Miscellaneous Changes to Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 2303-2313 [2015-00267]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 80, Number 11 (Friday, January 16, 2015)]
[Rules and Regulations]
[Pages 2303-2313]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2015-00267]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 2, 6, and 7

[Docket No. PTO-T-2013-0026]
RIN 0651-AC88


Miscellaneous Changes to Trademark Rules of Practice and the 
Rules of Practice in Filings Pursuant to the Protocol Relating to the 
Madrid Agreement Concerning the International Registration of Marks

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 
revising the Trademark Rules of Practice and the Rules of Practice in 
Filings Pursuant to the Protocol Relating to the Madrid Agreement 
Concerning the International Registration of Marks to benefit the

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public by providing greater clarity as to certain requirements relating 
to representation before the Office, applications for registration, 
examination procedures, amendment of applications, publication and post 
publication procedures, appeals, petitions, post registration practice, 
correspondence in trademark cases, classification of goods and 
services, and procedures under the Madrid Protocol. For the most part, 
the rule changes are intended to codify existing practice.

DATES: This rule is effective February 17, 2015.

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

SUPPLEMENTARY INFORMATION: 
    Executive Summary: Purpose: The rule changes benefit the public by 
providing more comprehensive and specific guidance regarding certain 
requirements relating to representation before the Office, applications 
for registration, examination procedures, amendment of applications, 
publication and post publication procedures, appeals, petitions, post 
registration practice, correspondence in trademark cases, 
classification of goods and services, and procedures under the Madrid 
Protocol. For the most part, the rule changes codify existing practice.
    Summary of Major Provisions: As stated above, the Office is 
revising the rules in parts 2, 6, and 7 of title 37 of the Code of 
Federal Regulations to codify current Office practice and provide 
sufficient detail regarding miscellaneous requirements relating to 
representation before the Office, applications for registration, 
examination procedures, amendment of applications, publication and post 
publication procedures, appeals, petitions, post registration practice, 
correspondence in trademark cases, classification of goods and 
services, and procedures under the Madrid Protocol.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    Proposed Rule and Request for Comments:
    A proposed rule was published in the Federal Register on January 
23, 2014, at 79 FR 3750, and in the Official Gazette on April 8, 2014. 
The Office received comments from two intellectual property 
organizations and one attorney. These comments are posted on the 
Office's Web site at https://www.uspto.gov/trademarks/law/FR_Comments_Misc_Changes.jsp, 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 October 2014 edition.

Comments and Responses

    The Office received many positive comments in favor of the rule 
changes and appreciates the public support. To streamline this Notice, 
such comments expressing support are not individually set forth and no 
specific responses to such comments are provided.

Applications for Registration

    Comment: One commenter agreed with the proposal to remove existing 
Sec.  2.38(b), but expressed concern regarding any possible effect the 
rule may have on existing registrations issued pursuant to sections 
66(a) and 44(e) of the Act that were not required to indicate if the 
applied-for mark was being used by one or more related companies, 
rather than the applicant. Therefore, the commenter encouraged the 
Office to include a statement that registrations issued under previous 
versions of Sec.  2.38(b) shall not be vulnerable to challenge due to 
the omission of information concerning use of the mark solely by 
related companies whose use inures to the benefit of the applicant 
under section 5 of the Act.
    Response: As noted by the commenter, evidence of use of the mark in 
commerce is not required for registrations issued pursuant to sections 
66(a) or 44(e) of the Act. Accordingly, the requirement under current 
Sec.  2.38(b) that an applicant indicate when the applied-for mark is 
not being used by the applicant but is instead being used by one or 
more related companies whose use inures to the benefit of the applicant 
is not applicable to registrations issued pursuant to sections 66(a) or 
44(e) of the Act. Because such requirement did not apply to 
registrations issued pursuant to sections 66(a) or 44(e) of the Act, 
the Office does not believe it is necessary to include a statement 
regarding the omission of such information in an application under 
sections 66(a) or 44(e) of the Act under the current rule.

Examination of Application and Action by Applicants

    Comment: One commenter inquired as to whether the amendment to add 
new Sec.  2.62(c) would affect the Office's current practice of 
encouraging informal communication between applicants (or their 
representatives) and examining attorneys regarding issues that are 
capable of resolution by examiner's amendment, and encouraged the 
Office to investigate potential means for allowing formal responses to 
be submitted via email.
    Response: The Office continues to encourage informal communication 
between applicants (or their representatives) and examining attorneys 
regarding issues that are capable of resolution by examiner's 
amendment, and the revision to Sec.  2.62 in no way affects the 
Office's position on such informal communications. In addition, the 
Office is continually investigating alternative procedures that may 
assist both examining attorneys and applicants (or their 
representatives) in expediting the examination process.
    Comment: Another commenter noted that under proposed Sec.  
2.63(a)(2), if a petition to the Director under Sec.  2.146 is denied, 
the applicant is granted six months from the ``date'' of the Office 
action that repeated the requirement(s), or thirty days from the date 
of the decision on the petition, whichever is later, to comply with the 
repeated requirement(s). By contrast, the commenter noted that under 
proposed Sec.  2.63(c), if a petition to the Director under Sec.  2.146 
is denied, the applicant is granted six months from the ``date of 
issuance'' of the Office action that repeated the requirement(s), or 
made it final, or thirty days from the date of the decision on the 
petition, whichever date is later, to comply with the requirement(s). 
The commenter suggested that, in order to ensure clarity, the language 
in proposed Sec. Sec.  2.63(a)(2) and 2.63(c) be made consistent.
    Response: As both the applicable response deadlines after a denial 
of a petition to the Director under Sec.  2.146 and the statement that 
a requirement that is the subject of a petition decided by the Director 
may not subsequently be the subject of an appeal to the Trademark Trial 
and Appeals Board (TTAB) are set out in new Sec.  2.63(c), such 
information has been removed from Sec.  2.63(a)(2).

Amendment of Application

    Comment: One commenter noted that a process to allow an applicant 
to request an amendment not specifically listed in Sec.  2.77(a) 
between the issuance of the notice of allowance and the filing of the 
statement of use should be available, but the denial of a petition 
because the issues require review by the examining attorney introduces 
uncertainty and delay into the process. The commenter therefore 
encouraged

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the Office to consider adopting a process similar to the on-line 
process currently available to request an amendment between publication 
of the application for opposition and issuance of the notice of 
allowance.
    Response: Under amended Sec.  2.77(b), if the Director determines 
that a proposed post-notice of allowance and pre-statement of use 
amendment does not require review by the examining attorney, the 
petition will be granted, and the amendment entered into the record. If 
the Director determines that the proposed post-notice of allowance and 
pre-statement of use amendment requires review by the examining 
attorney, the petition will be denied, and the applicant may resubmit 
the proposed amendment with the statement of use. In the case of 
proposed amendments submitted after the issuance of the notice of 
allowance but prior to the submission of a statement of use, regardless 
of jurisdiction with the examining attorney, an Office action detailing 
a refusal or requirement that may arise from a proposed amendment 
cannot issue at that time because it would create a response deadline 
that differed from the statement of use filing deadline. The complexity 
of tracking these two different concurrent deadlines presents system 
problems for the Office and could create confusion for applicants, 
examining attorneys, and the TTAB that may lead to files being 
mistakenly abandoned for failure to file a timely response or statement 
of use and missed opportunities for appealing final requirements and 
refusals. Additionally, because an examining attorney cannot issue a 
refusal or requirement after the issuance of the notice of allowance 
but before the filing of the statement of use, if the Director 
determined that a proposed amendment required review by an examining 
attorney and granted the petition, an applicant might mistakenly 
believe that the proposed amendment has been granted because of the 
delay in issuing an Office action detailing the issues with the 
proposed amendment until after the submission of the statement of use. 
As written, proposed Sec.  2.77(b) will expedite the entry of 
acceptable amendments, facilitate clarity, and provide the applicant 
with the most accurate and timely information regarding the status of a 
proposed amendment.

