unavailable. Other 
commenters suggested that the usability of TEAS forms should be 
improved and stated that TEAS currently lacks forms to address all 
filing situations. Some commenters noted that TEAS sometimes will not 
allow submissions due to erroneous status information in the USPTO's 
electronic record. Relatedly, a commenter urged that any rulemaking 
that would remove the paper filing option should be accompanied by the 
provision of a ``none of the above'' TEAS form to address the 
circumstances when the internet or TEAS is unavailable, and that every 
TEAS form should include a ``miscellaneous'' section in which free-text 
comments and evidence can be provided. One commenter asked whether fax 
transmission will remain as an alternative method for filing if the 
electronic system is not available and suggested that the USPTO either 
provide an alternative method that is electronic but not tied to the 
TEAS system or allow for a deadline extension when the TEAS system is 
not operational at the time of deadline. Finally, a commenter suggested 
that the USPTO implement contingency servers and systems that would 
serve as a backup to the USPTO's primary electronic systems and reduce 
the need for paper filings if the primary systems experience an outage.
    Response: The USPTO recognizes that the successful implementation 
of mandatory electronic filing requires reliable, well-functioning 
electronic filing and payment systems. To that end, the USPTO is 
actively engaged in enhancing the Office's systems to significantly 
improve reliability and stability with the result of reducing 
unscheduled outages and instabilities and mitigating any that do occur. 
For example, the USPTO recently upgraded the main server that houses 
the TEAS and payment systems, which will significantly enhance 
reliability and responsiveness.
    The USPTO also acknowledges the comments concerning the general 
usability of TEAS forms and is enhancing its electronic systems to 
accommodate the requirements of mandatory electronic filing, and also 
plans to improve the overall functionality of the TEAS forms. In 
addition, remedies are already available to customers who are unable to 
file a TEAS submission because of incorrect status information in the 
USPTO electronic record. To request assistance, such as correction of 
the status information so that TEAS will allow submission of the 
appropriate form, customers may call or email the USPTO. Furthermore, 
when a party is unable to file electronically because of an 
extraordinary situation, Sec.  2.147(c) allows the party to petition 
the Director under Sec.  2.146(a)(5), requesting that the Director 
waive Sec.  2.23(a) and accept a paper submission.
    Regarding the commenter's request to retain fax transmission, the 
rule removes this submission option. As noted above, continuing to 
accept fax transmissions would be counterproductive to maximizing end-
to-end electronic processing because such submissions require manual 
processing similar to paper submissions. If a significant outage or 
other emergency occurs, the USPTO may consider waiving the relevant 
rules to accept certain submissions by fax or another means for 
specific purposes.
    Regarding the comment requesting the rule allow for a deadline 
extension when the TEAS system is not operational at the time of 
deadline, the USPTO has previously waived non-statutory deadlines on 
petition when verifiable issues with USPTO systems prevented electronic 
filing for extended periods. The USPTO may make this option available, 
if appropriate. However, the USPTO has no authority to extend deadlines 
set by statute.

[[Page 37087]]

    Comment: One commenter who assists ``low-wealth entrepreneurs'' 
with trademark matters noted that, while most of these entrepreneurs 
have computer access and an email address, some have little 
understanding of the application and prosecution process and the rules 
governing this process. This commenter expressed concern that these 
entrepreneurs would be required to handle email communications from the 
USPTO that may significantly impact their ability to conduct their 
business. The commenter urged that USPTO communications be written in a 
way that ensures understanding by a lay person. Other commenters 
expressed concerns that the current TEAS forms are too complicated for 
the lay person, with one commenter suggesting that the USPTO permit 
applicants to file already completed applications in .pdf form.
    Response: The USPTO is dedicated to making its communications 
comprehensible for all customers, but recognizes that the trademark 
application process is legal in nature and can be complex and difficult 
to understand for some applicants, regardless of whether submissions 
are filed on paper or electronically. Filing a trademark application 
with the USPTO starts a legal proceeding that is governed by U.S. law. 
Therefore, it may be advisable for an applicant to hire a qualified 
trademark attorney licensed to practice law in the United States who 
can give legal advice, help avoid pitfalls with the filing and 
prosecution of an application, and help enforce trademark rights. 
Applicants may also seek to avail themselves of free or reduced-fee 
legal services through such resources as the USPTO's Law School Clinic 
Certification Program, the list of Pro Bono IPL Resources provided by 
the American Bar Association, and the International Trademark 
Association trademark pro bono clearinghouse pilot program.
    Further, the USPTO believes that the requirement to file 
electronically benefits those applicants who are unable to hire an 
attorney and must represent themselves. Specifically, electronic filing 
costs less than paper filing, especially if the lower-fee TEAS Plus 
application filing option is utilized. In addition, electronic filing 
simplifies and increases the efficiency of the application process for 
applicants. Those who file electronically are more likely to provide 
the necessary information in their submissions because the USPTO can 
update its electronic forms to specifically tailor the requirements for 
a particular submission and require that the information be validated 
prior to submission. Consequently, preparing and submitting an 
application or related document through TEAS is likely to result in a 
more complete submission and take less time than preparing and mailing 
the paper equivalent. In addition, the USPTO is dedicated to providing 
future enhancements to its online filing systems to further simplify 
the process for applicants by, for example, providing more informative, 
interactive, and user-friendly forms.
    Regarding the comment suggesting that applicants be permitted to 
file completed applications in .pdf form, this approach would be 
counterproductive to maximizing end-to-end electronic processing 
because submissions in .pdf form require manual processing similar to 
paper submissions.
    Comment: A commenter noted that the electronic filing requirement 
may lead to librarians being asked legal questions by those filing 
electronic submissions with the USPTO using a library computer and that 
referring these patrons to a PTRC might not be an effective solution to 
this problem.
    Response: The USPTO acknowledges the possibility that library 
patrons may ask librarians legal questions about the trademark process, 
but does not believe this is an impediment to implementing mandatory 
electronic filing. The USPTO presumes that if a librarian is asked for 
legal information regarding trademark law, or any other area of law, he 
or she would direct the patron to a local bar association or other 
appropriate resource. As noted above, filing a trademark application 
with the USPTO starts a legal proceeding that is governed by U.S. law. 
It is therefore advisable for their patrons to seek legal guidance from 
a qualified private trademark attorney.
    If a patron has questions regarding the trademark application 
process, a librarian can direct the patron to the USPTO website for 
information, including the email address and toll-free phone number for 
the Trademark Assistance Center. In addition, although PTRC library 
representatives cannot provide legal advice, they can: (1) Provide 
access to USPTO resources such as search systems and demonstrate how to 
use search tools to conduct a trademark search; (2) direct patrons to 
website information and explain the application process/timeline and 
fees; and (3) offer classes on intellectual property in some locations.
    Comment: One commenter recommended that the proposed rule include 
information on the economic impact on entities who still choose the 
paper filing option and also provide means to reduce the economic 
burden for that group rather than impose additional costs.
    Response: The USPTO believes that the overall economic impact on 
affected parties will be minimal. As noted above, in fiscal year 2018, 
more than 99% of all initial applications based on section 1 and/or 
section 44 of the Act were filed electronically--only 144 out of 
468,926 applications were filed on paper. Thus, as a practical matter, 
almost all USPTO customers who may use the USPTO's electronic systems 
to file their trademark applications have already done so. Moreover, 
under the current system TEAS filers are subsidizing those who file on 
paper because current fees for paper filers do not cover the full cost 
of processing paper filings. The change to mandatory electronic filing 
also will improve the quality of Trademark applications and 
registrations because paper filings require manual uploading of scanned 
copies into USPTO electronic systems and manual data entry of 
information in the documents, which results in data-entry errors.
    Thus, given the additional costs associated with filing 
applications and related submissions by paper, including higher fees, a 
requirement to file electronically will likely result in reduced costs 
overall for most customers who previously filed on paper.
    Comment: Some commenters objected to the changes to Sec. Sec.  
2.21, 2.23, and 7.4, requiring the provision of an email address for 
applicants and registrants. One commenter noted that, when an applicant 
or registrant is represented by counsel, and counsel has provided a 
correspondence email address, the rule changes impose additional 
burdens on both the trademark owner and its counsel. Another commenter 
stated that the TEAS system appears to be open to abuse and fraud, and 
some commenters were concerned that the requirement to provide the 
applicant's email address for correspondence would lead to an increase 
in scams and misleading solicitations by third parties. One commenter 
had similar concerns about applicants' telephone numbers.
    Response: The amended rules include a requirement for the 
applicant's email address, even when the applicant is represented by an 
attorney. This requirement ensures that the USPTO has an electronic 
means of contacting the applicant if the attorney's email address 
cannot be used, such as when the attorney is suspended or excluded from 
practice before the USPTO or when representation otherwise ceases. The 
USPTO does not undertake double correspondence with both the applicant 
or registrant and the attorney of record.

