Changes to the Trademark Rules of Practice To Mandate Electronic Filing, 37081-37099 [2019-16259]

Download as PDF Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations cost-savings associated with avoided audit expenses. When estimates for PVO staff time and financial audits are combined, the cost savings for affected PVOs ranges from $2,005,120 to $11,360,240. When added to the expected costs internal to USAID of $779,406, the annual total of incremental cost savings as a result of the rescission ranges from $2,784,526 to $12,139,646. Therefore, the rescission of our PVO-registration rule would benefits USAID and our PVOs by streamlining processes and achieving significant cost-savings. 2. Executive Order (E.O.) 13771 This rule is considered an E.O. 13771 deregulatory action. Details on the estimated cost-savings of this rule appear in the rule’s economic analysis. 3. Regulatory Flexibility Act Because the rescission of this regulation removes, rather than imposes, the collection of information, USAID certifies that the rescission would not have a significant economic impact on a substantial number of small entities. 4. Paperwork Reduction Act (PRA) The Paperwork Reduction Act (44 U.S.C. 3507) applies to this rule, because it removes informationcollection requirements formerly approved by OMB. Rescission of this rule would reduce paperwork significantly and eliminate informationcollection requirements on the 550 PVOs that currently register with the Agency. USAID collects information from all registered PVOs as part of the registration requirement, such as financial data and a costly external financial audit, to determine whether the PVO meets the conditions of registration. Under the revised approach, only organizations that apply for the Agency’s LEPP or OFR, or to other U.S. Government Departments and Agencies that seek to provide foreign assistance (about 50 organizations in total) would have to certify they meet USAID’s PVO requirements through the new, streamlined certification process described earlier. USAID would not collect any other data or demand extra financial audits from these organizations. USAID previously collected information for to register PVOs under the OMB-approved AID Form 1550–2 (OMB Approval Number 0412–0035), but inadvertently operated in noncompliance with the PRA when OMB approval of this form expired, and USAID did not seek extension of the OMB approval when the Agency moved VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 to an on-line system for PVO registration. USAID’s online PVOregistration system required that PVOs provide the same information requested on AID Form 1550–2, including financial data. As such, the publicreporting burden for collection of information remained the same under the on-line system. 5. Administrative Procedures Act USAID is issuing this deregulatory action to remove an unneeded hurdle to doing business with the Agency that imposes unnecessary and excessive costs on the private sector with no value to the Government. The rescinded rule originally called for the collection of information, such as a company’s makeup of volunteers—since obviated once statutory changes removed the volunteer requirement. Apart from that requirement, statutory references to the registration of PVOs (such as those in Sections 123 or 607 of the FAA) provide no further guidance or requirements to the Agency on what such registration should entail. By rescinding this rule, the Agency would be free to simplify and streamline registration to remove barriers that impose expenses on smaller organizations that wish to compete for USAID funds. USAID also conducted surveys of the primary stakeholders to the registration process—that of Agency’s internal stakeholders and the PVO community. Surveys of registered PVOs in 2012 and 2017 showed that the PVO community did not see significant value in the registration program delineated by 22 CFR part 203, and internal stakeholders for the Agency determined that the information collected in accordance with 22 CFR 203 served no purpose for the Agency. These findings contributed to the decision to remove both the registration program and the rule that required such a rigorous registration process. Additionally, USAID does not plan to replace the current rule with any other. For the LEPP, the OFR, and PVOs that apply to other U.S. Government Departments and Agencies that are seeking to provide foreign assistance under Section 607(a) of the FAA, all of which still require registration because of legislative requirements, as provided above, the Agency has developed a simplified registration process as part of the application process. List of Subjects for 22 CFR Part 203 Foreign aid, Nonprofit organizations, Reporting and recordkeeping requirements. PO 00000 Frm 00023 Fmt 4700 Sfmt 4700 37081 PART 203—[REMOVED] For the reasons discussed in the preamble, and under the authority of Sec. 621, Public Law 87–195, 75 Stat. 445, (22 U.S.C. 2381), as amended; E.O. 12163, Sept. 29, 1979, 44 FR 56673, 3 CFR, 1979 Comp., p. 435, USAID removes 22 CFR part 203. ■ Carrie Thompson, Acting Assistant Administrator, Bureau for Economic Growth, Education, and the Environment. [FR Doc. 2019–15685 Filed 7–30–19; 8:45 am] BILLING CODE 6116–01–P DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Parts 2 and 7 [Docket No. PTO–T–2017–0004] RIN 0651–AD15 Changes to the Trademark Rules of Practice To Mandate Electronic Filing Patent and Trademark Office, Commerce. ACTION: Final rule. AGENCY: The United States Patent and Trademark Office (USPTO or Office) amends the Rules of Practice in Trademark Cases and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks to mandate electronic filing of trademark applications and all submissions associated with trademark applications and registrations, and to require the designation of an email address for receiving USPTO correspondence, with limited exceptions. This rule advances the USPTO’s IT strategy to achieve complete end-to-end electronic processing of trademark-related submissions, thereby improving administrative efficiency by facilitating electronic file management, optimizing workflow processes, and reducing processing errors. DATES: This rule is effective on October 5, 2019. FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy Commissioner for Trademark Examination Policy, TMPolicy@ uspto.gov, (571) 272–8946. SUPPLEMENTARY INFORMATION: