Miscellaneous Changes to Trademark Rules of Practice, 67759-67776 [E8-27222]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 73, Number 222 (Monday, November 17, 2008)]
[Rules and Regulations]
[Pages 67759-67776]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E8-27222]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2, 3, 6 and 7

[Docket No. PTO-T-2005-0018]
RIN 0651-AB89


Miscellaneous Changes to Trademark Rules of Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'') is 
amending the Trademark Rules of Practice to clarify certain 
requirements for applications, intent to use documents, amendments to 
classification, requests to divide, and Post Registration practice; to 
modernize the language of the rules; and to make other miscellaneous 
changes. For the most part, the rule changes are intended to codify 
existing practice, as set forth in the Trademark Manual of Examining 
Procedure (``TMEP'').

DATES: This rule is effective January 16, 2009.

FOR FURTHER INFORMATION: Contact Mary Hannon, Office of the 
Commissioner for Trademarks, by telephone at (571) 272-9569.

SUPPLEMENTARY INFORMATION: A proposed rule was published in the Federal 
Register on June 12, 2008 at 73 FR 33356, and in the Official Gazette 
on July 8, 2008. The Office received comments from one law firm and one 
organization. These comments are posted on the Office's Web site at 
https://www.uspto.gov/web/offices/pac/dapp/opla/comments/tm_
comments2008aug20/index.htm, and are addressed below.
    References below to ``the Act,'' ``the Trademark Act,'' or ``the 
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., 
as amended. References to ``TMEP'' or ``Trademark Manual of Examining 
Procedure'' refer to the 5th edition, September 2007. References to the 
``TBMP'' or ``Trademark Trial and Appeal Board Manual of Procedure'' 
refer to the 2nd edition, Rev. 1, March 12, 2004.
    Where appropriate, the Office has reworded or reorganized the rules 
for clarity, and added headings to facilitate navigation through the 
rules.
    On August 14, 2008, the Office published a final rule that, inter 
alia, removed Sec. Sec.  10.14 and 10.18 of this chapter and replaced 
them with new Sec. Sec.  11.14 and 11.18; added a definition of 
``attorney'' to Sec.  11.1 of this chapter; and changed cross-
references in several of the rules in parts 2 and 7 of this chapter. 
The rule change was effective September 15, 2008. See notice at 73 FR 
47650 (Aug. 14, 2008). The cross-references in this notice have been 
changed accordingly.

Applications for Registration

    The Office is amending Sec.  2.21(a) to require that an application 
under section 1 or section 44 of the Trademark Act must be in the 
English language to receive a filing date.
    Comment: One comment requested clarification as to whether the rule 
applies to applications under section 66(a) of the Trademark Act.
    Response: The preamble of Sec.  2.21 explicitly states that the 
rule applies only to ``an application under section 1 or section 44 of 
the Act.'' In a section 66(a) application (i.e., a request for 
extension of protection of an international registration to the United 
States pursuant to the Madrid Protocol), the minimum filing 
requirements are set forth in section 66(b) of the Act, and compliance 
with these requirements is determined by the International Bureau of 
the World Intellectual Property Organization (``IB'') prior to sending 
to the Office the request for extension of protection to the United 
States. See TMEP section 1904.01(b) for further information about the 
filing date of a section 66(a) application.
    The Office is removing Sec.  2.21(c) because it is unnecessary. 
While it remains true that applicants who file on paper may resubmit 
the application documents and receive a new filing date as of the date 
of resubmission, it is unnecessary to say so in a rule.
    The Office is amending Sec.  2.23(a)(2), which requires that a TEAS 
Plus applicant continue to receive communications from the Office by 
electronic mail during the pendency of the application, to add a 
requirement that a TEAS Plus applicant maintain a valid e-mail 
correspondence address in order to maintain TEAS Plus status. If the e-
mail address changes, the applicant must notify the Office of the new 
e-mail address. If an applicant chooses to receive correspondence on 
paper, the applicant will have to pay the processing fee required by 
Sec. Sec.  2.6(a)(1)(iv) and 2.23(b).
    The Office is amending Sec.  2.32(a)(3)(iii) to indicate that the 
requirement for inclusion of the names and citizenship of the general 
partners in an application by a partnership applies only to domestic 
partnerships. Similarly, the Office is adding Sec.  2.32(a)(3)(iv) to 
provide that if the applicant is a domestic joint venture,

[[Page 67760]]