[[Page 37088]]

Accordingly, if an applicant or registrant is represented by an 
attorney, the USPTO corresponds and conducts business only with the 
attorney. Once representation ceases, under this rule, the USPTO will 
correspond only with the applicant or registrant. Therefore, the 
applicant or registrant must provide an email address belonging to the 
applicant or registrant itself for receipt of correspondence from the 
USPTO in such a circumstance.
    The USPTO appreciates the commenters' concerns that scams and 
misleading solicitations may increase if the email addresses required 
under these rules are publicly available in the USPTO's systems. 
Currently, all owner email addresses that appear in the ``status'' view 
of USPTO records are masked from public view. In addition, the USPTO 
plans to similarly mask from public view in application and 
registration files the correspondence email addresses of applicants and 
registrants who are not represented by counsel to reduce the likelihood 
that they will be subjected to scams and other unwanted solicitations. 
The contact information of attorneys appearing in USPTO records, 
including email addresses and telephone numbers, will remain publicly 
available and viewable, as this information is publicly available from 
other sources already and could be used for legitimate purposes by 
third parties.
    Comment: One commenter stated that, to the extent that the USPTO 
does not already comply with the European Union's General Data 
Protection Regulation (GDPR), mandating the provision of email 
addresses of individuals associated with applicants and registrants, 
will subject the USPTO to this regulation, as well as to the penalties 
and obligations associated with any data breach.
    Response: The USPTO is aware of the GDPR and has taken into account 
any implications it might have for the implementation of these amended 
rules.
    Comment: Regarding the proposed amendment of Sec.  2.151 to state 
that the USPTO will issue ``to the owner'' a certificate of 
registration, one commenter asked how the Office will know who ``the 
owner'' is, noting that, at most, the Office will know only who the 
owner of record is. This commenter also noted that, to avoid the need 
for future rulemaking, the USPTO should consider broadening the 
requirement for an email address, so that the requirement also 
encompasses an ``alphanumeric identifier that is capable of receiving 
electronic communications.'' The commenter then suggested that the 
ability of users to input an email address into a TEAS form should be 
restricted to forms for which doing so actually updates the 
information.
    Response: Under amended Sec.  2.151, a certificate of registration 
will be issued to the owner of record, as indicated in the USPTO 
electronic record at the time the certificate is issued.
    The USPTO appreciates the suggestion to use broader terminology 
than ``email address,'' but has determined that ``email address'' is 
sufficiently accurate and will serve the intended purpose under the 
rule. The USPTO also appreciates the suggestion regarding the ability 
to input and update email addresses in TEAS forms, and will take that 
feedback into account when considering enhancements to TEAS.
    Comment: One commenter stated the USPTO should provide another 
filing mechanism to ensure that customers have access to protect their 
trademark rights without having to incur the uncertainty or additional 
fees and time associated with filing a separate petition, if having to 
file on paper. This commenter suggested that a more predictable and 
desirable remedy in this situation may include submitting with the 
relevant filing a declaration or other statement attesting to the 
outage, lack of access, or other reason for not filing electronically, 
and that the filer may also include evidence of the problem, such as a 
screen shot. The commenter noted that, to ease the administrative 
burden on the USPTO and add certainty for applicants and counsel as to 
permissible exceptions, any USPTO form could acknowledge clear 
exceptions through use of a box to be checked, but for unusual or 
unique circumstances, a free-form text box could be provided in the 
relevant form. Relatedly, one commenter recommended that the rules be 
modified to provide specific examples of documentation the user can 
provide to satisfy the USPTO's requirement for proof that TEAS was 
unavailable for electronic filing because of a ``technical problem.'' 
This commenter suggested that such documentation might include 
screenshots showing the time and date and the error statement 
encountered by the user, or a signed declaration under 37 CFR 2.20 
indicating the circumstances of the unsuccessful electronic filing.
    Response: The USPTO believes that a petition describing the reasons 
for a paper submission is the most efficient and effective mechanism 
for providing the information necessary to enable the USPTO to 
determine whether the submission should be accepted. However, the USPTO 
also agrees with the commenters that the petition process may be 
simplified by the use of a standard preformatted petition form, listing 
the most common reasons for requesting acceptance of a paper 
submission. The user could complete the form by selecting the 
appropriate reason and include the completed form with the paper 
submission. The USPTO is working to make such a form available before 
this rule takes effect.
    The USPTO appreciates the suggestion that the rules should be 
modified to provide specific examples of documentation a user can 
provide to satisfy the USPTO's requirement for proof that TEAS was 
unavailable for electronic filing because of a ``technical problem.'' 
However, considering the type and nature of evidence that may suffice 
will differ depending on the circumstances, the USPTO believes it is 
preferable to enact a rule that provides flexibility as to the type of 
evidence the USPTO may accept as proof. However, the Office will 
consider adding such examples in other USPTO materials, such as web 
pages or the TMEP, to provide guidance.
    Comment: One commenter urged the USPTO to continue its practice of 
attempting to contact the correspondent by other means if a 
transmission to the email address of record fails, including physical 
correspondence by mail. This commenter noted that email addresses 
frequently change due to companies adopting new domain names and 
staffing changes, and that technical issues due to hardware 
malfunction, software bugs, or malicious cyberattacks increase the 
chances of electronic communication being disrupted.
    Response: Although the USPTO previously attempted to contact the 
correspondent by other means if an email transmission failed and, in 
some cases, sent a paper copy of the correspondence to the physical 
address of record, it no longer does so. As the commenter indicated, 
email transmissions may fail for a variety of reasons outside of the 
USPTO's control. Even if the number of failed transmissions are 
relatively low, attempting to contact the applicant or registrant in 
every instance is administratively burdensome to the USPTO. In 
addition, continuing to send paper correspondence after implementing 
mandatory electronic filing would be counterproductive to the goal of 
maximizing end-to-end electronic processing.
    Moreover, under Sec.  2.18(c), applicants and registrants are 
required to maintain a current and accurate correspondence email 
address, and to monitor the status

[[Page 37089]]

of their applications or registrations for any notices issued or action 
taken by the USPTO, in accordance with Sec.  2.23(d).
    Comment: One commenter stated that, for a paper filed during a time 
when TEAS is unavailable, a petition requirement is unneeded and 
burdensome because the USPTO will usually already be aware of instances 
when its filing system is broken. This commenter suggested that, when 
the USPTO is unaware of an outage, the USPTO could respond to a paper 
filing with a request for a showing by the filer as to the nature and 
time of the outage. Some commenters objected to any requirement that 
the filer postpone a filing until such time as a TEAS outage is 
repaired and another commenter stated that an applicant or registrant 
should not be required to wait until the day of the deadline to be 
eligible for an exception to the electronic filing requirement when 
TEAS is unavailable.
    Response: When a paper submission is necessary because of an 
unscheduled TEAS outage or some other technical problem, the USPTO 
believes that the mechanism of a petition, which permits inclusion of a 
description of the reasons for the paper submission, is the only 
appropriate mechanism for providing the information necessary to enable 
the USPTO to determine whether the particular submission should be 
accepted.
    Regarding known TEAS outages, the USPTO intends to continue to 
follow the approach employed in the past. For example, when verifiable 
issues with USPTO systems prevent electronic filing for extended 
periods, the USPTO has waived non-statutory deadlines on petition, such 
as the deadline for response to a post-registration Office action, as 
well as petition fees. Even when the USPTO is aware of an outage, a 
petition would typically still be required, because the party 
requesting relief would need to establish that the outage prevented 
electronic filing of the particular submission. However, because the 
impact of technical problems varies depending on the specific facts, 
the Office cannot provide advance guidance about all possibilities or 
specific measures the USPTO may take in the future.
    The USPTO acknowledges the commenters' concerns about waiting until 
the date of the deadline to be eligible for an exception to the 
requirement to file electronically. However, this requirement applies 
only if the party is relying on Sec.  2.147(a), which provides that the 
petition may be submitted if TEAS is unavailable on the date of the 
deadline for the submission specified in a regulation in parts 2 or 7 
of this chapter or in a section of the Act.
    If an extraordinary situation prevents an applicant or registrant 
from waiting until the deadline for a submission to be eligible for an 
exception to the requirement to file electronically, or otherwise 
postponing a TEAS submission, Sec.  2.147(c) provides that the 
applicant or registrant may petition the Director under Sec.  
2.146(a)(5), requesting a waiver of Sec.  2.21(a) or Sec.  2.23(a) and 
documenting the nature of the extraordinary situation that prevented 
the party from submitting the correspondence electronically at the 
relevant time. Because petitions for extraordinary situations are not 
automatically granted, and the assessment of what would qualify as an 
extraordinary situation depends on the specific facts, the Office will 
address particular situations on a case-by-case basis.

