Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases, 40839-40844 [2011-17121]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 76, Number 133 (Tuesday, July 12, 2011)]
[Proposed Rules]
[Pages 40839-40844]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-17121]


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Proposed Rules
                                                Federal Register
________________________________________________________________________

This section of the FEDERAL REGISTER contains notices to the public of 
the proposed issuance of rules and regulations. The purpose of these 
notices is to give interested persons an opportunity to participate in 
the rule making prior to the adoption of the final rules.

========================================================================


Federal Register / Vol. 76, No. 133 / Tuesday, July 12, 2011 / 
Proposed Rules

[[Page 40839]]



DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2010-0073]
RIN 0651-AC49


Changes in Requirements for Specimens and for Affidavits or 
Declarations of Continued Use or Excusable Nonuse in Trademark Cases

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Proposed rule.

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

SUMMARY: In order to help assess and ensure the accuracy of the 
trademark register, the United States Patent and Trademark Office 
(``USPTO'') proposes to revise the Trademark Rules of Practice and the 
Rules of Practice for Filings Pursuant to the Madrid Protocol to 
provide for the USPTO to require: any information, exhibits, and 
affidavits or declarations deemed reasonably necessary to examine an 
affidavit or declaration of continued use or excusable nonuse in 
trademark cases, or for the USPTO to assess the accuracy and integrity 
of the register; and upon request, more than one specimen in connection 
with a use-based trademark application, an allegation of use, an 
amendment to a registered mark, or an affidavit or declaration of 
continued use in trademark cases. A lack of ability to rely on the 
trademark register as an accurate reflection of marks that are actually 
in use in the United States for the goods/services identified in the 
registration imposes costs and burdens on the public. The proposed 
rules will allow the USPTO to require additional proof of use of a mark 
to verify the accuracy of claims that a trademark is in use on 
particular goods/services. The USPTO anticipates issuing requirements 
for such proof in a relatively small number of cases to assess the 
accuracy of the identifications. The proposed rules will facilitate an 
assessment of the reliability of the trademark register in this regard, 
so that the USPTO and stakeholders may determine whether and to what 
extent a general problem may exist and consider measures to address it, 
if necessary.

DATES: Comments must be received by September 12, 2011 to ensure 
consideration.

ADDRESSES: The USPTO 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 C. Lynch; by hand delivery 
to the Trademark Assistance Center, Concourse Level, James Madison 
Building--East Wing, 600 Dulany Street, Alexandria, Virginia, attention 
Cynthia C. 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 USPTO's Web site at https://www.uspto.gov, and 
will also be available at the Office of the Commissioner for 
Trademarks, Madison East, Tenth Floor, 600 Dulany Street, Alexandria, 
Virginia.

