Trademark Technical and Conforming Amendments, 35973-35977 [2010-15305]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office
• Patent and Trademark Office

[Federal Register Volume 75, Number 121 (Thursday, June 24, 2010)]
[Rules and Regulations]
[Pages 35973-35977]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2010-15305]


=======================================================================
-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2010-0014]
RIN 0651-AC39


Trademark Technical and Conforming Amendments

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Interim final rule with request for comments.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (``USPTO'') is 
amending the Rules of Practice in Trademark Cases to implement the 
Trademark Technical and Conforming Amendment Act of 2010. The rule 
changes harmonize the framework for submitting trademark registration 
maintenance filings to the USPTO by permitting holders of international 
registrations with an extension of protection to the United States 
under the Madrid Protocol (``Madrid Protocol registrants'') to file 
Affidavits or Declarations of Use or Excusable Nonuse at intervals 
identical to those for nationally issued registrations. The changes 
additionally allow all trademark owners to cure deficiencies in their 
maintenance filings, including when the affidavit or declaration is not 
filed in the name of the owner of the registration.

DATES: This rule is effective on June 24, 2010. Comments must be 
received by August 23, 2010 to ensure consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic 
mail message to TMFRNotices@uspto.gov. Written comments may also be 
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Cynthia Lynch; by hand-delivery to 
the Trademark Assistance Center, Concourse Level, James Madison 
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention 
Cynthia Lynch; or by electronic mail message via the Federal 
eRulemaking Portal. See the Federal eRulemaking Portal Web site (https://www.regulations.gov) for additional instructions on providing comments 
via the Federal eRulemaking Portal. The comments will be available for 
public inspection on the Office's Web site at https://www.uspto.gov, and 
will also be available at the Trademark Legal Policy Office, Madison 
East, Fourth Floor, 600 Dulany Street, Alexandria, Virginia.

FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy 
Commissioner for Trademark Examination Policy, by telephone at (571) 
272-8742.

SUPPLEMENTARY INFORMATION:

Statutory Background

    The Trademark Technical and Conforming Amendment Act of 2010 became 
effective on March 17, 2010. Public Law 111-146, 124 Stat. 66 (2010). 
In addition to making small technical and conforming corrections in 
Sections 7, 15, and 21 of the Lanham Act, 15 U.S.C. 1057, 1065, and 
1071, the legislation makes other more noteworthy changes to Sections 8 
and 71, 15 U.S.C. 1058 and 1141k, regarding filing Affidavits or 
Declarations of Use or Excusable Nonuse to maintain a registration.
    Specifically, the legislation gives Madrid Protocol registrants the 
benefit of six-month grace periods immediately following the statutory 
time periods for filing their trademark registration maintenance 
documents under Section 71, 15 U.S.C. 1141k. Previously, no grace 
period existed at the end of the six-year period following the date of 
registration in the U.S., and only a three-month grace period existed 
following the expiration of each successive 10-year period following 
registration. The new grace periods match those already provided to all 
other trademark owners for submitting maintenance filings to the USPTO.
    In addition, the legislation allows all trademark owners to cure 
deficiencies in their post-registration maintenance filings outside of 
the statutory filing period upon payment of a deficiency surcharge, 
specifically including when affidavits or declarations are not filed in 
the name of the owner of the registration. Previously, the statute did 
not provide Madrid Protocol registrants with the opportunity to correct 
deficiencies in their maintenance filings and allowed all other 
trademark owners to correct deficiencies outside of the statutory 
filing period upon payment of the surcharge, except when an affidavit 
or declaration was not filed in the name of the owner.
    The interim final rule revises 37 CFR parts 2 and 7 to implement 
the Trademark Technical and Conforming Amendment Act of 2010, as 
referenced above. It applies to all maintenance filings pending with 
the USPTO as of March 17, 2010, the effective date of the legislation.
    References to ``the Act,'' ``the Lanham Act,'' ``the Trademark 
Act,'' or ``the statute'' refer to the Trademark Act of 1946, 15 U.S.C. 
1051 et seq., as amended.