Discussion of Regulatory Changes

    The USPTO amends Sec.  2.2 to revise paragraph (e) to include the 
abbreviation ``USPTO'' and paragraphs (f) and (g) to indicate that the 
definitions of ``TEAS'' and ``ESTTA'' include all related electronic 
systems required to complete an electronic submission through each and 
to delete the URLs. The USPTO also adds: Sec.  2.2(q), defining 
``ETAS;'' Sec.  2.2(r), defining ``Eastern Time;'' Sec.  2.2(s), 
defining ``electronic submission;'' and Sec.  2.2(t) defining ``USPS.'' 
The paragraph designations (q) through (t) do not correspond to the 
proposed changes published at 83 FR 24701. The revisions to these 
designations reflect additional changes published in an intervening 
rule published at 84 FR 31498.
    The USPTO amends Sec.  2.6 to clarify that Sec.  2.6(a)(1)(ii) 
applies to applications filed under section 66(a) of the Act. The USPTO 
also changes the wording ``Reduced Fee (RF)'' to ``Standard'' and 
deletes the reference to Sec.  2.23 in Sec.  2.6(a)(1)(iii), rewords 
Sec.  2.6(a)(1)(iv) for clarity, and deletes the reference to Sec.  
2.23(c) in Sec.  2.6(a)(1)(iv).
    The USPTO deletes the wording ``and attorney'' and the reference to 
TEAS in current Sec.  2.17(d)(1), because it is unnecessary in view of 
amended Sec.  2.23(a), redesignates Sec.  2.17(d)(1) as Sec.  2.17(d), 
and deletes Sec.  2.17(d)(2) as unnecessary as a result of updates to 
the electronic form for filing a power of attorney.
    The USPTO amends the title to Sec.  2.18(a) to ``Establishing the 
correspondent'' and adds introductory text indicating that the 
following paragraphs set out the procedures by which the Office will 
determine the address to which correspondence will be sent. The USPTO 
revises Sec.  2.18(a)(1) to define when the Office will send 
correspondence to the applicant, registrant, or party to a proceeding 
and Sec.  2.18(a)(2) to define when the Office will send correspondence 
to an attorney. The USPTO also deletes current paragraphs (a)(3)-
(a)(5), redesignates current Sec.  2.18(a)(6) as Sec.  2.18(b), adds 
the title ``Ex parte matters,'' and rewords the text for clarity, and 
deletes current paragraph (a)(7). The USPTO redesignates current Sec.  
2.18(b) as Sec.  2.18(c), changes the title to ``Maintaining and 
changing the correspondence addresses,'' and deletes current Sec.  
2.18(b)(1)-(4). The USPTO redesignates current Sec.  2.18(c)(1) as 
Sec.  2.18(d), deletes the word ``Trademark'' in the first sentence, 
deletes the second and third sentences in current Sec.  2.18(c)(1), 
clarifies that the Office will change the address if a new address is 
provided, adds a cross reference to Sec.  2.18(a), and deletes current 
Sec.  2.18(c)(2).
    The USPTO amends Sec.  2.21(a) to require that applications under 
section 1 or section 44 be filed through TEAS, to require the domicile 
and email addresses for each applicant, and if the applicant is 
represented by a qualified practitioner, to require the postal and 
email addresses for the practitioner. The USPTO rewords Sec.  
2.21(a)(5) for clarity, rewords Sec.  2.21(b) and includes a reference 
to Sec.  2.21(c), and adds Sec.  2.21(c), which sets out an exemption 
for certain countries.
    The USPTO amends Sec.  2.22(a) to specify that TEAS Plus 
applications must satisfy the requirements of Sec.  2.21, to delete 
current paragraphs (a)(1), (a)(5), and (a)(6) and renumber the 
remaining paragraphs, to change ``an individual'' and ``a juristic'' to 
``each individual'' and ``each juristic'' in redesignated paragraph 
(a)(2), to clarify that the requirement in redesignated paragraph 
(a)(3) applies to domestic partnerships and to add a requirement for 
the names and citizenship of the active members of a domestic joint 
venture, to add a requirement for the citizenship of a sole 
proprietorship and for the name and citizenship of the sole proprietor 
to redesignated paragraph (a)(4), to correct the cross reference in 
redesignated paragraph (a)(8) to Sec.  2.6(a)(1)(iv), to delete the 
first sentence and the reference to a particular format in redesignated 
paragraph (a)(10), and to delete the URL in redesignated paragraph 
(a)(11). The USPTO revises Sec.  2.22(b) to indicate that the applicant 
must comply with amended Sec.  2.23(a) and (b), to delete Sec.  
2.22(b)(1) and (2),

[[Page 37090]]

and to delete the second sentence in Sec.  2.22(c).
    The USPTO amends the title of Sec.  2.23 to ``Requirement to 
correspond electronically with the Office and duty to monitor status'' 
and deletes the current text of the section. The USPTO revises Sec.  
2.23(a) to require that, unless stated otherwise, all trademark 
correspondence must be submitted through TEAS; revises Sec.  2.23(b) to 
require that applicants, registrants, and parties to a proceeding 
provide and maintain a valid email correspondence address; revises 
current Sec.  2.23(c) to set out an exemption for nationals of a 
country that has acceded to the Trademark Law Treaty, but not to the 
Singapore Treaty on the Law of Trademarks; and adds Sec.  2.23(d) to 
indicate that applicants and registrants are responsible for monitoring 
the status of their applications and registrations.
    The USPTO amends Sec.  2.24(a) to clarify that only an applicant or 
registrant that is not domiciled in the U.S. may designate a domestic 
representative. The USPTO deletes Sec.  2.24(a)(1)(i), redesignates 
Sec.  2.24(a)(1)(ii) as Sec.  2.24(b) and revises it to require an 
email and postal address for a designated domestic representative, and 
deletes Sec.  2.24(a)(2). The USPTO redesignates Sec.  2.24(a)(3) as 
Sec.  2.24(c) and rewords it for clarity, and deletes current Sec.  
2.24(b).
    The USPTO amends Sec.  2.32(a)(2) to add a statement that if the 
applicant is a national of a country that has acceded to the Trademark 
Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, 
the requirement to provide an email address does not apply. The USPTO 
amends Sec.  2.32(a)(3)(i) to require the legal entity as well as the 
citizenship of the applicant(s), deletes ``or'' from Sec.  
2.32(a)(3)(iii), adds ``or'' to Sec.  2.32(a)(3)(iv), and adds Sec.  
2.32(a)(3)(v) to require the state of organization of a sole 
proprietorship and the name and citizenship of a sole proprietor. The 
USPTO amends Sec.  2.32(d) to add the word ``the'' before ``fee.''
    The USPTO amends Sec.  2.56(a) to indicate that the specimen must 
show the mark as actually used in commerce for the identified goods or 
services and to add cross references to Sec. Sec.  2.160 and 7.36. The 
USPTO amends Sec.  2.56(b) and (c) to codify existing requirements for 
specimens. The USPTO amends Sec.  2.56(d) to set out the requirements 
for submitting a specimen through TEAS, revises current Sec.  
2.56(d)(1) and (2) to set out the exceptions to the requirements, and 
deletes Sec.  2.56(d)(3) and (4).
    The USPTO amends the title of Sec.  2.62 to ``Procedure for 
submitting response,'' revises Sec.  2.62(a) slightly for clarity, and 
revises Sec.  2.62(c) for consistency with amended Sec.  2.23 and to 
add that responses filed via facsimile will not be accorded a date of 
receipt.
    The USPTO amends Sec.  2.111(c)(2) for consistency with Sec.  
2.147(b).
    The USPTO amends Sec.  2.146(a) to add the words ``in a trademark 
case'' and revises Sec.  2.146(a)(2) and (4) to specify that the 
regulation applies to ``parts 2, 3, 6, and 7'' of Title 37.
    The USPTO adds Sec.  2.147 to set out the requirements for 
submitting a petition requesting acceptance of a paper submission.
    The USPTO amends Sec.  2.148 to clarify that it applies to ``parts 
2, 3, 6, and 7 of this chapter.''
    The USPTO amends Sec.  2.151 to indicate that the certificate of 
registration will issue to the owner, to reword the second and third 
sentences for clarity, and to change the wording ``accompany'' in the 
last sentence to ``issue with.''
    The USPTO amends Sec.  2.162 to change the word ``includes'' to 
``issues with the certificate'' and to add the wording ``or section 
71'' after ``section 8'' for consistency with Sec.  2.151.
    The USPTO amends Sec.  2.190(a) to clarify that the paragraph 
refers to paper documents, and to clarify that the stated mailing 
address is for documents to be sent by mail and that the address for 
hand delivery is the address for delivery by private courier or another 
delivery service. The USPTO amends Sec.  2.190(b) to state that 
trademark documents filed electronically must be submitted through TEAS 
and that documents related to TTAB proceedings must be filed through 
ESTTA, and to delete the URLs. The USPTO rewords Sec.  2.190(c) for 
clarity and to delete the mailing address and URL. The USPTO amends 
Sec.  2.190(d) to add ``certified'' to the title and to delete the 
first sentence and the wording ``or uncertified'' in the second 
sentence and to change ``should'' to ``must.'' The USPTO corrects the 
mailing address in Sec.  2.190(e).
    The USPTO amends the title of Sec.  2.191 to ``Action of the Office 
based on the written record'' and revises the section to state that all 
business must be recorded in writing, to reword for clarity, and to 
delete the last sentence.
    The USPTO amends Sec.  2.193(a)(2) and (b) to delete wording 
regarding submission of a photocopy or facsimile or by facsimile 
transmission. The USPTO amends Sec.  2.193(c)(1) to change the wording 
``he or she'' to ``the signer,'' and revises Sec.  2.193(d) to require 
submission of the first and last name and the title or position of the 
signatory and to delete the wording ``in printed or typed form'' and 
the wording after ``the signature.'' The USPTO amends the introductory 
text of Sec.  2.193(e) to clarify that documents must be signed as 
specified in paragraphs (e)(1) through (9). The USPTO amends the title 
and introductory text of Sec.  2.193(e)(5) to add ``or Sec.  2.147'' 
after the wording ``Sec.  2.146.'' The USPTO also deletes Sec.  
2.193(e)(10), rewords Sec.  2.193(g)(1) for clarity, and revises Sec.  
2.193(g)(2) to change ``correspondence'' to ``documents'' and to delete 
the last sentence.
    The USPTO amends the title of Sec.  2.195 to ``Filing date of 
trademark correspondence.'' The USPTO deletes current Sec.  2.195(a)-
(d) and sets out the procedures for determining the filing date of 
electronic and paper submissions in Sec.  2.195(a) and (b)(1) through 
(b)(2), indicates when the Office is closed in Sec.  2.195(b)(3), 
indicates that email and facsimile submissions are not permitted in 
Sec.  2.195(c), redesignates current Sec.  2.195(e)(1) through 
(e)(2)(iii) as Sec.  2.195(d)(1) through (3) and changes U.S Postal 
Service and United States Postal Service to USPS. The USPTO deletes 
current Sec.  2.195(e)(3).
    The USPTO amends the title of Sec.  2.197 to ``Certificate of 
mailing.'' The USPTO deletes current Sec.  2.197(a) through (c) and 
sets out the requirements for obtaining a filing date based on a 
certificate of mailing in Sec.  2.197(a), the procedure when 
correspondence is mailed in accordance with paragraph (a) of this 
section but not received by the Office in Sec.  2.197(b), and the 
filing date when the certificate of mailing does not meet the 
requirements in Sec.  2.197(c).
    The USPTO deletes current Sec.  2.198(a) through (f) and clarifies 
the filing date of correspondence submitted under this section in 
amended Sec.  2.198(a) and (b) and the procedures when there is a 
discrepancy, error, or non-receipt in amended Sec.  2.198(c)-(e).
    The USPTO amends Sec.  7.1(c) to indicate that the definition of 
TEAS includes all related electronic systems required to complete an 
electronic submission through TEAS and to delete a URL. The USPTO 
amends Sec.  7.1(d) to add ``or the abbreviation USPTO.''
    The USPTO amends the title of Sec.  7.4 to ``International 
applications and registrations originating from the USPTO--Requirements 
to electronically file and communicate with the Office.'' The USPTO 
amends Sec.  7.4(a) to specify that all correspondence relating to 
international applications and registrations originating from the USPTO 
must be submitted through TEAS and include a valid email correspondence 
address. The USPTO amends Sec.  7.4(b) to require that applicants and 
registrants provide and

