[Federal Register Volume 87, Number 197 (Thursday, October 13, 2022)]
[Rules and Regulations]
[Pages 62032-62034]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-22217]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2021-0008]
RIN 0651-AD55


Changes To Implement Provisions of the Trademark Modernization 
Act of 2020; Delay of Effective Date and Correction

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule and final rule; delay of effective date and 
correction.

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SUMMARY: On November 17, 2021, the United States Patent and Trademark 
Office (USPTO or Office) published in the Federal Register a final rule 
amending its regulations to implement provisions of the Trademark 
Modernization Act of 2020 (TMA). This action changes the effective date 
for the regulations published in the November 17, 2021, final rule that 
established new Office action response periods and set fees for 
requests to extend Office action response deadlines. This action resets 
the effective date for responses and extensions from December 1, 2022, 
to December 3, 2022, in the examination of applications, and from 
December 1, 2022, to October 7, 2023, in the examination of post-
registration filings.

DATES: 
    Delay of effective date: As of October 13, 2022, in the final rule 
published at 86 FR 64300 on November 17, 2021, the effective date of 
amendatory instructions 3 (Sec.  2.6), 10 (Sec.  2.62), 11 (Sec.  
2.63), 12 (Sec.  2.65), and 13 (Sec.  2.66) is delayed from December 1, 
2022, to December 3, 2022, and the effective date of amendatory 
instructions 29 (Sec.  2.163), 30 (Sec.  2.165), 31 (Sec.  2.176), 33 
(Sec.  2.184), 34 (Sec.  2.186), 37 (Sec.  7.6), 38 (Sec.  7.39), and 
39 (Sec.  7.40) is delayed from December 1, 2022, to October 7, 2023.
    Correction date: The correction to Sec.  2.6 in this final rule is 
effective December 3, 2022.
    Effective date: The amendment to Sec.  2.6 in this final rule is 
effective October 7, 2023.

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

SUPPLEMENTARY INFORMATION: On November 17, 2021, the USPTO published in 
the Federal Register a final rule amending the Rules of Practice in 
Trademark Cases to implement provisions of the TMA (86 FR 64300). As 
part of that final rule, the USPTO amended 37 CFR 2.62 to: (1) set a 
period of three months for responses to Office actions in applications 
under sections 1 and/or 44 of the Trademark Act (Act), and (2) provide 
the option to request a single three-month extension of the deadline, 
subject to the payment of a fee. The three-month response period and 
extension also applied to Office actions issued in connection with 
post-registration maintenance and renewal filings. The deadline for 
responses to Office actions issued in connection with applications 
under section 66(a) of the Act was not changed in that final rule and 
remains at six months. The final rule stated that the other changes 
would go into effect on December 1, 2022.
    Under this final rule, the USPTO hereby resets the effective date 
for the regulations establishing Office action response periods and 
setting fees for requests to extend Office action response deadlines. 
The three-month response deadline and extension provisions for Office 
actions issued in connection with applications will be effective on 
December 3, 2022. The three-month response deadline and extension 
provisions for Office actions issued regarding post-registration 
maintenance filings will go into effect on October 7, 2023.
    The change to the response deadline and the provision of an 
extension request involve significant updates to the USPTO's 
information technology

[[Page 62033]]

(IT) systems and examination processes. The two-day change in the 
effective date to Saturday, December 3, 2022, for Office actions issued 
prior to registration will allow the USPTO to deploy the necessary IT 
updates without impacting applicants who have a response deadline of 
December 3, 2022, for Office actions issued prior to the effective 
date. When the deadline for a response to an Office action falls on a 
Saturday, Sunday, or Federal holiday, the response is considered timely 
if the action is received, or the fee is paid, on the following day 
that is not a Saturday, Sunday, or Federal holiday. 35 U.S.C. 21(b); 37 
CFR 2.196. In the event of an unanticipated interruption in the 
Trademark Electronic Application System on December 3, 2022, parties 
who have a response due on that date would have until Monday, December 
5, 2022, to submit a timely response.
    Postponing the changes with regard to the deadline to respond to 
post-registration Office actions to October 7, 2023, will allow the 
USPTO additional time to update IT systems for the post-registration 
changes. This final rule will also provide the public an opportunity to 
more fully comprehend the nature of, and prepare to comply with, the 
new provisions before they are effective.
    As a result of resetting the effective date, it was necessary to 
make corrections and amendments to the amendatory instruction and 
regulatory text at 37 CFR 2.6(a)(28), published in the November 17, 
2021, final rule, to implement the new effective dates. No substantive 
changes were made to the provisions in Sec.  2.6(a)(28).