Purpose: The USPTO revises the rules in parts 2 and 7 of title 37 of the Code of Federal Regulations to require electronic filing through the USPTO’s SUMMARY: E:\FR\FM\31JYR1.SGM 31JYR1 37082 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations Trademark Electronic Application System (TEAS) of all trademark applications based on section 1 and/or section 44 of the Trademark Act (Act), 15 U.S.C. 1051, 1126, and submissions filed with the USPTO concerning applications or registrations. These submissions include, for example, responses to Office actions, registration maintenance filings, international applications, subsequent designations, and direct filings with the USPTO relating to extensions of protection through the international registration system. In addition, this rulemaking requires the designation of an email address for receiving USPTO correspondence concerning these submissions. The requirement to file an initial application through TEAS does not apply to applications based on section 66(a) of the Act, 15 U.S.C. 1141f, because these applications are initially filed with the International Bureau (IB) of the World Intellectual Property Organization and subsequently transmitted electronically to the USPTO. However, section 66(a) applicants and registrants are required to electronically file all subsequent submissions concerning their applications or registrations and to designate an email address for receiving USPTO correspondence. This rulemaking does not encompass electronic filing of submissions made to the Trademark Trial and Appeal Board (TTAB) in ex parte or inter partes proceedings. Such submissions are currently required to be filed through the USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA). This rule is intended to maximize end-to-end electronic processing of applications and related submissions, as well as registration maintenance filings. Achieving complete end-to-end electronic processing of all trademark submissions is an IT objective of the USPTO. End-to-end electronic processing means that an application and all application- and registrationrelated submissions are filed and processed electronically, and any related correspondence between the USPTO and the relevant party is conducted entirely electronically. Thus, an application that is processed electronically end to end would be filed through TEAS, and all submissions related to the application, such as voluntary amendments, responses to Office actions, or allegations of use, would also be filed through TEAS. With this change, outgoing USPTO correspondence regarding the application will be sent by email. Likewise, all submissions related to a VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 registration must be filed through TEAS and outgoing USPTO correspondence regarding the registration will be sent by email. Although more than 99% of applications under section 1 or section 44 are now filed electronically, just under 88% are currently prosecuted electronically from end to end. This means that approximately 12% of these filings still involve paper processing. Prior reductions in the filing fees for electronic submissions resulted in almost 100% of new applications being filed electronically, but have not achieved complete end-to-end electronic processing. By mandating electronic filing of trademark applications and submissions concerning applications or registrations through TEAS, the amended rules will reduce paper processing to an absolute minimum and thus maximize end-toend electronic processing. End-to-end electronic processing of all applications, related correspondence, statutorily required registration maintenance submissions, and other submissions will benefit trademark customers and increase the USPTO’s administrative efficiency by facilitating electronic file management, optimizing workflow processes, and reducing processing errors. Paper submissions hinder efficiency and accuracy and are more costly to process than electronic submissions because they require manual uploading of scanned copies of the documents into the USPTO electronic records system and manual data entry of information in the documents. Electronic submissions through TEAS, on the other hand, generally do not require manual processing and are automatically categorized, labeled, and uploaded directly into an electronic file in the USPTO electronic records system for review by USPTO employees and the public. If a TEAS submission contains amendments or other changes to the information in the record, often those amendments and changes are automatically entered into the electronic records system. Furthermore, TEAS submissions are more likely to include all necessary information because the USPTO can update its forms to specifically tailor the requirements for a particular submission and require that the information be validated prior to submission. Consequently, preparing and submitting an application or related document, or a registration maintenance filing, through TEAS is likely to result in a more complete submission and take less time than preparing and mailing the paper equivalent. Thus, TEAS submissions help ensure more complete PO 00000 Frm 00024 Fmt 4700 Sfmt 4700 filings, expedite processing, shorten pendency, minimize manual data entry and potential data-entry errors, and eliminate the potential for lost or missing papers. This rule also requires the designation of an email address for receiving USPTO correspondence concerning these submissions, which is either that of the applicant or registrant, if unrepresented, or an authorized attorney, if one has been appointed. Currently, in order to receive a filing date for a new application under section 1 or section 44, the USPTO requires, among other things, that the applicant designate an ‘‘address for correspondence.’’ 