Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 4393-4403 [2019-02154]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 84, Number 32 (Friday, February 15, 2019)]
[Proposed Rules]
[Pages 4393-4403]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-02154]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Parts 2 and 11

[Docket No. PTO-T-2018-0021]
RIN 0651-AD30


Requirement of U.S. Licensed Attorney for Foreign Trademark 
Applicants and Registrants

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) proposes to amend the Rules of Practice in Trademark Cases and 
the rules regarding Representation of Others Before the United States 
Patent and Trademark Office to require applicants, registrants, or 
parties to a proceeding whose domicile or principal place of business 
is not located within the United States (U.S.) or its territories 
(hereafter foreign applicants, registrants, or parties) to be 
represented by an attorney who is an active member in good standing of 
the bar of the highest court of a state in the U.S. (including the 
District of Columbia and any Commonwealth or territory of the U.S.). A 
requirement that such foreign applicants, registrants, or parties be 
represented by a qualified U.S. attorney will instill greater 
confidence in the public that U.S. registrations that issue to foreign 
applicants are not subject to invalidation for reasons such as improper 
signatures and use claims and enable the USPTO to more effectively use 
available mechanisms to enforce foreign applicant compliance with 
statutory and regulatory requirements in trademark matters.

[[Page 4394]]


DATES: Comments must be received by March 18, 2019 to ensure 
consideration.

ADDRESSES: The USPTO prefers that comments be submitted via electronic 
mail message to TMFRNotices@uspto.gov. Written comments also may be 
submitted by mail to the Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Catherine Cain; by hand delivery 
to the Trademark Assistance Center, Concourse Level, James Madison 
Building-East Wing, 600 Dulany Street, Alexandria, VA 22314, attention 
Catherine Cain; or by electronic mail message via the Federal 
eRulemaking Portal at https://www.regulations.gov. See the Federal 
eRulemaking Portal website for additional instructions on providing 
comments via the Federal eRulemaking Portal. All comments submitted 
directly to the USPTO or provided on the Federal eRulemaking Portal 
should include the docket number (PTO-T-2018-0021).
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
internet because the Office may easily share such comments with the 
public. Electronic comments are preferred to be submitted in plain 
text, but also may be submitted in portable document format or DOC file 
format. Comments not submitted electronically should be submitted on 
paper in a format that facilitates convenient digital scanning into 
portable document format.
    The comments will be available for public inspection on the USPTO's 
website at https://www.uspto.gov, on the Federal eRulemaking Portal, 
and at the Office of the Commissioner for Trademarks, Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, VA 22314. Because comments 
will be made available for public inspection, information that is not 
desired to be made public, such as an address or phone number, should 
not be included.

FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy 
Commissioner for Trademark Examination Policy, TMPolicy@uspto.gov, 
(571) 272-8946.

SUPPLEMENTARY INFORMATION: The USPTO proposes to revise the rules in 
parts 2 and 11 of title 37 of the Code of Federal Regulations to 
require foreign applicants, registrants, or parties to a proceeding to 
be represented by an attorney, as defined in Sec.  11.1, 37 CFR 11.1, 
that is, an attorney who is an active member in good standing of the 
bar of the highest court of a U.S. state or territory (including the 
District of Columbia and any Commonwealth or territory) and who is 
qualified under Sec.  11.14(a), 37 CFR 11.14(a), to represent others 
before the Office in trademark matters. A requirement that such foreign 
applicants, registrants, or parties be represented by a qualified U.S. 
attorney will (1) instill greater confidence in the public that U.S. 
registrations that issue to foreign applicants are not subject to 
invalidation for reasons such as improper signatures and use claims and 
(2) enable the USPTO to more effectively use available mechanisms to 
enforce foreign applicant compliance with statutory and regulatory 
requirements in trademark matters.

I. Integrity of the U.S. Trademark Register

    The trademark register must accurately reflect marks that are 
actually in use in commerce in the U.S. for the goods/services 
identified in the registrations. By registering trademarks, the USPTO 
has a significant role in protecting consumers, as well as providing 
important benefits to U.S. commerce by allowing businesses to 
strengthen and safeguard their brands and related investments.
    The public relies on the register to determine whether a chosen 
mark is available for use or registration. When a person's search of 
the register discloses a potentially confusingly similar mark, that 
person may incur a variety of resulting costs and burdens, such as 
those associated with investigating the actual use of the disclosed 
mark to assess any conflict, initiating proceedings to cancel the 
registration or oppose the application of the disclosed mark, engaging 
in civil litigation to resolve a dispute over the mark, or choosing a 
different mark and changing business plans regarding its mark. In 
addition, such persons may incur costs and burdens unnecessarily if the 
disclosed registered mark is not actually in use in U.S. commerce, or 
is not in use in commerce in connection with all the goods/services 
identified in the registration. An accurate and reliable trademark 
register helps avoid such needless costs and burdens.
    A valid claim of use made as to a registered mark likewise benefits 
the registrant. Fraudulent or inaccurate claims of use jeopardize the 
validity of any resulting registration and may render it vulnerable to 
cancellation. Furthermore, trademark documents submitted in support of 
registration require statutorily prescribed averments and must be 
signed in accordance with Sec.  2.193(e)(1). 37 CFR 2.193(e)(1). If 
signed by a person determined to be an unauthorized signatory, a 
resulting registration may be invalid.
    Therefore, the USPTO anticipates that implementation of the 
proposed rule would have the benefit of generally reducing costs to 
applicants, registrants, and other parties and providing greater value 
to consumers who rely on registered marks.
    As discussed below, in the past few years, the USPTO has seen many 
instances of unauthorized practice of law (UPL) where foreign parties 
who are not authorized to represent trademark applicants are improperly 
representing foreign applicants before the USPTO. As a result, 
increasing numbers of foreign applicants are likely receiving 
inaccurate or no information about the legal requirements for trademark 
registration in the U.S., such as the standards for use of a mark in 
commerce, who can properly aver to matters and sign for the mark owner, 
or even who the true owner of a mark is under U.S. law. This practice 
raises legitimate concerns that affected applications and any resulting 
registrations are potentially invalid, and thus negatively impacts the 
integrity of the trademark register.

II. Enforce Compliance With U.S. Statutory and Regulatory Requirements

    The proposed requirement for representation by a qualified U.S. 
attorney is also necessary to enforce compliance by all foreign 
applicants, registrants, and parties with U.S. statutory and regulatory 
requirements in trademark matters. It will not only aid the USPTO in 
its efforts to improve and preserve the integrity of the U.S. trademark 
register, but will also ensure that foreign applicants, registrants, 
and parties are assisted only by authorized practitioners who are 
subject to the USPTO's disciplinary rules.
    The requirement for representation by a qualified U.S. attorney is 
being proposed in response to the increasing problem of foreign 
trademark applicants who purportedly are pro se (i.e., one who does not 
retain a lawyer and appears for himself or herself) and who are filing 
inaccurate and possibly fraudulent submissions that violate the 
Trademark Act (Act) and/or the USPTO's rules. For example, such foreign 
applicants file applications claiming use of a mark in commerce, but 
frequently support the use claim with mocked-up or digitally altered 
specimens that indicate the mark may not actually be in use. Many 
appear to be doing so on the advice, or with the assistance, of foreign 
individuals and entities who are not authorized to represent trademark 
applicants before the USPTO. This practice undermines the accuracy and 
integrity of the U.S.