SUPPLEMENTARY INFORMATION: To benefit the public through a better 
ability to assess the accuracy of the trademark register, the USPTO 
proposes to revise the Trademark Rules of Practice (37 CFR part 2) and 
the Rules of Practice for Filings Pursuant to the Madrid Protocol 
(``Madrid Rules'') (37 CFR part 7) to provide for the USPTO to require: 
(1) Any information, exhibits, and affidavits or declarations deemed 
reasonably necessary to examine a post registration affidavit or 
declaration of continued use in trademark cases, or for the USPTO to 
assess the accuracy and integrity of the register; and (2) upon 
request, more than one specimen in connection with a use-based 
trademark application, an allegation of use, an amendment to a 
registered mark, or an affidavit or declaration of continued use in 
trademark cases.
    The proposed revisions will facilitate the USPTO's ability to 
verify the accuracy of identifications of goods/services. The accuracy 
of the trademark register as a reflection of marks that are actually in 
use in the United States for the goods/services identified in the 
registration serves an important purpose for the public. The public 
relies on the register to clear trademarks that they may wish to adopt 
or are already using. Where a party searching the register uncovers a 
potentially confusingly similar mark, that party may incur a variety of 
resulting costs and burdens, such as changing plans to avoid use of the 
mark, investigative costs to determine how the similar mark is actually 
used and assess the nature of any conflict, or cancellation proceedings 
or other litigation to resolve a dispute over the mark. If a registered 
mark is not actually in use in the United States, or is not in use on 
all the goods/services in the registration, these types of costs and 
burdens may be incurred unnecessarily. Thus, accuracy and reliability 
of the trademark register help avoid such needless costs and burdens, 
and thereby benefit the public.
    Specimens of use in use-based trademark applications illustrate how 
the applicant is using the proposed mark in commerce on particular 
goods/services identified in the application. Post registration 
affidavits or declarations of use and their accompanying specimens 
demonstrate a trademark owner's continued use of its mark in commerce 
for the goods/services in the registration. The USPTO anticipates 
issuing requirements for additional specimens or other information, 
exhibits, and affidavits or declarations in a relatively small number 
of cases, to assess the accuracy of the identifications of goods/
services.
    On April 26, 2010, the USPTO and the George Washington University 
Law School hosted a roundtable discussion on the topic of ``The Future 
of the Use-Based Register.'' Panelists and audience members explored 
the implications of the decision of the Court of Appeals for the 
Federal Circuit in In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 
(Fed. Cir. 2009), clarifying the high standard for fraud on the USPTO 
in connection with trademark cases. Specifically, the roundtable 
focused on Bose's impact on the growing length of identifications of 
goods and services in U.S. trademark registrations and how to assess 
whether such identifications accurately reflect actual use or intent to 
use.
    A ``brainstorming'' session at the conclusion of the roundtable 
resulted in

[[Page 40840]]

a list of suggestions for how to improve the accuracy of 
identifications of goods/services. These suggestions were not focused 
on fraud, but rather on accuracy in the register. Several participants 
made the suggestion that the USPTO require additional specimens, or a 
specific type of proof of use of a mark, for all, or more than one, of 
the identified goods/services. Such additional requirements could help 
provide information about to what extent a problem with inaccuracy 
exists on the register, and could help discourage inaccuracies.
    The Trademark Act gives the Director discretion regarding the 
number of specimens to require, 15 U.S.C. 1051(a)(1), (d)(1), 
1058(b)(1)(C), 1141k(b)(1)(C). However, the current Trademark Rules of 
Practice and Madrid Rules mandate the submission of only one specimen 
per class in connection with use-related filings, 37 CFR 
2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3) and (b), 2.88(b)(2), 
2.161(g), 7.37(g). Similarly, the current rules require only one 
specimen to be submitted in connection with the amendment to a 
registered mark, 37 CFR 2.173(b)(3). In addition, although the current 
Trademark Rules of Practice allow the USPTO to require additional 
information or exhibits deemed reasonably necessary to the examination 
of a pending application (37 CFR 2.61(b)), no counterpart rule exists 
in the post registration context to facilitate proper examination of an 
affidavit or declaration of continued use or excusable nonuse.
    To ensure that the USPTO may properly examine affidavits or 
declarations, and the nature and veracity of the use claimed therein, 
additional specimens or other information or exhibits, such as a 
photograph of the mark appearing on certain goods, may be needed. 
Accompanying affidavits or declarations to verify information or 
exhibits may also be needed. One purpose of the rule is to allow the 
USPTO to require trademark applicants or registrants to submit any 
additional specimens or other information, exhibits and affidavits or 
declarations necessary to properly examine an applicant's or 
registrant's claim to be using the mark. The USPTO wishes to use such 
requirements as a means to assess and improve the accuracy and 
integrity of the register. The proposed rules do not focus on fraud 
issues, but only on the more general concern with ensuring accuracy. 
Another purpose of the rule is to harmonize the requirements that can 
be made as part of the examination of use allegations made in post 
registration maintenance documents with the requirements currently 
authorized in the examination of use allegations made prior to 
registration.
    Though the proposed rules allow for the possibility that additional 
specimens or evidence may be required in any case, the USPTO currently 
has no plans to implement such requirements in all cases. Rather, the 
USPTO likely would rely on the proposed rules to seek additional 
specimens or a specific type of evidence of use in a relatively small 
subset of cases to assess the accuracy of particular identifications of 
goods/services. Where an Office action issues requiring additional 
specimens or evidence, a response must be filed within six months of 
the Office action, or before the end of the filing period for the 
Section 8 affidavit, whichever is later, 37 CFR 2.163(b). If no 
response is filed within this time period, the registration will be 
cancelled. 37 CFR 2.163(c). If a response is filed but fails to include 
the required specimens or evidence, the USPTO may deem the Section 8 
affidavit unacceptable as to the goods/services to which the 
requirement pertained and delete them from the registration, or in the 
case of all goods/services, cancel the registration for failure to file 
an acceptable Section 8 affidavit. See 37 CFR 2.163.
    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 7th edition, October 2010.