the application must include the names and citizenship of all active 
members of the joint venture. These requirements are consistent with 
TMEP section 803.03(b). Because the Office does not track the varying 
legal effects of partnership and joint venturer status in foreign 
countries, and the relevance of this additional information has not 
been established, this requirement does not apply to foreign 
partnerships or foreign joint ventures.
    Comment: Though noting that these requirements are consistent with 
the long-standing past practice of the Office, one commenter asserted 
that the requirements to set forth the names and citizenship of general 
partners and joint venturers impose an unfair burden of disclosure on 
domestic applicants because it does not apply to foreign partnerships.
    Response: The Office is considering whether current practice 
regarding the requirement for the names and citizenship of general 
partners and active members of joint venturers should be changed, and 
will issue a new proposed rule if necessary. However, the Office 
believes it appropriate to incorporate its long-standing practice into 
the rules at this time.
    The Office is amending Sec.  2.32(a)(6) to delete the word ``and.'' 
The Office is amending Sec.  2.32(a)(8) to change a period to a 
semicolon.
    New Sec.  2.32(a)(9) provides that if a mark includes non-English 
wording, the applicant must submit an English translation of that 
wording. New Sec.  2.32(a)(10) provides that if the mark includes non-
Latin characters, the applicant must submit a transliteration of those 
characters and either a translation of the corresponding non-English 
word(s) or a statement that the transliterated term has no meaning in 
English. This is consistent with the long-standing practice of the 
Office. TMEP section 809 et seq.
    Comment: One commenter noted ``inconsistent treatment requiring 
translations between non-English wording and non-Latin characters,'' 
and asked the Office to ``consider whether the rules should also 
require an applicant to state whether non-English wording has no direct 
English meaning (e.g., idiomatic expressions).''
    Response: Section 2.32(a)(9) as written requires applicants to set 
forth both the direct literal translation of foreign wording and the 
meaning of foreign idiomatic expressions, and thus there is no 
inconsistency on this point. The requirement for translation of ``non-
English wording'' encompasses only terms that have meaning in a foreign 
language, and does not apply to coined terms. In cases where a term has 
no meaning in a foreign language, it is often unnecessary to submit any 
statement regarding the significance of the term. However, in marks 
that include non-Latin characters, a transliteration is always 
necessary. Where a transliteration must be provided, the Office 
requires that the applicant also indicate whether the transliterated 
term has meaning in a foreign language.
    The Office is amending Sec.  2.33(b)(1) to remove the requirement 
that an application include a verified statement that the applicant 
``has adopted and is using the mark shown in the accompanying 
drawing.'' This language is not required by statute and is deemed 
unnecessary. The rule as amended requires an allegation that ``the mark 
is in use in commerce.''
    The Office is amending Sec. Sec.  2.34(a)(1)(i), (a)(2), (a)(3)(i), 
and (a)(4)(ii) to change ``must allege'' to ``must also allege.'' This 
clarifies that the requirement for an allegation of current use or bona 
fide intention to use the mark in commerce applies to verifications 
filed after the application filing date.
    The Office is adding Sec.  2.34(a)(1)(v) to provide that if more 
than one item of goods or services is specified in a section 1(a) 
application, the dates of use need be for only one of the items 
specified in each class, provided that the particular item to which the 
dates apply is designated. This requirement for section 1(a) 
applications previously appeared in Sec.  2.33(a)(2), but was 
inadvertently removed effective October 30, 1999, by the final rule 
published at 64 FR 48900 (Sept. 8, 1999). This requirement is 
consistent with the current requirements for allegations of use under 
Sec. Sec.  2.76(c) and 2.88(c).
    Comment: The Trademark Electronic Application System (``TEAS'') 
forms for filing applications and allegations of use do not provide for 
disclosure of the goods/services to which the date of first use 
applies, and should be updated accordingly.
    Response: It is possible to designate the goods or services to 
which the dates of use apply in the current TEAS forms. In a TEAS Plus 
application, or a regular TEAS application in which the applicant 
enters the goods/services using the Office's on-line Acceptable 
Identification of Goods and Services Manual (``USPTO ID Manual''), 
different dates of use can be provided for any particular item (after 
assigning a section 1(a) filing basis to the item and clicking on the 
``1(a)'' link for that item and entering the relevant information). If 
the applicant uses the free-text entry approach to identify the goods/
services in a regular TEAS application, the on-line instructions advise 
the applicant to parenthetically indicate the item to which the dates 
apply (e.g., ``pants, shirts (02/02/2000), shoes''). Alternatively, the 
applicant can use the Miscellaneous Statement field of the Additional 
Statement section of the application form to enter the information. In 
the Allegation of Use form, the applicant may enter the information in 
the existing free-text field for describing the submitted specimen 
(e.g., ``The specimen consists of a label. The stated dates of first 
use apply specifically to shirts.'').
    The Office is amending Sec. Sec.  2.44(b) and 2.45(b), which 
pertain to collective and certification marks, to add a reference to 
section 66(a) applications. This corrects an oversight.
    The Office is amending Sec.  2.47(a) to remove the requirement for 
a specific allegation that a mark has been in ``lawful'' use in 
commerce in an application for registration on the Supplemental 
Register. Because the definition of ``commerce'' in section 45 of the 
Trademark Act is ``all commerce which may lawfully be regulated by 
Congress,'' the Office presumes that an applicant who alleges that 
``the mark is in use in commerce'' is claiming lawful use. The Office 
generally questions the lawfulness of the alleged use in commerce only 
where the record shows a clear violation of law, such as the sale or 
transportation of a controlled substance. TMEP section 907.
    The Office is also removing the requirement in Sec.  2.47(a) that 
the applicant specify the type of commerce in which the mark is used. 
Because the definition of ``commerce'' in section 45 of the Act is 
``all commerce which may lawfully be regulated by Congress,'' the 
Office presumes that a registrant who alleges that the mark is in use 
in commerce is alleging that the mark is in use in a type of commerce 
that Congress may regulate. The Office amended the Trademark Rules of 
Practice to remove the requirement for a specification of the type of 
commerce in applications for registration under section 1(a) of the 
Act, allegations of use in applications under section 1(b) of the Act, 
and affidavits under sections 8 and 15 of the Act, effective October 
30, 1999 (see notice at 64 FR 48900 (Sept. 8, 1999)), but inadvertently 
overlooked Sec. Sec.  2.47(a) and 2.153.
    The Office is adding Sec.  2.48, providing that the Office does not 
issue duplicate registrations. If two applications on the same register 
would result in registrations that are exact duplicates, the Office 
will permit only one application to mature into registration,

[[Page 67761]]

and will refuse registration in the other application. This codifies 
the long-standing practice of the Office. TMEP section 703. The Office 
will normally refuse registration in the later-filed application. The 
applicant may overcome the refusal by abandoning one of the 
applications or surrendering the registration.
    The Office is amending Sec.  2.52(b) to provide that special form 
drawings of marks that do not include color ``should'' show the mark in 
black on a white background, rather than that the drawing ``must'' show 
the mark in black on a white background. This gives examining attorneys 
discretion to accept a drawing that shows the mark in white on a black 
background, if this will more accurately depict the mark.
    The Office is amending Sec.  2.52(b)(1) to change the heading 
``Color marks'' to ``Marks that include color.'' This corrects an 
error. ``Color marks'' are marks that consist solely of one or more 
colors used on particular objects, and Sec.  2.52(b)(1) applies to all 
marks that include color.
    The Office is amending Sec.  2.53(a) to remove the reference to 
submission of a digitized image of a standard character mark as a 
drawing in a TEAS application. This option no longer exists. An 
applicant who wants to apply for a standard character mark through TEAS 
must use the default setting within the form, namely, the selected 
button for ``Standard Characters,'' and type the characters comprising 
the mark in the appropriate field on the TEAS form. TEAS generates the 
drawing. The Office is combining Sec. Sec.  2.53(a)(1) and (2), because 
the requirements for standard character drawings in TEAS and TEAS Plus 
applications are now identical.
    The Office is amending Sec.  2.56(b)(1) to add a reference to 
``displays associated with the goods.'' This conforms the rule with the 
definition of ``use in commerce'' in section 45 of the Act.
    The Office is amending Sec.  2.56(d)(2) to add a provision that 
where an applicant files a paper specimen that exceeds the size 
requirements of paragraph (d)(1), and the Office creates a digital 
facsimile copy of the specimen, the Office may destroy the original 
bulky specimen. This is consistent with current practice. TMEP section 
904.02(b).
    The Office is amending Sec.  2.56(d)(4) to provide that specimens 
filed through TEAS may be in .pdf format. This provides TEAS filers 
with an additional option for filing specimens, and is consistent with 
current practice.
    The Office is amending Sec.  2.62 and its heading to add a 
requirement that a response to an Office action 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 who meets the requirements of Sec.  11.14 (``qualified 
practitioner''). This is consistent with TMEP section 712.01.
    The Office is amending Sec.  2.64(c)(1) to state that the filing of 
an amendment to allege use does not extend the deadline for filing a 
response to an outstanding Office action, an appeal to the Trademark 
Trial and Appeal Board (``TTAB''), or a petition to the Director. This 
is consistent with current practice. TMEP section 1104.
    The Office is amending Sec.  2.65(a) to add a reference to a notice 
of appeal as a response that avoids abandonment of an application. This 
is consistent with section 12(b) of the Act.
    The Office is revising Sec.  2.73 to provide that only an 
application that includes section 1(a) of the Trademark Act as a filing 
basis, or for which an acceptable allegation of use under Sec.  2.76 or 
Sec.  2.88 has been filed, may be amended to seek concurrent use 
registration. The rule currently provides that applications under 
section 44 or section 66(a) of the Act may be amended to recite 
concurrent use. However, because section 2(d) of the Act requires 
concurrent lawful use in commerce by the parties to a concurrent use 
proceeding, the Office deems it inappropriate to allow amendment to 
seek concurrent use absent allegations and evidence of use in commerce. 
The Office is also adding a statement to Sec.  2.99(g) that 
applications based solely on section 44 or section 66(a) are not 
subject to concurrent use registration proceedings.
    The Office is revising Sec.  2.74 to modernize the language and to 
add a provision that an amendment to an application 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 
qualified practitioner. This is consistent with TMEP section 605.02.