Rulemaking Requirements

    A. Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure, and/or interpretive 
rules. See 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 are 
procedural where they do not change the substantive standard for 
reviewing claims); and 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).
    Accordingly, prior notice and opportunity for public comment for 
this rulemaking are not required pursuant to 5 U.S.C. 553(b) or (c), or 
any other law. See 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), do 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))).
    Moreover, the Director of the USPTO, pursuant to the authority at 5 
U.S.C. 553(b)(B), finds good cause to adopt the change in this final 
rule without prior notice and an opportunity for public comment, as 
such procedures would be impracticable and contrary to the public 
interest. Immediate implementation of the resetting of the effective 
date, and the correction and amendment to the regulatory text, are in 
the public interest because they will allow the USPTO additional time 
to ensure that the means for the internal implementation of the 
provisions in the November 17, 2021, final rule are in place before it 
goes into effect. The additional time would also benefit the public, as 
it would provide an opportunity for the public to more fully comprehend 
the new response periods before they become effective. Delaying this 
final rule to satisfy notice-and-comment procedures is impracticable 
because doing so would allow the changes to the November 17, 2021, 
final rule that are being discussed in this final rule to go into 
effect before the USPTO is ready to implement the new response periods. 
Therefore, the Director finds there is good cause to waive notice-and-
comment procedures for this final rule.
    B. Regulatory Flexibility Act: As prior notice and an opportunity 
for public comment are not required pursuant to 5 U.S.C. 553 or any 
other law, neither a Regulatory Flexibility Act analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et 
seq.) are required. See 5 U.S.C. 603.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rule 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 USPTO has complied with Executive Order 13563 (Jan. 18, 
2011). Specifically, the USPTO 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) provided the public with a meaningful opportunity to 
participate in the regulatory process, including soliciting the views 
of those likely affected, prior to issuing a notice of proposed 
rulemaking, and provided online 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, 
to the extent applicable.
    E. 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).
    F. 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).
    G. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because it 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).
    H. 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 (b)(2) of Executive 
Order 12988 (Feb. 5, 1996).
    I. 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).
    J. 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).
    K. 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.), 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

[[Page 62034]]

Accountability Office. The changes in this rule are not expected to 
result in an annual effect on the economy of $100 million 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 rule 
is not expected to result in a ``major rule'' as defined in 5 U.S.C. 
804(2).
    L. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this rulemaking 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 (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 (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.
    M. National Environmental Policy Act of 1969: 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.
    N. National Technology Transfer and Advancement Act of 1995: 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.
    O. Paperwork Reduction Act of 1995: This final rule does not 
involve 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.).
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to, a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information has a valid OMB control number.
    P. E-Government Act Compliance: The USPTO is committed to 
compliance with the E-Government Act to promote the use of the internet 
and other information technologies to provide increased opportunities 
for citizen access to Government information and services, and for 
other purposes. For information pertinent to E-Government Act 
compliance related to this rule, please contact Justin Isaac, Acting 
USPTO Information Collection Officer, at 
[email protected] or 571-272-7392.

List of Subjects in 37 CFR Part 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.

Correction to November 2021 Final Rule

0
Effective December 3, 2022, in FR Doc. 2021-24926, at 86 FR 64300 in 
the Federal Register of Wednesday, November 17, 2021, on page 64325, in 
the second column, in amendatory instruction 3 for Sec.  2.6, paragraph 
(a)(28) is corrected to read as follows:


Sec.  2.6  [Corrected]

    (a) * * *
    (28) Extension of time for filing a response to an Office action 
under Sec.  2.62(a)(2). (i) For filing a request for an extension of 
time for filing a response to an Office action under Sec.  2.62(a)(2) 
on paper--$225.00.
    (ii) For filing a request for an extension of time for filing a 
response to an Office action under Sec.  2.62(a)(2) via TEAS--$125.00.
* * * * *
    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 USPTO 
amends part 2 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, 1123; 35 U.S.C. 2; sec. 10, Pub. L. 
112-29, 125 Stat. 284; Pub. L. 116-260, 134 Stat. 1182, unless 
otherwise noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 
434; 15 U.S.C. 1066, 1067.


0
2. Effective October 7, 2023, amend Sec.  2.6 by revising paragraph 
(a)(28) to read as follows:


Sec.  2.6  Trademark fees.

    (a) * * *
    (28) Extension of time for filing a response to an Office action 
under Sec.  2.62(a)(2), Sec.  2.163(c), Sec.  2.165(c), Sec.  2.176, 
Sec.  2.184(b)(2), or Sec.  2.186(c). (i) For filing a request for an 
extension of time for filing a response to an Office action under Sec.  
2.62(a)(2), Sec.  2.163(c), Sec.  2.165(c), Sec.  2.176, Sec.  
2.184(b)(2), or Sec.  2.186(c) on paper--$225.00.
    (ii) For filing a request for an extension of time for filing a 
response to an Office action under Sec.  2.62(a)(2), Sec.  2.163(c), 
Sec.  2.165(c), Sec.  2.176, Sec.  2.184(b)(2), or Sec.  2.186(c) via 
TEAS--$125.00.
* * * * *

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2022-22217 Filed 10-12-22; 8:45 am]
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