Discussion of Proposed Rules Changes

    The USPTO proposes to revise Sec. Sec.  2.34(a)(1)(iv), 2.56(a), 
2.76(b)(2), 2.86(a)(3), 2.86(b), and 2.88(b)(2) to indicate that the 
USPTO may, upon request, require more than one specimen, including more 
than one specimen per class, if the USPTO deems additional specimens 
reasonably necessary to examine the application or allegation of use. 
These revisions codify existing practice, where such additional 
specimens occasionally are requested under Sec.  2.61 as information or 
exhibits necessary to examination. The Trademark Act gives the Director 
discretion regarding the number of specimens to require, 15 U.S.C. 
1051(a)(1), (d)(1).
    The USPTO proposes to revise Sec.  2.61(b) to indicate that 
accompanying affidavits or declarations may be required along with 
information or exhibits, and to clarify that the requirement may issue 
for the Office to assess the accuracy and integrity of the register.
    The USPTO proposes to revise Sec.  2.161(g) and Sec.  7.37(g) to 
indicate that the USPTO may require more than one specimen in 
connection with the examination of the affidavit or declaration of 
continued use. For example, additional specimens may be requested in a 
case to verify the accuracy and the nature of the use when the 
identification includes a large number of, or significant disparity in, 
goods/services. The Trademark Act gives the Director discretion 
regarding the number of specimens to require, 15 U.S.C. 1058(b)(1)(C), 
1141k(b)(1)(C).
    The USPTO proposes to add Sec.  2.161(h) and Sec.  7.37(h) to 
provide that the USPTO may require such information, exhibits, and 
affidavits or declarations as the USPTO deems reasonably necessary to 
the proper examination of the affidavit or declaration of continued 
use, or for the USPTO to assess the accuracy and integrity of the 
register. These provisions are corollaries to Sec.  2.61(b), which 
currently allows the USPTO to require additional information or 
exhibits in connection with the examination of a pending application. 
These provisions also clarify that accompanying affidavits or 
declarations may be required.
    For example, the USPTO may require a verified photograph showing 
use of the mark on particular goods in a registration for which an 
affidavit or declaration of continued use is being examined in order to 
verify the accuracy of goods/services in the identification. This type 
of requirement may more likely be made where an identification includes 
a large number of, or significant disparity in, goods/services. Or, 
such a requirement may issue as part of an effort to assess and improve 
the accuracy and integrity of the register.
    The USPTO proposes to revise Sec.  2.173(b)(3) to clarify that 
where an amendment involves a change in the mark, a new specimen must 
be provided for each class in a multiple-class registration and to add 
Sec.  2.173(b)(4) to provide that the USPTO may require additional 
specimens and such information, exhibits, and affidavits or 
declarations as the USPTO deems reasonably necessary to the proper 
examination of the proposed amendment.

Rule Making Requirements

    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.