37 CFR 2.21(a)(2). Applicants who filed using the TEAS Plus or TEAS Reduced Fee (TEAS RF) filing options have been required to designate an email address for correspondence, while those who filed on paper or through the regular TEAS application were permitted to designate a postal address. This rule requires applicants and registrants, and parties to a proceeding before the TTAB, to provide and maintain an email address for correspondence. The requirement to designate an email address for receiving USPTO correspondence benefits the USPTO and its customers by reducing costs and increasing efficiency. Email correspondence can be sent, received, and processed faster than paper correspondence, which must be printed, collated, scanned, and uploaded to the electronic records system, and mailed domestically or internationally, at greater expense. Under this rule, applicants and registrants, and parties to a proceeding before the TTAB, are also required to provide and maintain a postal address. The domicile address specified for an applicant, registrant, or party to a proceeding will be treated by the Office as the postal address for the applicant, registrant, or party. In the rare circumstance where mail cannot be delivered to its domicile address, the applicant, registrant, or party may request to designate a postal address where mail can be delivered. A qualified practitioner representing an applicant, registrant, or party also is required to provide and maintain a postal address. This requirement ensures the USPTO’s ability to contact the applicant, registrant, party, or practitioner by mail in certain limited circumstances, such as when an appointed practitioner is suspended or excluded from practice before the USPTO and is no longer the correspondent, or when the Office sends a physical registration certificate. Previous Initiatives to Increase Endto-End Electronic Processing: The E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations USPTO previously amended its rules to encourage electronic filing through TEAS and email communication by establishing the TEAS Plus and TEAS RF filing options for applications based on section 1 and/or section 44. See 37 CFR 2.6. These filing options have lower application fees than a regular TEAS application, but, unlike a regular TEAS application, they require the applicant to (1) provide, authorize, and maintain an email address for receiving USPTO correspondence regarding the application and (2) file certain application-related submissions through TEAS. See 37 CFR 2.22, 2.23. If the applicant does not fulfill these requirements, the applicant must pay an additional processing fee. See 37 CFR 2.6, 2.22, 2.23. Despite these additional requirements, and the potential additional processing fee for noncompliance, the TEAS RF filing option is now the most popular filing option among USPTO customers, followed by TEAS Plus. These two filing options currently account for nearly 99% of all new trademark applications filed under section 1 and/or section 44, suggesting that applicants are comfortable with filing and communicating with the USPTO electronically. Furthermore, in January 2017, the USPTO revised its rules to increase fees for paper filings to bring the fees nearer to the cost of processing the filings and encourage customers to use lower-cost electronic options. As a result of these rule changes, the USPTO is now processing nearly 88% of applications filed under section 1 and/or section 44 electronically end to end. Discussion of Rule Changes (1) New Applications. Under this rule, § 2.21 is amended to require applicants to file electronically, through TEAS, any trademark, service mark, certification mark, collective membership mark, or collective trademark or service mark application for registration on the Principal or Supplemental Register under section 1 and/or section 44. As noted above, the requirement to file an application through TEAS does not apply to applications based on section 66(a) because they are initially processed by the IB and subsequently transmitted electronically to the USPTO. The TEAS RF filing option, which required applicants to maintain an email address for receiving USPTO correspondence regarding the application and to file the application and related submissions through TEAS, will become the default, or ‘‘standard,’’ VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 filing option and will be renamed ‘‘TEAS Standard’’ on the effective date of this rule. The filing fee for this option remains at $275 per class. The TEAS Plus option also remains at $225 per class, while the TEAS option under 37 CFR 2.6(a)(1)(ii) at $400 per class is eliminated. However, the per-class fee of $400 in § 2.6(a)(1)(ii), which is the current filing fee for applications under section 66(a), is retained as the filing fee for such applications. Under this rule, an application filed on paper under section 1 and/or section 44 will not receive a filing date unless it falls under one of the limited exceptions discussed below. (2) Additional Processing Fee. Previously, the additional processing fee under § 2.6(a)(1)(v) applied to TEAS Plus and TEAS RF applications that failed to meet the requirements under § 2.22(a) or § 2.23(a) at filing, and to TEAS Plus and TEAS RF applications when certain submissions were not filed through TEAS or when the applicant failed to maintain a valid email address for receipt of communications from the Office. Under this rule, the processing fee applies only to TEAS Plus applications that fail to meet the amended filing requirements under § 2.22(a). All applicants and registrants, except those specifically exempted, are now required to electronically file any submissions in connection with an application or registration and to designate and maintain an email address for correspondence. A TEAS Plus or TEAS Standard (previously TEAS RF) applicant who meets the amended filing requirements, but thereafter seeks acceptance of a submission filed on paper, pursuant to new § 2.147, or a waiver of the requirement to file such submissions electronically, must then pay the relevant paper filing fee and the paper petition fee for any submission filed on paper. (3) Submissions Required to Be Filed Through TEAS. This rule amends § 2.23 to also require that correspondence concerning a trademark application or registration under section 1, section 44, or section 66(a) be filed through TEAS, except for correspondence required to be submitted to the Assignment Recordation Branch or through ESTTA. Although all correspondence is required to be filed electronically, the USPTO recognizes that there may be certain circumstances when a paper filing is necessary. For those instances, the Office codifies a new regulatory section, at 37 CFR 2.147, which sets out a procedure for requesting acceptance of paper submissions under particular circumstances. This section is discussed PO 00000 Frm 00025 Fmt 4700 Sfmt 4700 37083 below in the explanation of the limited exceptions to the amended