Rule Making Considerations

    The changes made in this interim final rule constitute 
interpretative rules or rules of agency practice and procedure and are 
not subject to the requirement for the publication of prior notice of 
proposed rule making. See The Administrative Procedure Act (``APA''), 5 
U.S.C. 553(b)(3)(A). The rule changes relate solely to the procedures 
for maintaining a Federal trademark registration, and merely implement 
the Trademark Technical and Conforming Amendment Act of 2010, so that 
the Rules of Practice in Trademark Cases are consistent with the 
statutory revisions. Thus, they qualify as interpretative rules or 
rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and 
prior notice and an opportunity for public comment are not required 
pursuant to 5 U.S.C. 553(b)(A) (or any other law). See Cooper Techs. 
Co. v. Dudas, 536 F.3d 1330, 1336-37, 87 U.S.P.Q.2d 1705, 1710 (Fed. 
Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), 
does not require notice

[[Page 35974]]

and comment rule making for `` `interpretative rules, general 
statements of policy, or rules of agency organization, procedure, or 
practice.' '' (quoting 5 U.S.C. 553(b)(A)), Bachow Communications Inc. 
v. FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an 
application process are ``rules of agency organization, procedure, or 
practice'' and are exempt from the APA's notice and comment 
requirement); see also Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 
1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice 
promulgated under the authority of former 35 U.S.C. 6(a) (now in 35 
U.S.C. 2(b)(2)) are not substantive rules (to which the notice and 
comment requirements of the APA apply)), and Fressola v. Manbeck, 36 
USPQ2d 1211, 1215 (D.D.C. 1995) (``[i]t is extremely doubtful whether 
any of the rules formulated to govern patent or trade-mark practice are 
other than `interpretive rules, general statements of policy, * * * 
procedure, or practice.' '') (quoting C.W. Ooms, The United States 
Patent Office and the Administrative Procedure Act, 38 Trademark Rep. 
149, 153 (1948)). Accordingly, prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553(b)(A) (or any 
other law), and thirty-day advance publication is not required pursuant 
to 5 U.S.C. 553(d) (or any other law).
    The establishment of a statutory deficiency surcharge in the amount 
of $100 for Madrid Protocol registrants, who under the new legislation 
are now afforded the opportunity to correct a deficiency outside the 
statutory time period, comes in the context of making the treatment of 
Madrid Protocol registrants' maintenance filing deficiencies consistent 
with those of non-Madrid Protocol registrants. The legislative history 
reflects that, with full awareness of the maintenance filing framework, 
including the $100 deficiency surcharge already in existence for non-
Madrid Protocol registrants, Congress sought to establish that same 
framework for Madrid Protocol registrants. See, e.g., 156 Cong. Rec. 
H1080 (daily ed. Mar. 3, 2010) (statement of Rep. Johnson) (``However, 
due to a technical mistake in the Lanham Act, our trademark laws 
unintentionally prevent trademark owners who file these affidavits for 
registering extensions under the Madrid Protocol from having the same 
rights as other U.S. trademark owners. Compliance with regulations 
should not reduce the rights of trademark owners. Today, we will 
harmonize our laws with the Madrid Protocol so that this particular 
injustice no longer occurs.'') and 156 Cong. Rec. H1081 (daily ed. Mar. 
3, 2010) (statement of Rep. Coble) (``The main purpose of the bill is 
to bring provisions for maintaining extensions of protection under 
Madrid in conformity with provisions for maintaining registrations.''). 
Thus, even the establishment of the $100 deficiency surcharge for 
Madrid Protocol registrants constitutes an interpretative rule.
    In the alternative, in the event these rule changes were deemed to 
require notice and comment, the USPTO has concluded that it has good 
cause, under 5 U.S.C. 553(b)(B), to adopt the changes made in this 
interim final rule without prior notice and opportunity for public 
comment, as such prior notice and comment procedures would be 
impracticable, unnecessary, and contrary to the public interest. The 
amendments made to the Trademark Act by the Trademark Technical and 
Conforming Amendment Act of 2010 became effective on March 17, 2010, 
and thus apply to maintenance filings for registrations currently 
pending before the USPTO. The Rules of Practice in Trademark Cases, 
however, are currently inconsistent with, and do not reflect the 
benefits provided by, the new legislation. To delay the conforming rule 
changes for prior notice and comment, and leave the inconsistency in 
place, is impracticable. In order to rectify the inconsistency as 
quickly and efficiently as possible, an interim final rule is issued to 
eliminate the inconsistency between the statute and the rules, while 
still affording the public the opportunity to comment on the rule 
changes.
    In addition, delaying the rule changes for prior notice and comment 
is unnecessary because of the nature of the rule changes. As described 
above, the rule changes merely track the statutory changes, negating 
the need to consider public input on the substance of the rule changes 
prior to a final agency determination.
    Finally, delaying the rule changes for prior notice and comment 
would be contrary to the public interest, as it could delay the 
implementation of the benefits established by the legislation or lead 
to public confusion caused by the inconsistency between the statute and 
the rules. This interim final rule, making conforming rule changes and 
establishing the amount of the statutory deficiency surcharge for 
Madrid Protocol registrants who wish to correct a deficiency after the 
statutory deadline, serves the public interest by quickly and 
efficiently implementing the new legislation, while still affording the 
public the opportunity to comment on the rule changes.
    The USPTO is interested in the public's input and requests public 
comments regarding these amendments. Therefore, although the interim 
final rule is effective upon publication, the USPTO will publish in the 
Federal Register a response to any significant adverse comments 
received along with modifications to the rule, if any.

