[Federal Register Volume 87, Number 3 (Wednesday, January 5, 2022)]
[Notices]
[Pages 431-432]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-28536]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-T-2021-0055]
Trademarks Administrative Sanctions Process
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: As part of the United States Patent and Trademark Office's
(USPTO or Office) continuing efforts to protect the integrity of the
U.S. trademark register, the Commissioner for Trademarks (Commissioner)
has established an administrative process for investigating submissions
filed with the USPTO in trademark matters that appear to violate the
Trademark Rules of Practice, including the rules concerning signatures,
certificates, and representation of others in trademark matters before
the USPTO (collectively, the USPTO rules), and/or the USPTO website's
Terms of Use; and imposing sanctions, as appropriate.
DATES: Comments must be received by January 20, 2022 to ensure
consideration.
ADDRESSES: Comments regarding this notice should be sent to
uspto.gov">TMFRNotices@uspto.gov with the subject line ``Trademarks Administrative
Sanctions Process.'' If a submission by email is not feasible (e.g.,
due to a lack of access to a computer and/or the internet), please
contact the USPTO for special instructions using the contact
information provided in the For Further Information Contact section of
this notice.
FOR FURTHER INFORMATION CONTACT: Robert Lavache, Office of the Deputy
Commissioner for Trademark Examination Policy, at 571-272-5881 or
uspto.gov">TMFRNotices@uspto.gov.
SUPPLEMENTARY INFORMATION: As part of the USPTO's continuing efforts
to protect the integrity of the U.S. trademark register, the
Commissioner has established an administrative process to investigate
improper submissions filed with the USPTO in trademark matters. The
USPTO Director has the authority to investigate submissions that appear
to violate the USPTO rules and/or the USPTO website's Terms of Use and
impose sanctions or actions as deemed appropriate. See 37 CFR 11.18.
Sanctions may include terminating proceedings. See 37 CFR 11.18(c)(5).
Pursuant to 35 U.S.C. 3(a)-(b), the Director has explicitly delegated
to the Commissioner for Trademarks the authority to impose such
sanctions or actions permitted under 37 CFR 11.18(c), as deemed
appropriate in trademark matters, and to otherwise exercise the
Director's authority in trademark-related matters. The Director has
also provided that such authority may be further delegated by the
Commissioner. See generally Delegation of Authority to Issue Sanctions
in Trademark Proceedings (January 14, 2020) \1\ and Trademark Manual of
Examining Procedure Sec. 1701.
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\1\ A copy of the January 14, 2020 delegation of authority is
available upon request. Please contact the USPTO using the contact
information provided in the For Further Information Contact section
of this notice.
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To promote transparency regarding the sanctions process for
applicants or registrants who may be impacted by sanctions, as well as
third parties who may be concerned about a particular application or
registration, the USPTO will place documents associated with the
process, including administrative orders to show cause and orders for
sanctions regarding particular applications or registrations, in the
electronic file record, which can be viewed by the public in the USPTO
Trademark Status and Document Retrieval (TSDR) database. Further,
examination may be suspended while the application is subject to a
pending administrative investigation or order, and, if so, the TSDR
record will reflect that as well.
I. Reporting and Investigation of Suspicious Filings
The administrative process begins when the USPTO identifies or
otherwise learns of a suspicious submission in connection with a
trademark application or registration, based on information
communicated by internal sources, such as examining attorneys and data
analytics personnel, or through external sources, such as Letters of
[[Page 432]]
Protest, the uspto.gov">TMScams@uspto.gov mailbox, law enforcement, or media
reports.
The USPTO will investigate suspicious submissions, and any related
submissions, to determine whether they: (1) Appear to violate the USPTO
rules and/or the USPTO website's Terms of Use, and (2) are part of an
improper filing scheme. These determinations are made using filing data
from the suspicious submissions and any related submissions, as well as
any other information and evidence available to the USPTO.