Publication and Post Publication

    Comment: One commenter expressed its support for the proposed 
revision to Sec.  2.81(b) to remove the list of items that will be 
included on the notice of allowance to allow greater flexibility in the 
format of the notice of allowance for changes that may occur in 
conjunction with the Office's ``Trademarks Next Generation'' 
information-technology initiative, but encouraged the Office to seek 
stakeholder input before making substantial changes to the current 
format of the notice of allowance.
    Response: The Office continues to welcome stakeholder input 
regarding the ``Trademarks Next Generation'' information technology 
initiative and will provide sufficient notice prior to revising forms.

Madrid Protocol

    Comment: One commenter stated the proposed amendment to Sec.  
7.11(a)(3)(ii) was not consistent with the Common Regulations under the 
Madrid Agreement Concerning the International Registration of Marks and 
the Protocol Relating to that Agreement (as in force on January 1, 
2013) (hereinafter ``Common Regulations''), and that under the Common 
Regulations, the requirement for both black-and-white and color 
reproductions of the mark applies to all applications, whether filed on 
paper or electronically.
    Response: Based on the concern raised by the commenter about 
consistency with the Common Regulations, the Office will explore the 
matter further and is withdrawing the proposed amendment to Sec.  
7.11(a)(3)(ii) at this time.
    Comment: Another commenter stated that the structure of Sec.  7.23 
should be revisited, as the rule appears to apply only to assignments, 
while Article 9 of the Madrid Protocol and Rule 25 of the Common 
Regulations apply broadly to all possible ownership changes, including 
following the death of the holder, judicial decisions, and mergers. In 
those contexts, the requirement for a ``good-faith effort'' to obtain 
the signature of the former owner should be revisited.
    Response: While Sec.  7.23 refers to ``assignments,'' both in the 
title and in the body, the Office interprets this term broadly to 
encompass not only assignments but also other types of conveyances, 
such as mergers and court-ordered changes. This corresponds with the 
practice in the Office's Assignment Recordation Branch, where the term 
``assignments'' is used in the title of the unit and in documentation, 
but is interpreted to include not only assignments but also other types 
of conveyances, such as changes of name and security interests. In 
order to ensure clarity, the Office has revised Sec.  7.23(a)(5) to 
indicate that, when the holder no longer exists, the assignee does not 
have to make a good-faith effort to obtain the assignor's signature.
    Comment: Another commenter stated that the amendment to Sec.  
7.23(a)(6) does not cover all possible scenarios under which an 
interested party would be qualified to request a change of ownership 
through the Office, which appears contrary to Common Regulations Rules 
25(1)(b) and 25(2)(a)(iv). Furthermore, the commenter alleged that 
Sec.  7.23(a)(6) is redundant and should be expunged since Sec.  
7.23(a)(4) mentions entitlement requirements, and the Common 
Regulations do not impose the limitations set forth in Sec.  7.23(a)(6) 
on an assignee of an international registration to be able to record an 
assignment through the Office.
    Response: While the International Bureau permits requests for 
changes of ownership to be presented through the office of a contacting 
party, the Office is not required to do so. The rule change broadens 
the ability of U.S. trademark owners, who otherwise could not obtain 
the signature of the former holder after a good-faith effort, to update 
ownership information with the International Bureau. While the revised 
rule could not be invoked by parties with no connection to the Office 
(e.g., a U.S. domestic application/registration or request for 
extension of protection), those parties have a remedy. They have the 
option to file a petition to the Director and, upon a showing of 
extraordinary circumstances, request a waiver of the requirements of 
Sec.  7.23(a)(6). Since there are transferees who do not qualify to 
invoke the amended rule, Sec.  7.23(a)(6) is not redundant.
    Comment: One commenter addressed the proposed amendment to Sec.  
7.24(b)(5)(ii) to require that a request, submitted through the Office, 
to record a restriction, or the release of a restriction, that is the 
result of an agreement between the holder of the international 
registration and the party restricting the holder's right of disposal 
must include a statement indicating that, after making a good-faith 
effort, the signature of the holder of the international registration 
could not be obtained for the request to record the restriction, or 
release of the restriction, and such statement must be signed and 
verified or supported by declaration under Sec.  2.20. The commenter 
noted that the proposed amendment appears to be acceptable in so far as 
it purports to implement Common Regulations Rule 20(1)(b), but alleged 
that the current provisions of Sec.  7.24 are not in compliance with 
the Common Regulations because Sec.  7.24(a) offers the

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opportunity to record a restriction through the Office only if the 
party who obtained the restriction is a national of, is domiciled in, 
or has a real and effective industrial or commercial establishment in 
the U.S. The commenter believes that Common Regulations Rule 20(1)(a) 
dictates that whether or not the holder is a U.S. subject should 
control.
    Response: While Common Regulations Rule 20(1)(a) permits the office 
of any contracting party of the holder to inform the International 
Bureau that the holder's right to dispose of an international 
registration has been restricted, it does not require the office of the 
contracting party to do so. Accordingly, the Office is not required to 
inform the International Bureau that the holder's right to dispose of 
an international registration has been restricted.
    Comment: One commenter stated that the rationale for the amendment 
to Sec.  7.24(b)(7), to indicate that a request to record a 
restriction, or the release of a restriction, must include an 
indication that the restriction, or the release of the restriction, of 
the holder's right of disposal of the international registration 
applies to the designation to the U.S. or an international registration 
that was originally based on a U.S. application or registration was 
unclear. The commenter asked if there was a need for equal treatment in 
two very distinct situations, such as restriction on the right to 
dispose of an international registration having effect in the U.S. and 
an international registration having no such effect, which would not be 
a remedy. The commenter suggested amending Sec.  7.24(a)(2) to refer to 
the holder of the international registration instead of the party who 
obtained the restriction, or deleting or amending Sec.  7.24(b)(4).
    Response: While the International Bureau permits requests to record 
the holder's right to dispose of an international registration to be 
presented through an office of a contracting party, the Office is not 
required to do so. The proposed rule change broadens the ability of 
U.S. trademark owners, who otherwise could not obtain the signature of 
the holder after a good-faith effort, to record the restriction of the 
right to dispose with the International Bureau. While the proposed rule 
could not be invoked by a party with no connection to the Office (e.g., 
U.S. domestic application/registration or request for extension of 
protection), such a party has a remedy. The party has the option to 
file a petition to the Director and, upon a showing of extraordinary 
circumstances, request a waiver of the requirements of Sec.  
7.24(b)(7).

