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]
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Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations
deviation, call or email Jim
Wetherington, Bridge Administration
Branch, Coast Guard, telephone (504)
671–2128, email james.r.wetherington@
uscg.mil. If you have questions on
viewing the docket, call Cheryl F.
Collins, Program Manager, Docket
Operations, telephone 202–366–9826.
DEPARTMENT OF HOMELAND
SECURITY
The BNSF
Railway Company requested a
temporary deviation from the normal
operation of the drawbridge in order to
perform the installation of new
generators and the removal of the old
festoon cable. These repairs and
scheduled maintenance are necessary
for the continued operation of the
bridge. This deviation allows the draw
of the Morgan City (Berwick Bay)
Railroad Bridge across the Atchafalaya
River, mile 17.5 (Gulf Intracoastal
Waterway (Morgan City-Port Allen
Alternate Route) mile 0.3), to remain
closed to navigation for four consecutive
hours in the morning and three hours in
the afternoon with an opening in the
middle to pass vessels. The deviation is
effective from 7 a.m. to 11 a.m. and then
again from 1 p.m. through 4 p.m. daily
from January 26 through January 31,
2015.
Broadcast Notice to Mariners will be
used to update mariners of any changes
in this deviation.
The bridge has a vertical clearance of
4 feet above high water in the closed-tonavigation position and 73 feet above
high water in the open-to-navigation
position. Navigation on the waterway
consists of tugs with tows, oil industry
related work boats and crew boats,
commercial fishing vessels and some
recreational craft. In accordance with 33
CFR 117.5, the draw of the bridge shall
open on signal. The Morgan City-Port
Allen Landside route through Amelia,
LA is the alternate route.
BNSF and the Coast Guard have
coordinated the closure with waterway
users, industry, and other Coast Guard
units. This date and this schedule were
chosen to minimize the significant
effects on vessel traffic.
In accordance with 33 CFR 117.35(e),
the drawbridge must return to its regular
operating schedule immediately at the
end of the effective period of this
temporary deviation. This deviation
from the operating regulations is
authorized under 33 CFR 117.35.
Drawbridge Operation Regulation; Gulf
Intracoastal Waterway, Galveston, TX
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SUPPLEMENTARY INFORMATION:
Dated: January 9, 2015.
David M. Frank,
Bridge Administrator, Eighth Coast Guard
District.
[FR Doc. 2015–00592 Filed 1–15–15; 8:45 am]
BILLING CODE 9110–04–P
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Coast Guard
33 CFR Part 117
[Docket No. USCG–2014–1073]
Coast Guard, DHS.
Notice of temporary deviation
from drawbridge regulations.
AGENCY:
ACTION:
The Coast Guard has issued a
temporary deviation from the operating
schedule that governs the operation of
the Galveston Causeway Railroad
Vertical Lift Bridge across the Gulf
Intracoastal Waterway, mile 357.2 west
of Harvey Locks, at Galveston,
Galveston County, Texas. The deviation
is necessary in order to conduct
maintenance on the bridge. This
deviation allows the bridge to remain
temporarily closed to navigation for 5
hours on two consecutive days during
day light hours and will operate
normally at all other times.
DATES: This deviation is effective from
7 a.m. through noon, daily, on February
2 and February 3, 2015.
ADDRESSES: The docket for this
deviation, [USCG–2014–1073] is
available at https://www.regulations.gov.
Type the docket number in the
‘‘SEARCH’’ box and click ‘‘SEARCH.’’
Click on Open Docket Folder on the line
associated with this deviation. You may
also visit the Docket Management
Facility in Room W12–140 on the
ground floor of the Department of
Transportation West Building, 1200
New Jersey Avenue SE., Washington,
DC 20590, between 9 a.m. and 5 p.m.,
Monday through Friday, except Federal
holidays.
FOR FURTHER INFORMATION CONTACT: If
you have questions on this temporary
deviation, call or email Jim
Wetherington, Bridge Administration
Branch, Coast Guard; telephone 504–
671–2128, email james.r.wetherington@
uscg.mil. If you have questions on
viewing the docket, call Cheryl F.
Collins, Program Manager, Docket
Operations, telephone 202–366–9826.