Discussion of Specific Rules

    The following amendments bring the Rules of Practice in Trademark 
Cases into conformity with the Trademark Act, as amended by the 
Trademark Technical and Conforming Amendment Act of 2010.
    The Office is amending 37 CFR 2.160(a)(3), 2.161(d)(2), and 
2.163(c) to replace the references to ``section 8(c)(1) of the Act'' 
with ``section 8(a)(3) of the Act.''
    In addition, the Office is amending 37 CFR 2.160(a)(3) to add the 
wording ``per class'' to be consistent with the requirements stated in 
37 CFR 2.161(d)(2). Similarly, the Office is amending 37 CFR 
2.161(d)(2) to replace ``late fee'' with ``grace period surcharge'' to 
be consistent with the language used in 37 CFR 2.160(a)(3) and 37 CFR 
7.37(d)(2).
    The Office is amending 37 CFR 2.163(a) to replace ``[i]f the owner 
of the registration filed the affidavit or declaration'' with ``[i]f 
the affidavit or declaration is filed.'' Similarly, the Office is 
amending 37 CFR 2.164(a) to replace ``[i]f the owner of the 
registration files the affidavit or declaration'' with ``[i]f the 
affidavit or declaration is filed.'' These revisions reflect the 
amendment to the Act providing that when an affidavit or declaration is 
not filed in the name of the owner of the registration, it is a 
correctable deficiency.
    The Office is amending 37 CFR 2.163(b) to replace the reference to 
``section 8(a) or section 8(b) of the Act'' with ``section 8(a) of the 
Act.''
    The Office is amending 37 CFR 2.164(a)(1) to replace the reference 
to ``sections 8(a) and 8(b) of the Act'' with ``sections 8(a)(1) and 
8(a)(2) of the Act,'' replace the reference to ``section 8(a) or 
section 8(b) of the Act'' with ``section 8(a)(1) or section 8(a)(2) of 
the Act,'' and replace the reference to ``the deficiency surcharge 
required by section 8(c)(2) of the Act'' with ``the deficiency 
surcharge required by section 8(c) of the Act.''
    In addition, the Office is amending 37 CFR 2.164(a)(1) to replace 
``[i]f the owner timely files the affidavit or declaration'' with 
``[i]f the affidavit or declaration is timely filed.'' This revision 
reflects the amendment to the

[[Page 35975]]