Discussion of Rule Changes

Representation by Attorneys or Other Authorized Persons

Rule 2.17(d)(1)
    The Office is amending Sec.  2.17(d)(1) to remove the reference to 
the number of powers of attorney that can be filed via the Trademark 
Electronic Application System (``TEAS'') for existing applications or 
registrations that have the identical owner and attorney. Prior to this 
amendment, the TEAS Revocation of Attorney/Domestic Representative and/
or Appointment of Attorney/Domestic Representative form indicated that 
up to 300 applications or registrations could be amended per request. 
The amendment is intended to remove outdated information, and allows 
for greater flexibility for future enhancements to TEAS.
Rule 2.19(b)
    The Office is amending Sec.  2.19(b) to require compliance with 
Sec.  11.116, rather than Sec.  10.40, as part 10 of this chapter has 
been removed and reserved (78 FR 20180 (April 3, 2013)) and Sec.  
11.116 now sets out the requirements for terminating representation.

Applications for Registration

Rule 2.22(a)(19)
    The Office is amending Sec.  2.22(a)(19) to indicate that if a TEAS 
Plus applicant owns one or more registrations for the same mark shown 
in the application, and the last listed owner of the prior 
registration(s) differs from the owner of the application, the 
application must include a claim of ownership for the prior 
registration(s) in order to be entitled to the reduced filing fee under 
Sec.  2.6(a)(1)(iii). This limits the circumstances under which a TEAS 
Plus applicant is required to claim ownership of a prior registration 
and is consistent with the revision to the claim of ownership 
requirements in Sec.  2.36.
Rule 2.36
    The Office is amending Sec.  2.36 to indicate that an applicant is 
only required to claim ownership of prior registrations for the same or 
similar marks if the owner listed in the application differs from the 
owner last listed in the Office's database for such prior 
registrations. This is consistent with existing practice.
Rule 2.38
    The Office is amending Sec.  2.38(b) to remove the requirement that 
an application indicate that, if the applied-for mark is not being used 
by the applicant but is being used by one or more related companies 
whose use inures to the benefit of the applicant under section 5 of the 
Act, such fact must be indicated in the application.
    The Office is re-designating Sec.  2.38(c) as Sec.  2.38(b), as the 
requirement in current Sec.  2.38(b) is being removed.

Examination of Application and Action by Applicants

Rule 2.62(c)
    The Office is adding new Sec.  2.62(c) to specify that responses to 
Office actions must be filed through TEAS, transmitted by facsimile, 
mailed, or delivered by hand, and that responses sent by email will not 
be accorded a date of receipt. This is consistent with existing 
practice.
Rule 2.63
    The Office is amending the title of Sec.  2.63 from 
``Reexamination'' to ``Action after response,'' as revised Sec.  2.63 
incorporates a discussion of reexamination, the filing of petitions and 
appeals, and abandonments.
    The Office is amending Sec.  2.63(a) to clarify that after 
submission of a response by the applicant, the examining attorney will 
review all statutory refusal(s) and/or requirement(s) in light of the 
response. This is consistent with TMEP section 713.
    The Office is adding Sec.  2.63(a)(1) to clarify that the applicant 
may respond to a non-final action that maintains any requirement(s) or 
substantive refusal(s) by filing a timely response to the examiner's 
action. This is consistent with TMEP section 713. To ensure clarity, 
the Office is adding a cross-reference to Sec.  2.62(a).
    The Office is adding Sec.  2.63(a)(2) to clarify that the applicant 
may respond to a non-final action that maintains any requirement(s) by 
filing a petition to the Director under Sec.  2.146 if the subject 
matter of the requirement(s) is appropriate for petition. This is 
consistent with TMEP sections 713 and 1702. In addition, as both the 
applicable response deadlines after a denial of a petition to the 
Director under Sec.  2.146 and the statement that a requirement that is 
the subject of a petition decided by the Director may not subsequently 
be the subject of an appeal to the TTAB are set out in new Sec.  
2.63(c), such information has been removed from Sec.  2.63(a)(2).
    The Office is amending Sec.  2.63(b) to clarify that the examining 
attorney may make final a refusal or requirement upon review of a 
response. This is consistent with current Sec.  2.64(a) and