requirements. Although this rule requires correspondence to be filed through TEAS, current USPTO practice regarding informal communications is unchanged. Thus, for example, an applicant or an applicant’s attorney may still conduct informal communications with an examining attorney regarding a particular application by telephone or email. See Trademark Manual of Examining Procedure (TMEP) § 709.05. (4) Email Correspondence Address. This rule amends §§ 2.21, 2.23, and 7.4 to require that applicants and registrants provide a valid email address for themselves and any appointed practitioner for receipt of correspondence from the USPTO. Thus, except in the case of nationals from exempted treaty countries, as discussed below, the USPTO’s required method of corresponding with applicants and registrants is via Office actions and notices sent to the designated email address. If the email transmission were to fail because, for example, the applicant or registrant provided an incorrect email address, the recipient’s mailbox is full, or the email provider has a service outage, the USPTO will not attempt to contact the correspondent designated pursuant to § 2.18(a) by other means. Instead, pursuant to amended § 2.23(d), the applicant or registrant is responsible for monitoring the status of the application or registration using the USPTO’s Trademark Status and Document Retrieval (TSDR) system, which displays any USPTO Office actions and notices that have issued, any submissions properly filed with the USPTO, and any other actions taken by the USPTO. As noted above, applications under section 66(a) are processed and transmitted electronically to the USPTO from the IB. These applications do not include an email address for receiving USPTO correspondence, and the USPTO does not anticipate the IB will update its systems to include email addresses prior to implementation of this rule. In addition, only 2.9% of Madrid applications were approved for publication upon first action in fiscal year 2017. Therefore, the USPTO believes it is appropriate to waive the requirement for an email address prior to publication in this limited situation and until such time as the IB’s systems are updated. However, Madrid applicants are subject to the requirements under §§ 2.23(b) and 2.32(a)(2), (4) to file all submissions electronically and to provide an email E:\FR\FM\31JYR1.SGM 31JYR1 37084 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations address on such submissions for receipt of correspondence from the USPTO. Under § 2.18(c), an applicant, registrant, or party to a proceeding must maintain a current and accurate correspondence address for itself and its qualified practitioner, if one is designated. (5) Changes from the Proposed Rule. The USPTO further amends § 2.22(a) by revising amended paragraph (a)(3) to limit the requirement for the names and citizenship of general partners to domestic partnerships and to add a requirement for the names and citizenship of active members of domestic joint ventures. These changes are added for consistency with current §§ 2.32(a)(3)(iii) and (iv). The USPTO also revises § 2.22(a)(4) to set out the requirements for sole proprietorships in order to further clarify the requirements for TEAS Plus applicants at filing. The USPTO amends § 2.32(a)(3)(i) to require the applicant’s legal entity type in addition to its citizenship and adds § 2.32(a)(1)(v) to require the state of organization of a sole proprietorship and the name and citizenship of the sole proprietor. These requirements are added for consistency with current § 2.22(a)(2) and new § 2.22(a)(4). The USPTO further amends § 2.56(a) to include cross references to § 2.160 and § 7.36 and also amends § 2.56(b) and (c) to update these paragraphs with criteria for electronic submissions and better conform them to existing requirements in the Trademark Act and precedential case law for specimens of use, including that web pages must show the URL and access or print date. The amendments also more clearly conform the rule language to the statutory requirements for use in commerce by requiring that the specimen show use of the mark placed on the goods, on containers or packaging for the goods, or on labels or tags affixed to the goods. The USPTO further amends § 2.147(b)(2) to require a copy of the previously mailed paper submission since the USPTO will not process the original submission and will destroy it after 90 days. This requirement is analogous to the requirements in §§ 2.64(a)(2)(i), 2.197(b)(2), and 2.198(e)(2) for a copy of previously submitted correspondence in order to establish timeliness. The USPTO further amends § 7.25 to delete the proposed cross reference to § 2.198 and to delete the cross reference to § 2.197 since these sections could be applicable to extensions of protection in some circumstances. Limited Exceptions for Paper Submissions: As discussed below, the VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 USPTO will permit paper submissions of applications and correspondence in limited situations. This rule establishes a process for filing paper submissions in such situations. (1) International Agreements: The United States (U.S.) is a member of both the Trademark Law Treaty (TLT) and the subsequent Singapore Treaty on the Law of Trademarks (STLT), which treaties constitute two separate international instruments that may be ratified or acceded to independently by member countries. One provision of TLT mandates that its members accept paper trademark applications from nationals of other TLT members. STLT, on the other hand, allows its members to choose the means of transmittal of communications, whether on paper, in electronic form, or in any other form. This incongruity between the treaties was addressed in Article 27(2) of STLT, which provides that any Contracting Party to both STLT and TLT shall continue to apply TLT in its relations with Contracting Parties to TLT that are not parties to STLT. Accordingly, nationals of TLT members that are not also members of STLT at the time of submission of the relevant document to the USPTO are not required to file applications electronically or receive communications from the USPTO via email, nor are they required to submit a petition with a paper filing, until such time as their country joins STLT. Currently, the USPTO must accept paper trademark applications from nationals of the following countries: Bahrain, Bosnia and