Intent To Use

    The Office is amending Sec.  2.76(d) to provide that an amendment 
to allege use (``AAU'') should be captioned ``Allegation of Use'' 
rather than ``amendment to allege use.'' This is consistent with the 
language on the Office's TEAS form. The term ``allegation of use'' 
encompasses both AAUs under Sec.  2.76 and statements of use (``SOUs'') 
under Sec.  2.88. The principal difference between AAUs and SOUs is the 
time of filing, and the same TEAS form is used for both filings. The 
rule merely sets forth the preferred title; the Office will still 
accept documents titled ``amendment to allege use'' or ``statement of 
use.''
    The Office is amending Sec.  2.77 to add a provision that 
amendments deleting a basis in a multiple-basis application, notices of 
change of attorney, and notices of change of address may be entered in 
a section 1(b) application during the period between the issuance of 
the notice of allowance and the submission of a statement of use. This 
is consistent with current practice. TMEP section 1107.
    The Office is amending Sec.  2.88(b)(1)(ii) to clarify that the 
dates of use specified in a statement of use must pertain to the goods 
or services identified in the notice of allowance, and that where an 
applicant claims section 1(a) for some goods/services in a class and 
section 1(b) for other goods/services in the same class, the statement 
of use must include dates for the section 1(b) goods/services.
    The Office is amending Sec.  2.88(b)(3) to provide that the 
applicant must pay a filing fee sufficient to cover at least one class 
within the statutory time for filing the statement of use, or the 
application will be abandoned. If the applicant submits a fee 
insufficient to cover all the classes in a multiple-class application, 
the applicant must specify the class(es) to be abandoned. If the 
applicant submits a fee sufficient to pay for at least one class, but 
insufficient to cover all the classes, and the applicant has not 
specified the class(es) to which the fee applies, the Office will issue 
a notice granting the applicant additional time to submit the fee(s) 
for the remaining class(es), or specify the class(es) to be abandoned. 
If the applicant does not submit the required fee(s) or specify the 
class(es) to be abandoned within the set time period, the Office will 
apply the fees paid, beginning with the lowest numbered class(es), in 
ascending order. The Office will delete the goods/services in the 
remaining class(es) not covered by the fees submitted. This is 
consistent with current practice.
    The Office is amending Sec.  2.88(d) to provide that an SOU should 
be captioned ``Allegation of Use'' rather than ``statement of use.'' 
This is consistent with the amendment to Sec.  2.76(d), discussed 
above.
    The Office is amending Sec.  2.88(i)(2) to remove the provision 
that if any goods or services specified in the notice of allowance are 
omitted from the identification of goods or services in the SOU, the 
examining attorney will question the discrepancy and permit the 
applicant to reinsert the omitted goods/services, and substitute a 
provision that the Office will delete the omitted goods/services from 
the application and will

[[Page 67762]]

not permit the applicant to reinsert them. Currently, if the applicant 
omits goods/services identified in the notice of allowance from a paper 
SOU, but the applicant has not indicated an intention to delete those 
goods/services from the application or filed a request to divide the 
application, the examining attorney will contact the applicant to 
confirm that the applicant intends to delete the omitted goods/
services, and will permit the applicant to amend the SOU to claim use 
on or in connection with the omitted goods/services. However, when an 
SOU is filed electronically, the TEAS form requires the applicant to 
expressly indicate an intention to delete any omitted goods/services/
class(es), or include them within a separately filed request to divide. 
Therefore, if any of the goods/services identified in the notice of 
allowance do not appear in the identification of goods/services in a 
TEAS SOU, the examining attorney does not question the discrepancy and 
the applicant may not reinsert the omitted goods/services. TMEP section 
1109.13. These inquiries concerning paper SOUs have sometimes caused 
unnecessary delay in applications after the applicant intentionally 
omitted goods/services. Therefore, the Office is changing its practice 
and will discontinue questioning goods/services that are omitted from 
paper SOUs. Under the new rule, the practice with paper SOUs would 
conform with the current practice for electronically filed SOUs. 
Applicants must set forth (or incorporate by reference) the goods/
services on or in connection with which the mark is in use. This is 
consistent with the Office's long-standing practice with respect to 
requests for extensions of time to file a statement of use, set forth 
in Sec.  2.89(f).
    The Office is revising Sec. Sec.  2.89(a)(2) and (b)(2) to add a 
provision that if an applicant timely submits a fee sufficient to pay 
for at least one class, but insufficient to cover all the classes, and 
the applicant has not specified the class(es) to which the fee applies, 
the Office will issue a notice granting the applicant additional time 
to submit the fee(s) for the remaining class(es), or specify the 
class(es) to be abandoned. If the applicant does not submit the 
required fee(s) or specify the class(es) to be abandoned within the set 
time period, the Office will apply the fees paid, beginning with the 
lowest numbered class(es), in ascending order. The Office will delete 
the remaining goods/services not covered by the fees submitted. This is 
consistent with current practice. TMEP section 1108.02(c).
    Comment: Additional time is ``undefined.'' No time period is set 
forth in the rule or TMEP.
    Response: The Office will amend TMEP section 1108.02(c) to indicate 
that the applicant will be given thirty days in which to cure the fee 
deficiency in an extension request that includes a fee sufficient to 
pay for at least one class, but insufficient to cover all the classes.

