[Federal Register Volume 89, Number 139 (Friday, July 19, 2024)]
[Proposed Rules]
[Pages 58660-58663]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2024-15472]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2024-0016]
RIN 0651-AD81


Withdrawal of Changes to Post Registration Response Deadlines

AGENCY: United States Patent and Trademark Office, U.S. Department of 
Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: On November 17, 2021, the United States Patent and Trademark 
Office (USPTO) published in the Federal Register a final rule amending 
its regulations to implement provisions of the Trademark Modernization 
Act of 2020 (TMA) concerning new response periods and extensions in the 
examination of post-registration filings. After publication of that 
rule, the USPTO delayed the effective date of a portion of the rule 
including through another final rule published on September 12, 2023. 
This proposed rule would withdraw these provisions that are currently 
delayed.

DATES: The USPTO solicits comments from the public on this proposed 
rule. Written comments must be received on or before August 19, 2024, 
to ensure consideration.

ADDRESSES: Written comments on the proposed withdrawal of changes to 
the post registration response deadlines must be submitted through the 
Federal eRulemaking Portal at https://www.regulations.gov.
    To submit comments via the portal, commenters should go to https://www.regulations.gov/docket/PTO-T-2024-0016 or enter docket number PTO-
T-2024-0016 on the https://www.regulations.gov homepage and select the 
``Search'' button. The site will provide search results listing all 
documents associated with this docket. Commenters can find a reference 
to this document and select the ``Comment'' button, complete the 
required fields, and enter or attach their comments. Attachments to 
electronic comments will be accepted in Adobe portable document format 
(PDF) or Microsoft Word format. Because comments will be made available 
for public inspection, information that the submitter does not desire 
to make public, such as an address or phone number, should not be 
included in the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of comments 
is not possible, please contact the USPTO using the contact information 
below in the FOR FURTHER INFORMATION CONTACT section of this document 
for special instructions.

FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy 
Commissioner for Trademark Examination Policy, 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. See Changes To 
Implement Provisions of the Trademark Modernization Act of 2020 (86 FR 
64300). That final rule was published under Regulatory Identification 
Number (RIN) 0651-AD55. One of the provisions implemented in that final 
rule was an amendment to section 12(b) of the Trademark Act, 15 U.S.C. 
1062(b), that allowed the USPTO to set response periods by regulation 
for a time period between 60 days and six months, with the option for 
extensions to a full six-month period, with the goal of shortening the 
overall time it takes to obtain a registration. The USPTO set a period 
of three months to respond to pre-registration office actions, instead 
of the current six-month period, and provided the option to request a 
single three-month extension of the deadline, subject to the payment of 
a fee. Although post-registration actions are not subject to the 
response provisions in section 12 of the Act, for convenience and 
predictability, the USPTO applied the same three-month response period 
and single three-month extension to office actions issued in connection 
with post-registration maintenance and renewal filings. The final rule 
stated that these changes would go into effect on December 1, 2022.
    On October 13, 2022, the USPTO published in the Federal Register a 
final rule under the same RIN delaying the effective date for the 
three-month response period and extensions in the examination of post-
registration filings from December 1, 2022, until October 7, 2023. See 
Changes To Implement Provisions of the Trademark Modernization Act of 
2020; Delay of Effective Date and Correction (87 FR 62032).
    On September 12, 2023, the USPTO published in the Federal Register 
a final rule further delaying the provisions that address post-
registration responses and extensions until the spring or early summer 
of 2024. See Changes To Implement Provisions of the Trademark 
Modernization Act of 2020; Delay of Effective Date (88 FR 62463). That 
final rule was published under RIN 0651-AD71.
    In both cases, implementation of the changes to the response 
deadlines for post-registration office actions was postponed to allow 
the USPTO additional time to update its IT systems for changes and to 
provide the public an opportunity to more fully comprehend the nature 
of, and prepare to comply with, the new provisions before they became 
effective.
    In this NPRM, the USPTO is proposing to withdraw implementation of 
the post-registration provisions that are currently delayed. After 
further consideration in light of data collected by the USPTO and 
current USPTO post-registration practice, the USPTO believes that it is 
not necessary to implement the provisions. The actual deadline to 
respond to an office action can be later than the current six-month 
response period if the statutory deadline has not passed and the USPTO 
waits until the end of the grace period to cancel a registration where 
the owner

