[Federal Register Volume 90, Number 104 (Monday, June 2, 2025)]
[Rules and Regulations]
[Pages 23288-23290]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-09916]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 7
[Docket No. PTO-T-2025-0002]
RIN 0651-AD82
Partial Replacement of an Earlier National Registration or
Registrations by an International Registration
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO) issues
this final rule to implement an amendment to the Regulations under the
Protocol Relating to the Madrid Agreement Concerning the International
Registration of Marks (Madrid Protocol) adopted by the Madrid Union
Assembly that went into effect on February 1, 2021, with a delayed
implementation date of February 1, 2025. This final rule modifies U.S.
trademark regulations addressing the replacement of a national
registration or registrations by an international registration to allow
for submission of partial replacement requests, in alignment with the
Madrid Protocol, and to require a listing of the goods and/or services
for which replacement is requested.
DATES: This rule is effective on July 2, 2025.
FOR FURTHER INFORMATION CONTACT: Cristiana Schwab, Office of the Deputy
Commissioner for Trademark Examination Policy, at 571-272-3514 or
[email protected].
SUPPLEMENTARY INFORMATION: The USPTO is revising 37 CFR 7.28 to
incorporate an amendment to the Madrid Protocol for international
trademark registration.
The Madrid Protocol is an international treaty that allows a
trademark owner to seek registration of its trademark in any of the
member countries by filing a single international application. The
International Bureau (IB) of the World Intellectual Property
Organization (WIPO) in Geneva, Switzerland, administers the
international registration system. The Madrid Protocol Implementation
Act of 2002 amended the U.S. Trademark Act to provide that: (1) the
owner of a U.S. application or registration may seek protection of its
mark in any of the member countries of the Madrid Protocol by
submitting a single international application through the USPTO and (2)
the holder of an international registration may request an extension of
protection of the international registration to the United States. The
Madrid Protocol came into effect in the United States on November 2,
2003, and is implemented under 15 U.S.C. 1141 et seq. and 37 CFR parts
2 and 7. Each member country to the Madrid Protocol, including the
United States, is represented at the Madrid Union Assembly, which meets
annually at WIPO to vote on proposed changes to the Regulations under
the Madrid Protocol. Each member country is obligated to implement any
changes to the Regulations once adopted.
At its fifty-third (23rd ordinary) session, the Madrid Union
Assembly adopted an amendment to Rule 21(3)(d) of the Regulations under
the Madrid Protocol that requires member countries to provide for
partial replacement of an earlier national registration(s) in addition
to requests for full replacement. This amendment went into effect on
February 1, 2021. However, at its fifty-fifth (24th ordinary) session,
the Madrid Union Assembly adopted a new provision to the Regulations,
paragraph (7) of Rule 40, that amended the compliance date for members
to February 1, 2025.
This final rule incorporates the amendment adopted under the Madrid
Protocol to provide partial replacement of earlier national
registrations. To implement this amendment, this final rule revises the
procedures at 37 CFR 7.28 to require the submission of additional
information in requests to note replacement of a U.S. registration with
an extension of protection, which will enable the USPTO to process
requests for partial replacement of earlier national registrations.
Specifically, a request to note replacement must specify the goods and/
or services for which replacement is sought. The requirement to specify
the goods and/or services for which replacement is requested applies to
all requests to note replacement, both full and partial requests.
Finally, the USPTO revises Sec. 7.28 to clarify that for a pending
request for extension of protection that, once registered, will meet
the requirements of paragraph (a), the holder may file a request to
note replacement of the U.S. registration with the extension of
protection. However, requests to note replacement filed in reference to
a pending request for extension of protection will not be processed
until the extension of protection is registered. This action ensures
that the USPTO is in compliance with the Madrid Protocol. It also
ensures that all replacements of earlier national registrations, not
just partial replacements, clearly identify those goods and/or services
that are being replaced, which will promote transparency in the
trademark system.
Discussion of Regulatory Changes
The USPTO amends Sec. 7.28 to revise paragraph (a)(2) to replace
the wording ``are also listed in'' with ``that are identified for
replacement are covered by.'' The USPTO revises paragraph (b) to
include language clarifying addressing pending requests for extension
of protection.
The USPTO also redesignates paragraph (c) as paragraph (d) and adds
a new paragraph (c) to provide a stand-alone paragraph that sets forth
the requirements for requests to note replacement. This paragraph
includes the new requirement that requesters must specify the goods
and/or services for which replacement is requested, which is set forth
in paragraph (c)(3).