[[Page 37091]]

maintain a valid email correspondence address and to delete current 
paragraphs (b)(1) and (b)(2). The USPTO amends Sec.  7.4(c) to set out 
an exemption for nationals of a country that has acceded to the 
Trademark Law Treaty, but not to the Singapore Treaty on the Law of 
Trademarks and Sec.  7.4(d) to set out the procedure if TEAS is 
unavailable or when there is an extraordinary situation, and to delete 
paragraphs (d)(1)-(d)(6). The USPTO also deletes Sec.  7.4(e).
    The USPTO amends Sec.  7.11(a) to delete the word ``either,'' to 
add a cross reference to Sec.  7.4(a), and to specify that the Office 
will grant a date of receipt to an international application typed on 
the official paper form issued by the IB if a paper submission is 
permitted under Sec.  7.4(c) or accepted on petition pursuant to Sec.  
7.4(d). The USPTO also adds the word ``and'' to Sec.  7.11(a)(10), 
deletes the word ``and'' from Sec.  7.11(a)(11), and deletes Sec.  
7.11(a)(12).
    The USPTO amends Sec.  7.21(b) to delete the word ``either,'' to 
add a cross reference to Sec.  7.4(a), and to specify that the Office 
will grant a date of receipt to a subsequent designation typed on the 
official paper form issued by the IB if a paper submission is permitted 
under Sec.  7.4(c) or accepted on petition pursuant to Sec.  7.4(d). 
The USPTO also adds the word ``and'' to Sec.  7.21(b)(7), deletes the 
word ``and'' from Sec.  7.21(b)(8), and deletes Sec.  7.21(b)(9).
    The USPTO revises Sec.  7.25 to delete the reference to Sec.  2.23 
and replace it with a reference to Sec.  2.22 and to delete the 
reference to Sec.  2.197.
    This rule revises sections of 37 CFR parts 2 and 7 that were 
revised in the final rule entitled Requirement of U.S. Licensed 
Attorney for Foreign Trademark Applicants and Registrants, published at 
84 FR 31498 (July 2, 2019). The revisions published here supplement the 
changes implemented in that earlier rule and do not change the 
requirements for obtaining U.S. counsel. However, this rule has 
resulted in a few changes to the revisions that were made in the 
earlier rule. In this regard, USPTO in the earlier rule had revised 
Sec.  2.32(a)(2); under that revision, an application would be required 
to include the ``name and domicile address of each applicant.'' In this 
rule, USPTO is amending Sec.  2.32(a)(2) to require an application to 
also include the ``email address of each applicant'' (as discussed 
above, the requirement to provide an email address does not apply if 
the applicant is a national of a country that has acceded to the 
Trademark Law Treaty, but not to the Singapore Treaty on the Law of 
Trademarks). In addition, this rule includes a reorganization of Sec.  
2.22 (``Requirements for a TEAS Plus Application''), which was revised 
by the earlier rule, to streamline the regulations and improve clarity. 
As a result of this reorganization, paragraphs (a)(19), (20), and (21) 
of Sec.  2.22 of the earlier rule are being redesignated--without 
change--as paragraphs (a)(17), (18), and (19). Also, the requirement 
for the applicant's name and domicile address, which was in Sec.  
2.22(a)(1) of the earlier rule, is now a requirement of Sec.  
2.21(a)(1) of this rule, and applies to all applicants. Finally, we 
note that the regulatory revisions that were made in that earlier rule 
are going into effect on August 3, 2019, whereas the regulatory 
revisions in this rule are going into effect on October 5, 2019.

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 (D.C. Cir. 2001) (Rules 
governing an application process are procedural under the 
Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 244 
F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims.).
    Accordingly, prior notice and opportunity for public comment for 
the changes in this rulemaking are not required pursuant to 5 U.S.C. 
553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (Notice-
and-comment procedures are required neither when an agency ``issue[s] 
an initial interpretive rule'' nor ``when it amends or repeals that 
interpretive rule.''); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A))). However, the Office has chosen to seek public comment 
before implementing the rule to benefit from the public's input.
    B. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, of the USPTO has certified to the Chief Counsel for 
Advocacy of the Small Business Administration that this rule will not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    This rule amends the regulations to require that applications filed 
under section 1 or section 44 of the Act, and all submissions regarding 
an application or registration under section 1, section 44, and section 
66(a), be filed electronically. The rule also requires that applicants, 
registrants, and parties to a proceeding maintain a valid email 
correspondence address and continue to receive communications from the 
Office by email. The rule applies to all applicants and registrants 
unless acceptance of a submission filed on paper or a waiver of the 
proposed requirements is granted on petition, the applicant/registrant 
is a national of a country to which the requirements will not apply, or 
the requirement to file electronically is otherwise excepted, as for 
certain types of specimens. 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, and this 
information would be required in order to determine the number of small 
entities that would be affected by the proposed rule.
    The burdens to all entities, including small entities, imposed by 
these rule changes will be minor procedural requirements on parties 
submitting applications or documents and communications in connection 
with an application or registration. The vast majority of users already 
file and prosecute applications electronically in response to previous 
initiatives to increase end-to-end electronic processing. For example, 
the USPTO amended its rules to encourage electronic filing through TEAS 
and email communication by establishing the TEAS Plus and TEAS RF 
filing options for applications that are based on section 1 and/or 
section 44. See 37 CFR 2.6. The TEAS RF filing option is now the most 
popular filing option among USPTO customers, followed by TEAS Plus. 
These two filing options currently account for approximately 97% of all 
trademark applications filed under section 1 and/or section 44, and 
more than 99% of trademark applications under section 1 and/or section 
44 in total are now filed electronically through TEAS, suggesting

[[Page 37092]]

that most applicants are comfortable with filing and communicating with 
the USPTO electronically.
    Furthermore, in January 2017, the USPTO revised its rules to (1) 
increase fees for paper filings to bring the fees nearer to the cost of 
processing the filings and encourage customers to use lower-cost 
electronic options and (2) require that all submissions to the TTAB be 
filed through ESTTA. As a result of these rule changes, the USPTO is 
now processing approximately 88% of applications filed under section 1 
and/or section 44 electronically end to end.
    The changes enacted herein do not impose any additional economic 
burden unless the applicant or registrant fails to file electronically. 
In such cases, the economic burden to the applicant or registrant would 
be the higher paper fee for the submission (if a fee is required) and 
the fee for the petition seeking acceptance of a submission filed on 
paper or a waiver of the requirement to file electronically. However, 
as mentioned above, since the vast majority of current users already 
file and prosecute applications electronically, the economic impact of 
filing on paper is expected to be small. Moreover, this rule will lead 
to a greater adoption of lower filing-fee options and therefore 
outweigh any cost burdens and likely save applicants and registrants 
money. For these reasons, this rule is not expected to have a 
significant economic impact on a substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not significant for purposes of 
Executive Order 12866 (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 an Executive Order 13771 regulatory 
action because this rule is not significant under Executive Order 
12866.
    F. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    G. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not required under Executive Order 13175 (Nov. 6, 
2000).
    H. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    I. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    J. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    K. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    L. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    M. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    N. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    O. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not 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. This rulemaking has an overall change on the 
public burdens within these approved collections including a reduction 
of 862 in burden hours and a reduction of $5,175 in cost burdens.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of

[[Page 37093]]

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, 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 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

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

    Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section 
10(c) of Pub. L. 112-29, unless otherwise noted.