SUPPLEMENTARY INFORMATION: The BNSF
Railway Company requested a
temporary deviation from the operating
schedule of the Galveston Causeway
Railroad Vertical Lift Bridge across the
Gulf Intracoastal Waterway, mile 357.2
west of Harvey Locks, at Galveston,
Galveston County, Texas.
The bridge has a vertical clearance of
8.0 feet above mean high water,
SUMMARY:
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2303
elevation 3.0 feet NAVD88, in the
closed-to-navigation position and 73
feet above mean high water in the opento-navigation position. In accordance
with 33 CFR 117.5, the draw shall open
on signal for the passage of vessels.
This temporary deviation allows the
vertical lift bridge to remain closed to
navigation from 7 a.m. through noon,
daily, February 2 and February 3, 2015.
During this time, the bridge owner will
complete tie replacement, surfacing, and
signal work. If the vessel can safely pass
without an opening, the vessel may pass
at the slowest safe speed. The bridge can
open in case of emergency.
Navigation at the site of the bridge
consists mainly of tows with barges and
some recreational pleasure craft. Based
on known waterway users, as well as
coordination with those waterway users,
it has been determined that this closure
will not have a significant effect on
these vessels. No alternate routes are
available.
In accordance with 33 CFR 117.35,
the draw bridge must return to its
regular operating schedule immediately
at the end of the effective period of this
temporary deviation.
This deviation from the operating
regulations is authorized under 33 CFR
117.35
Dated: January 9, 2015.
David M. Frank,
Bridge Administrator, Eighth Coast Guard
District.
[FR Doc. 2015–00593 Filed 1–15–15; 8:45 am]
BILLING CODE 9110–04–P
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
United States Patent and
Trademark Office, Commerce.
ACTION: Final rule.
AGENCY:
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
SUMMARY:
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Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations
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_
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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
§ 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 § 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 § 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 § 2.62(c) would affect the Office’s
current practice of encouraging informal
communication between applicants (or
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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 § 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 § 2.63(a)(2), if a
petition to the Director under § 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
§ 2.63(c), if a petition to the Director
under § 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
§§ 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 § 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 § 2.63(c),
such information has been removed
from § 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 § 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 § 2.77(b), if
the Director determines that a proposed
post-notice of allowance and prestatement 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 § 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
§ 2.81(b) to remove the list of items that
will be included on the notice of
allowance to allow greater flexibility in
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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 § 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 § 7.11(a)(3)(ii)
at this time.
Comment: Another commenter stated
that the structure of § 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 § 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 courtordered 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
§ 7.23(a)(5) to indicate that, when the
holder no longer exists, the assignee
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does not have to make a good-faith effort
to obtain the assignor’s signature.
Comment: Another commenter stated
that the amendment to § 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 § 7.23(a)(6) is
redundant and should be expunged
since § 7.23(a)(4) mentions entitlement
requirements, and the Common
Regulations do not impose the
limitations set forth in § 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
§ 7.23(a)(6). Since there are transferees
who do not qualify to invoke the
amended rule, § 7.23(a)(6) is not
redundant.
Comment: One commenter addressed
the proposed amendment to
§ 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 § 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 § 7.24 are not in
compliance with the Common
Regulations because § 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
§ 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 § 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
§ 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,
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request a waiver of the requirements of
§ 7.24(b)(7).
Discussion of Rule Changes
Representation by Attorneys or Other
Authorized Persons
Rule 2.17(d)(1)
The Office is amending § 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 § 2.19(b) to
require compliance with § 11.116, rather
than § 10.40, as part 10 of this chapter
has been removed and reserved (78 FR
20180 (April 3, 2013)) and § 11.116 now
sets out the requirements for
terminating representation.
Applications for Registration
Rule 2.22(a)(19)
The Office is amending § 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
§ 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 § 2.36.
Rule 2.36
The Office is amending § 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 § 2.38(b) to
remove the requirement that an
application indicate that, if the applied-
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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 § 2.38(c)
as § 2.38(b), as the requirement in
current § 2.38(b) is being removed.
Examination of Application and Action
by Applicants
Rule 2.62(c)
The Office is adding new § 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
§ 2.63 from ‘‘Reexamination’’ to ‘‘Action
after response,’’ as revised § 2.63
incorporates a discussion of
reexamination, the filing of petitions
and appeals, and abandonments.