[[Page 4395]]

trademark register and its utility as a means for the public to 
reliably determine whether a chosen mark is available for use or 
registration, and places a significant burden on the trademark 
examining operation.

Current Mechanisms and Sanctions are Inadequate

    (1) Show-Cause Authority: Under 35 U.S.C. 3(b)(2)(A), the 
Commissioner for Trademarks (Commissioner) possesses the authority to 
manage and direct all aspects of the activities of the USPTO that 
affect the administration of trademark operations. The Commissioner may 
use that authority to investigate and issue an order requiring an 
applicant to show cause why the applicant's representative, or the 
applicant itself, should not be sanctioned under Sec.  11.18(c), 37 CFR 
11.18(c), for presenting a paper to the USPTO in violation of Sec.  
11.18(b), 37 CFR 11.18(b). However, given the location of foreign 
applicants and those acting on their behalf, as well as potential 
language barriers, the show-cause authority has rarely been successful 
in resolving the underlying issues. Although all those who sign 
documents in trademark matters before the USPTO do so subject to 
criminal penalties for knowing and willful false statements made to a 
government agency under 18 U.S.C. 1001, the criminal perjury 
prosecution option under 18 U.S.C. 1001 is similarly difficult to 
enforce against those who are not subject, or are not easily subject, 
to U.S. jurisdiction. Further, proof to support such sanctions under 
Sec.  11.18 is often difficult to obtain. For these primary reasons, 
when a foreign applicant fails to comply with statutory and regulatory 
requirements in ex parte examination, it has been challenging and, in 
some cases, impossible for the Commissioner to use her show-cause 
authority to impose the sanctions available under Sec.  11.18(c).
    (2) USPTO Disciplinary Authority Under 35 U.S.C. 32: Requiring 
foreign applicants, registrants, and parties to retain U.S. counsel in 
all trademark matters before the USPTO will likely reduce the instances 
of UPL and misconduct. In addition, when UPL and/or misconduct does 
occur, requiring foreign applicants, registrants, and parties to retain 
U.S. counsel will enable the Office of Enrollment and Discipline (OED) 
to more effectively pursue those who are engaged in the UPL and/or 
misconduct. OED's disciplinary jurisdiction extends to a 
``Practitioner,'' as that term is defined in Sec.  11.1, 37 CFR 11.1, 
or a non-practitioner who offers legal services to people seeking to 
register trademarks with the USPTO. For practitioners, OED may 
investigate and institute formal disciplinary proceedings, which can 
result in discipline of the practitioner, including: (1) Exclusion from 
practice before the Office; (2) suspension from practice before the 
Office; (3) reprimand or censure; or (4) probation.
    When formal discipline is issued against a U.S. practitioner, OED 
may also notify other federal agencies and the U.S. state bar(s) where 
the practitioner is licensed and/or authorized to practice law, as 
appropriate. A number of states have criminal statutes penalizing UPL. 
Depending on the state, the state bar, consumer-protection arm of the 
state's attorney office, and/or state consumer-protection agency may 
investigate UPL and take action to protect the public. Additionally, 
consumer-protection organizations and law-enforcement agencies can 
investigate possible civil or criminal fraud at the federal and state 
level. OED's ability to refer a discipline matter to a state bar for 
further action or to a federal or state consumer-protection agency, or 
law-enforcement agency, thus effectively deters disciplined 
practitioners from violating the terms of their disciplinary orders.
    However, the threat of a claim of UPL has not been equally 
effective with foreign applicants and the unqualified foreign 
individuals, attorneys, or firms advising them. Although the USPTO 
investigates possible UPL by such foreign parties, because these 
parties are not practitioners authorized to practice before the USPTO, 
the absence of any realistic threat of disciplinary action has impeded 
the USPTO's efforts to deter foreign parties from engaging in UPL or 
violating a USPTO exclusion order. In addition, while the USPTO can 
send a letter to a foreign government regarding the USPTO's exclusion 
order, foreign government officials have great discretion regarding 
whether to pursue further sanctions against their own citizens. 
Further, since foreign parties are representing foreign applicants, 
there may be few U.S. stakeholders directly affected by the 
unauthorized practice of law by the foreign party. There is little 
incentive for a state or federal law-enforcement or consumer-protection 
agency to take action against a foreign party engaged in UPL to protect 
U.S. interests, or to pursue further action with consumer-protection 
agencies in other countries where the foreign national does business. 
Moreover, the threat of criminal perjury prosecution in U.S. courtrooms 
does not have the same deterrent effect for foreign nationals as it 
does for U.S. nationals and domiciles.
    As a practical matter, even if U.S. law enforcement is able to 
devote resources toward prosecution of a foreign national for a 
violation of 18 U.S.C. 1001, exerting jurisdiction over such a party is 
not always possible. Furthermore, many foreign unauthorized parties 
acting on behalf of foreign applicants and registrants who have been 
excluded by a Commissioner's order typically continue to engage in UPL 
before the USPTO, often increasing the scale of their efforts and 
employing tactics intended to circumvent the USPTO's rules.
    Under the proposed rule, submissions would be made by practitioners 
subject to the disciplinary jurisdiction of OED, making it less likely 
that they would be signed by an unauthorized party or contain 
statements that are inaccurate, particularly as to any averment of use 
of the mark in U.S. commerce or intention to use the mark. Further, 
because it would result in a more accurate and reliable trademark 
register, fewer U.S. applicants, registrants, and parties would incur 
the costs associated with investigating the actual use of a mark to 
assess any conflict, initiating proceedings to cancel a registration or 
oppose an application, engaging in civil litigation to resolve a 
dispute over a mark, or changing business plans to avoid use of a 
chosen mark.

Surge in Foreign Filings

    Contributing to concerns regarding UPL, in recent years the USPTO 
has experienced a significant surge in foreign filings, with the number 
of applications from foreign applicants increasing as a percentage of 
total filings, as shown in the following table. The numbers in 
parentheses indicate the number of applications represented by each 
percentage:

----------------------------------------------------------------------------------------------------------------
Filings from foreign or U.S. applicants as a percentage
                   of total filings *                           FY15               FY16               FY17
----------------------------------------------------------------------------------------------------------------
Foreign................................................       19% (70,853)       22% (87,706)      26% (115,402)
U.S....................................................      81% (301,098)      78% (306,281)      74% (320,885)
----------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018.


[[Page 4396]]

    The USPTO predicts that the number of foreign filings will continue 
to rise based on a variety of economic factors, including the strength 
of the U.S. economy. This growth is coupled with a significant growth 
in the number of filings by foreign pro se applicants in FY15 through 
FY17, especially as compared with filings by U.S. pro se applicants. 
The information shown below reflects the representation status at the 
time the USPTO electronic record was searched to obtain the data. 
Representation status may change over the course of prosecution. 
However, system limitations only permit the USPTO to retrieve 
representation status at the time a search is done.