[[Page 40841]]

    Executive Order 13563: The Office has complied with Executive Order 
13563. Specifically, the Office has: (1) Used the best available 
techniques to quantify costs and benefits, and has considered values 
such as equity, fairness and distributive impacts, (2) provided the 
public with a meaningful opportunity to participate in the regulatory 
process, including soliciting the views of those likely affected prior 
to issuing a notice of proposed rule making, and provided online access 
to the rule making docket, (3) attempted to promote coordination, 
simplification and harmonization across government agencies and 
identified goals designed to promote innovation, (4) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public, and (5) ensured the objectivity of scientific 
and technological information and processes, to the extent applicable.
    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 
USPTO has chosen to seek public comment before implementing the rule.
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 or any other 
law, neither a Regulatory Flexibility Act analysis nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is 
required. See 5 U.S.C. 603. The proposed rules involve rules of agency 
practice and procedure.
    Nonetheless, in an abundance of caution, the USPTO has undertaken 
an Initial Regulatory Flexibility Act Analysis of the proposed rule.

1. Description of the Reasons That Action by the Office Is Being 
Considered

    The United States Patent and Trademark Office (USPTO) is proposing 
to require: (1) Any information, exhibits, and affidavits or 
declarations deemed reasonably necessary to examine an affidavit or 
declaration of continued use in trademark cases; and (2) upon request, 
more than one specimen in connection with a use-based trademark 
application, an allegation of use, an amendment to a registered mark, 
or an affidavit or declaration of continued use in trademark cases.
    These proposed revisions will facilitate the USPTO's ability to 
verify the accuracy of identifications of good/services. Specimens of 
use in use-based trademark applications illustrate how the applicant is 
using the proposed mark in commerce on particular goods/services 
identified in the application. Post registration affidavits or 
declarations of use and their accompanying specimens demonstrate a 
trademark owner's continued use of its mark in commerce for the goods/
services in the registration.

2. Succinct Statement of the Objectives of, and Legal Basis for, the 
Proposed Rule

    The objective of the proposed rules is to facilitate the USPTO's 
ability to verify the accuracy of identifications of goods/services in 
trademark applications and registrations. The proposed rules would 
ensure that the USPTO may properly examine the nature and veracity of 
allegations of use made during the trademark application or post 
registration phase, and upon request, may require additional specimens 
or other information or exhibits, such as a photograph of the mark 
appearing on certain goods. Another purpose of the rule is to harmonize 
the requirements that can be made as part of the examination of use 
allegations made in post registration maintenance documents, which are 
currently more limited, with the requirements authorized in the 
examination of use allegations made prior to registration.
    The Trademark Act gives the Director of the USPTO discretion 
regarding the number of specimens to require, 15 U.S.C. 1051(a)(1), 
(d)(1), 1058(b)(1)(C), 1141k(b)(1)(C). However, the current Trademark 
Rules of Practice and the Rules of Practice for Filings Pursuant to the 
Madrid Protocol Trademark mandate the submission of only one specimen 
per class in connection with use-related filings, 37 CFR 
2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3) and (b), 2.88(b)(2), 
2.161(g), 7.37(g). Similarly, the current rules require only one 
specimen to be submitted in connection with a proposed amendment of a 
registered mark, 37 CFR 2.173(b)(3). In addition, although the current 
Trademark Rules of Practice allow the USPTO to require additional 
information or exhibits deemed reasonably necessary to the examination 
of a pending application (37 CFR 2.61(b)), no counterpart rule exists 
in the post registration context to facilitate proper examination of an 
affidavit or declaration of continued use or excusable nonuse.

3. Description and Estimate of the Number of Affected Small Entities

    The USPTO does not collect or maintain statistics in trademark 
cases on small versus large entity applicants, and this information 
would be required in order to estimate the number of small entities 
that would be affected by the proposed rules. However, the USPTO 
believes that the overall impact of the proposed rules on applicants 
and registrants will be relatively minimal.
    The proposed rules could apply to any entity filing a use-based 
trademark application and to any entity filing trademark registration 
maintenance filings or amendments. With respect to allegations of use 
in trademark applications, the proposed rules merely codify existing 
practice, whereby the USPTO already occasionally requests additional 
specimens or other information under 37 CFR 2.61. Thus, because no 
change in practice would result from the proposed rules in this regard, 
they will have no impact in the trademark application context.
    After registration, registrants must make periodic filings with the 
USPTO to maintain their registrations. A Section 8 affidavit of 
continued use is a sworn statement that the mark is in use in commerce, 
filed by the owner of a registration, 15 U.S.C. 1058. The purpose of 
the Section 8 affidavit is to facilitate the cancellation of 
registrations for marks no longer in use. With respect to post 
registration maintenance filings, the Office estimates that only a 
small subset of registrants would be required to provide more than one 
specimen, or information or exhibits in connection with a Section 8 
affidavit. The USPTO is unable to estimate what subset of the 
registrants would be small entities impacted by the proposed rules. In 
Fiscal Year 2010, 105,244 Section 8 affidavits were filed.