The Office is amending § 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 § 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 crossreference to § 2.62(a).
The Office is adding § 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 § 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 § 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 § 2.63(c), such
information has been removed from
§ 2.63(a)(2).
The Office is amending § 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 § 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
§ 2.63(a) discusses responses to nonfinal actions, and the Office uses
‘‘request for reconsideration’’ to refer to
responses after final actions.
The Office is adding § 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 §§ 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 § 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 § 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 §§ 2.141 and 2.142
or by filing a petition to the Director
under § 2.146, if the subject matter of
the requirement(s) is procedural, and
therefore appropriate for petition. This
is consistent with current § 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 § 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 § 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 § 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 § 2.63(b)(3), as
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this requirement is already specified in
§ 2.193(e)(2).
The Office is adding § 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
§ 2.65(a).
The Office is adding § 2.63(c) to
clarify both that if a petition to the
Director under § 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 § 2.63(b) and
TMEP sections 1501.01 and 1702.
The Office is adding § 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
§ 2.64(c)(1) and TMEP sections 711 and
1104.
Rule 2.64
The Office is removing and reserving
§ 2.64 and is incorporating updated final
action procedures into revised § 2.63.
Rule 2.65
The Office is amending § 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 § 2.63(b)
so as to reference § 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 § 2.63, which sets out the conditions
for a petition under § 2.146 in § 2.63(a)
and (b) instead of only § 2.63(b). To
ensure clarity, the Office is adding a
cross-reference to § 2.63(b)(4).
The Office is adding § 2.65(a)(1) to
clarify that if an applicant fails to timely
respond to an Office action, but all
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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 § 2.65(a) and TMEP section
718.02(a).
The Office is adding § 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 § 2.65(b) and
TMEP section 718.03(b).
The Office is amending § 2.65(b) to
clarify that an application will be
abandoned if an applicant expressly
abandons the application pursuant to
§ 2.68. This is consistent with TMEP
section 718.01.
The Office is amending § 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 § 2.88 or a request for an
extension of time for filing a statement
of use under § 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 § 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 § 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 § 2.77(b) to
indicate that amendments not listed in
§ 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 § 2.146. This is consistent with
TMEP sections 1107 and 1505.01(d),
which currently require a waiver of
§ 2.77 on petition. If the Director
determines that the amendment requires
review by the examining attorney, the
petition will be denied and the
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Post Registration
amendment may be resubmitted with
the statement of use.
Publication and Post Publication
Rule 2.81(b)
The Office is amending § 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 2.171(b)(2)(i)
The Office is amending § 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
§ 2.6. This is consistent with existing
practice.
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 is amending § 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 2.198(a)(1)
The Office is amending § 2.198(a)(1)
by adding § 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® (formerly
Express Mail®) 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
§ 2.198(a)(1)(vi) and § 2.198(a)(1)(vii) for
clarity.
The Office had proposed to amend
§ 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 § 2.20. In order to ensure clarity,
the Office is revising the amendment to
§ 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 goodfaith 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 § 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 § 7.23(a)(6).
Rule 2.146
Classification of Goods and Services
Rule 7.24(b)
The Office is amending § 2.146(a)(1)
and (g) to replace references to § 2.63(b)
with references to § 2.63(a) and (b), as
the amended rules will list conditions
for a petition under § 2.146 in § 2.63(a)
and (b) instead of only § 2.63(b). In
addition, in order to ensure clarity, the
Office is amending § 2.146(g) to replace
a reference to § 2.65 with a reference to
§ 2.65(a).
Rule 6.1(5)
The Office is amending § 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
The Office had proposed to amend
§ 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
Rule 2.84(b)
The Office is amending § 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 §§ 2.71, 2.72, and
2.74. This is consistent with existing
practice.
Appeals
Rule 2.142(f)
The Office is amending § 2.142(f)(3)
and (f)(6) to remove the references to
§ 2.64, as the Office is removing and
reserving § 2.64, with the sections of
§ 2.64 relevant to § 2.142(f)(3) and (f)(6)
incorporated into revised § 2.63.