----------------------------------------------------------------------------------------------------------------
Filings from foreign or U.S. applicants--Representation
                        Status *                                FY15               FY16               FY17
----------------------------------------------------------------------------------------------------------------
U.S.--Pro Se...........................................     25.3% (76,140)     27.2% (83,161)     28.5% (91,593)
U.S.--Represented......................................    74.7% (224,958)    72.8% (223,120)    71.5% (229,292)
Foreign--Pro Se........................................     25.4% (17,967)     35.9% (31,475)     44.0% (50,742)
Foreign--Represented...................................     74.6% (52,886)     64.1% (56,231)     56.0% (64,660)
----------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018.

    Currently, the USPTO is in the process of addressing numerous 
instances of UPL by foreign parties who engage in tactics designed to 
circumvent USPTO rules. When the USPTO has identified UPL by foreign 
parties in an application, the USPTO has sent information to the 
applicant's address of record informing the applicant that its 
appointed representative has been ``excluded'' from practice before the 
USPTO and cannot represent the applicant in the matter. In addition, 
the USPTO has published the orders excluding foreign unauthorized 
individuals and entities on its website and suggested that applicants 
review all application submissions previously submitted on their 
behalf. However, in many applications, the address information for the 
applicant is not legitimate (i.e., the address is for the unauthorized 
individual or entity representing the applicant) or is incomplete or 
inaccurate, and the USPTO cannot be sure that the affected applicants 
receive this information. This fact raises concerns that the 
applications are potentially invalid because they were signed by an 
unauthorized party or contain statements that are inaccurate, 
particularly as to any averment of use of the mark in U.S. commerce or 
intention to use the mark, which forms the underlying statutory basis 
for federal registration.
    Efforts to educate foreign applicants about UPL or to impose 
effective sanctions against the foreign unauthorized individuals or 
entities have proved ineffective. The problem of foreign applicants who 
violate U.S. legal and regulatory requirements in trademark matters and 
do so largely on the advice of foreign unauthorized individuals or 
entities grows each month. Within the last few years, the scale of the 
problem has become massive, with the estimated number of total tainted 
applications now in the tens of thousands. It also is becoming 
increasingly difficult for the USPTO, with its limited resources, to 
identify and prove misconduct and UPL, particularly as tactics and 
technology to mask the misconduct evolve.

III. Proposed Rule Changes

    (1) Requirement for Representation. Under this proposed rule, Sec.  
2.11 would be amended to require applicants, registrants, or parties to 
a proceeding whose domicile or principal place of business is not 
located within the U.S. or its territories to be represented by an 
attorney who is an active member in good standing of the bar of the 
highest court of any of the 50 states of the U.S., the District of 
Columbia, and any Commonwealth or territory of the U.S. To ensure 
clarity regarding who is subject to the requirement, Sec.  2.2 would be 
amended to define ``domicile'' and ``principal place of business.'' The 
proposed requirement is similar to the requirement that currently 
exists in many other countries, such as Brazil, Chile, the People's 
Republic of China, Israel, Japan, Jordan, Republic of Korea, Morocco, 
and South Africa, as well as the European Union's Intellectual Property 
Office. The majority of countries with a similar requirement condition 
the requirement on domicile. The USPTO intends to follow this practice. 
Moreover, requiring a qualified attorney to represent applicants, 
registrants, and parties whose domicile or principal place of business 
is not located within the U.S. or its territories is an effective tool 
for combatting the growing problem of foreign individuals, entities, 
and applicants failing to comply with U.S. law.
    The applicant would be required to obtain U.S. counsel to prosecute 
the application. When the USPTO receives an application filed by a 
foreign domiciliary, with a filing basis under section 1 and/or section 
44 of the Act, 15 U.S.C. 1051, 1126, that does not comply with the 
requirements of proposed Sec.  2.11(a), the applicant would be informed 
in an Office action that appointment of a qualified U.S. attorney is 
required. The applicant would have the usual period of six months to 
respond to an Office action including the requirement, and failure to 
comply would result in abandonment of the application. See 37 CFR 2.63, 
2.65(a).
    For those applicants the USPTO identifies as being subject to the 
rule, the USPTO is considering whether to: (1) Defer full examination 
of the application until the applicant complies with the requirement to 
appoint U.S. counsel, thereby allowing the appointed attorney to have 
the opportunity to review the application for compliance with U.S. law 
during the period to respond to the Office action raising the 
requirement; or (2) expend additional resources to conduct a complete 
examination and issue an Office action that includes the requirement 
along with other applicable refusals and requirements. The USPTO 
welcomes comments on the two approaches under consideration.
    Although applications based on section 66(a) of the Act (Madrid 
applications), 15 U.S.C. 1141f, would be subject to the requirement to 
appoint a qualified U.S. attorney, the USPTO is assessing its 
procedures for a small set of applications (2.9% of all Madrid 
applications in fiscal year 2017) that are submitted with all 
formalities and statutory requirements already satisfied, and therefore 
are in a condition ready for publication upon first action. Madrid 
applications are initially filed with the International Bureau (IB) of 
the World Intellectual Property Organization and subsequently 
transmitted to the USPTO. There is currently no provision for 
designating a U.S. or any other local attorney in an application 
submitted to the IB, and the USPTO does not expect that the IB will 
update its capabilities prior to the anticipated implementation of this 
proposed rule. Therefore, the USPTO may consider waiving the 
requirement to appoint a qualified U.S. practitioner prior to 
publication in this limited situation, until such time as the Madrid 
system is updated to allow for the designation of a U.S. attorney.

[[Page 4397]]

    Conforming amendments would also be made to the following sections, 
which set out the requirements noted: Sec.  2.17(e), for recognition 
for representation; Sec.  2.22, for filing a TEAS Plus application; and 
2.32(a)(4), for a complete application.
    (2) Reciprocal recognition. Under this proposed rule, Sec.  11.14 
would be amended to clarify that only registered and active foreign 
attorneys or agents who are in good standing before the trademark 
office of the country in which the attorney or agent resides and 
practices may be recognized for the limited purpose of representing 
parties located in such country, provided the trademark office of such 
country and the USPTO have reached an official understanding to allow 
substantially reciprocal privileges. The proposed rule would also 
require that in any trademark matter where an authorized foreign 
attorney or agent is representing an applicant, registrant, or party to 
a proceeding, a qualified U.S. attorney must also be appointed pursuant 
to Sec.  2.17(b), (c) as the representative with whom the Office will 
communicate and conduct business.
    Currently, only Canadian attorneys and agents are reciprocally 
recognized under Sec.  11.14(c). The proposed rule removes the 
authorization for reciprocally recognized Canadian patent agents to 
practice before the USPTO in trademark matters, but continues to allow 
reciprocal recognition of Canadian trademark attorneys and agents in 
trademark matters. Those Canadian patent agents already recognized to 
practice in U.S. trademark matters would continue to be authorized to 
practice in pending trademark matters on behalf of Canadian parties 
only (1) so long as the patent agent remains registered and in good 
standing in Canada and (2) in connection with an application or post-
registration maintenance filing pending before the Office on the 
effective date of the proposed rule, for which the recognized patent 
agent is the representative. Recognized Canadian trademark attorneys 
and agents would continue to be authorized to represent Canadian 
parties in U.S. trademark matters.