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TMEP sections 713 and 714.03. To ensure clarity, the Office is updating 
the wording to remove a reference to ``request for reconsideration'' 
because Sec.  2.63(a) discusses responses to non-final actions, and the 
Office uses ``request for reconsideration'' to refer to responses after 
final actions.
    The Office is adding Sec.  2.63(b)(1) to clarify that the applicant 
may respond to a final action that maintains any substantive refusal(s) 
by filing an appeal to the TTAB under Sec. Sec.  2.141 and 2.142. This 
is consistent with TMEP section 1501.01. To ensure clarity, the Office 
is updating the wording to explicitly state that the applicant may 
additionally respond by filing a timely request for reconsideration 
under Sec.  2.63(b)(3) that seeks to overcome any substantive 
refusal(s) or outstanding requirement(s) maintained in the final 
action. This is consistent with TMEP section 715.03.
    The Office is adding Sec.  2.63(b)(2) to clarify that the applicant 
may respond to a final action that withdraws all substantive refusals 
but maintains any requirement(s) either by filing an appeal to the TTAB 
under Sec. Sec.  2.141 and 2.142 or by filing a petition to the 
Director under Sec.  2.146, if the subject matter of the requirement(s) 
is procedural, and therefore appropriate for petition. This is 
consistent with current Sec.  2.63(b) and TMEP sections 1501.01 and 
1704. To ensure clarity, the Office is updating the wording to 
explicitly state that the applicant may additionally respond by filing 
a timely request for reconsideration under Sec.  2.63(b)(3) that seeks 
to comply with any outstanding requirement(s) maintained in the final 
action. This is consistent with TMEP section 715.03.
    The Office is adding Sec.  2.63(b)(3) to clarify that the applicant 
may file a request for reconsideration of the final action prior to the 
expiration of the time for filing an appeal to the TTAB or a petition 
to the Director, and that the request does not stay or extend the time 
for filing an appeal or petition. This is consistent with current Sec.  
2.64(b) and TMEP section 715.03. To ensure clarity, the Office is 
updating the wording to indicate that the request for reconsideration 
should seek to overcome any substantive refusal(s) and/or comply with 
any outstanding requirement(s), and that the Office will enter 
amendments accompanying requests for reconsideration if the amendments 
comply with the rules of practice and the Act. This is consistent with 
TMEP sections 715.02 and 715.03. In addition, the proposed language 
indicating that the request for reconsideration must be properly signed 
is being removed from Sec.  2.63(b)(3), as this requirement is already 
specified in Sec.  2.193(e)(2).
    The Office is adding Sec.  2.63(b)(4) to clarify that the filing of 
a request for reconsideration that does not result in the withdrawal of 
all refusals and requirements, without the filing of a timely appeal or 
petition, will result in abandonment of the application for incomplete 
response. This is consistent with section 12(b) of the Act and current 
Sec.  2.65(a).
    The Office is adding Sec.  2.63(c) to clarify both that if a 
petition to the Director under Sec.  2.146 is denied, the applicant 
will have until six months from the date of issuance of the Office 
action that repeated the requirement(s), or made it final, or thirty 
days from the date of the decision on the petition, whichever date is 
later, to comply with the requirement(s), and that a requirement that 
is the subject of a petition decided by the Director subsequently may 
not be the subject of an appeal to the TTAB. This is consistent with 
current Sec.  2.63(b) and TMEP sections 1501.01 and 1702.
    The Office is adding Sec.  2.63(d) to clarify that if an amendment 
to allege use is filed during the six-month response period after 
issuance of a final action, the examining attorney will examine the 
amendment, but the filing of the amendment does not stay or extend the 
time for filing an appeal to the TTAB or a petition to the Director. 
This is consistent with current Sec.  2.64(c)(1) and TMEP sections 711 
and 1104.
Rule 2.64
    The Office is removing and reserving Sec.  2.64 and is 
incorporating updated final action procedures into revised Sec.  2.63.
Rule 2.65
    The Office is amending Sec.  2.65(a) both to clarify that an 
application will be deemed abandoned if an applicant fails to respond, 
or respond completely, to an Office action within six months of the 
issuance date, but a timely petition to the Director or notice of 
appeal to the TTAB, if appropriate, is considered to be a response that 
avoids abandonment, and to revise the reference to Sec.  2.63(b) so as 
to reference Sec.  2.63(a) and (b). The clarification is consistent 
with TMEP section 718.03, and the revision to the reference accounts 
for the amendment to Sec.  2.63, which sets out the conditions for a 
petition under Sec.  2.146 in Sec.  2.63(a) and (b) instead of only 
Sec.  2.63(b). To ensure clarity, the Office is adding a cross-
reference to Sec.  2.63(b)(4).
    The Office is adding Sec.  2.65(a)(1) to clarify that if an 
applicant fails to timely respond to an Office action, but all refusals 
and/or requirements are expressly limited to certain goods and/or 
services, the application will be abandoned only as to those goods and/
or services. This is consistent with current Sec.  2.65(a) and TMEP 
section 718.02(a).
    The Office is adding Sec.  2.65(a)(2) to clarify that an applicant 
may, in certain situations, be granted thirty days, or to the end of 
the response period set forth in the action, whichever is longer, to 
provide information omitted from a response before the examining 
attorney considers the issue of abandonment. In order to ensure 
clarity, certain wording in the rule has been changed from passive to 
active voice. This is consistent with current Sec.  2.65(b) and TMEP 
section 718.03(b).
    The Office is amending Sec.  2.65(b) to clarify that an application 
will be abandoned if an applicant expressly abandons the application 
pursuant to Sec.  2.68. This is consistent with TMEP section 718.01.
    The Office is amending Sec.  2.65(c) to clarify that an application 
under section 1(b) of the Act will be abandoned if the applicant fails 
to file a timely statement of use under Sec.  2.88 or a request for an 
extension of time for filing a statement of use under Sec.  2.89. This 
is consistent with section 1(d)(4) of the Act and TMEP sections 1108.01 
and 1109.04.
Rule 2.68
    The Office is amending Sec.  2.68(a) to indicate that, consistent 
with existing practice, a request for abandonment or withdrawal may not 
subsequently be withdrawn. This is intended to provide applicants, 
registration owners, and the public assurance of the accuracy of the 
status of applications or registrations after filings are received by 
the Office.
    The Office is amending Sec.  2.68(b) for clarity by moving the ``in 
any proceeding before the Office'' clause to the end of the sentence.

Amendment of Application

Rule 2.77(b)
    The Office is amending Sec.  2.77(b) to indicate that amendments 
not listed in Sec.  2.77(a) may be entered in the application in the 
time period between issuance of the notice of allowance and submission 
of a statement of use only with the express permission of the Director, 
after consideration on petition under Sec.  2.146. This is consistent 
with TMEP sections 1107 and 1505.01(d), which currently require a 
waiver of Sec.  2.77 on petition. If the Director determines that the 
amendment requires review by the examining attorney, the petition will 
be denied and the

[[Page 2308]]

amendment may be resubmitted with the statement of use.

Publication and Post Publication

Rule 2.81(b)
    The Office is amending Sec.  2.81(b) to remove the list of items 
that will be included on the notice of allowance. This change will 
allow greater flexibility in the format of the notice of allowance for 
changes that may occur in conjunction with the Office's ``Trademarks 
Next Generation'' information-technology initiative. As a matter of 
practice, at this time, the Office plans to continue to maintain the 
current format of the notice of allowance.
Rule 2.84(b)
    The Office is amending Sec.  2.84(b) to clarify that an application 
that is not the subject of an inter partes proceeding before the TTAB 
may be amended after the mark has been published for opposition, but 
before the certificate of registration has been issued under section 
1(a), 44, or 66(a) of the Act, or before the notice of allowance has 
been issued in an application under section 1(b) of the Act, if the 
amendment meets the requirements of Sec. Sec.  2.71, 2.72, and 2.74. 
This is consistent with existing practice.

Appeals

Rule 2.142(f)
    The Office is amending Sec.  2.142(f)(3) and (f)(6) to remove the 
references to Sec.  2.64, as the Office is removing and reserving Sec.  
2.64, with the sections of Sec.  2.64 relevant to Sec.  2.142(f)(3) and 
(f)(6) incorporated into revised Sec.  2.63.
Rule 2.145(a)
    The Office is amending Sec.  2.145(a) to add registrants who have 
filed an affidavit or declaration under section 71 of the Act and are 
dissatisfied with a decision of the Director to the list of parties 
eligible to appeal to the U.S. Court of Appeals for the Federal 
Circuit. This is consistent with TMEP section 1613.18(d).
Rule 2.146
    The Office is amending Sec.  2.146(a)(1) and (g) to replace 
references to Sec.  2.63(b) with references to Sec.  2.63(a) and (b), 
as the amended rules will list conditions for a petition under Sec.  
2.146 in Sec.  2.63(a) and (b) instead of only Sec.  2.63(b). In 
addition, in order to ensure clarity, the Office is amending Sec.  
2.146(g) to replace a reference to Sec.  2.65 with a reference to Sec.  
2.65(a).