Act providing that when an affidavit or declaration is not filed in the 
name of the owner of the registration, it is a correctable deficiency.
    The Office is amending 37 CFR 2.164(a)(2) to replace the reference 
to ``grace period provided by section 8(c)(1) of the Act'' with ``grace 
period provided by section 8(a)(3) of the Act'' and replace the 
reference to ``deficiency surcharge required by section 8(c)(2) of the 
Act'' with ``deficiency surcharge required by section 8(c) of the 
Act.''
    The Office is amending 37 CFR 2.164(b) to remove ``or if it is 
filed within that period by someone other than the owner,'' and ``These 
deficiencies cannot be cured.'' The deletions reflect the amendment to 
the Act providing that when an affidavit or declaration is not filed in 
the name of the owner of the registration, it is a correctable 
deficiency.
    The Office is amending the heading for 37 CFR 2.168 to account for 
the rule's applicability to affidavits or declarations under section 71 
of the Act.
    The Office is amending 37 CFR 2.168(a) to add ``[t]he affidavit or 
declaration filed under section 15 of the Act may also be used as the 
affidavit or declaration required by section 71, if the affidavit or 
declaration meets the requirements of both sections 71 and 15.'' By 
allowing Madrid Protocol registrants to combine their filings, the 
Office is providing them with the same filing options available to all 
other trademark owners.
    The Office is adding 37 CFR 7.6(a)(8) to provide for the deficiency 
surcharge for Madrid Protocol registrants now provided by the Act. 
Previously, the Act did not confer authority on the USPTO to allow 
Madrid Protocol registrants to correct deficiencies in their 
maintenance filings, but did confer such authority with respect to the 
maintenance filings of other trademark owners. The amendment of the Act 
eliminated this disparity, and permits the USPTO to allow the 
correction of deficiencies in Madrid Protocol registrants' maintenance 
filings after the statutory period with payment of the deficiency 
surcharge. This surcharge is provided in order to give Madrid Protocol 
registrants the same benefit available to all other trademark owners, 
and the amount is the same as the deficiency surcharge applicable to 
other trademark owners, provided in 37 CFR 2.6(a)(20).
    The Office is amending 37 CFR 7.25(a) to remove the reference to 
Sec.  2.168 since Sec.  2.168 now applies to registered extensions of 
protection.
    The Office is amending 37 CFR 7.36(b)(2) to account for the new 
time periods provided by the Act for filing the affidavits or 
declarations due each successive ten-year period following 
registration. Previously, Madrid Protocol registrants had a six-month 
window in which to make such filings. They now have the benefit of a 
full year to make such filings, not including the grace period. The new 
time periods match those given to other trademark owners.
    The Office is adding 37 CFR 7.36(b)(3) to account for the new grace 
periods provided by the Act. Previously, for Madrid Protocol 
registrants, no grace period existed at the end of the six-year period 
following the date of registration and only a three-month grace period 
existed following the expiration of each successive ten-year period 
following registration. Now, Madrid Protocol registrants have the 
benefit of six-month grace periods immediately following the statutory 
time periods. The newly enacted grace periods match those given to 
other trademark owners.
    The Office is adding 37 CFR 7.36(c) to be analogous to 37 CFR 
2.160(b).
    The Office is amending 37 CFR 7.37(d)(2) to replace the reference 
to ``section 71(a)(2)(B) of the Act'' with ``section 71(a)(3) of the 
Act.''
    The Office is amending the heading for 37 CFR 7.39 to account for 
the ability of Madrid Protocol registrants to correct deficiencies in 
their maintenance filings as provided by the Act.
    The Office is adding introductory text to 37 CFR 7.39 that is 
analogous to the introductory text for 37 CFR 2.163 and includes text 
previously in 37 CFR 7.39(a).
    The Office is amending 37 CFR 7.39(a) to include text previously in 
37 CFR 7.39(b) and to state who must sign an Office action response. 
This is analogous to 37 CFR 2.163(b) and is consistent with the 
requirements of 37 CFR 2.193(e)(2).
    The Office is amending 37 CFR 7.39(b) to account for the grace 
period provided by the Act and a Madrid Protocol registrant's option of 
filing a new affidavit or declaration if time remains in the grace 
period. This is analogous to 37 CFR 2.163(c) as applied to all other 
trademark owners.
    The Office is adding 37 CFR 7.39(c), (c)(1), and (c)(2) to account 
for the ability of Madrid Protocol registrants to correct deficiencies 
in their maintenance filings as provided by the Act. This is analogous 
to 37 CFR 2.164 as applied to all other trademark owners.
    The Office is adding Sec.  7.39(d) to be analogous to Sec.  
2.164(b).

Rule Making Requirements

    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    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 analysis nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required 
for this interim final rule. See 5 U.S.C. 603. Nevertheless, the Deputy 
General Counsel for General Law of the United States Patent and 
Trademark Office certifies to the Chief Counsel for Advocacy of the 
Small Business Administration that this interim final rule will not 
have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    The principal impact of this rule making is to ensure that holders 
of international registrations are provided with greater flexibility to 
maintain their marks. Furthermore, this increased flexibility 
harmonizes the requirements between international registrations and 
nationally issued registrations. The only fee ($100.00) associated with 
this rule making is to enable international registrants to receive the 
benefit of correcting a deficiency in their maintenance filings outside 
the statutory time period. Of the approximately 126,000 affidavits 
filed under the national registration process, less than 800 (or less 
than two-thirds of one percent) paid the $100.00 deficiency surcharge. 
In 2010, the Office estimates approximately 2,700 affidavits will be 
filed under the international registration process. Assuming that a 
similar percentage of international registrants would pay the 
deficiency surcharge, the Office estimates only a small number of 
registrants would be subject to the fee. For these reasons, the Office 
has concluded that this interim final rule will not have a significant 
economic impact on a substantial number of small entities.
    Paperwork Reduction Act: 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 et seq.). The collection of information involved in 
this