Once the USPTO initiates an investigation, the relevant
application(s) may be removed from examination status to ensure that it
does not move forward to approval for publication or registration while
the administrative process is ongoing. In such cases, the USPTO will
update the prosecution history to indicate that the application is
suspended pending administrative review. In addition, a suspension
letter will issue to all correspondence email addresses in the
electronic record, as appropriate. When an application is suspended on
this basis, any associated deadlines are also suspended, and the
applicant will not be able to make any electronic submissions other
than: (1) An express abandonment, (2) a withdrawal of attorney, or (3)
a petition to the Director under Rule 2.146. 37 CFR 2.146. Thus, an
applicant would be able to request permission to make a further
submission by filing a petition to the Director under Rule 2.146. If an
investigation ends without the issuance of an administrative order, the
suspension will be lifted, and the application will then be assigned to
an examining attorney for examination in the normal course or, if
examination had begun prior to suspension, returned to the assigned
examining attorney, who will issue a new Office action resetting any
response deadline.
II. Show Cause Order
If, upon investigation, the USPTO identifies conduct that
illustrates violations of the USPTO rules and/or the USPTO website's
Terms of Use, particularly conduct that indicates an intent to
circumvent the USPTO rules, the Office may issue an order to show cause
why sanctions should not be imposed on individuals or entities
involved, which may include the applicants or registrants themselves,
or third parties involved in an improper filing scheme. A copy of the
order to show cause will be placed in the electronic records of the
affected applications or registrations.
The show cause order will inform the relevant parties of the
conduct that indicates violations of the USPTO rules and/or the USPTO
website's Terms of Use, identify the affected application(s) or
registration(s), and specify the proposed action or sanction the USPTO
deems appropriate, which may include terminating all involved
applications, striking a submission, precluding a party from appearing
before the USPTO in trademark matters, and/or deactivating all relevant
uspto.gov accounts. The order will require the parties to respond by a
certain date to explain why the USPTO should not impose the proposed
sanctions. The USPTO will consider any timely response in determining
whether to impose sanctions. Resubmitting documents or appointing a new
attorney will not avoid the imposition of sanctions. Petitions such as
those filed under 37 CFR 2.146 are not appropriate during the
investigation or response period unless the USPTO made a mistake in
including a specific application or registration in the show cause
order. Furthermore, applicants and registrants are reminded that they
are responsible for actions or omissions made by their representatives
on their behalf. Moreover, any misrepresentation or deceit on the part
of a representative does not necessarily constitute an ``extraordinary
circumstance'' under 37 CFR 2.146 or 2.148.
III. Order for Sanctions
The USPTO will issue a final decision that includes an order for
sanctions, if appropriate. The order will indicate what sanctions were
deemed appropriate to address the improper conduct, and will identify
the application(s) or registration(s) subject to the sanctions. For
transparency of process, a copy of the decision will be included in the
TSDR record of the relevant application(s) or registration(s).
For orders that include the sanction of termination and involve
pending applications, the USPTO will terminate the involved
applications and will update the USPTO's electronic records to include
an appropriate entry in the application prosecution history in TSDR to
indicate that the application was terminated upon the entry of
sanctions. Generally, applicants may not revive a terminated
application unless the applicant can demonstrate that the USPTO erred
in including the application in the order for sanctions. The applicant
should file a new application to seek registration of the mark that was
the subject of a terminated application.
For orders that include the sanction of termination and involve
registrations that issued before the administrative sanctions process
was initiated, the USPTO does not intend to terminate the
registrations, but will update the USPTO's electronic records to
include an appropriate entry in the prosecution history indicating that
the registration was subject to an order for sanctions. Affected
registrants should note that findings made in the sanctions order may
affect the underlying validity of the registration. In addition, the
USPTO will consider a sanctions order that includes the sanction of
termination to be a final decision adverse to the owner's right to keep
a mark on the register under section 15 of the Trademark Act of 1946,
15 U.S.C. 1065. Therefore, owners of such registrations may wish to
file a new application for the mark.
The USPTO may take additional actions to enforce orders for
sanctions in cases where a sanctioned actor continues to violate the
USPTO rules and/or the USPTO website's Terms of Use.
Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2021-28536 Filed 1-4-22; 8:45 am]
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