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Rule 2.145(a)
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Rule 2.172
The Office is amending § 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 § 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
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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 § 2.20. In order to ensure clarity,
the Office is revising the amendment to
§ 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 § 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 § 7.24(b)(7).
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Rule 7.25(a)
The Office is amending § 7.25(a) to
add §§ 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 § 7.31 by
revising the introductory text and
§ 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
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to ensure that the Office transforms an
accurate listing of goods and/or services.
The Office is redesignating current
§ 7.31(a)(3) as § 7.31(a)(4) and current
§ 7.31(a)(4) as new § 7.31(a)(5) because
current § 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
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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
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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
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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.
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For the reasons given in the preamble
and under the authority contained in 15
U.S.C. 1123 and 35 U.S.C. 2, as
amended, the Office amends parts 2, 6,
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. Amend § 2.17 by revising paragraph
(d)(1) to read as follows:
■
§ 2.17
Recognition for representation.
*
*
*
*
*
(d) * * *
(1) The owner of an application or
registration may appoint a
practitioner(s) qualified to practice
under § 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.
*
*
*
*
*
3. Amend § 2.19 by revising paragraph
(b) introductory text to read as follows:
■
§ 2.19 Revocation or withdrawal of
attorney.
*
*
*
*
*
(b) Withdrawal of attorney. If the
requirements of § 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:
*
*
*
*
*
4. Amend § 2.22 by revising paragraph
(a)(19) to read as follows:
■
§ 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
§ 2.36; and
*
*
*
*
*
■
5. Revise § 2.36 to read as follows:
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§ 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.
■ 6. Amend § 2.38 by revising paragraph
(b) and removing paragraph (c) to read
as follows:
§ 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.
■ 7. Amend § 2.62 by adding paragraph
(c) to read as follows:
§ 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 § 2.190(a). Responses sent via email
will not be accorded a date of receipt.
■ 8. Revise § 2.63 to read as follows:
§ 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 § 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 § 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:
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(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 §§ 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 §§ 2.141 and 2.142; or
(iii) A petition to the Director under
§ 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 § 2.65(a).
(c) If a petition to the Director under
§ 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 § 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
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amendment does not stay or extend the
time for filing an appeal or petition.
§ 2.64
■
■
[Removed and Reserved]
9. Remove and reserve § 2.64.
10. Revise § 2.65 to read as follows:
§ 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 §§ 2.63(a) and (b)
and 2.146 or notice of appeal to the
Trademark Trial and Appeal Board
pursuant to § 2.142, if appropriate, is a
response that avoids abandonment (see
§ 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 § 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 § 2.88 or
a request for an extension of time for
filing a statement of use under § 2.89.
■ 11. Revise § 2.68 to read as follows:
§ 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
§ 11.14 of this chapter, in accordance
with the requirements of § 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 § 2.135, the fact
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2311
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.
12. Amend § 2.77 by revising
paragraph (b) to read as follows:
■
§ 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 § 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.
13. Amend § 2.81 by revising
paragraph (b) to read as follows:
■
§ 2.81
Post publication.
*
*
*
*
*
(b) In an application under section
1(b) of the Act for which no amendment
to allege use under § 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
§ 2.88.
14. Amend § 2.84 by revising
paragraph (b) to read as follows:
■
§ 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 §§ 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
§ 2.133.
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■
15. Amend § 2.142 by revising
paragraphs (f)(3) and (6) to read as
follows:
appellant must take the following steps
in such an appeal:
*
*
*
*
*
§ 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
§§ 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 §§ 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.
*
*
*
*
*
16. Amend § 2.145 by revising
paragraph (a) introductory text to read
as follows:
■
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§ 2.145
Appeal to court and civil action.
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§ 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 § 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 §§ 2.63(a) and (b) and 2.65(a) are
applicable to an ex parte application.
*
*
*
*
*
18. Amend § 2.171 by revising
paragraph (b)(2)(i) to read as follows:
■
§ 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.
*
*
*
*
*
■
(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 (§§ 2.165 and
2.184), may appeal to the U.S. Court of
Appeals for the Federal Circuit. The
VerDate Sep<11>2014
17. Amend § 2.146 by revising
paragraphs (a)(1) and (g) to read as
follows:
19. Revise § 2.172 to read as follows:
§ 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
§ 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
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Fmt 4700
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constitutes amendment of the
registration as to that class (see § 2.173),
rather than surrender. A surrender for
cancellation may not subsequently be
withdrawn.