[[Page 58661]]

failed to timely respond or provided an unacceptable response. 
Therefore, there would be no appreciable reduction in the time it takes 
to gain approval to maintain a registration were the USPTO to implement 
the shortened response period. However, there would be an appreciable 
increase in the potential burden to stakeholders of adding new 
deadlines to track what in many cases may not be the applicable 
deadline.
    When considering implementation of the delayed rule, the USPTO 
evaluated data from 2019 through 2022, which showed that two thirds of 
owners file their responses within three months of issuance of an 
office action. The data also shows that most filers will not be subject 
to the three-month response period. Specifically, nearly half of the 
owners who file maintenance documents in the one-year statutory period 
for filing, and about three quarters of those who file in the grace 
period, will not be subject to the three-month response period if 
pendency targets for the USPTO to review the maintenance documents are 
met. That is, owners will have more than three months to reply to an 
office action because the end of the one-year period for filing, or the 
grace period, will be later than the three-month response period. About 
one third of those filers will have more than six months to file a 
response. The same data shows that two thirds of owners file their 
responses within three months of issuance of an office action. More 
importantly, any registration where the owner failed to timely respond 
or provided an unacceptable response to a post-registration office 
action is not canceled until the end of the grace period. The USPTO 
would only see the impact of a shortened response period for those 
filing towards the end of the grace period, which based on the data 
collected by the USPTO is not a large number of filings.
    Since implementation of the Trademark Law Treaty Implementation 
Act, Public Law 105-330, 112 Stat. 3064 (15 U.S.C. 1051), in 1999, the 
response period for post-registration office actions has been the later 
of six months or the end of the one-year period for filing the relevant 
maintenance document. If the maintenance document is filed in the six-
month grace period, the response period is six months. If no response 
is received within that time, the registration will be canceled, unless 
time remains in the six-month grace period under Trademark Act (Act) 
section 8(a)(3), 15 U.S.C. 1058(a)(3).
    Under the delayed provisions, the response period becomes the later 
of: (1) three months, or (2) the end of the one-year period, if filed 
in the one-year period for filing a maintenance document, or (3) the 
later of three months or the end of the grace period if filed in the 
grace period. The three-month period may be extended by three months 
for a total of six months. If the shortened post-registration response 
periods are implemented, trademark owners will have to keep track of 
both the three-month office-action response period and the end of the 
statutory period in which they file, which may create an additional 
burden on them. They will have to decide whether filing an extension of 
time to respond to an outstanding office action is necessary or makes 
sense. This may result in the unintentional cancellation of their 
registration if they do not calculate the deadline correctly. 
Therefore, any potential benefits from the shortened response periods 
are minimal given the small number of filings for which the three-month 
response period would be effective and compared to the potential burden 
of creating new deadlines to track that in many cases may not be the 
applicable deadline.
    The USPTO proposes to withdraw the amendments to 37 CFR 2.163, 
2.165, 2.176, 2.184, 2.186, 7.6, 7.39, and 7.40 (amendatory 
instructions 29, 30, 31, 33, 34, 37, 38, and 39, respectively), which 
published at 86 FR 64300 on November 17, 2021, were delayed at 87 FR 
62032 on October 13, 2022, and further delayed at 88 FR 62463 on 
September 12, 2023; and to withdraw the amendment to 37 CFR 2.6 
(amendatory instruction 2), which published at 87 FR 62032 on October 
13, 2022, and was indefinitely delayed at 88 FR 62463 on September 12, 
2023.