Post Registration

Rule 2.171(b)(2)(i)
    The Office is amending Sec.  2.171(b)(2)(i) to clarify that when 
the Office receives notification from the International Bureau of the 
World Intellectual Property Organization that an international 
registration has been divided due to a change in ownership with respect 
to some but not all of the goods and/or services, the Office will 
update Office records to reflect the change in ownership, divide out 
the assigned goods and/or services from the registered extension of 
protection (parent registration), and publish notice of the parent 
registration in the Official Gazette. The Office does not record the 
partial change of ownership in the Assignment Recordation Branch 
(formerly Assignment Services Branch), and only issues an updated 
certificate for the parent registration to the owner upon payment of 
the fee required by Sec.  2.6. This is consistent with existing 
practice.
Rule 2.172
    The Office is amending Sec.  2.172 to clarify that a surrender for 
cancellation may not subsequently be withdrawn. This is consistent with 
existing practice.
Rule 2.185(a)
    The Office is amending Sec.  2.185(a) to indicate that deficiencies 
in renewal applications may be corrected after notification from the 
Office. This is consistent with existing practice.

General Information and Correspondence in Trademark Cases

Rule 2.198(a)(1)
    The Office is amending Sec.  2.198(a)(1) by adding Sec.  
2.198(a)(1)(viii) to include affidavits under section 71 of the Act in 
the list of documents excluded from the Office's Priority Mail 
Express[supreg] (formerly Express Mail[supreg]) procedure. This is 
consistent with the handling of corresponding affidavits under section 
8 of the Act. In connection with this addition, the Office is revising 
Sec.  2.198(a)(1)(vi) and Sec.  2.198(a)(1)(vii) for clarity.

Classification of Goods and Services

Rule 6.1(5)
    The Office is amending Sec.  6.1(5) to add the wording ``or 
veterinary'' to the entry ``dietetic food and substances adapted for 
medical use'' in the listing of goods for International Class 5. This 
is consistent with the current heading for the international class as 
established by the Committee of Experts of the Nice Union and set forth 
in the International Classification of Goods and Services for the 
Purposes of the Registration of Marks published annually by the World 
Intellectual Property Organization on its Web site.

Madrid Protocol

Rule 7.23(a)
    The Office had proposed to amend Sec.  7.23(a)(5) to require that a 
request to record an assignment of an international registration 
submitted through the Office include a statement that, after making a 
good-faith effort, the assignee could not obtain the assignor's 
signature for the request to record the assignment and that the 
statement be signed and verified or supported by declaration under 
Sec.  2.20. In order to ensure clarity, the Office is revising the 
amendment to Sec.  7.23(a)(5) to require that a request to record an 
assignment of an international registration submitted through the 
Office include a statement that either the assignee could not obtain 
the assignor's signature for the request to record the assignment 
because the holder no longer exists, or, after a good-faith effort, the 
assignee could not obtain the assignor's signature for the request to 
record the assignment. This revision will ensure that, when possible, 
assignees make a good-faith effort to obtain the assignor's signature 
before invoking this rule and requesting the Office to forward the 
assignment document to the International Bureau.
    The Office is amending Sec.  7.23(a)(6) to indicate that a request 
to record an assignment of an international registration submitted 
through the Office must include an indication that the assignment 
applies to the designation to the United States (``U.S.'') or an 
international registration that was originally based on a U.S. 
application or registration. This revision is intended to ensure that 
an assignee of an international registration based on a U.S. 
registration or application is treated the same as an assignee of a 
designation to the U.S. Prior to this revision, the owner of an 
international registration based on a U.S. registration or application 
was required to file a petition to waive Sec.  7.23(a)(6).
Rule 7.24(b)
    The Office had proposed to amend Sec.  7.24(b)(5)(ii) to require 
that a request, submitted through the Office, to record a restriction, 
or the release of a restriction, that is the result of an agreement 
between the holder of the international registration and the party 
restricting the holder's right of disposal must include a statement 
indicating that, after making a good-faith effort, the

[[Page 2309]]

signature of the holder of the international registration could not be 
obtained for the request to record the restriction, or release of the 
restriction, and such statement must be signed and verified or 
supported by declaration under Sec.  2.20. In order to ensure clarity, 
the Office is revising the amendment to Sec.  7.24(b)(5)(ii) to 
require, for a request to record the restriction or release of the 
restriction, a statement either that the holder of the international 
registration could not obtain the signature of the party restricting 
the holder's right of disposal because the party restricting the 
holder's right of disposal no longer exists, or, that after a good-
faith effort, the holder of the international registration could not 
obtain the signature of the party restricting the holder's right of 
disposal. This revision will ensure that, when possible, holders of 
international registrations make a good-faith effort to obtain the 
signature of the party restricting the holder's right of disposal 
before invoking this rule and requesting the Office to forward the 
document to the International Bureau.
    The Office is amending Sec.  7.24(b)(7) to indicate that a request 
to record a restriction, or the release of a restriction, must include 
an indication that the restriction, or the release of the restriction, 
of the holder's right of disposal of the international registration 
applies to the designation to the U.S. or an international registration 
that was originally based on a U.S. application or registration. This 
revision is intended to ensure that an assignee of an international 
registration based on a U.S. registration or application is treated the 
same as an assignee of a designation to the U.S. Prior to this 
revision, the owner of an international registration based on a U.S. 
registration or application was required to file a petition to waive 
Sec.  7.24(b)(7).
Rule 7.25(a)
    The Office is amending Sec.  7.25(a) to add Sec. Sec.  2.21, 2.76, 
2.88, and 2.89 to the list of sections in part 2 not applicable to an 
extension of protection under section 66(a) of the Act. This is 
consistent with existing practice as these sections in part 2 only 
concern applications under sections 1 or 44 of the Act.
Rule 7.31
    The Office is amending Sec.  7.31 by revising the introductory text 
and Sec.  7.31(a)(3) to require that a request to transform an 
extension of protection to the U.S. into a U.S. application specify the 
goods and/or services to be transformed. This revision is intended to 
ensure that the Office transforms an accurate listing of goods and/or 
services.
    The Office is redesignating current Sec.  7.31(a)(3) as Sec.  
7.31(a)(4) and current Sec.  7.31(a)(4) as new Sec.  7.31(a)(5) because 
current Sec.  7.31(a)(3) is being revised to require that a request to 
transform an extension of protection to the U.S. into a U.S. 
application specify the goods and/or services to be transformed.