0
2. Amend Sec.  2.2 by revising paragraphs (e), (f), and (g) and adding 
paragraphs (q) through (t) to read as follows:


Sec.  2.2  Definitions.

* * * * *
    (e) The term Office or abbreviation USPTO means the United States 
Patent and Trademark Office.
    (f) The acronym TEAS means the Trademark Electronic Application 
System and, as used in this part, includes all related electronic 
systems required to complete an electronic submission through TEAS.
    (g) The acronym ESTTA means the Electronic System for Trademark 
Trials and Appeals and, as used in this part, includes all related 
electronic systems required to complete an electronic submission 
through ESTTA.
* * * * *
    (q) The acronym ETAS means the Electronic Trademark Assignment 
System and, as used in this part, includes all related electronic 
systems required to complete an electronic submission through ETAS.
    (r) Eastern Time means Eastern Standard Time or Eastern Daylight 
Time, as appropriate.
    (s) The term electronic submission as used in this part refers to 
any submission made through an electronic filing system available on 
the Office's website, but not through email or facsimile transmission.
    (t) The abbreviation USPS as used in this part means the U.S. 
Postal Service.

0
3. Amend Sec.  2.6 by revising paragraphs (a)(1)(ii) through (v) to 
read as follows:


Sec.  2.6  Trademark fees.

    (a) * * *
    (1) * * *
    (ii) For filing an application under section 66(a) of the Act, per 
class--$400.00
    (iii) For filing a TEAS Standard application, per class--$275.00
    (iv) For filing a TEAS Plus application under Sec.  2.22, per 
class--$225.00
    (v) Additional processing fee under Sec.  2.22(c), per class--
$125.00
* * * * *

0
4. Amend Sec.  2.17 by revising paragraph (d) to read as follows:


Sec.  2.17  Recognition for representation.

* * * * *
    (d) Power of attorney relating to multiple applications or 
registrations. 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.
* * * * *

0
5. Revise Sec.  2.18 to read as follows:


Sec.  2.18  Correspondence, with whom held.

    (a) Establishing the correspondent. The Office will send 
correspondence as follows:
    (1) If the applicant, registrant, or party to a proceeding is not 
represented by an attorney qualified to practice before the Office 
under Sec.  11.14(a) of this chapter, the Office will send 
correspondence to the applicant, registrant, or party to the 
proceeding.
    (2) If an attorney is recognized as a representative pursuant to 
Sec.  2.17(b)(1), the Office will correspond only with that attorney. A 
request to change the correspondence address does not revoke a power of 
attorney. Except for service of a cancellation petition, the Office 
will not correspond directly with the applicant, registrant, or a party 
to a proceeding, or with another attorney from a different firm, 
unless:
    (i) The applicant or registrant files a revocation of the power of 
attorney under Sec.  2.19(a) and/or a new power of attorney that meets 
the requirements of Sec.  2.17(c);
    (ii) The attorney has been suspended or excluded from practicing in 
trademark matters before the USPTO; or
    (iii) Recognition of the attorney has ended pursuant to Sec.  
2.17(g).
    (b) Ex parte matters. Only one correspondence address may be 
designated in an ex parte matter.
    (c) Maintaining and changing the correspondence addresses. The 
applicant, registrant, or party to a proceeding must maintain current 
and accurate correspondence addresses, as required by Sec.  2.23, for 
itself and its attorney, if one is designated. If any of these 
addresses change, a request to change the address, signed in accordance 
with Sec.  2.193(e)(9), must be promptly filed.
    (d) Post registration filings under sections 7, 8, 9, 12(c), 15, 
and 71 of the Act. Even if there is no new power of attorney or written 
request to change the correspondence address, the Office will change 
the correspondence address upon the examination of 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, if a new address is provided, in accordance with 
paragraph (a) of this section.

0
6. Revise Sec.  2.21 to read as follows:


Sec.  2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application under 
section 1 or section 44 of the Act that is filed through TEAS, is 
written in the English language, and contains all of the following:
    (1) The name, domicile address, and email address of each 
applicant;
    (2) If the applicant is represented by a practitioner qualified 
under Sec.  11.14 of this chapter, the practitioner's name, postal 
address, and email address;
    (3) A clear drawing of the mark;
    (4) A listing of the goods or services; and
    (5) The filing fee required under Sec.  2.6 for at least one class 
of goods or services.
    (b) If the applicant does not satisfy all the elements required in 
paragraph (a) of this section, the Office will deny a filing date to 
the application unless the applicant meets the requirements of 
paragraph (c) of this section.
    (c) If the applicant is a national of a country that has acceded to 
the Trademark Law Treaty, but not to the Singapore Treaty on the Law of 
Trademarks, the requirements of paragraph (a) of this section to file 
through TEAS and provide an email address do not apply.

0
7. Revise Sec.  2.22 to read as follows:


Sec.  2.22  Requirements for a TEAS Plus application.

    (a) A trademark/service mark application for registration on the 
Principal Register under section 1 and/or section 44 of the Act that 
meets the requirements for a filing date under Sec.  2.21 will be 
entitled to a reduced filing fee under Sec.  2.6(a)(1)(iv) if it 
includes:

[[Page 37094]]

    (1) The applicant's legal entity;
    (2) The citizenship of each individual applicant, or the state or 
country of incorporation or organization of each juristic applicant;
    (3) If the applicant is a domestic partnership, the names and 
citizenship of the general partners, or if the applicant is a domestic 
joint venture, the names and citizenship of the active members of the 
joint venture;
    (4) If the applicant is a sole proprietorship, the state of 
organization of the sole proprietorship and the name and citizenship of 
the sole proprietor;
    (5) One or more bases for filing that satisfy all the requirements 
of Sec.  2.34. If more than one basis is set forth, the applicant must 
comply with the requirements of Sec.  2.34 for each asserted basis;
    (6) Correctly classified goods and/or services, with an 
identification of goods and/or services from the Office's Acceptable 
Identification of Goods and Services Manual, available through the TEAS 
Plus form. In an application based on section 44 of the Act, the scope 
of the goods and/or services covered by the section 44 basis may not 
exceed the scope of the goods and/or services in the foreign 
application or registration;
    (7) If the application contains goods and/or services in more than 
one class, compliance with Sec.  2.86;
    (8) A filing fee for each class of goods and/or services, as 
required by Sec.  2.6(a)(1)(iv);
    (9) A verified statement that meets the requirements of Sec.  2.33, 
dated and signed by a person properly authorized to sign on behalf of 
the owner pursuant to Sec.  2.193(e)(1);
    (10) If the applicant does not claim standard characters, the 
applicant must attach a digitized image of the mark. If the mark 
includes color, the drawing must show the mark in color;
    (11) If the mark is in standard characters, a mark comprised only 
of characters in the Office's standard character set, typed in the 
appropriate field of the TEAS Plus form;
    (12) If the mark includes color, a statement naming the color(s) 
and describing where the color(s) appears on the mark, and a claim that 
the color(s) is a feature of the mark;
    (13) If the mark is not in standard characters, a description of 
the mark;
    (14) If the mark includes non-English wording, an English 
translation of that wording;
    (15) If the mark includes non-Latin characters, a transliteration 
of those characters;
    (16) If the mark includes an individual's name or portrait, either 
(i) a statement that identifies the living individual whose name or 
likeness the mark comprises and written consent of the individual, or 
(ii) a statement that the name or portrait does not identify a living 
individual (see section 2(c) of the Act).
    (17) 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;
    (18) If the application is a concurrent use application, compliance 
with Sec.  2.42; and
    (19) 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.
    (b) In addition to the filing requirements under paragraph (a) of 
this section, the applicant must comply with Sec.  2.23(a) and (b).
    (c) If an application does not fulfill the requirements of 
paragraph (a) of this section, the applicant must pay the processing 
fee required by Sec.  2.6(a)(1)(v).
    (d) The following types of applications cannot be filed as TEAS 
Plus applications:
    (1) Applications for certification marks (see Sec.  2.45);
    (2) Applications for collective trademarks and service marks (see 
Sec.  2.44);
    (3) Applications for collective membership marks (see Sec.  2.44); 
and
    (4) Applications for registration on the Supplemental Register (see 
Sec.  2.47).

0
8. Revise Sec.  2.23 to read as follows:


Sec.  2.23  Requirement to correspond electronically with the Office 
and duty to monitor status.