Amendments to Classification

    The Office is amending Sec.  2.85(a) to add a reference to 
amendments to adopt international classification.
    The Office is combining Sec. Sec.  2.85(b) and (c), pertaining to 
the old United States classification system, and adding a reference to 
amendments to adopt international classification.
    The Office is redesignating Sec.  2.85(f), pertaining to 
certification marks and collective membership marks, as Sec.  2.85(c), 
and adding a statement that the classes set forth in Sec. Sec.  6.3 and 
6.4 do not apply to applications based on section 66(a) of the 
Trademark Act and registered extensions of protection. This is 
consistent with current practice. TMEP section 1904.02(b). Classes A, 
B, and 200 are from the old United States classification system that 
the United States still uses to classify certification and collective 
membership marks, but are not included in the international classes 
under the Nice Agreement Concerning the International Classification of 
Goods and Services for the Purposes of the Registration of Marks 
(``Nice Agreement''). Therefore, these classes do not apply to section 
66(a) applications and registered extensions of protection, in which 
the IB determines classification. The Office is similarly amending 
Sec. Sec.  6.3 and 6.4, indicating that these sections apply only to 
applications based on sections 1 and 44 of the Trademark Act and 
registrations resulting from such applications.
    Current Sec.  2.85(d), which now provides that renewals filed on 
registrations issued under a prior classification system are processed 
on the basis of that system, is redesignated as Sec.  2.183(f), and 
amended to add an exception for registrations that have been amended to 
adopt international classification pursuant to Sec.  2.85(e)(3).
    New Sec.  2.85(d) provides that in an application under section 
66(a) of the Act or registered extension of protection, the 
classification cannot be changed from the classification that the IB 
has assigned, classes cannot be added, and goods or services cannot be 
transferred from one class to another in a multiple-class application. 
This is consistent with current practice. TMEP sections 1401.03(d) and 
1904.02(b).
    Comment: One comment requests that the Office clarify and/or 
reconsider this change. The commenter notes that in some instances 
``the applicant is seeking to identify a good/service that was not the 
subject of classification by the IB.'' For example, if the 
international registration covered ``nutritional aids'' in Class 30, 
the applicant could not amend to ``nutritional supplements,'' because 
the United States classifies nutritional supplements in Class 5. This 
``works a complete forfeiture of rights'' as to the goods or services 
that must be deleted from Class 30 in the section 66(a) application.
    Response: Under Article 3(2) of the Madrid Protocol, the IB 
controls classification in an international registration. Under section 
70(a) of the Trademark Act and Articles 6(3) and 6(4) of the Protocol, 
a section 66(a) application and any resulting registration remains part 
of and dependent upon the international registration. Since the 
international registration is limited to those classes that the IB has 
assigned, no legal basis exists for registration of the mark as to 
goods/services that fall outside these classes under U.S. standards. 
Upon notification of the final grant of protection, the IB would 
ultimately refuse any change in classification made during examination 
of a section 66(a) application. Therefore, the international 
classification of goods/services in a section 66(a) application cannot 
be changed from the classification that the IB has assigned.
    While the IB controls classification, the same standards of 
specificity used in examining applications under sections 1 and 44 of 
the Act govern the propriety of the identification of goods/services in 
a section 66 (a) application. Section 68(a) of the Act; Madrid Protocol 
Article 5(1). Accordingly, if the initial identification of goods/
services in a section 66(a) application is definite but misclassified 
under U.S. standards, the Office will accept the identification in the 
IB-assigned class. However, if the initial identification of goods/
services is not definite, the classification cannot be changed and the 
scope of the identification for purposes of permissible amendment is 
limited by the classification that the IB has assigned. See TMEP 
section 1904.02(b) and Examination Guide 3-08, Examination Procedures 
for Identifications of Goods and Services in Applications under 
Trademark Act Section 66(a) pursuant to the Madrid Protocol (July 2, 
2008), available on the Office's Web site at https://

[[Page 67763]]

www.uspto.gov/web/offices/tac/notices/examguide3-08.htm.
    Thus, in the commenter's example above, if the international 
registration covered ``nutritional aids'' in Class 30, the applicant 
could not amend to ``nutritional supplements,'' because ``nutritional 
aids'' is an indefinite identification that can only be amended within 
the scope of the IB-designated Class 30. However, if the international 
registration covered ``nutritional supplements'' in Class 30, the 
Office would permit registration in Class 30, even though the Office 
classifies these goods in Class 5. No rights would be forfeited. Thus, 
international applicants who plan to seek an extension of protection to 
the United States can avoid forfeiting rights in a particular item by 
reviewing the USPTO ID Manual before filing the request for extension 
of protection of an international registration to the United States. 
The applicant can then include language in the international 
application, or by entry of a limitation of the goods or services 
extended to the United States, that will be acceptable in the United 
States. Alternatively, the applicant can seek registration in the 
United States under a different basis, such as section 1(b) or section 
44. Regarding limitations, see TMEP sections 1904.03(g) and 1904.15, 
and Examination Guide 3-08, sections IV et seq.
    Comment: The Office should consider implementing a pseudo-
classification system so that the Office's automated search system 
would show the classes that the Office considers to be ``correct'' in 
cases where the classification designated by the IB differs from that 
of the Office. This would permit all Madrid applicants to amend the 
classification of goods/services in the same way non-Madrid filers 
presently do, and retain the full scope of protection afforded by 
registration. This would also ensure that a product or service that is 
``misclassified'' by the IB is discovered in a search of Office 
records.
    Response: The Office is developing such a system, to ensure that 
relevant marks in section 66(a) applications will be found in a search 
of Office records, even if the IB and USPTO classifications differ. 
However, that does not change the fact that no legal basis exists for 
registration of the mark in the United States as to goods/services that 
do not fall within the class(es) that the IB has assigned. Thus, even 
if a pseudo-classification system is implemented for search purposes, 
amendment of the classification in a section 66(a) application will 
still be prohibited.
    Comment: Since there are already situations where the 
classification in section 66(a) applications and registered extensions 
of protection is ``wrong,'' due to the Office's practice of accepting 
definite identifications that are misclassified under U.S. standards, 
the Office should also permit amendment of indefinite identifications 
within the class assigned by the IB, even if that class is incorrect 
under U.S. standards.
    Response: When a particular product or service identified in an 
international application could be classified in more than one class, 
but only one of the applicable classes has been indicated, the IB 
assumes ``that the reference is only to the product or service falling 
in the identified class.'' Guide to the International Registration of 
Marks under the Madrid Agreement and Protocol, Para. B.II.23.02 (Jan. 
2008), available on the IB Web site at https://www.wipo.int/madrid/en/
guide/. Therefore, the Office believes that the scope of 
permissible amendment of an indefinite identification must be limited 
by the IB-assigned class. Furthermore, the practice of accepting 
identifications that are misclassified under U.S. standards must be 
limited to the extent possible.
    The Office is removing Sec.  2.85(e), which now pertains to appeal 
and renewal fee deficiencies in multiple-class applications and 
registrations, and moving the provisions on appeal fees to Sec.  
2.141(b). Section 2.183(e) already covers procedures for processing 
renewal fee deficiencies in multiple-class registrations.
    Section 2.85(e) provides for changes in classification pursuant to 
the Nice Agreement. The international classification changes 
periodically, and the International Classification of Goods and 
Services for the Purposes of the Registration of Marks, which is 
published by the World Intellectual Property Organization, lists these 
changes. The current edition of the Nice Agreement is the 9th edition, 
2006, which became effective January 1, 2007.
    Section 2.85(e)(1) provides that when international classification 
changes, the new requirements apply only to applications filed on or 
after the effective date of the change.
    Section 2.85(e)(2) and (3) provide that in section 1 and 44 
applications filed before the effective date of a change in 
classification, and registrations resulting from such applications, the 
applicant or registrant may reclassify the goods or services in 
accordance with the current edition, upon payment of the required fees. 
This is consistent with current practice, set forth in TMEP sections 
1401.11 and 1609.04.
    The Office is redesignating Sec.  2.85(g), which provides that 
classification schedules shall not limit or extend the applicant's 
rights, as Sec.  2.85(f), and amending it to note an exception that in 
section 66(a) applications, the scope of the identification of goods or 
services for purposes of permissible amendments is limited by the 
class, because the classification that the IB has assigned may not be 
changed. This is consistent with TMEP section 1402.07(a). See 
discussion, above, of the scope of permissible amendment of an 
indefinite identification in a section 66(a) application, in the 
responses to comments on Sec.  2.85(d).