IV. Cost To Retain U.S. Counsel

    The following tables estimate the costs for complying with the 
proposed rule, using FY17 filing numbers for pro se applicants and 
registrants with a domicile or principal place of business outside the 
U.S. or its territories and for Madrid applicants and registrants. The 
professional rates shown below are the median charges for legal 
services in connection with filing and prosecuting an application, or 
filing a post-registration maintenance document, as reported in the 
2017 Report on the Economic Survey, published by the American 
Intellectual Property Law Association.
    As noted above, applicants subject to the proposed rule would be 
required to retain U.S. counsel to prosecute an application and to 
handle post-registration maintenance requirements and proceedings 
before the Trademark Trial and Appeal Board. The tables below reflect 
two sets of aggregate costs--those for applicants who filed pro se in 
FY17 and would have retained counsel prior to filing and those who 
would have retained counsel after filing. As discussed above, the 
information shown below reflects the representation status at the time 
the USPTO electronic record was searched to obtain the data. 
Representation status may change over the course of prosecution. The 
USPTO does not collect information or statistics on applicants who file 
pro se but subsequently retain counsel during the prosecution of their 
application. The USPTO recognizes that there may have been a higher 
number of pro se applicants at filing than is reflected below, but that 
those applicants had retained counsel prior to the date the search 
report was generated. Therefore, although it is possible that a higher 
number of pro se applicants may incur the cost of having counsel 
prepare and file an application, those applicants would have already 
incurred the additional cost for prosecution of the application.
    The following table sets out the estimated costs, based on filing 
basis, if pro se applicants in FY17 with a domicile or principal place 
of business outside the U.S. or its territories retained counsel prior 
to filing their applications. A filing basis is the statutory basis for 
filing an application for registration of a mark in the U.S. An 
applicant must specify and meet the requirements of one or more bases 
in a trademark or service mark application. 37 CFR 2.32(a)(5). There 
are five filing bases: (1) Use of a mark in commerce under section 1(a) 
of the Act; (2) bona fide intention to use a mark in commerce under 
section 1(b) of the Act; (3) a claim of priority, based on an earlier-
filed foreign application under section 44(d) of the Act; (4) ownership 
of a registration of the mark in the applicant's country of origin 
under section 44(e) of the Act; and (5) extension of protection of an 
international registration to the United States, under section 66(a) of 
the Act. 15 U.S.C. 1051(a)-(b), 1126(d)-(e), 1141f(a). The number of 
applicants shown within each filing-basis category in the tables below 
reflects the basis status at the time the USPTO electronic record was 
searched to obtain the representation status.
    Although the USPTO believes that applicants who would be subject to 
the proposed requirement should retain U.S. counsel prior to filing an 
application, the USPTO recognizes that not all would do so. Therefore, 
the USPTO expects that the total estimated costs reflected in the table 
below would be reduced by the number of applicants within each filing-
basis category who chose to file an application without retaining U.S. 
counsel.

                             FY17 Pro se Applications by Basis (Excluding Madrid)--Cost if Counsel Retained Before Filing *
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                              1(a)
       Activity performed by counsel            Median      [Dagger]    1(b) 4,010   1(a)/1(b)     44 1,142            44/1(b) 137            Total cost
                                                charge       35,506                      69
--------------------------------------------------------------------------------------------------------------------------------------------------------
Filing foreign origin registration                  $600          N/A          N/A          N/A         Sec.  N/A..........................     $603,000
 application received ready for filing.                                                             $603,000
Preparing and filing application...........          775  $27,517,150   $3,107,750      $53,475          N/A  $106,175.....................   30,784,550
Prosecution, including amendments and              1,000   35,506,000    4,010,000       69,000    1,142,000  Included in 44 applications..   40,727,000
 interviews but not appeals.
Statement of use [dagger]..................          400          N/A    1,604,000       27,600          N/A  $54,800......................    1,686,400
                                            ------------------------------------------------------------------------------------------------------------
    Total..................................  ...........   63,023,150    8,721,750      150,075    1,745,000  $160,975.....................   73,800,950
--------------------------------------------------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018. In addition to the number of applications shown for each filing basis, an additional 62 applications did not indicate a basis
  on the date of filing and currently have no filing basis, either because the application has abandoned or because the applicant has not yet responded
  to the requirement to indicate a basis.
[dagger] If an application is filed under section 1(b) of the Act, the applicant must file a statement of use prior to registration.
[Dagger] The numbers underneath the filing basis indicate the number of applications filed for that basis.
Sec.   The cost shown is for 1,005 section 44 applications, which is the total number of section 44 applications minus the subset that also includes a
  section 1(b) filing basis.


[[Page 4398]]

    Alternatively, the table below sets out the estimated costs, based 
on filing basis, if pro se applicants in FY17 with a domicile or 
principal place of business outside the U.S. or its territories 
retained counsel after filing their applications. As in the situation 
described above, the USPTO anticipates that a certain number of these 
applicants would retain U.S. counsel prior to filing an application. 
Therefore, the USPTO expects that the total estimated costs reflected 
in the table below would be increased by the number of applicants 
within each filing-basis category who chose to do so.

                              FY17 Pro se Applications by Basis (Excluding Madrid)--Cost if Counsel Retained After Filing *
--------------------------------------------------------------------------------------------------------------------------------------------------------
                                                Median    1(a) 35,506                1(a)/1(b)
       Activity performed by counsel            charge      [Dagger]    1(b) 4,010       69        44 1,142         44/1(b) Sec.   137        Total cost
--------------------------------------------------------------------------------------------------------------------------------------------------------
Filing foreign origin registration                  $600          N/A          N/A          N/A          N/A  N/A..........................  ...........
 application received ready for filing.
Preparing and filing application...........          775          N/A          N/A          N/A          N/A  N/A..........................  ...........
Prosecution, including amendments and              1,000  $35,506,000   $4,010,000      $69,000   $1,142,000  Included in prior column.....  $40,727,000
 interviews but not appeals.
Statement of use [dagger]..................          400          N/A    1,604,000       27,600          N/A  $54,800......................    1,686,400
                                            ------------------------------------------------------------------------------------------------------------
    Total..................................  ...........   35,506,000    5,614,000       96,600    1,142,000  $54,800......................   42,413,400
--------------------------------------------------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018. In addition to the number of applications shown for each filing basis, an additional 62 applications did not indicate a basis
  on the date of filing and currently have no filing basis, either because the application has abandoned or because the applicant has not yet responded
  to the requirement to indicate a basis.
[dagger] If an application is filed under section 1(b) of the Act, the applicant must file a statement of use prior to registration.
[Dagger] The numbers underneath the filing basis indicate the number of applications filed for that basis.
Sec.   This column represents the subset of section 44 applications that also includes a section 1(b) filing basis.