    (a) Unless stated otherwise in this chapter, all trademark 
correspondence must be submitted through TEAS.
    (b) Applicants, registrants, and parties to a proceeding must 
provide and maintain a valid email address for correspondence.
    (c) If the applicant or registrant is a national of a country that 
has acceded to the Trademark Law Treaty, but not to the Singapore 
Treaty on the Law of Trademarks, the requirements of paragraphs (a) and 
(b) of this section do not apply.
    (d) Notices issued or actions taken by the USPTO are displayed in 
the USPTO's publicly available electronic systems. Applicants and 
registrants are responsible for monitoring the status of their 
applications and registrations in the USPTO's electronic systems during 
the following time periods:
    (1) At least every six months between the filing date of the 
application and issuance of a registration; and
    (2) After filing an affidavit of use or excusable nonuse under 
section 8 or section 71 of the Act, or a renewal application under 
section 9 of the Act, at least every six months until the registrant 
receives notice that the affidavit or renewal application has been 
accepted.

0
9. Revise Sec.  2.24 to read as follows:


Sec.  2.24  Designation and revocation of domestic representative by 
foreign applicant.

    (a) An applicant or registrant that is not domiciled in the United 
States may designate a domestic representative (i.e., a person residing 
in the United States on whom notices or process in proceedings 
affecting the mark may be served).
    (b) The designation, or a request to change or revoke a 
designation, must set forth the name, email address, and postal address 
of the domestic representative and be signed pursuant to Sec.  
2.193(e)(8).
    (c) The mere designation of a domestic representative does not 
authorize the person designated to represent the applicant or 
registrant.

0
10. Amend Sec.  2.32 by revising paragraphs (a)(2) and (3) and (d) to 
read as follows:


Sec.  2.32  Requirements for a complete trademark or service mark 
application.

    (a) * * *
    (2) The name, domicile address, and email address of each 
applicant. If the applicant is a national of a country that has acceded 
to the Trademark Law Treaty, but not to the Singapore Treaty on the Law 
of Trademarks, the requirement to provide an email address does not 
apply;
    (3)(i) The legal entity type and citizenship of the applicant(s); 
and
    (ii) If the applicant is a corporation, association, partnership or 
other juristic person, the jurisdiction (usually state or nation) under 
the laws of which the applicant is organized;
    (iii) If the applicant is a domestic partnership, the names and 
citizenship of the general partners;
    (iv) If the applicant is a domestic joint venture, the names and 
citizenship of the active members of the joint venture; or
    (v) If the applicant is a sole proprietorship, the state of 
organization

[[Page 37095]]

of the sole proprietorship and the name and citizenship of the sole 
proprietor.
* * * * *
    (d) The application must include the fee required by Sec.  2.6 for 
each class of goods or services.
* * * * *

0
11. Revise Sec.  2.56 to read as follows:


2.56  Specimens.

    (a) An application under section 1(a) of the Act, an amendment to 
allege use under Sec.  2.76, a statement of use under Sec.  2.88, an 
affidavit or declaration of continued use or excusable nonuse under 
Sec.  2.160, or an affidavit or declaration of use or excusable nonuse 
under Sec.  7.36 must include one specimen per class showing the mark 
as actually used in commerce on or in connection with the goods or 
services identified. When requested by the Office as reasonably 
necessary to proper examination, additional specimens must be provided.
    (b)(1) A trademark specimen must show use of the mark on the goods, 
on containers or packaging for the goods, on labels or tags affixed to 
the goods, or on a display associated with the goods. To constitute a 
display associated with the goods, a specimen must show use of the mark 
directly associated with the goods and such use must be of a point-of-
sale nature. The Office may accept another document related to the 
goods or the sale of the goods when it is impracticable to place the 
mark on the goods, packaging for the goods, or displays associated with 
the goods.
    (2) A service mark specimen must show the mark as used in the sale 
of the services, including use in the performance or rendering of the 
services, or in the advertising of the services. The specimen must show 
a direct association between the mark and the services.
    (3) A collective trademark or collective service mark specimen must 
show how a member uses the mark on the member's goods or in the sale of 
the services, including use in the performance or rendering of the 
services, or advertising of the member's services.
    (4) A collective membership mark specimen must show use by members 
to indicate membership in the collective organization.
    (5) A certification mark specimen must show how a person other than 
the owner uses the mark to reflect certification of regional or other 
origin, material, mode of manufacture, quality, accuracy, or other 
characteristics of that person's goods or services; or that members of 
a union or other organization performed the work or labor on the goods 
or services.
    (c) A clear and legible photocopy, photograph, web page printout, 
or other similar type of reproduction of an actual specimen that meets 
the requirements of paragraphs (a) and (b) of this section is 
acceptable. The reproduction must show the entire specimen or enough of 
the specimen that the nature of the specimen, the mark, and the good or 
service with which the mark is used are identifiable. A web page must 
include the URL and access or print date. An artist's rendering, a 
printer's proof, a computer illustration, digital image, or similar 
mockup of how the mark may be displayed, or a photocopy of the drawing 
required by Sec.  2.51, are not proper specimens.
    (d) The specimen must be submitted through TEAS in a file format 
designated as acceptable by the Office, unless:
    (1) The mark consists of a scent, flavor, or similar non-
traditional mark type, in which case the specimen may be mailed to the 
Office, pursuant to Sec.  2.190(a), without resort to the procedures 
set forth in Sec.  2.147; or
    (2) Submission on paper is permitted under Sec.  2.23(c) or is 
accepted on petition pursuant to Sec.  2.147.

0
12. Revise Sec.  2.62 to read as follows:


Sec.  2.62  Procedure for submitting response.

    (a) Deadline. The applicant's response to an Office action must be 
received by the USPTO within six months from the issue date.
    (b) Signature. The response must be signed by the applicant, 
someone with legal authority to bind the applicant (e.g., a corporate 
officer or general partner of a partnership), or a practitioner 
qualified to practice under Sec.  11.14 of this chapter, in accordance 
with the requirements of Sec.  2.193(e)(2).
    (c) Form. Responses must be submitted through TEAS pursuant to 
Sec.  2.23(a). Responses sent via email or facsimile will not be 
accorded a date of receipt.

0
13. Amend Sec.  2.111 by revising paragraph (c)(2) to read as follows:


Sec.  2.111  Filing petition for cancellation.

* * * * *
    (c) * * *
    (2)(i) In the event that ESTTA is unavailable due to technical 
problems, or when extraordinary circumstances are present, a petition 
to cancel may be filed in paper form. A paper petition to cancel a 
registration must be accompanied by a Petition to the Director under 
Sec.  2.146, with the fees therefor and the showing required under this 
paragraph (c). Timeliness of the paper submission, if relevant to a 
ground asserted in the petition to cancel, will be determined in 
accordance with Sec. Sec.  2.195 through 2.198.
    (ii) For a petition to cancel a registration on the fifth year 
anniversary of the date of registration of the mark, a petitioner for 
cancellation who meets the requirements of Sec.  2.147(b) may submit a 
petition to the Director to accept a timely filed paper petition to 
cancel.
* * * * *

0
14. Amend Sec.  2.146 by revising paragraph (a) to read as follows:


Sec.  2.146  Petitions to the Director.

    (a) Petition may be taken to the Director in a trademark case:
    (1) From any repeated or final formal requirement of the examiner 
in the ex parte prosecution of an application if permitted by Sec.  
2.63(a) and (b);
    (2) In any case for which the Act of 1946, Title 35 of the United 
States Code, or parts 2, 3, 6, and 7 of Title 37 of the Code of Federal 
Regulations specifies that the matter is to be determined directly or 
reviewed by the Director;
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances;
    (4) In any case not specifically defined and provided for by parts 
2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or
    (5) In an extraordinary situation, when justice requires and no 
other party is injured thereby, to request a suspension or waiver of 
any requirement of the rules not being a requirement of the Act of 
1946.
* * * * *

0
15. Add Sec.  2.147 to read as follows:


Sec.  2.147  Petition to the Director to accept a paper submission.

    (a) Paper submission when TEAS is unavailable on the date of a 
filing deadline. (1) An applicant or registrant may file a petition to 
the Director under this section requesting acceptance of a submission 
filed on paper if:
    (i) TEAS is unavailable on the date of the deadline for the 
submission specified in a regulation in part 2 or 7 of this chapter or 
in a section of the Act; and
    (ii) The petition is timely filed, pursuant to Sec.  2.197 or Sec.  
2.198, on the date of the deadline.
    (2) The petition must include:
    (i) The paper submission;
    (ii) Proof that TEAS was unavailable on the date of the deadline;
    (iii) A statement of the facts relevant to the petition, supported 
by a declaration under Sec.  2.20 or 28 U.S.C.