Requests To Divide

    The Office is separating the current Sec.  2.87(c) into subsections 
2.87(c)(1) and (c)(2).
    The Office is adding Sec.  2.87(c)(3) to provide that in a multiple 
basis application, a request to divide out goods or services having a 
particular basis may be filed during the period between the issuance of 
the notice of allowance under section 13(b)(2) of the Act and the 
filing of a statement of use under Sec.  2.88. This is consistent with 
current practice. TMEP section 1107.
    The Office is adding Sec.  2.87(e) to provide that any outstanding 
time period for action by the applicant in the original application at 
the time of the division will apply to each new separate application 
that the division creates. This provision appeared in Sec.  2.87(a) 
when the rule was first enacted in 1989, but was inadvertently removed 
when the rules were amended to adjust application filing fees on 
January 19, 2005. See notices at 54 FR 37562 (Sept. 11, 1989) and 70 FR 
2952 (Jan. 19, 2005). Subsections (e)(1) through (e)(3) set forth 
certain specified exceptions, consistent with current practice, as set 
forth in TMEP sections 1110.04 and 1110.05.
    The Office is adding Sec.  2.87(f), requiring that a request to 
divide 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 qualified practitioner. This is consistent with TMEP 
section 1110.
    The Office is adding Sec.  2.87(g), setting forth the procedures 
for division of a section 66(a) application after a change in ownership 
with respect to some, but not all, of the goods or services. This 
incorporates existing practice, set forth in TMEP section 1110.08.
    The Office is adding Sec.  2.171(b)(2), to provide for division of 
registered extensions of protection upon notification by the IB that 
ownership of

[[Page 67764]]

an international registration has changed with respect to some, but not 
all, of the goods or services. This reflects current practice. TMEP 
section 1615.02.