Herzegovina, Burkina Faso, Chile, Colombia, Costa Rica, Cyprus, Czech Republic, Dominican Republic, Egypt, El Salvador, Guatemala, Guinea, Honduras, Hungary, Indonesia, Monaco, Montenegro, Morocco, Nicaragua, Oman, Panama, Slovenia, Sri Lanka, Trinidad and Tobago, Turkey, and Uzbekistan. (2) Specimens for Scent, Flavor, or Other Non-Traditional Marks: This rule allows for the separate submission of physical specimens when it is not possible to submit the specimens using TEAS because of the nature of the mark. For example, if the application or registration is for a scent or flavor mark, because the required specimen must show use, or continued use, of the flavor or scent, it cannot be uploaded electronically. In that situation, the applicant may submit the application through TEAS and indicate that it is mailing the specimen to the USPTO. In these circumstances, all other requirements of this rulemaking apply. However, the applicant or registrant is not required to submit a petition PO 00000 Frm 00026 Fmt 4700 Sfmt 4700 requesting acceptance of a specimen filed on paper or waiver of the requirement to file the specimen electronically. This exception does not apply to specimens for sound marks, which can be attached to the TEAS form as an electronic file. (3) Petition to Accept a Paper Submission: This rule includes a new regulatory section titled ‘‘Petition to the Director to accept a paper submission,’’ which is codified at § 2.147. Under this section, an applicant or registrant may file a petition to the Director requesting acceptance of a submission filed on paper in three situations. Under new § 2.147(a), the petition may be submitted if TEAS is unavailable on the date of the deadline for the submission specified in a regulation in parts 2 or 7 of this chapter or in a section of the Act. Under this provision, the applicant or registrant is required to submit proof that TEAS was unavailable because a technical problem, on either the USPTO’s part or the user’s part, prevented the user from submitting the document electronically. Generally, if users receive an error message the first time they attempt to submit a filing electronically, the USPTO expects that they will try to resolve any failures due to user error. In situations where the inability to submit the filing was not due to user error, the USPTO encourages users to try to submit the document again electronically before resorting to the paper petition process. The second scenario applies to the specific documents with statutory deadlines identified in new § 2.147(b) when such a document was timely submitted on paper, but not examined by the Office because it was not submitted electronically in accordance with § 2.21(a) or § 2.23(a). The Office will issue a notice informing the applicant, registrant, or petitioner for cancellation that the paper submission will not be processed or examined because it was not submitted electronically. The applicant, registrant, or party may file a petition to request that the timely filed paper submission be accepted only if the applicant, registrant, or party is unable to timely resubmit the document electronically by the statutory deadline. Finally, under new § 2.147(c), when an applicant or registrant does not meet the requirements under § 2.147(a) or (b) for requesting acceptance of the paper submission, the applicant or registrant may petition the Director under § 2.146(a)(5), requesting a waiver of § 2.21(a) or § 2.23(a) and documenting the nature of the extraordinary situation that prevented the party from E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations submitting the correspondence electronically. The Office addresses petitions under § 2.146(a)(5) on a caseby-case basis because the assessment of what would qualify as an extraordinary situation depends on the specific facts and evidence presented. With respect to USPTO technical problems that render TEAS unavailable, the USPTO intends to continue to follow its current approach. For example, when verifiable issues with USPTO systems prevent electronic filing for extended periods, the Office has waived non-statutory deadlines on petition, such as the deadline for response to a post-registration Office action, as well as petition fees. Such measures help avoid negatively impacting applicants and registrants in the event of USPTO technical problems. Because the impact of technical problems varies depending on the specific facts, the USPTO cannot provide advance guidance about all possibilities or specific measures the USPTO may take in the future. Moreover, applicants and registrants must be mindful of the fact that statutory deadlines, such as those for submission of a statement of use or an affidavit or declaration of use under section 8 or section 71, cannot be waived. The USPTO strongly encourages applicants and registrants to ensure that they are able to timely submit the relevant document by mail using the certificate of mailing or Priority Mail procedures in § 2.197 and § 2.198 in the event of an unexpected technical problem to avoid missing a statutory deadline. Furthermore, the inability to submit an application or submission electronically due to USPTO regularly scheduled system maintenance generally does not qualify for relief under new § 2.147 or as an extraordinary situation under § 2.146. The USPTO routinely performs system maintenance between midnight and 5:30 a.m. Eastern Time on weeknights and at all hours on Saturdays, Sundays, and holidays. Advance notice of the maintenance is generally posted on the USPTO Systems Status and Availability page on the USPTO website. (4) Postal-service Interruptions or Emergencies. The Office intends to continue the approach it has employed when there has been a postal-service interruption or emergency related to a natural disaster. In such events, the Office has generally waived certain requirements of the rules for those in the affected area, such as non-statutory deadlines and petition fees. The Office also issues notices regarding the specific procedures to be followed in such VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 circumstances and posts the notices on the ‘‘Operating Status’’ page of the USPTO website. (5) Applications and Post-Registration Maintenance Documents Filed Prior to the Effective Date of this Rule. Paper, TEAS Regular, and Madrid applications filed prior to the effective date of this rule are not subject