    As discussed above, Madrid applications are initially filed with 
the IB and subsequently transmitted to the USPTO. In FY17, the USPTO 
received 24,418 Madrid applications in which the applicant had an 
address outside the U.S. or its territories, and thus would be subject 
to the proposed requirement. There is currently no provision for 
designating a U.S. attorney in an application submitted to the IB. 
Therefore, the USPTO presumes that none of the Madrid applicants 
subject to the requirement retained U.S. counsel prior to filing. 
However, USPTO records indicate that at some point after filing, 14,602 
of those FY17 Madrid applicants were represented by counsel. Therefore, 
only the remaining 9,816 Madrid applicants would be subject to the 
requirement to retain U.S. counsel to prosecute their applications, as 
shown in the following table:

                        FY17 Madrid Applications--Cost if Counsel Retained After Filing *
----------------------------------------------------------------------------------------------------------------
                  Activity performed by counsel                        FY17        Median charge   Total charge
----------------------------------------------------------------------------------------------------------------
Prosecution, including amendments and interviews but not appeals           9,816          $1,000      $9,816,000
                                                                 -----------------------------------------------
    Total.......................................................  ..............  ..............      $9,816,000
----------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018.

    The following table sets out the estimated costs to FY17 pro se 
registrants who would be subject to proposed Sec.  2.11(a) when filing 
a post-registration maintenance document.

                 FY17 Pro se Post-Registration Filings--Cost if Counsel Retained Before Filing *
----------------------------------------------------------------------------------------------------------------
                  Activity performed by counsel                        FY17        Median charge   Total charge
----------------------------------------------------------------------------------------------------------------
Section 8 and 15 [dagger].......................................             976            $500        $488,000
Renewal [Dagger]................................................             405             500         202,500
Section 71 Sec.  ...............................................             522             500         261,000
Madrid Renewal ...............................             134             500          67,000
                                                                 -----------------------------------------------
    Total.......................................................  ..............  ..............       1,018,500
----------------------------------------------------------------------------------------------------------------
* Data as of 12/10/2018.
[dagger] Under section 8 of the Act, 15 U.S.C. 1058, an affidavit or declaration of continued use is required
  during the sixth year after the date of registration for registrations issued under section 1 or section 44 of
  the Act. Section 15 of the Act, 15 U.S.C. 1065, provides a procedure by which the exclusive right to use a
  registered mark in commerce on or in connection with the goods or services covered by the registration can
  become ``incontestable,'' if the owner of the registration files an affidavit or declaration stating, among
  other criteria, that the mark has been in continuous use in commerce for a period of five years after the date
  of registration.
[Dagger] Section 9 of the Act, 15 U.S.C. 1059, requires that registrations resulting from applications based on
  section 1 or section 44 be renewed at the end of each successive 10-year period following the date of
  registration.
Sec.   Under section 71 of the Act, 15 U.S.C. 1141k, an affidavit or declaration of use is required during the
  sixth year after the date of registration for registered extensions of protection of international
  registrations to the U.S.
 The term of an international registration is ten years, and it may be renewed for ten years
  upon payment of the renewal fee. Articles 6(1) and 7(1) of the Common Regulations Under the Madrid Agreement
  Concerning the International Registration of Marks and the Protocol Relating to That Agreement.


[[Page 4399]]

    For applicants, registrants, and parties not subject to the 
proposed requirement, the USPTO anticipates that implementation of the 
proposed rule would result in a more accurate and reliable trademark 
register, which would have the benefit of generally reducing costs to 
applicants, registrants, and parties and providing greater value to 
consumers who rely on registered marks. Under the proposed rule, 
submissions would be made by practitioners subject to the disciplinary 
jurisdiction of OED, making it less likely that they would be signed by 
an unauthorized party or contain statements that are inaccurate, 
particularly as to any averment of use of the mark in U.S. commerce or 
intention to use the mark. Because it would result in a more accurate 
and reliable trademark register, fewer U.S. applicants, registrants, 
and parties would incur the costs associated with investigating the 
actual use of a mark to assess any conflict, initiating proceedings to 
cancel a registration or oppose an application, engaging in civil 
litigation to resolve a dispute over a mark, or changing business plans 
to avoid use of a chosen mark.

Discussion of Proposed Regulatory Changes

    The USPTO proposes to amend Sec.  2.2 to add Sec.  2.2(o), defining 
``domicile'' and Sec.  2.2(p), defining ``principal place of 
business.''
    The USPTO proposes to amend Sec.  2.11 to change the title to 
``Requirement for representation,'' to delete the first sentence, to 
include the remaining sentence in new Sec.  2.11(a) and to add Sec.  
2.11(b)-(e), which set out the requirements regarding representation of 
applicants, registrants, or parties to a proceeding whose domicile or 
principal place of business is not located within the U.S. or its 
territories.
    The USPTO proposes to amend Sec.  2.17(e) to change the word 
``Canadian'' in the title to ``Foreign,'' to state that recognition of 
foreign attorneys and agents is governed by Sec.  11.14(c) of this 
chapter, and to delete current Sec.  2.17(e)(1) and (2).
    The USPTO proposes to amend Sec.  2.22 to add Sec.  2.22(a)(21), 
which would require representation by a U.S. attorney for applicants, 
registrants, or parties to a proceeding whose domicile or principal 
place of business is not located within the U.S. or its territories.
    The USPTO proposes to amend Sec.  2.32(a)(4) to indicate that when 
the applicant is, or must be, represented by a practitioner, the 
practitioner's name, postal address, email address, and bar information 
are required.
    The USPTO proposes to redesignate current Sec.  11.14(c) as Sec.  
11.14(c)(1) and to clarify the requirements for reciprocal recognition 
in revised paragraph (c)(1). The USPTO also proposes to add Sec.  
11.14(c)(2) to require that in any trademark matter where an authorized 
foreign attorney or agent is representing an applicant, registrant, or 
party to a proceeding, a qualified U.S. attorney must also be appointed 
pursuant to Sec.  2.17(b), (c) as the representative with whom the 
Office will communicate and conduct business and to amend Sec.  
11.14(e) to add the prefatory phrase ``Except as specified in Sec.  
2.11(a) of this chapter'' and the wording ``or on behalf of'' to the 
second sentence and to delete the third sentence. The USPTO also 
proposes to delete the wording ``if such firm, partnership, 
corporation, or association is a party to a trademark proceeding 
pending before the Office'' from Sec.  11.14(e)(3).