Post Registration

    The Office is amending Sec.  2.153 to change ``registrant'' to 
``owner,'' to make it clear that an affidavit or declaration under 
section 12(c) of the Act must be filed by the owner of the 
registration, and to add a requirement that the affidavit or 
declaration be signed by a person properly authorized to sign on behalf 
of the owner. This is consistent with current practice, set forth in 
TMEP section 1603, and with the requirements of Sec.  2.161 for 
affidavits or declarations under section 8 of the Act.
    The Office is further amending Sec.  2.153 to remove the 
requirement for specification of the type of commerce in an affidavit 
claiming the benefits of section 12(c) of the Trademark Act of 1946 for 
a registration issued under the Trademark Acts of 1881 or 1905. This is 
consistent with the amendment of Sec.  2.47(a), discussed above.
    The Office is amending the center heading immediately after Sec.  
2.158 to delete the wording ``DURING SIXTH YEAR,'' to correct an 
oversight. The heading covers rules pertaining to affidavits or 
declarations under section 8 of the Act (``section 8 affidavits''). 
Effective October 30, 1999, such affidavits must be filed every tenth 
year after registration as well as during the sixth year.
    The Office is amending Sec.  2.161(g)(3) to provide that specimens 
filed through TEAS may be in .pdf format. This offers TEAS filers an 
additional option for filing specimens, and is consistent with current 
practice.
    The Office is separating the current Sec.  2.163(b) into new 
Sec. Sec.  (b) and (c). Section 2.163(b) is amended to require that a 
response to an Office action issued in connection with a section 8 
affidavit be signed by the owner, someone with legal authority to bind 
the owner, or a qualified practitioner. This is consistent with TMEP 
section 1604.16.
    The last sentence of the current Sec.  2.163(b) is moved to new 
Sec.  (c), and revised to indicate that a registration will be 
cancelled for failure to respond to an Office action issued in 
connection with a section 8 affidavit only if no time remains in the 
grace period under section 8(c)(1) of the Act. This corrects an 
oversight in the current rule. Cancelling a registration under section 
8 before expiration of the grace period would be inappropriate. If time 
remains in the grace period, the owner may file a complete new 
affidavit.
    The Office is amending Sec.  2.167(a) to provide that an affidavit 
or declaration of incontestability under section 15 of the Trademark 
Act must be filed in the name of the owner of the registration, and 
verified by the owner or a person properly authorized to sign on behalf 
of the owner (Sec.  2.161(b)). The Office is amending Sec.  2.167(d) to 
substitute ``owner'' for ``registrant,'' to make it clear that the 
affidavit or declaration must be filed by the owner of the 
registration. These changes are consistent with TMEP section 1605.04.
    The Office is amending Sec.  2.167(f) for clarity.
    The Office is amending Sec.  2.171(a) to remove the requirement 
that a request for a new certificate of registration upon change of 
ownership include the original certificate of registration. This is 
consistent with current practice, and with Office practice in 
connection with requests to amend or correct registrations under 
section 7 of the Trademark Act. See notice at 69 FR 51362 (Aug. 19, 
2004), removing the requirement that a section 7 request include the 
original certificate.
    The Office is amending Sec.  2.171(a) to add a statement that in a 
registered extension of protection, the assignment must be recorded 
with the IB before recordation in the Office. This is consistent with 
current Sec.  7.22.
    The Office is redesignating Sec.  2.171(b) as (b)(1), and amending 
the section to indicate applicability only to registrations resulting 
from applications based on section 1 or 44 of the Act.
    The Office is adding Sec.  2.171(b)(2), providing for division of 
registered extensions of protection upon notification by the IB that 
ownership of an international registration has changed with respect to 
some, but not all, of the goods or services. This reflects current 
practice. TMEP section 1615.02.
    The Office is reorganizing Sec.  2.173, pertaining to amendment of 
registrations. The current paragraph (a) is separated into new 
paragraphs (a) through (d).
    Section 2.173(a) provides that the owner of a registration may file 
a written request to amend a registration or to disclaim part of the 
mark in the registration; and that if the registration is involved in 
an inter partes proceeding before the TTAB, the request must be filed 
by appropriate motion to the TTAB. This is consistent with current 
Sec.  2.173(a) and TMEP section 1609.01(b).
    The current paragraph (b) is separated into new paragraphs (e) and 
(g).
    New Sec.  2.173(b) sets forth the requirements for the request for 
amendment.
    Section 2.173(b)(2) requires that the request be filed in the name 
of the owner and signed by the owner, someone with legal authority to 
bind the owner (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. The requirement for filing 
in the name of the owner is consistent with current practice. However, 
the requirement for signature by someone with legal authority to bind 
the owner or by a qualified practitioner changes current practice 
slightly. TMEP section 1609.01(b) now permits signature by a person 
with firsthand knowledge of the facts and actual or implied authority 
to act on behalf of the owner, which could include someone without 
legal authority to bind the owner. The Office believes that the better 
practice is to require that a request to amend a registration be signed 
by someone with legal authority to bind the owner or by a qualified 
practitioner.
    Section 2.173(b)(3) requires that an amendment to change the mark 
include a specimen showing the mark as used on or in connection with 
the goods or services, an affidavit or a declaration under Sec.  2.20 
stating that the specimen was in use in commerce at least as early as 
the filing date of the amendment, and a new drawing of the amended 
mark. This is consistent with current Sec.  2.173(a) and TMEP section 
1609.02(c).
    Section 2.173(c) provides that the registration must still contain 
registrable matter, and Sec.  2.173(d) provides that the amendment may 
not materially alter the mark. This is consistent with current Sec.  
2.173(a).
    Section 2.173(e) provides that no amendment to the identification 
of goods or services in a registration will be permitted, except to 
restrict the identification or change it in ways that would not require 
republication of the mark. This is consistent with current Sec.  
2.173(b).
    The Office is adding Sec.  2.173(f) to provide that if the 
registration includes a disclaimer, description of the mark, or 
miscellaneous statement, any amendment must include a request to make 
any necessary conforming amendments to the disclaimer, description, or 
other miscellaneous statements. For example, if the mark is XYZ INC., 
with a disclaimer of the entity designator ``INC.,'' and the owner of 
the registration proposes to amend the mark to remove ``INC.,'' the 
proposed amendment should also request that the disclaimer be deleted. 
If a proposed amendment does not include all necessary conforming 
amendment(s), the examiner will issue

[[Page 67765]]

an Office action requiring the amendment(s).
    New Sec.  2.173(g) provides that an amendment seeking the 
elimination of a disclaimer will be permitted only if deletion of the 
disclaimed portion of the mark is also sought. This provides an 
exception to the general prohibition against amendments to delete 
disclaimers, currently set forth in Sec.  2.173(b), in the limited 
situation where the mark is amended to delete the disclaimer.
    The Office is amending Sec.  2.175(b)(2) to require that a request 
to correct the owner's error in a registration be filed in the name of 
the owner and signed by the owner, someone with legal authority to bind 
the owner (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. This is consistent with the 
amendment of Sec.  2.173(b)(2), discussed above. The Office is also 
amending the heading and paragraph (a) of Sec.  2.175 to substitute 
``owner'' for ``registrant,'' for consistency.
    The Office is adding Sec.  2.183(f) to provide that applications 
for renewal of registrations issued under a prior classification system 
will be processed on the basis of that system, except where the 
registration has been amended to adopt international classification. 
The provision that applications for renewal of registrations issued 
under a prior classification system are processed on the basis of that 
system is currently set forth in Sec.  2.85(d). The reference to 
amendment of classification is consistent with Sec.  2.85(e)(3), 
discussed above.
    Section 2.184(b) is redesignated as Sec.  2.184(b)(1), and amended 
to provide that a registration will expire for failure to respond to an 
Office action issued in connection with a renewal application only if 
no time remains in the grace period under section 9(a) of the Act. This 
corrects an oversight in the current rule. It would be inappropriate to 
cancel a registration for failure to renew before the renewal grace 
period has expired. If time remains in the grace period, the registrant 
may file a complete new renewal application.
    The Office is adding Sec.  2.184(b)(2) to require that a response 
to an Office action issued in connection with a renewal application be 
signed by the registrant, someone with legal authority to bind the 
registrant (e.g., a corporate officer or general partner of a 
partnership), or a qualified practitioner. This is consistent with TMEP 
section 1606.12.

Madrid Protocol

    The Office is amending Sec.  7.11(a)(2) to provide that the 
applicant's entity in an application for international registration 
must be identical to the entity listed as owner of the basic 
application or registration. This is consistent with current practice. 
TMEP section 1902.02(c). Under section 61(a) of the Trademark Act, only 
the owner of the basic application or registration may file an 
international application.
    The Office is amending the last sentence of Sec.  7.14(e) to change 
``submitted to'' to ``received in,'' for clarity.
    The Office is amending Sec.  7.25(a) to remove Sec. Sec.  2.175 and 
2.197 from the list of rules in part 2 that do not apply to an 
extension of protection of an international registration to the United 
States. Section 2.175 pertains to correction of mistakes by a 
registrant. Generally, all requests to record changes to an 
international registration must be filed at the IB, because an 
extension of protection of an international registration remains part 
of the international registration even after registration in the United 
States. However, in the limited circumstance where the holder of an 
international registration makes a mistake in a document filed during 
prosecution in the Office that affects only the extension of protection 
to the United States, the registrant may request correction of the 
error pursuant to Sec.  2.175. For example, if there was a minor 
typographical error in an amendment to the identification of goods in a 
section 66(a) application, and the mark registered, the owner of the 
registration could request correction under Sec.  2.175. If the Office 
grants the request, the Office will notify the IB of the change to the 
extension of protection to the United States.
    Section Sec.  2.197 provides a ``certificate of mailing or 
transmission'' procedure to avoid lateness due to mail delay. Section 
66(a) applicants may currently use this procedure during prosecution of 
applications. Owners of registered extensions of protection who file 
affidavits of use or excusable nonuse under section 71 of the Trademark 
Act may also use this procedure. Therefore, its inclusion in Sec.  
7.25(a) was an error. Under Sec. Sec.  2.197(a)(2)(ii) and 7.4(e), the 
certificate of mailing or transmission procedure remains inapplicable 
to international applications under Sec.  7.11, responses to notices of 
irregularity under Sec.  7.14, subsequent designations under Sec.  
7.21, requests to record changes of ownership under Sec.  7.23, 
requests to record restrictions of the holder's right of disposal (or 
the release of such restrictions) under Sec.  7.24, and requests for 
transformation under Sec.  7.31.