to the requirements to provide an email address for the applicant and its attorney, if represented, or to communicate with the USPTO electronically. Such applications are ‘‘grandfathered’’ under the prior rules until the application registers or is abandoned and cannot be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146. Similarly, postregistration maintenance documents submitted prior to the effective date of the rule are not subject to the requirements and are grandfathered under the prior rules until the document has been accepted or the registration has been cancelled or expired and cannot be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146. However, on the effective date of this rule, because all new applications and post-registration maintenance documents are required to be filed electronically through TEAS, all TEAS forms will be updated to require the applicant’s or registrant’s email address and the email address of applicant’s or registrant’s attorney, if represented. Therefore, if a grandfathered applicant or registrant files a TEAS document after the effective date of this rule, the TEAS form will not validate for submission without the email address(es) being provided. Furthermore, if such an applicant, registrant, or attorney chooses to correspond electronically with the Office using one of the TEAS forms, the USPTO will presume that email communication is authorized and will send all future correspondence to the email address of the applicant, registrant, or attorney, as appropriate. Applicants who filed an application prior to the effective date of the rule using the TEAS RF or TEAS Plus option are currently subject to the requirement to correspond electronically with the USPTO, as well as all the other requirements in current § 2.22(a)–(b) and § 2.23(a)–(b). After the effective date of this rule, if a TEAS Plus or TEAS RF applicant submits a response to an Office action or other document on paper, the applicant will no longer be charged the additional processing fee under prior § 2.22(c) or § 2.23(c), but must submit a petition requesting acceptance of the paper filing under § 2.146 or § 2.147, as appropriate. PO 00000 Frm 00027 Fmt 4700 Sfmt 4700 37085 Requirements for Paper Submissions: Because paper submissions are permitted in the limited circumstances described above, the current rules addressing the requirements for paper submissions are retained and modified, as necessary, for consistency with the other revisions in this rulemaking. In addition, the rules governing the certificate-of-mailing and Priority Mail Express® procedures, 37 CFR 2.197 and 2.198, are amended to make filing with a certificate of mailing or via Priority Mail Express® available for all submissions, including new applications, on the rare occasions when filing on paper is permitted. This rule also simplifies how the filing date of a submission utilizing these procedures is determined. Streamlining the requirements for filing with a certificate of mailing or via Priority Mail Express® provides greater clarity to parties who seek to use these procedures and make the rules easier to administer for the Office. Although the certificate-of-mailing and Priority Mail Express® procedures are retained, facsimile transmissions, which are currently permitted for certain types of trademark correspondence, are not permitted under this rule for any applications or submissions. Continuing to accept fax transmissions would be counterproductive to maximizing endto-end electronic processing because such submissions require manual processing similar to paper submissions. Proposed Rule: Comments and Responses The USPTO published a proposed rule on May 30, 2018, at 83 FR 24701, soliciting comments on the proposed amendments. In response, the USPTO received comments from four groups and ten individual commenters, representing law firms, organizations, individuals, and other interested parties. Some commenters expressed general support for the amendments, while raising concerns or providing suggestions about particular provisions. Other commenters objected to the amendments mandating electronic filing because of concerns about the stability and usability of the USPTO’s current electronic filing systems or the possibility that some parties may not have adequate access to the internet. In addition, some commenters objected to the requirement that an email address be provided for correspondence, because of concerns that this would be burdensome to applicants or that the public availability of email addresses will be misused by third parties engaging in scams or unwanted solicitations. Similar or related E:\FR\FM\31JYR1.SGM 31JYR1 37086 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations comments have been grouped together and summarized below, followed by the USPTO’s responses. All comments are posted on the USPTO’s website at https://www.uspto.gov/trademark/ trademark-updates-andannouncements/comments-proposedrulemaking-related-changes-trademark. Comment: Several commenters objected to the requirement to file submissions electronically because they believe it will adversely affect parties who do not have adequate internet access or are otherwise unable to file electronically. Response: The USPTO appreciates the concerns raised in these comments and has given them careful consideration. As noted above, more than 99% of all initial applications based on section 1 and/or section 44 of the Act are now filed electronically. For example, in fiscal year 2018, a total of 468,926 applications were filed, with only 144 applications filed on paper. Accordingly, the USPTO has determined that, as a general matter, the requirement to file all submissions electronically would not be impracticable or burdensome for the USPTO’s customers, most of whom already file electronically. Customers who do not have personal access to the internet have the option to use the internet at one of the 85 Patent and Trademark Resource Centers (PTRC) around the U.S. to electronically file submissions with the USPTO. A PTRC is part of a nationwide network of public, state, and academic libraries designated by the USPTO to support the public with federal trademark- and patent-filing assistance. Although PTRC representatives are not attorneys and cannot provide legal advice, they can provide access to USPTO resources and explain the application process and fee schedule. Public libraries