4. Description of the Reporting, Recordkeeping, and Other Compliance 
Requirements of the Proposed Rule, Including an Estimate of the Classes 
of Small Entities Which Will Be Subject to the Requirement and the Type 
of Professional Skills Necessary for Preparation of the Report or 
Record

    The proposed rules impose no new recordkeeping requirements on 
trademark applicants or registrants.
    Regarding compliance with the proposed rules, as an initial matter, 
the USPTO does not anticipate that the proposed rules would have a 
disproportionate impact upon any particular class of small or large 
entities. Any entity that has a registered trademark could potentially 
be impacted by the proposed rules.
    The USPTO estimates that in those post registration cases where a 
requirement for additional information, exhibits, declarations, or 
specimens is

[[Page 40842]]

issued, it will take less than one hour to comply.
    While the statement of use is a similar type of filing to those at 
issue in the proposed rules applied in the post registration context, 
as the statement of use involves providing one or more specimens of use 
and an accompanying declaration, the compliance time involved to comply 
with the proposed rules should be less. Under the proposed rules 
applied in the post registration context, the type of fact gathering 
and review of the nature and extent of the use of the mark that 
underlies a statement of use will already have occurred. Compliance 
with the proposed requirement will only necessitate gathering and 
submitting the evidence to demonstrate what has already been assessed.
    Assuming the mark is in use, as claimed, the compliance time 
involves the length of time to secure a specimen, exhibit (such as 
taking a digital photograph), information, or declaration, plus any 
time it takes an attorney to communicate with the client in order to 
obtain what is required and make the necessary filing with the USPTO. 
In reality, approximately one-third of applications are filed pro se. 
These applicants and registrants, therefore, would likely have a lower 
compliance time than the USPTO has estimated, which assumes the 
involvement of counsel. These proposed rules do not mandate the use of 
counsel.
    The Office does not estimate any change in compliance cost 
associated with the proposed rules with respect to allegations of use 
in trademark applications, since the USPTO's current practice already 
allows for this. The rule change merely codifies existing practice.

5. Description of Any Significant Alternatives to the Proposed Rule 
Which Accomplish the Stated Objectives of Applicable Statutes and Which 
Minimize Any Significant Economic Impact of the Rule on Small Entities