[[Page 37096]]

1746 that is signed by the petitioner, someone with legal authority to 
bind the petitioner (e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under Sec.  11.14 
of this chapter;
    (iv) The fee for a petition filed on paper under Sec.  
2.6(a)(15)(i); and
    (v) Any other required fee(s) under Sec.  2.6 for the paper 
submission.
    (b) Certain paper submissions timely filed before the date of a 
filing deadline. (1) An applicant, registrant, or petitioner for 
cancellation may file a petition to the Director under this section, 
requesting acceptance of any of the following submissions that was 
timely submitted on paper and otherwise met the minimum filing 
requirements, but not processed or examined by the Office because it 
was not submitted electronically pursuant to Sec.  2.21(a), Sec.  
2.23(a), or Sec.  2.111(c)(1), and the applicant, registrant, or 
petitioner for cancellation is unable to timely resubmit the document 
electronically by the deadline:
    (i) An application seeking a priority filing date with a deadline 
under section 44(d)(1) of the Act;
    (ii) A statement of use filed within the last six months of the 
period specified in section 1(d)(2) of the Act;
    (iii) An affidavit or declaration of continued use or excusable 
nonuse with a deadline under section 8(a)(3) or section 71(a)(3) of the 
Act;
    (iv) A request for renewal of a registration with a deadline under 
section 9(a) of the Act;
    (v) An application for transformation of an extension of protection 
into a United States application with a deadline under section 70(c) of 
the Act; or
    (vi) A petition to cancel a registration under section 14 of the 
Act on the fifth year anniversary of the date of the registration of 
the mark.
    (2) The petition must be filed by not later than two months after 
the issue date of the notice denying acceptance of the paper filing and 
must include:
    (i) A statement of the facts relevant to the petition, supported by 
a declaration under Sec.  2.20 or 28 U.S.C. 1746 that is signed by the 
petitioner, someone with legal authority to bind the petitioner (e.g., 
a corporate officer or general partner of a partnership), or a 
practitioner qualified to practice under Sec.  11.14 of this chapter;
    (ii) A copy of the relevant paper submission and proof that it was 
timely filed;
    (iii) Proof that a sufficient fee accompanied the original paper 
submission;
    (iv) The required fee(s) under Sec.  2.6 for the paper submission; 
and
    (v) The relevant petition fee under Sec.  2.6(a)(15).
    (c) Petition under Sec.  2.146. If the applicant or registrant is 
unable to meet the requirements under paragraphs (a) or (b) of this 
section for filing the petition, the applicant or registrant may submit 
a petition to the Director under Sec.  2.146(a)(5) to request a waiver 
of Sec.  2.21(a) or Sec.  2.23(a).
    (d) This section does not apply to requirements for paper 
submissions to the Trademark Trial and Appeal Board except as specified 
in paragraph (b)(vi).

0
16. Revise Sec.  2.148 to read as follows:


Sec.  2.148  Director may suspend certain rules.

    In an extraordinary situation, when justice requires and no other 
party is injured thereby, any requirement of the rules in parts 2, 3, 
6, and 7 of this chapter that is not a requirement of the Act may be 
suspended or waived by the Director.

0
17. Revise Sec.  2.151 to read as follows:


Sec.  2.151  Certificate.

    When the Office determines that a mark is registrable, the Office 
will issue to the owner a certificate of registration on the Principal 
Register or the Supplemental Register. The certificate will state the 
application filing date, the act under which the mark is registered, 
the date of issue, and the number of the registration and will include 
a reproduction of the mark and pertinent data from the application. A 
notice of the requirements of sections 8 and 71 of the Act will issue 
with the certificate.

0
18. Revise Sec.  2.162 to read as follows:


Sec.  2.162  Notice to registrant.

    When a certificate of registration is originally issued, the Office 
issues with the certificate a notice of the requirement for filing the 
affidavit or declaration of use or excusable nonuse under section 8 or 
section 71 of the Act. However, the affidavit or declaration must be 
filed within the time period required by section 8 or section 71 of the 
Act even if this notice is not received.

0
19. Revise Sec.  2.190 to read as follows:


Sec.  2.190  Addresses for trademark correspondence with the United 
States Patent and Trademark Office.

    (a) Paper trademark documents. In general, trademark documents to 
be delivered by the USPS must be addressed to: Commissioner for 
Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. Trademark-related 
documents to be delivered by hand, private courier, or other delivery 
service may be delivered during the hours the Office is open to receive 
correspondence to the Trademark Assistance Center, James Madison 
Building--East Wing, Concourse Level, 600 Dulany Street, Alexandria, 
Virginia 22314.
    (b) Electronic trademark documents. Trademark documents filed 
electronically must be submitted through TEAS. Documents that relate to 
proceedings before the Trademark Trial and Appeal Board must be filed 
electronically with the Board through ESTTA.
    (c) Trademark assignment documents. Requests to record documents in 
the Assignment Recordation Branch may be filed electronically through 
ETAS. Paper documents and cover sheets to be recorded in the Assignment 
Recordation Branch should be addressed as designated in Sec.  3.27 of 
this chapter.
    (d) Requests for certified copies of trademark documents. Paper 
requests for certified copies of trademark documents must be addressed 
to: Mail Stop Document Services, Director of the United States Patent 
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    (e) Certain documents relating to international applications and 
registrations. International applications under Sec.  7.11, subsequent 
designations under Sec.  7.21, responses to notices of irregularity 
under Sec.  7.14, requests to record changes in the International 
Register under Sec.  7.23 and Sec.  7.24, requests to note replacements 
under Sec.  7.28, requests for transformation under Sec.  7.31 of this 
chapter, and petitions to the Director to review an action of the 
Office's Madrid Processing Unit must be addressed to: Madrid Processing 
Unit, 600 Dulany Street, Alexandria, VA 22314-5796.

0
20. Revise Sec.  2.191 to read as follows:


Sec.  2.191  Action of the Office based on the written record.

    All business with the Office must be transacted in writing. The 
action of the Office will be based exclusively on the written record. 
No consideration will be given to any alleged oral promise, 
stipulation, or understanding when there is disagreement or doubt.

0
21. Amend Sec.  2.193 by:
0
a. Revising paragraphs (a)(2), (b), (c)(1), (d), (e) introductory text, 
(e)(5) introductory text, and (e)(9);
0
b. Removing paragraph (e)(10); and
0
c. Revising paragraphs (f) and (g).
    The revisions read as follows:


Sec.  2.193  Trademark correspondence and signature requirements.

    (a) * * *

[[Page 37097]]

    (2) An electronic signature that meets the requirements of 
paragraph (c) of this section, personally entered by the person named 
as the signatory. The Office will accept an electronic signature that 
meets the requirements of paragraph (c) of this section on 
correspondence filed on paper or through TEAS or ESTTA.
    (b) Copy of original signature. If a copy of an original signature 
is filed, the filer should retain the original as evidence of 
authenticity. If a question of authenticity arises, the Office may 
require submission of the original.
    (c) * * *
    (1) Personally enter any combination of letters, numbers, spaces 
and/or punctuation marks that the signer has adopted as a signature, 
placed between two forward slash (``/'') symbols in the signature block 
on the electronic submission; or
* * * * *
    (d) Signatory must be identified. The first and last name, and the 
title or position, of the person who signs a document in connection 
with a trademark application, registration, or proceeding before the 
Trademark Trial and Appeal Board must be set forth immediately below or 
adjacent to the signature.
    (e) Proper person to sign. Documents filed in connection with a 
trademark application or registration must be signed as specified in 
paragraphs (e)(1) through (9) of this section:
* * * * *
    (5) Petitions to Director under Sec.  2.146 or Sec.  2.147. A 
petition to the Director under Sec.  2.146 or Sec.  2.147 must be 
signed by the petitioner, someone with legal authority to bind the 
petitioner (e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under Sec.  11.14 
of this chapter, in accordance with the following guidelines:
* * * * *
    (9) Requests to change correspondence address in an application or 
registration. A notice of change of correspondence address in an 
application or registration must be signed by the applicant or 
registrant, someone with legal authority to bind the applicant or 
registrant (e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under Sec.  11.14 
of this chapter, in accordance with the following guidelines:
    (i) If the applicant or registrant is represented by a practitioner 
qualified to practice before the Office under Sec.  11.14 of this 
chapter, the practitioner must sign; or
    (ii) If the applicant or registrant is not represented by a 
practitioner qualified to practice before the Office under Sec.  11.14, 
the individual applicant or registrant or someone with legal authority 
to bind the applicant or registrant (e.g., a corporate officer or 
general partner of a partnership) must sign. In the case of joint 
applicants or joint registrants, all must sign.
    (f) Signature as certification. The presentation to the Office 
(whether by signing, filing, submitting, or later advocating) of any 
document by any person, whether a practitioner or non-practitioner, 
constitutes a certification under Sec.  11.18(b) of this chapter. 
Violations of Sec.  11.18(b) of this chapter may jeopardize the 
validity of the application or registration, and may result in the 
imposition of sanctions under Sec.  11.18(c) of this chapter. Any 
practitioner violating Sec.  11.18(b) of this chapter may also be 
subject to disciplinary action. See Sec.  11.18(d) and Sec.  11.804 of 
this chapter.
    (g) Separate copies for separate files. (1) Since each file must be 
complete in itself, a separate copy of every document filed in 
connection with a trademark application, registration, or inter partes 
proceeding must be furnished for each file to which the document 
pertains, even though the documents filed in multiple files may be 
identical.
    (2) Parties should not file duplicate copies of documents in a 
single application, registration, or proceeding file, unless the Office 
requires the filing of duplicate copies.
* * * * *

0
22. Revise Sec.  2.195 to read as follows:


Sec.  2.195  Filing date of trademark correspondence.