provide another resource for parties without internet access. According to the American Library Association Fact Sheet 26, ‘‘Internet Access and Digital Holdings in Libraries,’’ 98% of libraries offer free public internet access and 76% of libraries assist patrons in using online government programs and services (http://www.ala.org/tools/ libfactsheets/alalibraryfactsheet26; accessed Sept. 24, 2018). Applicants, registrants, or parties also have the option to hire an attorney to file electronically on their behalf. Finally, if an extraordinary situation requires a particular applicant, registrant, or party to file on paper, the rule allows such submissions to be considered on petition by the USPTO on a case-by-case basis. VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 Comment: A commenter suggested that the USPTO has already sufficiently advanced its objective of electronic filing by increasing the fees associated with paper filing. Response: As noted above, the USPTO previously revised its rules to increase fees for paper filings to bring the fees nearer to the cost of processing the filings and to encourage customers to use lower-cost electronic options. Despite these fee increases, approximately 12% of applications and registrations under section 1 and/or section 44 of the Act still involve some paper processing. Fee increases have not been effective in eliminating the volume of non-application paper submissions. Therefore, the USPTO has determined that mandatory electronic filing is necessary to attain, as closely as possible, its goal of end-to-end electronic processing. Comment: The USPTO received several comments regarding its electronic systems. Some commenters expressed concerns that the USPTO’s current electronic systems, including the payment system, are not sufficiently reliable to support a mandate of electronic filing, noting that removing the paper filing option eliminates a failsafe way to file if the internet or the electronic filing system is unavailable. Other commenters suggested that the usability of TEAS forms should be improved and stated that TEAS currently lacks forms to address all filing situations. Some commenters noted that TEAS sometimes will not allow submissions due to erroneous status information in the USPTO’s electronic record. Relatedly, a commenter urged that any rulemaking that would remove the paper filing option should be accompanied by the provision of a ‘‘none of the above’’ TEAS form to address the circumstances when the internet or TEAS is unavailable, and that every TEAS form should include a ‘‘miscellaneous’’ section in which free-text comments and evidence can be provided. One commenter asked whether fax transmission will remain as an alternative method for filing if the electronic system is not available and suggested that the USPTO either provide an alternative method that is electronic but not tied to the TEAS system or allow for a deadline extension when the TEAS system is not operational at the time of deadline. Finally, a commenter suggested that the USPTO implement contingency servers and systems that would serve as a backup to the USPTO’s primary electronic systems and reduce the need PO 00000 Frm 00028 Fmt 4700 Sfmt 4700 for paper filings if the primary systems experience an outage. Response: The USPTO recognizes that the successful implementation of mandatory electronic filing requires reliable, well-functioning electronic filing and payment systems. To that end, the USPTO is actively engaged in enhancing the Office’s systems to significantly improve reliability and stability with the result of reducing unscheduled outages and instabilities and mitigating any that do occur. For example, the USPTO recently upgraded the main server that houses the TEAS and payment systems, which will significantly enhance reliability and responsiveness. The USPTO also acknowledges the comments concerning the general usability of TEAS forms and is enhancing its electronic systems to accommodate the requirements of mandatory electronic filing, and also plans to improve the overall functionality of the TEAS forms. In addition, remedies are already available to customers who are unable to file a TEAS submission because of incorrect status information in the USPTO electronic record. To request assistance, such as correction of the status information so that TEAS will allow submission of the appropriate form, customers may call or email the USPTO. Furthermore, when a party is unable to file electronically because of an extraordinary situation, § 2.147(c) allows the party to petition the Director under § 2.146(a)(5), requesting that the Director waive § 2.23(a) and accept a paper submission. Regarding the commenter’s request to retain fax transmission, the rule removes this submission option. As noted above, continuing to accept fax transmissions would be counterproductive to maximizing endto-end electronic processing because such submissions require manual processing similar to paper submissions. If a significant outage or other emergency occurs, the USPTO may consider waiving the relevant rules to accept certain submissions by fax or another means for specific purposes. Regarding the comment requesting the rule allow for a deadline extension when the TEAS system is not operational at the time of deadline, the USPTO has previously waived nonstatutory deadlines on petition when verifiable issues with USPTO systems prevented electronic filing for extended periods. The USPTO may make this option available, if appropriate. However, the USPTO has no authority to extend deadlines set by statute. E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations Comment: One commenter who assists ‘‘low-wealth entrepreneurs’’ with trademark matters noted that, while most of these entrepreneurs have computer access and an email address, some have little understanding of the application and prosecution process and the rules governing this process. This commenter expressed concern that these entrepreneurs would be required to handle email communications from the USPTO that may significantly impact their ability to conduct their business. The commenter urged that USPTO communications be written in a way that ensures understanding by a lay person. Other commenters expressed concerns that the current TEAS forms are too complicated for the lay person, with one commenter suggesting that the USPTO permit applicants to file