Rulemaking Requirements

    A. Administrative Procedure Act: The changes proposed by this 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules, and do not require notice-and-comment rulemaking. 
See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) 
(explaining that interpretive rules ``advise the public of the agency's 
construction of the statutes and rules which it administers'' and do 
not require notice and comment when issued or amended); 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''); and 
JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) 
(explaining that rules are not legislative because they do not 
``foreclose effective opportunity to make one's case on the merits'').
    Nevertheless, the USPTO is publishing this proposed rule for 
comment to seek the benefit of the public's views on the office's 
proposed regulatory changes.
    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 changes in this 
proposed rule will not have a significant economic impact on a 
substantial number of small entities. See 5 U.S.C. 605(b).
    This rulemaking would withdraw the post-registration response 
periods provisions published in the November 17, 2021, final rule 
implementing the Trademark Modernization Act. See Changes To Implement 
Provisions of the Trademark Modernization Act of 2020 (86 FR 64300). 
These regulations had a delayed effective date of December 1, 2022. 
That effective date was subsequently further delayed, and ultimately 
delayed indefinitely, and thus the post-registration response periods 
provisions have never come into effect, and the USPTO has never 
implemented them.
    The USPTO does not collect or maintain statistics on small versus 
large-entity registrants, and this information would be required in 
order to determine the number of small entities that would be affected 
by the proposed rule. However, the USPTO expects that there will be no 
impact to all entities, including small entities, affected by this 
rulemaking.
    In this rulemaking, the USPTO is proposing to withdraw 
implementation of the post-registration provisions that are currently 
delayed. After further consideration in light of data collected by the 
USPTO and current USPTO post-registration practice, the USPTO believes 
that it is not necessary to implement the provisions. The actual 
deadline to respond to an office action can be later than the current 
six-month response period if the statutory deadline has not passed and 
the USPTO waits until the end of the grace period to cancel a 
registration where the owner failed to timely respond or provided an 
unacceptable response. Therefore, there would be no appreciable 
reduction in the time it takes to gain approval to maintain a 
registration were the USPTO to implement the shortened response period. 
However, there would be an appreciable increase in the potential burden 
to stakeholders of adding new

[[Page 58662]]

deadlines to track what in many cases may not be the applicable 
deadline.
    When considering implementation of the delayed rule, the USPTO 
evaluated data from 2019 through 2022, which showed that two thirds of 
owners file their responses within three months of issuance of an 
office action. The data also shows that most filers will not be subject 
to the three-month response period. Specifically, nearly half of the 
owners who file maintenance documents in the one-year statutory period 
for filing, and about three quarters of those who file in the grace 
period, will not be subject to the three-month response period if 
pendency targets for the USPTO to review the maintenance documents are 
met. That is, owners will have more than three months to reply to an 
office action because the end of the one-year period for filing, or the 
grace period, will be later than the three-month response period. About 
one third of those filers will have more than six months to file a 
response. The same data shows that two thirds of owners file their 
responses within three months of issuance of an office action. More 
importantly, any registration where the owner failed to timely respond 
or provided an unacceptable response to a post-registration office 
action is not canceled until the end of the grace period. The USPTO 
would only see the impact of a shortened response period for those 
filing towards the end of the grace period, which based on the data 
collected by the USPTO is not a large number of filings. Because the 
post-registration response periods were never implemented, the 
withdrawal of these regulations would have no impact on owners.
    For the foregoing reasons, the changes in this proposed rule will 
not have a significant economic impact on a substantial number of small 
entities.
    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), as amended by Executive Order 
14094 (Apr. 6, 2023).
    D. Executive Order 13563 (Improving Regulation and Regulatory 
Review): The USPTO has complied with Executive Order 13563 (Jan. 18, 
2011). Specifically, and as discussed above, 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 an NPRM, 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 pertains 
strictly to Federal agency procedures and 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 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).
    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 3(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.), 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 proposed 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 proposed 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: The Paperwork Reduction Act of 
1995 (44 U.S.C. 3501 et seq.) requires that the USPTO consider the 
impact of paperwork and other information collection burdens imposed on 
the public. This proposed rule involves information collection 
requirements which are subject to review by the Office of Management 
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 
3501-3549). The collection of information involved in this proposed 
rule has been reviewed and previously approved by OMB under

[[Page 58663]]

OMB Control Numbers 0651-0050 (Response to Office Action and Voluntary 
Amendment Forms) and 0651-0055 (Post Registration (Trademark 
Processing).
    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 
displays a currently 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.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2024-15472 Filed 7-18-24; 8:45 am]
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