Rulemaking Requirements
A. Administrative Procedure Act: The changes in 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); In re Chestek PLLC, 92
F.4th 1105, 1110 (Fed. Cir. 2024) (noting that rule changes that ``do[
] not alter the substantive standards by which the USPTO evaluates
trademark applications'' are procedural in nature and thus ``exempted
from notice-and-comment rulemaking.''); Cooper Techs. Co. v. Dudas, 536
F.3d 1330, 1336-37 (Fed. Cir. 2008) (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'');
[[Page 23289]]
and JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 326 (D.C. Cir. 1994)
(``[T]he `critical feature' of the procedural exception [in 5 U.S.C.
553(b)(A)] `is that it covers agency actions that do not themselves
alter the rights or interests of parties, although [they] may alter the
manner in which the parties present themselves or their viewpoints to
the agency.' '' (quoting Batterton v. Marshall, 648 F.2d 694, 707 (D.C.
Cir. 1980))).
In addition, the Office finds good cause pursuant to the authority
at 5 U.S.C. 553(b)(B) to adopt the changes in this final rule without
prior notice and an opportunity for public comment, as such procedures
would be unnecessary, impracticable, and contrary to the public
interest. As discussed above, the changes in this rulemaking involve
implementation of provisions that were adopted by the United States as
a member of the Madrid Protocol. The revisions made in this final rule
provide the procedures for requests for partial replacement of earlier
national registrations, which were adopted by member states to the
Madrid Protocol. As a member of the Madrid Protocol, the United States
is obligated to implement these changes. In addition, this final rule
expands the new requirement to specify the goods and/or services for
which replacement is requested to all requests to note replacement,
both full and partial. This final rule will assist the United States in
complying with the Madrid Protocol and avoiding any confusion that
could result if these provisions are not implemented as close to the
effective date as possible. Furthermore, the expansion of the
requirement to specify the goods and/or services for which replacement
is requested to all requests to note replacement will ensure that all
replacements of earlier national registrations are clearly identified.
This change promotes transparency in the trademark system. For the
reasons above, the agency finds good cause to conclude that notice and
an opportunity for public comment are impracticable, unnecessary, and
contrary to the public interest.
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.) is required. See 5 U.S.C. 603.
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 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) 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 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.
E. Executive Order 14192 (Deregulation): This regulation is not an
Executive Order 14192 regulatory action because it has been determined
to be not significant.
F. 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).
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 effect 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.), 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
rulemaking 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 rulemaking 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 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.
N. 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.
O. 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
[[Page 23290]]
rulemaking does not contain provisions that involve the use of
technical standards.
P. 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. The collection of information affected by this final rule
is 0651-0051 (Madrid Protocol). This collection has been previously
reviewed and approved by OMB under the most recent renewal of this
control number. This rulemaking implements the provisions addressing
the replacement of a National or Regional Registration by an
International Registration to receive partial replacement requests in
alignment with the Madrid Protocol. This will result in a slight
increase in respondents. In keeping with that increase, the hourly and
non-hourly cost burdens for 0651-0051 will be adjusted to reflect these
new respondents and their submissions of replacement requests. As a
result of this final rule, updates to the information collection 0651-
0051 will be submitted to the OMB as non-substantive change requests.
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.
Q. 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.
List of Subjects in 37 CFR Part 7
Administrative practice and procedure, Trademarks.
For the reasons stated in the preamble, the USPTO amends 37 CFR
part 7 as follows:
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
0
1. The authority citation for part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, Pub. L. 116-260, 134
Stat. 1182, unless otherwise noted.
0
2. Revise Sec. 7.28 to read as follows:
Sec. 7.28 Replacement of U.S. registration by registered extension of
protection.
(a) A registered extension of protection affords the same rights as
those afforded to a previously issued U.S. registration if:
(1) Both registrations are owned by the same person and identify
the same mark; and
(2) All the goods and/or services listed in the U.S. registration
that are identified for replacement are covered by the registered
extension of protection.
(b) The holder of an international registration with a registered
extension of protection to the United States that meets the
requirements of paragraph (a) of this section, or with a pending
request for extension of protection that, once registered, will meet
the requirements of paragraph (a) of this section, may file a request
to note replacement of the U.S. registration with the extension of
protection. If the request to note replacement is filed in reference to
a pending request for extension of protection, the request will not be
processed until the extension of protection registers.
(c) If the request to note replacement contains all of the
following, the Office will take note of the replacement in its
automated records:
(1) The serial number or registration number of the extension of
protection;
(2) The registration number of the replaced U.S. registration;
(3) The goods and/or services for which replacement is requested;
and
(4) The fee required by Sec. 7.6.
(d) If the request to note replacement is denied, the Office will
notify the holder of the reason(s) for refusal.
Coke Morgan Stewart,
Acting Under Secretary of Commerce for Intellectual Property and Acting
Director of the United States Patent and Trademark Office.
[FR Doc. 2025-09916 Filed 5-30-25; 8:45 am]
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