    Note: On February 29, 2008, the Office published a proposed rule 
that would prohibit the use of certificates of mailing or 
transmission for certain specified documents for which an electronic 
form is available in TEAS. See notice at 73 FR 11079. The Office is 
still reviewing the comments received in response to this proposal.

    See the discussion of amendments to classification in section 66(a) 
applications in connection with new Sec.  2.85(d), above.

Assignment Cover Sheet

    The Office is amending Sec.  3.31 to add a new paragraph (a)(8) 
requiring that a cover sheet submitted with a request to record a 
change of ownership of a trademark application or registration must 
include the citizenship or state or country of organization of the 
party receiving the interest; and that if the party receiving the 
interest is a domestic partnership or domestic joint venture, the cover 
sheet must include the names, legal entities, and national citizenship 
(or state or country of organization) of all general partners or active 
members that compose the partnership or joint venture. Currently, Sec.  
3.31(f) provides that the cover sheet ``should'' include this 
information, but the new rule makes it mandatory, to allow for more 
efficient processing of trademark applications and registrations.
    The applicant's entity and citizenship or state or country of 
organization are required in an application for registration under 
Sec.  2.32(a)(3)(iii) and must be submitted before the Office can issue 
a registration certificate in the name of the new owner. This 
information is also required when the new owner of a registration wants 
to change ownership in the trademark database and/or obtain a new 
certificate of registration in the name of the new owner. Requiring the 
information whenever a change of ownership is recorded will eliminate 
the need for the examining attorney or Post Registration examiner to 
issue an Office action requiring submission, which can cause 
substantial delay. Furthermore, in many cases, having complete 
information about the receiving party will ensure that the trademark 
database is automatically updated at the time of recordation or shortly 
thereafter. See TMEP sections 504 et seq. regarding automatic updating 
of the trademark database upon recordation of a change of ownership 
(automatic updating should ensure that the original certificate of 
registration issues in the name of the new owner).

[[Page 67766]]

References to ``Paper''

    The Office is amending Sec. Sec.  2.6(b)(6), 2.21(b), 2.21(c), 
2.27(d), 2.87(d), 2.146(e)(1), 2.146(e)(2), and 2.146(i) to delete 
references to ``papers'' and substitute ``documents'' where 
appropriate, in order to encompass documents filed or issued 
electronically.
    The Office is amending Sec. Sec.  2.6(a)(19), 2.6(b)(3), and 
2.56(d)(2) to delete references to ``file wrapper'' and substitute 
``record'' or ``official record.'' The Office now maintains electronic 
records of applications and registrations.
    The Office is amending Sec. Sec.  2.62, 2.65(a), 2.66(a)(1), 
2.66(d), 2.66(f)(1), 2.81(b), 2.89(a), 2.89(a)(3), 2.89(g), 2.93, 
2.99(d)(2), 2.146(d), 2.146(e)(1), 2.146(e)(2), 2.146(j)(1), 2.163(b), 
2.165(b), 2.176, 2.184(b), 2.186(b), 7.39(b), and 7.40(b) to change 
references to ``mailing'' to ``issuance,'' to encompass Office actions 
and communications issued electronically.
    Comment: One commenter asserts that ``issuance'' is ambiguous 
because it ``could refer to either the date an Office Action is written 
or is mailed.'' The commenter notes that the Trademark Applications and 
Registrations Retrieval (``TARR'') database currently lists either 
``Non-Final Action Mailed'' or ``Non-Final Action E-Mailed.'' The 
commenter suggests that the rules be amended to change ``mailing'' to 
``mailing and e-mailing,'' or, alternatively, that TARR be changed to 
list an ``issuance'' date where it formerly listed ``Mailed'' or ``E-
Mailed.''
    Response: The Office has reviewed the context in which the term 
``issuance'' is used in these rules, and believes the term clearly does 
not refer to the date on which an Office action is written, as opposed 
to the date on which it is mailed or e-mailed. ``Issuance'' is defined 
as ``[t]he provision of something by issuing it.'' The verb ``issue'' 
can be defined as ``[t]o send out officially, as in to issue an order'' 
(Law); ``[p]repare and issue for public distribution or sale;'' 
``[c]irculate or distribute;'' or ``[b]ring out [as] an official 
document. * * *'' Webster's Online Dictionary, search of ``issuance'' 
and ``issue,'' https://www.websters-online-dictionary.org/definition/
issue (Aug. 14, 2008). Therefore, the Office deems it unnecessary to 
change the rule or the information in TARR. The information in TARR 
indicates specifically whether the notice was mailed or e-mailed, which 
could be useful information.
    The Office is amending Sec.  2.81(b) to remove the sentence stating 
that ``The mailing date that appears on the notice of allowance will be 
the issue date of the notice of allowance,'' because it is unnecessary. 
The rule already states that the notice of allowance will include the 
issue date.
    The Office is amending Sec. Sec.  2.84(b), 2.173, 2.174, and 2.175 
to delete references to ``printed,'' and substitute ``issued'' where 
appropriate, to encompass documents issued electronically.
    The Office is amending Sec. Sec.  2.87(d), 2.146(e)(i), and 
2.146(i) to delete references to ``paper'' and to substitute 
``document,'' to encompass documents filed through TEAS.
    Sections 2.173(c), 2.174, and 2.175(c) are amended to remove the 
statements that printed copies of amendments and corrections under 
section 7 of the Act are attached to printed copies of the 
registration.
    Comment: One commenter asked for clarification of how amendments 
and corrections would be communicated when certified copies of the 
registration are printed.
    Response: The Office previously attached an updated registration 
certificate showing an amendment or correction to the original 
certificate and returned it to the owner of the registration, but this 
practice was changed in 2004. See notice at 69 FR 51362 (Aug. 19, 2004) 
(removing the requirement that the owner of a registration send the 
original certificate of registration or a certified copy thereof with a 
request for amendment or correction under section 7 of the Act). 
Currently, when a request for amendment or correction is granted, the 
Office sends an updated registration certificate showing the amendment 
or correction to the owner of record, and updates Office records 
accordingly. TMEP sections 1609.01(b) and 1609.10. A certified copy of 
the updated registration certificate may be obtained from the Document 
Services Branch of the Public Records Division for a fee.