Rulemaking Requirements

    A. Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure, and/or interpretive 
rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015) 
(Interpretive rules ``advise the public of the agency's construction of 
the statutes and rules which it administers.'' (citation and internal 
quotation marks omitted)); 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 changes in this rulemaking are not required pursuant to 5 U.S.C. 
553(b) or (c), or any other law. See Perez, 135 S. Ct. at 1206 (Notice-
and-comment procedures are required neither when an agency ``issue[s] 
an initial interpretive rule'' nor ``when it amends or repeals that 
interpretive rule.''); 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 has chosen to seek public comment 
before implementing the rule to benefit from the public's input.
    B. Initial Regulatory Flexibility Analysis: Under the Regulatory 
Flexibility Act (RFA) (5 U.S.C. 601 et seq.), whenever an agency is 
required by 5 U.S.C. 553 (or any other law) to publish a notice of 
proposed rulemaking (NPRM), the agency must prepare and make available 
for public comment an Initial Regulatory Flexibility Analysis (IRFA), 
unless the agency certifies under 5 U.S.C. 605(b) that the proposed 
rule, if implemented, will not have a significant economic impact on a 
substantial number of small entities. 5 U.S.C. 603, 605. The USPTO 
publishes this IRFA to examine the impact on small entities of the 
Office's proposed requirement that foreign applicants, registrants, or 
parties to a proceeding be represented by a qualified U.S. attorney in 
trademark matters and to seek the public's views.
    Items 1-5 below discuss the five items specified in 5 U.S.C. 
603(b)(1)-(5) to be addressed in an IRFA. Item 5 below discusses 
alternatives to this proposal that the Office considered.
    1. Description of the reasons that action by the USPTO is being 
considered:
    The USPTO proposes to require applicants, registrants, or parties 
to a proceeding whose domicile or principal place of business is not 
located within the U.S. or its territories to be represented by an 
attorney who is an active member in good standing of the bar of the 
highest court of a state in the U.S. and who is qualified to represent 
others before the Office in trademark matters.
    The requirement for representation by a qualified U.S. attorney is 
being proposed in response to the increasing problem of foreign 
trademark applicants who purportedly are pro se and who are filing what 
appear to be inaccurate and even fraudulent submissions that violate 
the Act and/or the USPTO's rules. In the past few years, the USPTO has 
seen many instances of UPL where foreign parties who are not authorized 
to represent trademark applicants are improperly representing foreign 
applicants before the USPTO. As a result, increasing numbers of foreign 
applicants are likely receiving inaccurate or no information about the 
legal requirements for trademark registration in the U.S., such as the 
standards for use of a mark in commerce, who can properly aver to 
matters and sign for the mark owner, or even who the true owner of a 
mark is under U.S. law. This practice raises legitimate concerns that 
affected

[[Page 4400]]

applications and any resulting registrations are potentially invalid, 
particularly as to averments of use of the mark in U.S. commerce or 
intention to use the mark, and thus negatively impacts the integrity of 
the national trademark register.
    The proposed requirement is also necessary to enforce compliance by 
all foreign applicants, registrants, and parties with U.S. statutory 
and regulatory requirements in trademark matters. Thus, it will not 
only aid the USPTO in its efforts to improve and preserve the integrity 
of the U.S. trademark register, but will also ensure that foreign 
applicants, registrants, and parties are assisted only by authorized 
practitioners who are subject to the USPTO's disciplinary rules.
    2. Succinct statement of the objectives of, and legal basis for, 
the proposed rule:
    The policy objectives of the proposed rule are to: (1) Instill 
greater confidence in the public that U.S. registrations that issue to 
foreign applicants are not subject to invalidation for reasons such as 
improper signatures and use claims and (2) enable the USPTO to more 
effectively use available mechanisms to enforce foreign applicant 
compliance with statutory and regulatory requirements in trademark 
matters. As to the legal basis for the proposed rule, Section 41 of the 
Act, 15 U.S.C. 1123, as well as 35 U.S.C. 2, provide the authority for 
the Director to make rules and regulations for the conduct of 
proceedings in the Office.
    3. Description of and, where feasible, estimate of the number of 
affected small entities:
    The USPTO does not collect or maintain statistics in trademark 
cases on small- versus large-entity applicants, and this information 
would be required in order to determine the number of small entities 
that would be affected by the proposed rule. The proposed rule would 
apply to any entity filing with USPTO whose domicile or principal place 
of business is not located within the U.S. or its territories. The 
USPTO believes that although such entities would incur the costs 
associated with retaining counsel to prosecute applications and handle 
maintenance filings for registrations, the overall impact of the 
proposed rule on such entities would be positive, because it would (1) 
instill greater confidence in the public that U.S. registrations that 
issue to foreign applicants are not subject to invalidation for reasons 
such as improper signatures and use claims and (2) enable the USPTO to 
more effectively use available mechanisms to enforce foreign applicant 
compliance with statutory and regulatory requirements in trademark 
matters.
    Further, the USPTO anticipates that implementation of the proposed 
rule would result in a more accurate and reliable trademark register, 
which would have the benefit of generally reducing costs to applicants, 
registrants, and parties. Under the proposed rule, submissions would be 
made by practitioners subject to the disciplinary jurisdiction of OED, 
making it less likely that they would be signed by an unauthorized 
party or contain statements that are inaccurate, particularly as to any 
averment of use of the mark in U.S. commerce or intention to use the 
mark. Therefore, fewer U.S. applicants, registrants, and parties should 
incur the costs associated with investigating the actual use of a mark 
to assess any conflict, initiating proceedings to cancel a registration 
or oppose an application, engaging in civil litigation to resolve a 
dispute over a mark, or changing business plans to avoid use of a 
chosen mark.
    4. Description of the reporting, recordkeeping, and other 
compliance requirements of the proposed rule, including an estimate of 
the classes of small entities which will be subject to the requirement 
and the type of professional skills necessary for preparation of the 
report or record:
    The proposed rule imposes no new reporting or recordkeeping 
requirements.
    To comply with the proposed rule, foreign applicants, registrants, 
or parties would be required to be represented by an attorney who is an 
active member in good standing of the bar of the highest court of a 
state in the U.S. (including the District of Columbia and any 
Commonwealth or territory of the U.S.). The USPTO does not collect or 
maintain statistics in trademark cases on small- versus large-entity 
applicants, registrants, or parties, but does not anticipate that the 
proposed rule would have a disproportionate impact upon any particular 
class of small or large entities.
    5. Description of any significant alternatives to the proposed rule 
which accomplish the stated objectives of applicable statutes and which 
minimize any significant economic impact of the rule on small entities:
    The USPTO considered three alternatives before recommending that 
foreign applicants, registrants, or parties be represented by a 
qualified U.S. attorney. The USPTO chose the alternative proposed 
herein because it will enable the Office to achieve its goals 
effectively and efficiently. Those goals are to (1) instill greater 
confidence in the public that U.S. registrations that issue to foreign 
applicants are not subject to invalidation for reasons such as improper 
signatures and use claims and (2) enable the USPTO to more effectively 
use available mechanisms to enforce foreign applicant compliance with 
statutory and regulatory requirements in trademark matters.
    Due to the difficulty in quantifying the intangible benefits 
associated with the preferred alternative, the Office provides below a 
discussion of the qualitative benefits to trademark applicants and 
registrants. One of the primary benefits of the preferred alternative 
is ensuring the accuracy of the trademark register. The accuracy of the 
trademark register as a reflection of marks that are actually in use in 
commerce in the U.S. for the goods/services identified in the 
registrations listed therein serves a critical purpose for the public 
and for all registrants. By registering trademarks, the USPTO has a 
significant role in protecting consumers, as well as providing 
important benefits to American businesses, by allowing them to 
strengthen and safeguard their brands and related investments. Such 
benefits would be especially valuable for small entities for the 
following reasons. The public relies on the register to determine 
whether a chosen mark is available for use or registration. When a 
person's search of the register discloses a potentially confusingly 
similar mark, that person may incur a variety of resulting costs and 
burdens, such as those associated with investigating the actual use of 
the disclosed mark to assess any conflict, initiating proceedings to 
cancel the registration or oppose the application of the disclosed 
mark, engaging in civil litigation to resolve a dispute over the mark, 
or changing business plans to avoid use of the party's chosen mark. In 
addition, such persons may incur costs and burdens unnecessarily if a 
registered mark is not actually in use in commerce in the U.S., or is 
not in use in commerce in connection with all the goods/services 
identified in the registration. An accurate and reliable trademark 
register helps avoid such needless costs and burdens. A valid claim of 
use made as to a registered mark likewise benefits the registrant. 
Fraudulent or inaccurate claims of use jeopardize the validity of any 
resulting registration and may subject it to attack and render it 
vulnerable to cancellation.
    The chosen alternative also addresses the increasing problem of 
foreign trademark applicants who purportedly are pro se and who are 
filing what appear to be inaccurate and possibly even fraudulent 
submissions that violate