[[Page 35976]]

proposed rule has been reviewed and previously approved by OMB under 
control number 0651-0051. The United States Patent and Trademark Office 
is not resubmitting an information collection request to OMB for its 
review and approval because the changes in this proposed rule would not 
affect the information collection requirements associated with the 
information collection under OMB control number 0651-0051.
    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    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: Cynthia 
Lynch).
    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.
    Unfunded Mandates: The Unfunded Mandates Reform Act, at 2 U.S.C. 
1532, requires 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 would have no such effect on 
State, local, and Tribal governments or the private sector.
    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. However, this action is not a major rule as 
defined by 5 U.S.C. 804(2).

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, Trademarks, International 
registration.


0
For the reasons stated in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is 
amending parts 2 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
2. Revise Sec.  2.160(a)(3) to read as follows:


Sec.  2.160  Affidavit or declaration of continued use or excusable 
nonuse required to avoid cancellation of registration.

    (a) * * *
    (3) The affidavit or declaration may be filed within a grace period 
of six months after the end of the deadline set forth in paragraphs 
(a)(1) and (a)(2) of this section, with payment of the grace period 
surcharge per class required by section 8(a)(3) of the Act and Sec.  
2.6.
* * * * *

0
3. Revise Sec.  2.161(d)(2) to read as follows:


Sec.  2.161  Requirements for a complete affidavit or declaration of 
continued use or excusable nonuse.

* * * * *
    (d) * * *
    (2) If the affidavit or declaration is filed during the grace 
period under section 8(a)(3) of the Act, include the grace period 
surcharge per class required by Sec.  2.6;
* * * * *

0
4. Revise Sec.  2.163 to read as follows:


Sec.  2.163  Acknowledgment of receipt of affidavit or declaration.

    The Office will issue a notice as to whether an affidavit or 
declaration is acceptable, or the reasons for refusal.
    (a) If the affidavit or declaration is filed within the time 
periods set forth in section 8 of the Act, deficiencies may be 
corrected if the requirements of Sec.  2.164 are met.
    (b) A response to the refusal must be filed within six months of 
the date of issuance of the Office action, or before the end of the 
filing period set forth in section 8(a) of the Act, whichever is later. 
The response must be 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 practitioner qualified to practice under Sec.  11.14 
of this chapter, in accordance with the requirements of Sec.  
2.193(e)(2).
    (c) If no response is filed within this time period, the 
registration will be cancelled, unless time remains in the grace period 
under section 8(a)(3) of the Act. If time remains in the grace period, 
the owner may file a complete, new affidavit.

0
5. Revise Sec.  2.164 to read as follows:


Sec.  2.164  Correcting deficiencies in affidavit or declaration.

    (a) If the affidavit or declaration is filed within the time 
periods set forth in section 8 of the Act, deficiencies may be 
corrected, as follows:
    (1) Correcting deficiencies in affidavits or declarations timely 
filed within the periods set forth in sections 8(a)(1) and 8(a)(2) of 
the Act. If the affidavit or declaration is timely filed within the 
relevant filing period set forth in section 8(a)(1) or section 8(a)(2) 
of the Act, deficiencies may be corrected before the end of this filing 
period without paying a deficiency surcharge. Deficiencies may be 
corrected after the end of this filing period with payment of the 
deficiency surcharge required by section 8(c) of the Act and Sec.  2.6.
    (2) Correcting deficiencies in affidavits or declarations filed 
during the grace period. If the affidavit or declaration is filed 
during the six-month grace period provided by section 8(a)(3) of the 
Act, deficiencies may be corrected before the expiration of the grace 
period without paying a deficiency surcharge. Deficiencies may be 
corrected after the expiration of the grace period with payment of the 
deficiency surcharge required by section 8(c) of the Act and Sec.  2.6.
    (b) If the affidavit or declaration is not filed within the time 
periods set forth in section 8 of the Act, the registration will be 
cancelled.

0
6. In Sec.  2.168, revise the heading and paragraph (a) to read as 
follows:


Sec.  2.168  Affidavit or declaration under section 15 combined with 
affidavit or declaration under sections 8 or 71, or with renewal 
application.