20. Amend § 2.185 by revising
paragraph (a) introductory text to read
as follows:
■
§ 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:
*
*
*
*
*
21. Amend § 2.198 by revising
paragraphs (a)(1)(vi) and (vii) and
adding paragraph (a)(1)(viii) to read as
follows:
■
§ 2.198 Filing of correspondence by
Priority Mail Express®.
(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
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.
23. Amend § 6.1 by revising paragraph
5 to read as follows:
■
§ 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.
*
*
*
*
*
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Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations
PART 7—RULES OF PRACTICE IN
FILINGS PURSUANT TO THE
PROTOCOL RELATING TO THE
MADRID AGREEMENT CONCERNING
THE INTERNATIONAL REGISTRATION
OF MARKS
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
*
*
*
*
*
■
27. Amend § 7.25 by revising
paragraph (a) to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2,
unless otherwise noted.
§ 7.25 Sections of part 2 applicable to
extension of protection.
25. Amend § 7.23 by revising
paragraph (a)(5) and (6) to read as
follows:
(a) Except for §§ 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.
*
*
*
*
*
24. The authority citation for 37 CFR
part 7 continues to read as follows:
■
§ 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 § 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;
*
*
*
*
*
■ 26. Amend § 7.24 by revising
paragraphs (b)(5)(ii) and (b)(7) to read as
follows:
§ 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.
asabaliauskas on DSK5VPTVN1PROD with FRONTMATTER
*
*
*
*
*
(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 § 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
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2313
ENVIRONMENTAL PROTECTION
AGENCY
40 CFR Part 52
[EPA–R10–OAR–2011–0446, FRL–9921–69–
Region 10]
■
28. Amend § 7.31 by revising the
introductory text and paragraphs (a)(3)
and (4) and adding paragraph (a)(5) to
read as follows:
■
§ 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 § 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
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Approval and Promulgation of
Implementation Plans; Oregon:
Interstate Transport of Fine Particulate
Matter
Environmental Protection
Agency (EPA).
ACTION: Final rule.
AGENCY:
The EPA is approving a
portion of the State Implementation
Plan submission from the State of
Oregon to address Clean Air Act
interstate transport requirements for the
2006 24-hour fine particulate matter
(PM2.5) National Ambient Air Quality
Standards. The Clean Air Act requires
that each State Implementation Plan
contain adequate provisions prohibiting
air emissions that will have certain
adverse air quality effects in other
states. The EPA is determining that
Oregon’s existing State Implementation
Plan contains adequate provisions to
ensure that air emissions in Oregon will
not significantly contribute to
nonattainment or interfere with
maintenance of the 2006 24-hour PM2.5
National Ambient Air Quality Standards
in any other state.
DATES: This final rule is effective on
February 17, 2015.
ADDRESSES: The EPA has established a
docket for this action under Docket
Identification No. EPA–R10–OAR–
2011–0446. All documents in the docket
are listed on the https://
www.regulations.gov Web site. Although
listed in the index, some information
may not be publicly available, i.e.,
Confidential Business Information or
other information the disclosure of
which is restricted by statute. Certain
other material, such as copyrighted
material, is not placed on the Internet
and will be publicly available only in
hard copy form. Publicly available
docket materials are available either
electronically through https://
www.regulations.gov or in hard copy at
EPA Region 10, Office of Air, Waste,
and Toxics, AWT–150, 1200 Sixth
Avenue, Seattle, Washington 98101. The
EPA requests that you contact the
person listed in the FOR FURTHER
INFORMATION CONTACT section to
schedule your inspection. The Regional
Office’s official hours of business are
Monday through Friday, 8:30 to 4:30,
excluding Federal holidays.
FOR FURTHER INFORMATION CONTACT: Dr.
Karl Pepple at: (206) 553–1778,
SUMMARY:
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Agencies
[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]
=======================================================================
-----------------------------------------------------------------------
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.
-----------------------------------------------------------------------
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
[[Page 2304]]
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
[[Page 2305]]
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
[[Page 2306]]
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
[[Page 2307]]
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