[[Page 4401]]

the Act and/or the USPTO's rules. Requiring foreign applicants, 
registrants, and parties to retain U.S. counsel in all trademark 
matters before the USPTO will likely reduce the instances of UPL and 
misconduct and, when misconduct does occur, it will enable OED to more 
effectively pursue those who are engaged in the UPL and/or misconduct. 
The threat of a claim of UPL has not been effective with foreign 
applicants and the unqualified foreign individuals, attorneys, or firms 
advising them.
    The USPTO has estimated the costs for complying with the proposed 
rule using FY17 filing numbers for pro se applicants and registrants 
with a domicile or principal place of business outside the U.S. or its 
territories, and for Madrid applicants and registrants. As discussed in 
the preamble, the cost estimates reflect the representation status at 
the time the USPTO electronic record was searched to obtain the data.
    Applicants under section 1 or section 44 of the Act who are subject 
to the proposed rule would be required to retain U.S. counsel to meet 
the requirements for a complete application under proposed Sec.  
2.32(a)(4). If such applicants did not retain counsel prior to filing 
an application, the USPTO estimates that the cost for representation 
would be $42,413,400. The estimated cost if such applicants had 
retained counsel prior to filing their applications would be 
$73,800,950. Madrid applications, which are based on section 66(a) of 
the Act, are initially filed with the IB and subsequently transmitted 
to the USPTO. In FY17, the USPTO received 24,418 Madrid applications in 
which the applicant had an address outside the U.S. or its territories, 
and thus would be subject to the proposed requirement. There is 
currently no provision for designating a U.S. attorney in an 
application submitted to the IB. Therefore, the USPTO presumes that 
none of the Madrid applicants subject to the requirement would have 
retained U.S. counsel prior to filing. However, USPTO records indicate 
that at some point after filing, 14,602 of those FY17 Madrid applicants 
were represented by counsel. Therefore, only the remaining 9,816 Madrid 
applicants would be subject to the requirement to retain U.S. counsel 
to prosecute their applications. Therefore, the USPTO estimates the 
cost to all FY17 Madrid applicants to retain counsel after filing their 
applications as $9,816,000. The estimated costs to FY17 pro se 
registrants who registered under section 1, section 44, or section 
66(a) and who would be subject to the requirement to retain U.S. 
counsel when filing a post-registration maintenance document is 
$1,018,500.
    The costs to comply with the requirement proposed herein would be 
borne by foreign applicants, registrants, and parties. The proposed 
requirement would not impact individuals or large or small entities 
with a domicile or principal place of business within the U.S. 
Moreover, the proposed requirement would provide qualitative value to 
all applicants and registrants, as well as to consumers, because it 
would result in a more accurate and reliable trademark register. Under 
the proposed rule, submissions would be made by practitioners subject 
to the disciplinary jurisdiction of OED, making it less likely that 
they would be signed by an unauthorized party or contain statements 
that are inaccurate, particularly as to any averment of use of the mark 
in U.S. commerce or intention to use the mark. Because it would result 
in a more accurate and reliable trademark register, fewer applicants, 
registrants, and parties would incur the costs associated with 
investigating the actual use of a mark to assess any conflict, 
initiating proceedings to cancel a registration or oppose an 
application, engaging in civil litigation to resolve a dispute over a 
mark, or changing business plans to avoid use of a chosen mark.
    The second alternative considered would be to take no action at 
this time. This alternative was rejected because the Office has 
determined that the requirement is needed to accomplish the stated 
objectives of instilling greater confidence in the public that U.S. 
registrations that issue to foreign applicants are not subject to 
invalidation for reasons such as improper signatures and use claims and 
enabling the USPTO to more effectively use available mechanisms to 
enforce foreign applicant compliance with statutory and regulatory 
requirements in trademark matters.
    A third alternative considered was to propose a revision to Sec.  
2.22 that would require foreign applicants to retain U.S. counsel in 
order to obtain a filing date for an application under section 1 and/or 
section 44 of the Act. This alternative was rejected due to 
international considerations. Thus, when the USPTO receives an 
application filed by a foreign domiciliary, with a filing basis under 
section 1 and/or section 44 of the Act that does not comply with the 
requirements of proposed Sec.  2.11(a), the USPTO must inform the 
applicant that appointment of a qualified U.S. attorney is required. 
Although this places an additional burden on the USPTO, it minimizes 
the impact of the proposed rule on small entities. Although such 
entities may choose to incur the cost of retaining counsel to prepare 
and file an application, they would not be required to do so.
    6. Identification, to the extent practicable, of all relevant 
Federal rules which may duplicate, overlap, or conflict with the 
proposed rule:
    The proposed rule would not duplicate, overlap, or conflict with 
any other Federal rules.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be significant for purposes of 
Executive Order 12866 (Sept. 30, 1993).
    D. 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; (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) involved the public in an open exchange of 
information and perspectives among experts in relevant disciplines, 
affected stakeholders in the private sector and the public as a whole, 
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.
    E. Executive Order 13771 (Reducing Regulation and Controlling 
Regulatory Costs): This proposed rule is not subject to the 
requirements of E.O. 13771 because it is expected to result in no more 
than de minimis costs to citizens and residents of the United States.
    F. Executive Order 13132 (Federalism): This rulemaking does not 
contain policies with federalism implications sufficient to warrant 
preparation of a Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).
    G. Executive Order 13175 (Tribal Consultation): This rulemaking 
will not: (1) Have substantial direct effects on one or more Indian 
tribes; (2) impose substantial direct compliance costs on Indian tribal 
governments; or (3) preempt tribal law. Therefore, a tribal summary 
impact statement is not