    The filing date of trademark correspondence is determined as 
follows:
    (a) Electronic submissions. The filing date of an electronic 
submission is the date the Office receives the submission, based on 
Eastern Time, regardless of whether that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia.
    (b) Paper correspondence. The filing date of a submission submitted 
on paper is the date the Office receives the submission, except as 
follows:
    (1) Priority Mail Express[supreg]. The filing date of the 
submission is the date of deposit with the USPS, if filed pursuant to 
the requirements of Sec.  2.198.
    (2) Certificate of mailing. The filing date of the submission is 
the date of deposit with the USPS, if filed pursuant to the 
requirements of Sec.  2.197.
    (3) Office closed. The Office is not open to receive paper 
correspondence on any day that is a Saturday, Sunday, or Federal 
holiday within the District of Columbia.
    (c) Email and facsimile submissions. Email and facsimile 
submissions are not permitted and, if submitted, will not be accorded a 
date of receipt.
    (d) Interruptions in USPS. If the Director designates a postal 
service interruption or emergency within the meaning of 35 U.S.C. 
21(a), any person attempting to file correspondence by Priority Mail 
Express[supreg] Post Office to Addressee service who was unable to 
deposit the correspondence with the USPS due to the interruption or 
emergency may petition the Director to consider such correspondence as 
filed on a particular date in the Office. The petition must:
    (1) Be filed promptly after the ending of the designated 
interruption or emergency;
    (2) Include the original correspondence or a copy of the original 
correspondence; and
    (3) Include a statement that the correspondence would have been 
deposited with the USPS on the requested filing date but for the 
designated interruption or emergency in Priority Mail Express[supreg] 
service; and that the correspondence attached to the petition is the 
original correspondence or a true copy of the correspondence originally 
attempted to be deposited as Priority Mail Express[supreg] on the 
requested filing date.

0
23. Revise Sec.  2.197 to read as follows:


Sec.  2.197  Certificate of mailing.

    (a) The filing date of correspondence submitted under this section 
is the date of deposit with the USPS if the correspondence:
    (1) Is addressed as set out in Sec.  2.190 and deposited with the 
USPS with sufficient postage as first-class mail; and
    (2) Includes a certificate of mailing for each piece of 
correspondence that:
    (i) Attests to the mailing and the address used;
    (ii) Includes the name of the document and the application serial 
number or USPTO reference number, if assigned, or registration number 
to which the document pertains;
    (iii) Is signed separately from any signature for the 
correspondence by a person who has a reasonable basis to expect that 
the correspondence would be mailed on the date indicated; and
    (iv) Sets forth the date of deposit with the USPS.
    (b) If correspondence is mailed in accordance with paragraph (a) of 
this section, but not received by the Office,

[[Page 37098]]

the party who mailed such correspondence may file a petition to the 
Director under Sec.  2.146(a)(2) to consider such correspondence filed 
in the Office on the date of deposit with the USPS. The petition must:
    (1) Be filed within two months after the date of mailing;
    (2) Include a copy of the previously mailed correspondence and 
certificate; and
    (3) Include a verified statement attesting to the facts of the 
original mailing.
    (c) If the certificate of mailing does not meet the requirements of 
paragraph (a)(2) of this section, the filing date is the date the 
Office receives the submission.

0
24. Revise Sec.  2.198 to read as follows:


Sec.  2.198  Filing of correspondence by Priority Mail Express[supreg].

    (a) The filing date of correspondence submitted under this section 
is the date of deposit with the USPS, as shown by the ``date accepted'' 
on the Priority Mail Express[supreg] label or other official USPS 
notation.
    (b) If the USPS deposit date cannot be determined, the filing date 
is the date the Office receives the submission.
    (c) If there is a discrepancy between the filing date accorded by 
the Office to the correspondence and the ``date accepted,'' the party 
who submitted the correspondence may file a petition to the Director 
under Sec.  2.146(a)(2) to accord the correspondence a filing date as 
of the ``date accepted.'' The petition must:
    (1) Be filed within two months after the date of deposit;
    (2) Include a true copy of the Priority Mail Express[supreg] 
mailing label showing the ``date accepted,'' and any other official 
notation by the USPS relied upon to show the date of deposit; and
    (3) Include a verified statement attesting to the facts of the 
original mailing.
    (d) If the party who submitted the correspondence can show that the 
``date accepted'' was incorrectly entered or omitted by the USPS, the 
party may file a petition to the Director under Sec.  2.146(a)(2) to 
accord the correspondence a filing date as of the date the 
correspondence is shown to have been deposited with the USPS. The 
petition must:
    (1) Be filed within two months after the date of deposit;
    (2) Include proof that the correspondence was deposited in the 
Priority Mail Express[supreg] Post Office to Addressee service prior to 
the last scheduled pickup on the requested filing date. Such proof must 
be corroborated by evidence from the USPS or evidence that came into 
being within one business day after the date of deposit; and
    (3) Include a verified statement attesting to the facts of the 
original mailing.
    (e) If correspondence is properly addressed to the Office pursuant 
to Sec.  2.190 and deposited with sufficient postage in the Priority 
Mail Express[supreg] Post Office to Addressee service of the USPS, but 
not received by the Office, the party who submitted the correspondence 
may file a petition to the Director under Sec.  2.146(a)(2) to consider 
such correspondence filed in the Office on the USPS deposit date. The 
petition must:
    (1) Be filed within two months after the date of deposit;
    (2) Include a copy of the previously mailed correspondence showing 
the number of the Priority Mail Express[supreg] mailing label thereon; 
and
    (3) Include a verified statement attesting to the facts of the 
original mailing.

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
25. The authority citation for part 7 continues to read as follows:

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


0
26. Amend Sec.  7.1 by revising paragraphs (c) and (d) to read as 
follows:


Sec.  7.1  Definitions of terms as used in this part.

* * * * *
    (c) The acronym TEAS means the Trademark Electronic Application 
System, and, as used in this part, includes all related electronic 
systems required to complete an electronic submission through TEAS.
    (d) The term Office or the abbreviation USPTO means the United 
States Patent and Trademark Office.
* * * * *

0
27. Revise Sec.  7.4 to read as follows:


Sec.  7.4  International applications and registrations originating 
from the USPTO--Requirements to electronically file and communicate 
with the Office.

    (a) Unless stated otherwise in this chapter, all correspondence 
filed with the USPTO relating to international applications and 
registrations originating from the USPTO must be submitted through TEAS 
and include a valid email address for correspondence.
    (b) Applicants and registrants under this section must provide and 
maintain a valid email address for correspondence with the Office.
    (c) If an applicant or registrant under this section is a national 
of a country that has acceded to the Trademark Law Treaty, but not to 
the Singapore Treaty on the Law of Trademarks, the requirements of 
paragraphs (a) and (b) of this section do not apply.
    (d) If TEAS is unavailable, or in an extraordinary situation, an 
applicant or registrant under this section who is required to file a 
submission through TEAS may submit a petition to the Director under 
Sec.  2.146(a)(5) and (c) of this chapter to accept the submission 
filed on paper.

0
28. Amend Sec.  7.11 by:
0
a. Revising paragraphs (a) introductory text and (a)(10) and (11);
0
b. Removing paragraph (a)(12); and
0
c. Revising paragraph (b).
    The revisions read as follows:


Sec.  7.11  Requirements for international application originating from 
the United States.

    (a) The Office will grant a date of receipt to an international 
application that is filed through TEAS in accordance with Sec.  7.4(a), 
or typed on the official paper form issued by the International Bureau, 
if permitted under Sec.  7.4(c) or accepted on petition pursuant to 
Sec.  7.4(d). The international application must include all of the 
following:
* * * * *
    (10) If the application is filed through TEAS, the international 
application fees for all classes, and the fees for all designated 
Contracting Parties identified in the international application (see 
Sec.  7.7); and
    (11) A statement that the applicant is entitled to file an 
international application in the Office, specifying that applicant: Is 
a national of the United States; has a domicile in the United States; 
or has a real and effective industrial or commercial establishment in 
the United States. Where an applicant's address is not in the United 
States, the applicant must provide the address of its U.S. domicile or 
establishment.
    (b) For requirements for certification, see Sec.  7.13.

0
29. Amend Sec.  7.21 by:
0
a. Revising paragraphs (b) introductory text and (b)(7) and (8);
0
b. Removing paragraph (b)(9); and
0
c. Revising paragraph (c).
    The revisions read as follows:


Sec.  7.21  Subsequent designation.

* * * * *
    (b) The Office will grant a date of receipt to a subsequent 
designation that

[[Page 37099]]

is filed through TEAS in accordance with Sec.  7.4(a), or typed on the 
official paper form issued by the International Bureau, if permitted 
under Sec.  7.4(c) or accepted on petition pursuant to Sec.  7.4(d). 
The subsequent designation must contain all of the following:
* * * * *
    (7) The U.S. transmittal fee required by Sec.  7.6; and
    (8) If the subsequent designation is filed through TEAS, the 
subsequent designation fees (see Sec.  7.7).
    (c) If the subsequent designation is accorded a date of receipt, 
the Office will then forward the subsequent designation to the 
International Bureau.
* * * * *

0
30. Amend Sec.  7.25 by revising paragraph (a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.21, 2.22, 2.76, 2.88, 2.89, 2.130, 
2.131, 2.160 through 2.166, 2.168, 2.173, 2.175, and 2.181 through 
2.186, all sections in parts 2 and 11 of this chapter shall apply to an 
extension of protection of an international registration to the United 
States, including sections related to proceedings before the Trademark 
Trial and Appeal Board, unless otherwise stated.
* * * * *

    Dated: July 25, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-16259 Filed 7-30-19; 8:45 am]
 BILLING CODE 3510-16-P