Rulemaking Considerations

    Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure, and/or interpretive 
rules. See Nat'l Org. of Veterans' Advocates v. Sec'y of Veterans 
Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (rule that clarifies 
interpretation of a statute is interpretive); Bachow Commc'ns Inc. v. 
FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application 
process are procedural under the Administrative Procedure Act); Inova 
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules 
for handling appeals were procedural where they did not change the 
substantive standard for reviewing claims).
    Accordingly, prior notice and opportunity for public comment for 
the rule changes are not required pursuant to 5 U.S.C. 553(b) or (c), 
or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice,'' quoting 5 U.S.C. 
553(b)(A)). However, the Office chose to seek public comment before 
implementing the rule to benefit from the public's input.
    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.
    In addition, for the reasons set forth herein, the Deputy General 
Counsel for General Law of the United States Patent and Trademark 
Office has certified to the Chief Counsel for Advocacy of the Small 
Business Administration that this rule will not have a significant 
economic impact on a substantial number of small entities. See 5 U.S.C. 
605(b). This rule involves changes to rules of agency practice and 
procedure. The primary impact of the rule is to provide greater clarity 
as to certain requirements relating to representation before the 
Office, applications for registration, examination procedures, 
amendment of applications, publication and post publication procedures, 
appeals, petitions, post registration practice, correspondence in 
trademark cases, classification of goods and services, and procedures 
under the Madrid Protocol. For the most part, the rule changes are 
intended to codify existing practice. The burdens, if any, to all 
entities, including small entities, imposed by these rule changes will 
be minor. Additionally, in a number of instances, the rule changes will 
lessen the burdens on applicants. Therefore, this rule will not have a 
significant economic impact on a substantial number of small entities.
    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Executive Order 13563 (Improving Regulation and Regulatory Review): 
The Office has complied with Executive Order 13563 (Jan. 18, 2011). 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule changes; (2) tailored the rule to impose the least burden 
on society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) provided the public with a meaningful opportunity to 
participate in the regulatory process, including soliciting the views 
of those likely affected prior to issuing a notice of proposed 
rulemaking, and provided on-line access to the rulemaking docket; (7) 
attempted to promote coordination, simplification, and harmonization 
across government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes, 
to the extent applicable.
    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).
    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 
Office will submit a report containing the final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives, and the Comptroller General of the

[[Page 2310]]

Government Accountability Office. The changes in this rule are not 
expected to result in an annual effect on the economy of 100 million 
dollars or more, a major increase in costs or prices, or significant 
adverse effects on competition, employment, investment, productivity, 
innovation, or the ability of United States-based enterprises to 
compete with foreign-based enterprises in domestic and export markets. 
Therefore, this rule change is not expected to result in a ``major 
rule'' as defined in 5 U.S.C. 804(2).
    Unfunded Mandate Reform Act of 1995: The Unfunded Mandates Reform 
Act (2 U.S.C. 1501 et seq.) 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 will 
have no such effect on State, local, and tribal governments or the 
private sector.
    Paperwork Reduction Act: This rule involves information collection 
requirements which are subject to review by the U.S. Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The Office has determined that there will be 
no new information collection requirements or impacts to existing 
information collection requirements associated with this rule. The 
collections of information involved in this rule have been reviewed and 
previously approved by OMB under control numbers 0651-0009, 0651-0050, 
0651-0051, 0651-0054, 0651-0055, 0651-0056, and 0651-0061.
    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 6

    Administrative practice and procedure, Classification, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, International registration, 
Trademarks.

    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 
amends parts 2, 6, 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. Amend Sec.  2.17 by revising paragraph (d)(1) to read as follows:


Sec.  2.17  Recognition for representation.

* * * * *
    (d) * * *
    (1) The owner of an application or registration may appoint a 
practitioner(s) qualified to practice under Sec.  11.14 of this chapter 
to represent the owner for all existing applications or registrations 
that have the identical owner name and attorney through TEAS.
* * * * *

0
3. Amend Sec.  2.19 by revising paragraph (b) introductory text to read 
as follows:


Sec.  2.19  Revocation or withdrawal of attorney.

* * * * *
    (b) Withdrawal of attorney. If the requirements of Sec.  11.116 of 
this chapter are met, a practitioner authorized to represent an 
applicant, registrant, or party to a proceeding in a trademark case may 
withdraw upon application to and approval by the Director or, when 
applicable, upon motion granted by the Trademark Trial and Appeal 
Board. The practitioner should file the request to withdraw soon after 
the practitioner notifies the client of his/her intent to withdraw. The 
request must include the following:
* * * * *

0
4. Amend Sec.  2.22 by revising paragraph (a)(19) to read as follows:


Sec.  2.22  Filing requirements for a TEAS Plus application

    (a) * * *
    (19) If the applicant owns one or more registrations for the same 
mark, and the owner(s) last listed in Office records of the prior 
registration(s) for the same mark differs from the owner(s) listed in 
the application, a claim of ownership of the registration(s) identified 
by the registration number(s), pursuant to Sec.  2.36; and
* * * * *

0
5. Revise Sec.  2.36 to read as follows:


Sec.  2.36  Identification of prior registrations.

    Prior registrations of the same or similar marks owned by the 
applicant should be identified in the application if the owner(s) last 
listed in Office records of the prior registrations differs from the 
owner(s) listed in the application.

0
6. Amend Sec.  2.38 by revising paragraph (b) and removing paragraph 
(c) to read as follows:


Sec.  2.38  Use by predecessor or by related companies.

* * * * *
    (b) The Office may require such details concerning the nature of 
the relationship and such proofs as may be necessary and appropriate 
for the purpose of showing that the use by related companies inures to 
the benefit of the applicant and does not affect the validity of the 
mark.

0
7. Amend Sec.  2.62 by adding paragraph (c) to read as follows:


Sec.  2.62  Procedure for filing response.

* * * * *
    (c) Form. Responses must be filed through TEAS, transmitted by 
facsimile, mailed, or delivered by hand, as set out in Sec.  2.190(a). 
Responses sent via email will not be accorded a date of receipt.

0
8. Revise Sec.  2.63 to read as follows:


Sec.  2.63  Action after response.

    (a) Repeated non-final refusal or requirement. After response by 
the applicant, the examining attorney will review all statutory 
refusals and/or requirement(s) in light of the response.
    (1) If, after review of the applicant's response, the examining 
attorney issues a non-final action that maintains any previously issued 
substantive refusal(s) to register or repeats any requirement(s), the 
applicant may submit a timely response to the action under Sec.  
2.62(a).
    (2) If, after review of the applicant's response, the examining 
attorney issues a non-final action that contains no substantive 
refusals to register, but maintains any requirement(s), the applicant 
may respond to such repeated requirement(s) by filing a timely petition 
to the Director for relief from the repeated requirement(s) if the 
subject matter of the repeated requirement(s) is appropriate for 
petition to the Director (see Sec.  2.146(b)).
    (b) Final refusal or requirement. Upon review of a response, the 
examining attorney may state that the refusal(s) to register, or the 
requirement(s), is final.
    (1) If the examining attorney issues a final action that maintains 
any substantive refusal(s) to register, the applicant may respond by 
timely filing:

[[Page 2311]]