[[Page 4402]]

required under Executive Order 13175 (Nov. 6, 2000).
    H. Executive Order 13211 (Energy Effects): This rulemaking is not a 
significant energy action under Executive Order 13211 because this 
rulemaking is not likely to have a significant adverse effect on the 
supply, distribution, or use of energy. Therefore, a Statement of 
Energy Effects is not required under Executive Order 13211 (May 18, 
2001).
    I. Executive Order 12988 (Civil Justice Reform): This rulemaking 
meets applicable standards to minimize litigation, eliminate ambiguity, 
and reduce burden as set forth in sections 3(a) and 3(b)(2) of 
Executive Order 12988 (Feb. 5, 1996).
    J. Executive Order 13045 (Protection of Children): This rulemaking 
does not concern an environmental risk to health or safety that may 
disproportionately affect children under Executive Order 13045 (Apr. 
21, 1997).
    K. Executive Order 12630 (Taking of Private Property): This 
rulemaking will not affect a taking of private property or otherwise 
have taking implications under Executive Order 12630 (Mar. 15, 1988).
    L. Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO 
will submit a report containing the final rule and other required 
information to the United States Senate, the United States House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this notice 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 notice is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    M. Unfunded Mandates Reform Act of 1995: The changes set forth in 
this notice do not involve a Federal intergovernmental mandate that 
will result in the expenditure by State, local, and tribal governments, 
in the aggregate, of 100 million dollars (as adjusted) or more in any 
one year, or a Federal private sector mandate that will result in the 
expenditure by the private sector of 100 million dollars (as adjusted) 
or more in any one year, and will not significantly or uniquely affect 
small governments. Therefore, no actions are necessary under the 
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C. 
1501 et seq.
    N. National Environmental Policy Act: This rulemaking will not have 
any effect on the quality of the environment and is thus categorically 
excluded from review under the National Environmental Policy Act of 
1969. See 42 U.S.C. 4321 et seq.
    O. National Technology Transfer and Advancement Act: The 
requirements of section 12(d) of the National Technology Transfer and 
Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because 
this rulemaking does not contain provisions that involve the use of 
technical standards.
    P. Paperwork Reduction Act: This rulemaking involves information 
collection requirements that are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collection of information involved in 
this rule has 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. We estimate that 41,000 applications will 
have an additional burden of 5 minutes due to this rulemaking, adding 
in 3,000 burden hours across all trademark collections.
    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 11

    Administrative practice and procedure, Lawyers, Trademarks.

    For the reasons stated in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office 
proposes to amend parts 2 and 11 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 and 35 U.S.C. 2 unless otherwise 
noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 434; 15 
U.S.C. 1066, 1067.

0
2. Amend Sec.  2.2 by adding paragraphs (o) and (p) to read as follows:


Sec.  2.2  Definitions.

* * * * *
    (o) The term domicile as used in this part means the permanent 
legal place of residence of a natural person.
    (p) The term principal place of business as used in this part means 
the location of a juristic entity's headquarters where the entity's 
senior executives or officers ordinarily direct and control the 
entity's activities and is usually the center from where other 
locations are controlled.
0
3. Revise Sec.  2.11 to read as follows:


Sec.  2.11  Requirement for representation.

    (a) An applicant, registrant, or party to a proceeding whose 
domicile or principal place of business is not located within the 
United States or its territories must be represented by an attorney, as 
defined in Sec.  11.1 of this chapter, who is qualified to practice 
under Sec.  11.14 of this chapter. The Office cannot aid in the 
selection of an attorney.
    (b) The Office may require an applicant, registrant, or party to a 
proceeding to furnish such information or declarations as may be 
reasonably necessary to the proper determination of whether the 
applicant, registrant, or party is subject to the requirement in 
paragraph (a) of this section.
    (c) An applicant, registrant, or party to a proceeding may be 
required to state whether assistance within the scope of Sec.  
11.5(b)(2) of this chapter was received in a trademark matter before 
the Office and, if so, to disclose the name(s) of the person(s) 
providing such assistance and whether any compensation was given or 
charged.
    (d) Failure to respond to requirements issued pursuant to 
paragraphs (a) through (c) of this section is governed by Sec.  2.65.
    (e) Providing false, fictitious, or fraudulent information in 
connection with the requirements of paragraphs (a) through (c) of this 
section shall be deemed submitting a paper for an improper purpose, in 
violation of Sec.  11.18(b) of this chapter, and subject to the 
sanctions and actions provided in Sec.  11.18(c).
0
4. Amend Sec.  2.17 by revising paragraph (e) to read as follows:


Sec.  2.17  Recognition for representation.

* * * * *
    (e) Foreign attorneys and agents. Recognition to practice before 
the Office in trademark matters is governed by Sec.  11.14(c) of this 
chapter.
* * * * *

[[Page 4403]]

0
5. Amend Sec.  2.22 by:
0
a. Removing the word ``and'' at the end of paragraph (a)(19);
0
b. Removing the period at the end of paragraph (a)(20) and adding ``; 
and'' in its place; and
0
c. Adding paragraph (a)(21).
    The addition reads as follows:


Sec.  2.22  Requirements for a TEAS Plus application.

    (a) * * *
    (21) An applicant whose domicile or principal place of business is 
not located within the United States or its territories must designate 
an attorney as the applicant's representative, pursuant to Sec.  
2.11(a).
* * * * *
0
6. Amend Sec.  2.32 by revising paragraph (a)(4) to read as follows:


Sec.  2.32  Requirements for a complete trademark or service mark 
application.

    (a) * * *
    (4) The address of the applicant. When the applicant is, or must 
be, represented by a practitioner, as defined in Sec.  11.1 of this 
chapter, who is qualified to practice under Sec.  11.14 of this 
chapter, the practitioner's name, postal address, email address, and 
bar information;
* * * * *

PART 11--REPRESENTATION OF OTHERS BEFORE THE UNITED STATES PATENT 
AND TRADEMARK OFFICE

0
7. The authority citation for 37 CFR part 11 continues to read as 
follows:

    Authority:  5 U.S.C. 500, 15 U.S.C. 1123, 35 U.S.C. 2(b)(2), 32, 
41; Sec. 1, Pub. L. 113-227, 128 Stat. 2114.

0
8. Amend Sec.  11.14 by revising paragraphs (c) and (e) to read as 
follows:


Sec.  11.14  Individuals who may practice before the Office in 
trademark and other non-patent matters.

* * * * *
    (c) Foreigners. (1) Any foreign attorney or agent not a resident of 
the United States who shall file a written application for reciprocal 
recognition under paragraph (f) of this section and prove to the 
satisfaction of the OED Director that he or she is a registered and 
active member in good standing before the trademark office of the 
country in which he or she resides and practices and possesses good 
moral character and reputation, may be recognized for the limited 
purpose of representing parties located in such country before the 
Office in the presentation and prosecution of trademark matters, 
provided: The trademark office of such country and the USPTO have 
reached an official understanding to allow substantially reciprocal 
privileges to those permitted to practice in trademark matters before 
the Office. Recognition under this paragraph (c) shall continue only 
during the period that the conditions specified in this paragraph (c) 
obtain.
    (2) In any trademark matter where a foreign attorney or agent 
authorized under paragraph (c)(1) of this section is representing an 
applicant, registrant, or party to a proceeding, an attorney, as 
defined in Sec.  11.1 and qualified to practice under paragraph (a) of 
this section, must also be appointed pursuant to Sec.  2.17(b) and (c) 
of this chapter as the representative with whom the Office will 
communicate and conduct business.
* * * * *
    (e) Appearance. No individual other than those specified in 
paragraphs (a), (b), and (c) of this section will be permitted to 
practice before the Office in trademark matters on behalf of a client. 
Except as specified in Sec.  2.11(a) of this chapter, an individual may 
appear in a trademark or other non-patent matter in his or her own 
behalf or on behalf of:
    (1) A firm of which he or she is a member;
    (2) A partnership of which he or she is a partner; or
    (3) A corporation or association of which he or she is an officer 
and which he or she is authorized to represent.
* * * * *

    Dated: February 6, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-02154 Filed 2-14-19; 8:45 am]
 BILLING CODE 3510-16-P