    (a) The affidavit or declaration filed under section 15 of the Act 
may also be used as the affidavit or declaration required by section 8, 
if the affidavit or declaration meets the requirements of

[[Page 35977]]

both sections 8 and 15. The affidavit or declaration filed under 
section 15 of the Act may also be used as the affidavit or declaration 
required by section 71, if the affidavit or declaration meets the 
requirements of both sections 71 and 15.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
7. The authority citation for 37 CFR part 7 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
8. In Sec.  7.6, add paragraph (a)(8) to read as follows:


Sec.  7.6  Schedule of U.S. process fees.

    (a) * * *
    (8) For correcting a deficiency in a section 71 affidavit--$100.00
* * * * *

0
9. Revise Sec.  7.25(a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.22-2.23, 2.130-2.131, 2.160-2.166, 
2.173, and 2.181-2.186, all sections in parts 2, 10, and 11 of this 
chapter shall apply to an extension of protection of an international 
registration to the United States, including sections related to 
proceedings before the Trademark Trial and Appeal Board, unless 
otherwise stated.
* * * * *

0
10. In Sec.  7.36, revise paragraph (b)(2) and add paragraphs (b)(3) 
and (c) to read as follows:


Sec.  7.36  Affidavit or declaration of use in commerce or excusable 
nonuse required to avoid cancellation of an extension of protection to 
the United States.

* * * * *
    (b) * * *
    (2) Within the year before the end of every ten-year period after 
the date of registration in the United States.
    (3) The affidavit or declaration may be filed within a grace period 
of six months after the end of the deadline set forth in paragraphs 
(b)(1) and (b)(2) of this section, with payment of the grace period 
surcharge per class required by section 71(a)(3) of the Act and Sec.  
7.6.
    (c) For the requirements for the affidavit or declaration, see 
Sec.  7.37.

0
11. Revise Sec.  7.37(d)(2) to read as follows:


Sec.  7.37  Requirements for a complete affidavit or declaration of use 
in commerce or excusable nonuse.

* * * * *
    (d) * * *
    (2) If the affidavit or declaration is filed during the grace 
period under section 71(a)(3) of the Act, include the grace period 
surcharge per class required by Sec.  7.6;
* * * * *

0
12. Revise Sec.  7.39 to read as follows:


Sec.  7.39  Acknowledgment of receipt of and correcting deficiencies in 
affidavit or declaration of use in commerce or excusable nonuse.

    The Office will issue a notice as to whether an affidavit or 
declaration is acceptable, or the reasons for refusal.
    (a) A response to the refusal must be filed within six months of 
the date of issuance of the Office action, or before the end of the 
filing period set forth in section 71(a) of the Act, whichever is 
later. The response must be signed by the holder, someone with legal 
authority to bind the holder (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice 
under Sec.  11.14 of this chapter, in accordance with the requirements 
of Sec.  2.193(e)(2).
    (b) If no response is filed within this time period, the extension 
of protection will be cancelled, unless time remains in the grace 
period under section 71(a)(3) of the Act. If time remains in the grace 
period, the holder may file a complete, new affidavit.
    (c) If the affidavit or declaration is filed within the time 
periods set forth in section 71 of the Act, deficiencies may be 
corrected, as follows:
    (1) Correcting deficiencies in affidavits or declarations timely 
filed within the periods set forth in sections 71(a)(1) and 71(a)(2) of 
the Act. If the affidavit or declaration is timely filed within the 
relevant filing period set forth in section 71(a)(1) or section 
71(a)(2) of the Act, deficiencies may be corrected before the end of 
this filing period without paying a deficiency surcharge. Deficiencies 
may be corrected after the end of this filing period with payment of 
the deficiency surcharge required by section 71(c) of the Act and Sec.  
7.6.
    (2) Correcting deficiencies in affidavits or declarations filed 
during the grace period. If the affidavit or declaration is filed 
during the six-month grace period provided by section 71(a)(3) of the 
Act, deficiencies may be corrected before the expiration of the grace 
period without paying a deficiency surcharge. Deficiencies may be 
corrected after the expiration of the grace period with payment of the 
deficiency surcharge required by section 71(c) of the Act and Sec.  
7.6.
    (d) If the affidavit or declaration is not filed within the time 
periods set forth in section 71 of the Act, the registration will be 
cancelled.

    Dated: June 18, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-15305 Filed 6-23-10; 8:45 am]
BILLING CODE 3510-16-P