    (i) A request for reconsideration under paragraph (b)(3) of this 
section that seeks to overcome any substantive refusal(s) to register, 
and comply with any outstanding requirement(s), maintained in the final 
action; or
    (ii) An appeal to the Trademark Trial and Appeal Board under 
Sec. Sec.  2.141 and 2.142.
    (2) If the examining attorney issues a final action that contains 
no substantive refusals to register, but maintains any requirement(s), 
the applicant may respond by timely filing:
    (i) A request for reconsideration under paragraph (b)(3) of this 
section that seeks to comply with any outstanding requirement(s) 
maintained in the final action;
    (ii) An appeal of the requirement(s) to the Trademark Trial and 
Appeal Board under Sec. Sec.  2.141 and 2.142; or
    (iii) A petition to the Director under Sec.  2.146 to review the 
requirement(s), if the subject matter of the requirement(s) is 
procedural, and therefore appropriate for petition.
    (3) Prior to the expiration of the time for filing an appeal or a 
petition, the applicant may file a request for reconsideration of the 
final action that seeks to overcome any substantive refusal(s) and/or 
comply with any outstanding requirement(s). Filing a request for 
reconsideration does not stay or extend the time for filing an appeal 
or petition. The Office will enter amendments accompanying requests for 
reconsideration after final action if the amendments comply with the 
rules of practice in trademark cases and the Act.
    (4) Filing a request for reconsideration that does not result in 
the withdrawal of all refusals and requirements, without the filing of 
a timely appeal or petition, will result in abandonment of the 
application for incomplete response, pursuant to Sec.  2.65(a).
    (c) If a petition to the Director under Sec.  2.146 is denied, the 
applicant will have six months from the date of issuance of the Office 
action that repeated the requirement(s), or made it final, or thirty 
days from the date of the decision on the petition, whichever date is 
later, to comply with the requirement(s). A requirement that is the 
subject of a petition decided by the Director subsequently may not be 
the subject of an appeal to the Trademark Trial and Appeal Board.
    (d) If an applicant in an application under section 1(b) of the Act 
files an amendment to allege use under Sec.  2.76 during the six-month 
response period after issuance of a final action, the examining 
attorney will examine the amendment. The filing of such an amendment 
does not stay or extend the time for filing an appeal or petition.


Sec.  2.64  [Removed and Reserved]

0
9. Remove and reserve Sec.  2.64.


0
10. Revise Sec.  2.65 to read as follows:


Sec.  2.65  Abandonment.

    (a) An application will be abandoned if an applicant fails to 
respond to an Office action, or to respond completely, within six 
months from the date of issuance. A timely petition to the Director 
pursuant to Sec. Sec.  2.63(a) and (b) and 2.146 or notice of appeal to 
the Trademark Trial and Appeal Board pursuant to Sec.  2.142, if 
appropriate, is a response that avoids abandonment (see Sec.  
2.63(b)(4)).
    (1) If all refusals and/or requirements are expressly limited to 
certain goods and/or services, the application will be abandoned only 
as to those goods and/or services.
    (2) When a timely response by the applicant is a bona fide attempt 
to advance the examination of the application and is a substantially 
complete response to the examining attorney's action, but consideration 
of some matter or compliance with a requirement has been omitted, the 
examining attorney may grant the applicant thirty days, or to the end 
of the response period set forth in the action to which the 
substantially complete response was submitted, whichever is longer, to 
explain and supply the omission before the examining attorney considers 
the question of abandonment.
    (b) An application will be abandoned if an applicant expressly 
abandons the application pursuant to Sec.  2.68.
    (c) An application will be abandoned if an applicant in an 
application under section 1(b) of the Act fails to timely file either a 
statement of use under Sec.  2.88 or a request for an extension of time 
for filing a statement of use under Sec.  2.89.


0
11. Revise Sec.  2.68 to read as follows:


Sec.  2.68  Express abandonment (withdrawal) of application.

    (a) Written document required. An applicant may expressly abandon 
an application by filing a written request for abandonment or 
withdrawal of the application, 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 qualified to 
practice under Sec.  11.14 of this chapter, in accordance with the 
requirements of Sec.  2.193(e)(2). A request for abandonment or 
withdrawal may not subsequently be withdrawn.
    (b) Rights in the mark not affected. Except as provided in Sec.  
2.135, the fact that an application has been expressly abandoned shall 
not affect any rights that the applicant may have in the mark set forth 
in the abandoned application in any proceeding before the Office.


0
12. Amend Sec.  2.77 by revising paragraph (b) to read as follows:


Sec.  2.77  Amendments between notice of allowance and statement of 
use.

* * * * *
    (b) Other amendments may be entered during this period only with 
the express permission of the Director, after consideration on petition 
under Sec.  2.146. If the Director determines that the amendment 
requires review by the examining attorney, the petition will be denied 
and the amendment may be resubmitted with the statement of use in order 
for the applicant to preserve its right to review.


0
13. Amend Sec.  2.81 by revising paragraph (b) to read as follows:


Sec.  2.81  Post publication.

* * * * *
    (b) In an application under section 1(b) of the Act for which no 
amendment to allege use under Sec.  2.76 has been submitted and 
accepted, if no opposition is filed within the time permitted or all 
oppositions filed are dismissed, and if no interference is declared, a 
notice of allowance will issue. Thereafter, the applicant must submit a 
statement of use as provided in Sec.  2.88.


0
14. Amend Sec.  2.84 by revising paragraph (b) to read as follows:


Sec.  2.84  Jurisdiction over published applications.

* * * * *
    (b) After publication, but before the certificate of registration 
is issued in an application under section 1(a), 44, or 66(a) of the 
Act, or before the notice of allowance is issued in an application 
under section 1(b) of the Act, an application that is not the subject 
of an inter partes proceeding before the Trademark Trial and Appeal 
Board may be amended if the amendment meets the requirements of 
Sec. Sec.  2.71, 2.72, and 2.74. Otherwise, an amendment to such an 
application may be submitted only upon petition to the Director to 
restore jurisdiction over the application to the examining attorney for 
consideration of the amendment and further examination. The amendment 
of an application that is the subject of an inter partes proceeding 
before the Trademark Trial and Appeal Board is governed by Sec.  2.133.


[[Page 2312]]



0
15. Amend Sec.  2.142 by revising paragraphs (f)(3) and (6) to read as 
follows:


Sec.  2.142  Time and manner of ex parte appeals.

* * * * *
    (f) * * *
    (3) If the further examination does result in an additional ground 
for refusal of registration, the examiner and appellant shall proceed 
as provided by Sec. Sec.  2.61, 2.62, and 2.63. If the ground for 
refusal is made final, the examiner shall return the application to the 
Board, which shall thereupon issue an order allowing the appellant 
sixty days from the date of the order to file a supplemental brief 
limited to the additional ground for the refusal of registration. If 
the supplemental brief is not filed by the appellant within the time 
allowed, the appeal may be dismissed.
* * * * *
    (6) If, during an appeal from a refusal of registration, it appears 
to the examiner that an issue not involved in the appeal may render the 
mark of the appellant unregistrable, the examiner may, by written 
request, ask the Board to suspend the appeal and to remand the 
application to the examiner for further examination. If the request is 
granted, the examiner and appellant shall proceed as provided by 
Sec. Sec.  2.61, 2.62, and 2.63. After the additional ground for 
refusal of registration has been withdrawn or made final, the examiner 
shall return the application to the Board, which shall resume 
proceedings in the appeal and take further appropriate action with 
respect thereto.
* * * * *


0
16. Amend Sec.  2.145 by revising paragraph (a) introductory text to 
read as follows:


Sec.  2.145  Appeal to court and civil action.