Appeal Fees

    The Office is reorganizing Sec.  2.141 to move the provisions 
pertaining to appeal fees, some of which were previously set forth in 
Sec.  2.85(e), to Sec.  2.141(b). This is consistent with current 
practice, set forth in TBMP section 1202.04.

Other Changes

    The Office is amending Sec.  2.6(a)(13) to replace a section symbol 
with the word ``section.'' This is consistent with references to the 
statute in other rules, and with the format recommended in the Federal 
Register Document Drafting Handbook, National Archives and Records 
Administration, Office of the Federal Register (Oct. 1998). Section 
symbols are used in rules and Federal Register notices only to refer to 
other sections of the CFR.
    The Office is amending Sec.  2.6(a)(8) to delete ``assignee'' and 
substitute ``registrant.'' This clarifies that any registrant may 
request a new certificate of registration, upon payment of the required 
fee.
    The Office is revising Sec.  2.25 to provide that documents filed 
by an applicant or registrant become part of the official record and 
will not be returned or removed. The rule currently provides only for 
applications, but the new rule encompasses all documents filed in 
connection with an application or registration. This is consistent with 
current practice. See TMEP section 404. There is an exception for 
documents ordered to be filed under seal pursuant to a protective order 
issued by a court or by the TTAB.
    The Office is removing Sec.  2.26, which provides that a drawing 
from an abandoned application may be transferred to and used in a new 
application, if the file has not been destroyed. This rule is no longer 
in use and is deemed unnecessary.
    The Office is amending Sec.  2.32(a)(6) to delete the word ``and'' 
after the semicolon, and is amending Sec.  2.32(a)(7) to change a 
period to a semicolon.
    The Office is amending Sec.  2.41 to add a reference to 
``services'' at the end of the last sentence. This corrects an 
oversight.
    The Office is amending Sec.  2.86(a)(2) to delete the period and 
substitute a semicolon, followed by the word ``and'' (``; and'').
    The Office is amending Sec.  2.146(c) to add a provision that a 
petition to the Director 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 qualified practitioner. The 
rule further provides that when facts are to be proved on petition, the 
petitioner must submit proof in the form of affidavits or declarations 
in accordance with Sec.  2.20, signed by someone with firsthand 
knowledge of the facts to be proved. This is consistent with TMEP 
sections 1705.03 and 1705.07.
    The Office is amending Sec.  2.195(b) to delete the phrase ``In 
addition to being mailed,'' because it is unnecessary.
    The Office is amending Sec.  2.195(e) to clarify the procedures for 
filing a petition to the Director to consider correspondence filed on 
the date of attempted filing by Express Mail during a postal service 
interruption or

[[Page 67767]]

emergency within the meaning of 35 U.S.C. 21(a). New Sec.  2.195(e)(1) 
provides that a person who attempted to file correspondence by Express 
Mail, but was unable to deposit the correspondence with the United 
States Postal Service due to the interruption or emergency, may 
petition the Director to consider the correspondence to have been filed 
on the date of attempted filing. New Sec.  2.195(e)(2) sets forth the 
requirements for the petition. New Sec.  2.195(e)(3) notes that this 
procedure does not apply to correspondence that is excluded from the 
Express Mail procedure pursuant to Sec.  2.198(a)(1). This is 
consistent with current practice.
    The Office is amending Sec.  2.208(c)(3) and removing Sec.  
2.208(c)(4), to update the mailing address for payments to replenish 
deposit accounts. This is consistent with Sec.  1.25(c)(4) of this 
chapter.

Rule Making Requirements

    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Administrative Procedure Act: This rule merely involves rules of 
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A). 
Therefore, this rule may be adopted without prior notice and 
opportunity for public comment under 5 U.S.C. 553(b) and (c), or 
thirty-day advance publication under 5 U.S.C. 553(d). However, the 
Office has chosen to seek public comment before implementing the rule.
    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law of the United States Patent and Trademark Office hereby certifies 
to the Chief Counsel for Advocacy of the Small Business Administration 
that this final rule, Miscellaneous Changes to Trademark Rules of 
Practice (RIN 0651-AB89), will not have a significant impact on a 
substantial number of small entities (Regulatory Flexibility Act, 5 
U.S.C. 605(b)).
    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 analysis nor a certification under the 
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 
U.S.C. 603.
    The new rules clarify certain requirements for trademark 
applications and other trademark-related documents, modernize the 
language of the rules, and make some other miscellaneous procedural 
changes. In large part, the rule changes are intended to codify 
existing practice. Although the rules may affect any trademark 
applicant or registrant, because they codify the existing practice of 
the Office or concern relatively minor procedural matters, the changes 
will not have a significant economic impact on a substantial number of 
small entities.
    Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 
U.S.C. 1532, that agencies prepare an assessment of anticipated costs 
and benefits before issuing any rule that may result in expenditure by 
State, local, and tribal governments, in the aggregate, or by the 
private sector, of $100 million or more (adjusted annually for 
inflation) in any given year. This rule will have no such effect on 
State, local, and tribal governments or the private sector.
    Executive Order 13132: This rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Paperwork Reduction Act: This 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 et seq.). The collection of information in this rule has 
been reviewed and previously approved by OMB under control numbers 
0651-0009, 0651-0050, 0651-0051, 0651-0054, 0651-0055, and 0651-0056.
    The United States Patent and Trademark Office is not resubmitting 
any information collection package to OMB for its review and approval 
because the changes in this rule will not affect the information 
collection requirements associated with the information collections 
under the OMB control numbers listed above. The changes in this notice 
are limited to amending the rules of practice to simplify and clarify 
the requirements for amendments to applications and registrations, 
reword and reorganize the rules for clarity, and codify current 
practices and procedures.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reduction of this 
burden to: (1) The Office of Information and Regulatory Affairs, Office 
of Management and Budget, New Executive Office Building, Room 10202, 
725 17th Street, NW., Washington, DC 20503, Attention: Desk Officer for 
the Patent and Trademark Office; and (2) Commissioner for Trademarks, 
P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Mary Hannon).
    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 information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 3

    Administrative practice and procedure, Trademarks.

37 CFR Part 6

    Administrative practice and procedure, Trademarks, Classification.

37 CFR Part 7

    Administrative practice and procedure, Trademarks, International 
Registration.


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For the reasons given in the preamble and under the authority contained 
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is amending 
parts 2, 3, 6, and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

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1. The author