    The USPTO has considered whether and how it is appropriate to 
reduce any burden on small businesses through increased flexibility. 
The following options have been considered, but rejected, by the USPTO.
    The alternative of never requiring additional specimens or other 
information in connection with Section 8 affidavits or exempting small 
entities from such requirements would have a lesser economic impact on 
small entities, but would not accomplish the stated objective of 
verifying the accuracy of identifications of goods/services in 
trademark registrations. As set forth above, the USPTO will rely on the 
proposed rules to assess the accuracy of use allegations. This 
assessment may provide a better sense of whether significant problems 
may exist with the accuracy of identifications of goods and services. 
Thus, exempting small entities would prevent the potential 
consideration of all Section 8 affidavits for this purpose, and 
therefore would not achieve the stated objective of verifying accuracy.
    The stated objective of the proposed rules also facilitates the 
cancellation of any registrations for marks that are no longer in use, 
the policy underlying the statutory requirement for Section 8 
affidavits. Exempting small entities from any possible scrutiny 
regarding use allegations would fail to reach non-use of marks by small 
entity owners, thereby failing to achieve the objective.
    Other options to potentially lessen the impact on small entities 
have been rejected. For example, the USPTO deems unnecessary extended 
time periods for small entity compliance because there appears to be no 
reason that compliance with the requirements in the proposed rules 
would be more time-consuming for small entities, and because the 
USPTO's standard six-month time for responding to trademark Office 
actions allows sufficient time regardless of small entity status.
    The USPTO deems any streamlined or simplified compliance mechanism 
for small entities unnecessary, given the ease of responding to 
trademark Office actions electronically. Thus, compliance will be as 
streamlined and simplified as possible for all affected entities. 
Moreover, where the objective is to verify the accuracy of a claim of 
use in an affidavit, the proposed requirements of one or more 
additional examples of the manner of the claimed use, or of other 
information such as photographic proof already seem to be the least 
burdensome and complex way to achieve the objective. Any more minimal 
requirement would not demonstrate use and therefore would not meet the 
objective to verify use claims.
    Use of performance rather than design standards is not applicable 
to the proposed rule making because the USPTO is not issuing any sort 
of standard. Rather, the proposed rules will require applicants and 
registrants to furnish evidence of use, rather than comply with a 
performance or design standard.
    Finally, with respect to allegations of use in trademark 
applications, the proposed rules merely codify existing practice, 
whereby the USPTO already occasionally requests additional specimens or 
other information under 37 CFR 2.61. Thus, because no change in 
practice would result from the proposed rules in this regard, any 
different treatment of small entities in this context would fail to 
meet the stated objective and likely would generate concern and 
confusion about a change in practice.

6. Identification, to the Extent Practicable, of All Relevant Federal 
Rules Which May Duplicate, Overlap or Conflict With the Proposed Rule

    The proposed rules would not duplicate, overlap or conflict with 
any other Federal rules.
    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 would 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: The changes in this rule making involve 
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 Office will be submitting an 
information collection request to OMB for its review and approval 
because the changes in this proposed rule would affect the information 
collection requirements associated with the information collection 
under OMB control number 0651-0055.
    This rule making will provide for the USPTO to require: (1) Any 
information, exhibits, and affidavits or declarations deemed reasonably 
necessary to examine an affidavit or declaration of continued use or 
excusable nonuse in trademark cases, or for the USPTO to assess the 
accuracy and integrity of the register; and (2) upon request, more than 
one specimen in connection with a use-based trademark application, an 
allegation of use, an amendment to a registered mark, or an affidavit 
or declaration of continued use in trademark cases.
    There is no fee impact for submission of specimens. Additional 
burden due to postage costs for paper submissions for the post-
registration office actions is estimated at $181, for a total increase 
in

[[Page 40843]]

fee burden by an estimated $181. The agency estimates the following 
overall impact on burden: an increase of responses of 3,165; an 
increase in burden hours of 1,120; and an increase in burden hour costs 
of $364,000.
    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 reducing this 
burden, to Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 
22313-1451, attention Cynthia C. Lynch, or to the Office of Information 
and Regulatory Affairs, Office of Management and Budget, New Executive 
Office Building, Room 10235, 725 17th Street, NW., Washington, DC 
20503, Attention: Desk Officer for the Patent and Trademark Office.
    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 7

    Administrative practice and procedure, Trademarks, International 
registration.

    For the reasons stated in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the USPTO 
proposes to amend parts 2 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    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.

    2. Revise Sec.  2.34(a)(1)(iv) to read as follows:


Sec.  2.34  Bases for filing.

    (a) * * *
    (1) * * *
    (iv) One specimen per class showing how the applicant actually uses 
the mark in commerce. When requested by the Office, additional 
specimens must be provided.
* * * * *
    3. Revise Sec.  2.56(a) to read as follows:


Sec.  2.56  Specimens.

    (a) An application under section 1(a) of the Act, an amendment to 
allege use under Sec.  2.76, and a statement of use under Sec.  2.88 
must each include one specimen per class showing the mark as used on or 
in connection with the goods, or in the sale or advertising of the 
services in commerce. When requested by the Office, additional 
specimens must be provided.
* * * * *
    4. Revise Sec.  2.61(b) to read as follows:


Sec.  2.61  Action by examiner.