    (a) Appeal to U.S. Court of Appeals for the Federal Circuit. An 
applicant for registration, or any party to an interference, 
opposition, or cancellation proceeding, or any party to an application 
to register as a concurrent user, hereinafter referred to as inter 
partes proceedings, who is dissatisfied with the decision of the 
Trademark Trial and Appeal Board, and any registrant who has filed an 
affidavit or declaration under section 8 or section 71 of the Act or 
who has filed an application for renewal and is dissatisfied with the 
decision of the Director (Sec. Sec.  2.165 and 2.184), may appeal to 
the U.S. Court of Appeals for the Federal Circuit. The appellant must 
take the following steps in such an appeal:
* * * * *


0
17. Amend Sec.  2.146 by revising paragraphs (a)(1) and (g) to read as 
follows:


Sec.  2.146  Petitions to the Director.

    (a) * * *
    (1) From any repeated or final formal requirement of the examiner 
in the ex parte prosecution of an application if permitted by Sec.  
2.63(a) and (b);
* * * * *
    (g) The mere filing of a petition to the Director will not act as a 
stay in any appeal or inter partes proceeding that is pending before 
the Trademark Trial and Appeal Board nor stay the period for replying 
to an Office action in an application except when a stay is 
specifically requested and is granted or when Sec. Sec.  2.63(a) and 
(b) and 2.65(a) are applicable to an ex parte application.
* * * * *


0
18. Amend Sec.  2.171 by revising paragraph (b)(2)(i) to read as 
follows:


Sec.  2.171  New certificate on change of ownership.

* * * * *
    (b) * * *
    (2)(i) When the International Bureau of the World Intellectual 
Property Organization notifies the Office that an international 
registration has been divided as the result of a change of ownership 
with respect to some but not all of the goods and/or services, the 
Office will construe the International Bureau's notice as a request to 
divide. The Office will update Office records to reflect the change in 
ownership, divide out the assigned goods and/or services from the 
registered extension of protection (parent registration), and publish 
notice of the parent registration in the Official Gazette.
* * * * *


0
19. Revise Sec.  2.172 to read as follows:


Sec.  2.172  Surrender for cancellation.

    Upon application by the owner, the Director may permit any 
registration to be surrendered for cancellation. The application for 
surrender must be signed by the owner of the registration, 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. When a registration has more than 
one class, one or more entire class(es) but fewer than the total number 
of classes may be surrendered. Deletion of fewer than all the goods or 
services in a single class constitutes amendment of the registration as 
to that class (see Sec.  2.173), rather than surrender. A surrender for 
cancellation may not subsequently be withdrawn.


0
20. Amend Sec.  2.185 by revising paragraph (a) introductory text to 
read as follows:


Sec.  2.185  Correcting deficiencies in renewal application.

    (a) If the renewal application is filed within the time periods set 
forth in section 9(a) of the Act, deficiencies may be corrected after 
notification from the Office, as follows:
* * * * *


0
21. Amend Sec.  2.198 by revising paragraphs (a)(1)(vi) and (vii) and 
adding paragraph (a)(1)(viii) to read as follows:


Sec.  2.198  Filing of correspondence by Priority Mail Express[supreg].

    (a)(1) * * *
    (vi) Renewal requests under section 9 of the Act;
    (vii) Requests to change or correct addresses; and
    (viii) Affidavits of use under section 71 of the Act.
* * * * *

PART 6--CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK 
ACT

0
22. The authority citation for 37 CFR part 6 is revised to read as 
follows:

    Authority:  Secs. 30, 41, 60 Stat. 436, 440; 15 U.S.C. 1112, 
1123; 35 U.S.C. 2, unless otherwise noted.


0
23. Amend Sec.  6.1 by revising paragraph 5 to read as follows:


Sec.  6.1  International schedule of classes of goods and services.

* * * * *
    5. Pharmaceutical and veterinary preparations; sanitary 
preparations for medical purposes; dietetic food and substances adapted 
for medical or veterinary use, food for babies; dietary supplements for 
humans and animals; plasters, materials for dressings; material for 
stopping teeth, dental wax; disinfectants; preparations for destroying 
vermin; fungicides, herbicides.
* * * * *

[[Page 2313]]

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

0
24. 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
25. Amend Sec.  7.23 by revising paragraph (a)(5) and (6) to read as 
follows:


Sec.  7.23  Requests for recording assignments at the International 
Bureau.

* * * * *
    (a) * * *
    (5) A statement, signed and verified (sworn to) or supported by a 
declaration under Sec.  2.20 of this chapter, that, for the request to 
record the assignment, either the assignee could not obtain the 
assignor's signature because the holder no longer exists, or, after a 
good-faith effort, the assignee could not obtain the assignor's 
signature;
    (6) An indication that the assignment applies to the designation to 
the United States or an international registration that is based on a 
U.S. application or registration;
* * * * *

0
26. Amend Sec.  7.24 by revising paragraphs (b)(5)(ii) and (b)(7) to 
read as follows:


Sec.  7.24  Requests to record security interest or other restriction 
of holder's rights of disposal or release of such restriction submitted 
through the Office.

* * * * *
    (b) * * *
    (5) * * *
    (ii) Where the restriction is the result of an agreement between 
the holder of the international registration and the party restricting 
the holder's right of disposal, a statement, signed and verified (sworn 
to) or supported by a declaration under Sec.  2.20 of this chapter, 
that, for the request to record the restriction, or release of the 
restriction, either the holder of the international registration could 
not obtain the signature of the party restricting the holder's right of 
disposal because the party restricting the holder's right of disposal 
no longer exists, or, after a good-faith effort, the holder of the 
international registration could not obtain the signature of the party 
restricting the holder's right of disposal;
* * * * *
    (7) An indication that the restriction, or the release of the 
restriction, of the holder's right of disposal of the international 
registration applies to the designation to the United States or an 
international registration that is based on a U.S. application or 
registration; and
* * * * *


0
27. Amend Sec.  7.25 by revising paragraph (a) to read as follows:


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

    (a) Except for Sec. Sec.  2.21 through 2.23, 2.76, 2.88, 2.89, 
2.130, 2.131, 2.160 through 2.166, 2.168, 2.173, 2.175, 2.181 through 
2.186, and 2.197, all sections in parts 2 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
28. Amend Sec.  7.31 by revising the introductory text and paragraphs 
(a)(3) and (4) and adding paragraph (a)(5) to read as follows:


Sec.  7.31  Requirements for transformation of an extension of 
protection to the United States into a U.S. application.

    If the International Bureau cancels an international registration 
in whole or in part, under Article 6(4) of the Madrid Protocol, the 
holder of that international registration may file a request to 
transform the goods and/or services to which the cancellation applies 
in the corresponding pending or registered extension of protection to 
the United States into an application under section 1 or 44 of the Act.
    (a) * * *
    (3) Identify the goods and/or services to be transformed, if other 
than all the goods and/or services that have been cancelled;
    (4) The application filing fee for at least one class of goods or 
services required by Sec.  2.6(a)(1) of this chapter; and
    (5) An email address for receipt of correspondence from the Office.
* * * * *

    Dated: January 6, 2015.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director, United States Patent and Trademark Office.
[FR Doc. 2015-00267 Filed 1-15-15; 8:45 am]
BILLING CODE 3510-16-P