* * * * *
    (b) The Office may require the applicant to furnish such 
information, exhibits, and affidavits or declarations as may be 
reasonably necessary to the proper examination of the application, or 
for the Office to assess the accuracy and integrity of the register.
* * * * *
    5. Revise Sec.  2.76(b)(2) to read as follows:


Sec.  2.76  Amendment to allege use.

* * * * *
    (b) * * *
    (2) One specimen per class showing the mark as actually used in 
commerce. When requested by the Office, additional specimens must be 
provided. See Sec.  2.56 for the requirements for specimens; and
* * * * *
    6. Revise Sec. Sec.  2.86(a)(3) and (b) to read as follows:


Sec.  2.86  Application may include multiple classes.

    (a) * * *
    (3) Include either dates of use (see Sec. Sec.  2.34(a)(1)(ii) and 
(iii)) and one specimen for each class, or a statement of a bona fide 
intention to use the mark in commerce on or in connection with all the 
goods or services specified in each class. When requested by the 
Office, additional specimens must be provided. The applicant may not 
claim both use in commerce and a bona fide intention to use the mark in 
commerce for the identical goods or services in one application.
    (b) An amendment to allege use under Sec.  2.76 or a statement of 
use under Sec.  2.88 must include, for each class, the required fee, 
dates of use, and one specimen. When requested by the Office, 
additional specimens must be provided. The applicant may not file the 
amendment to allege use or statement of use until the applicant has 
used the mark on all the goods or services, unless the applicant files 
a request to divide. See Sec.  2.87 for information regarding requests 
to divide.
* * * * *
    7. Revise Sec.  2.88(b)(2) to read as follows:


Sec.  2.88  Filing statement of use after notice of allowance.

* * * * *
    (b) * * *
    (2) One specimen of the mark as actually used in commerce. When 
requested by the Office, additional specimens must be provided. See 
Sec.  2.56 for the requirements for specimens; and
* * * * *
    8. Amend Sec.  2.161 by revising the introductory text of paragraph 
(g) and adding paragraph (h) to read as follows:


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

* * * * *
    (g) Include one specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
Sec.  2.161(f)(2). When requested by the Office, additional specimens 
must be provided. The specimen must:
* * * * *
    (h) The Office may require the owner to furnish such information, 
exhibits, and affidavits or declarations as may be reasonably necessary 
to the proper examination of the affidavit or declaration under section 
8 of the Act, or for the Office to assess the accuracy and integrity of 
the register.
    9. Amend Sec.  2.173 by revising paragraph (b)(3) and adding 
paragraph (b)(4) to read as follows:


Sec.  2.173  Amendment of registration.

* * * * *
    (b) * * *
    (3) If the amendment involves a change in the mark: One new 
specimen per class showing the mark as used on or in connection with 
the goods or services; an affidavit or 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. When requested by the Office, additional specimens must be 
provided.
    (4) The Office may require the owner to furnish such information, 
exhibits, and affidavits or declarations as may be reasonably necessary 
to the proper

[[Page 40844]]

examination of the amendment, or for the Office to assess the accuracy 
and integrity of the register.
* * * * *

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

    10. 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.

    11. Amend Sec.  7.37 by revising paragraph (g) and adding paragraph 
(h) to read as follows:


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

* * * * *
    (g) Include a specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
Sec.  7.37(f)(2). When requested by the Office, additional specimens 
must be provided. The specimen must meet the requirements of Sec.  2.56 
of this chapter.
    (h) The Office may require the holder to furnish such information, 
exhibits, and affidavits or declarations as may be reasonably necessary 
to the proper examination of the affidavit or declaration under section 
71 of the Act, or for the Office to assess the accuracy and integrity 
of the register.

    Dated: June 29, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-17121 Filed 7-11-11; 8:45 am]
BILLING CODE 3510-16-P