already completed applications in .pdf form. Response: The USPTO is dedicated to making its communications comprehensible for all customers, but recognizes that the trademark application process is legal in nature and can be complex and difficult to understand for some applicants, regardless of whether submissions are filed on paper or electronically. Filing a trademark application with the USPTO starts a legal proceeding that is governed by U.S. law. Therefore, it may be advisable for an applicant to hire a qualified trademark attorney licensed to practice law in the United States who can give legal advice, help avoid pitfalls with the filing and prosecution of an application, and help enforce trademark rights. Applicants may also seek to avail themselves of free or reduced-fee legal services through such resources as the USPTO’s Law School Clinic Certification Program, the list of Pro Bono IPL Resources provided by the American Bar Association, and the International Trademark Association trademark pro bono clearinghouse pilot program. Further, the USPTO believes that the requirement to file electronically benefits those applicants who are unable to hire an attorney and must represent themselves. Specifically, electronic filing costs less than paper filing, especially if the lower-fee TEAS Plus application filing option is utilized. In addition, electronic filing simplifies and increases the efficiency of the application process for applicants. Those who file electronically are more likely to provide the necessary information in their submissions because the USPTO can update its electronic forms to specifically tailor the requirements for a particular submission and require that the information be validated prior to submission. VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 Consequently, preparing and submitting an application or related document through TEAS is likely to result in a more complete submission and take less time than preparing and mailing the paper equivalent. In addition, the USPTO is dedicated to providing future enhancements to its online filing systems to further simplify the process for applicants by, for example, providing more informative, interactive, and user-friendly forms. Regarding the comment suggesting that applicants be permitted to file completed applications in .pdf form, this approach would be counterproductive to maximizing endto-end electronic processing because submissions in .pdf form require manual processing similar to paper submissions. Comment: A commenter noted that the electronic filing requirement may lead to librarians being asked legal questions by those filing electronic submissions with the USPTO using a library computer and that referring these patrons to a PTRC might not be an effective solution to this problem. Response: The USPTO acknowledges the possibility that library patrons may ask librarians legal questions about the trademark process, but does not believe this is an impediment to implementing mandatory electronic filing. The USPTO presumes that if a librarian is asked for legal information regarding trademark law, or any other area of law, he or she would direct the patron to a local bar association or other appropriate resource. As noted above, filing a trademark application with the USPTO starts a legal proceeding that is governed by U.S. law. It is therefore advisable for their patrons to seek legal guidance from a qualified private trademark attorney. If a patron has questions regarding the trademark application process, a librarian can direct the patron to the USPTO website for information, including the email address and toll-free phone number for the Trademark Assistance Center. In addition, although PTRC library representatives cannot provide legal advice, they can: (1) Provide access to USPTO resources such as search systems and demonstrate how to use search tools to conduct a trademark search; (2) direct patrons to website information and explain the application process/timeline and fees; and (3) offer classes on intellectual property in some locations. Comment: One commenter recommended that the proposed rule include information on the economic impact on entities who still choose the paper filing option and also provide means to reduce the economic burden PO 00000 Frm 00029 Fmt 4700 Sfmt 4700 37087 for that group rather than impose additional costs. Response: The USPTO believes that the overall economic impact on affected parties will be minimal. As noted above, in fiscal year 2018, more than 99% of all initial applications based on section 1 and/or section 44 of the Act were filed electronically—only 144 out of 468,926 applications were filed on paper. Thus, as a practical matter, almost all USPTO customers who may use the USPTO’s electronic systems to file their trademark applications have already done so. Moreover, under the current system TEAS filers are subsidizing those who file on paper because current fees for paper filers do not cover the full cost of processing paper filings. The change to mandatory electronic filing also will improve the quality of Trademark applications and registrations because paper filings require manual uploading of scanned copies into USPTO electronic systems and manual data entry of information in the documents, which results in data-entry errors. Thus, given the additional costs associated with filing applications and related submissions by paper, including higher fees, a requirement to file electronically will likely result in reduced costs overall for most customers who previously filed on paper. Comment: Some commenters objected to the changes to §§ 2.21, 2.23, and 7.4, requiring the provision of an email address for applicants and registrants. One commenter noted that, when an applicant or registrant is represented by counsel, and counsel has provided a correspondence email address, the rule changes impose additional burdens on both the trademark owner and its counsel. Another commenter stated that the TEAS system appears to be open to abuse and fraud, and some commenters were concerned that the requirement to provide the applicant’s email address for correspondence would lead to an increase in scams and misleading solicitations by third parties. One commenter had similar concerns about applicants’ telephone numbers. Response: The amended rules include a requirement for the applicant’s email address, even when the applicant is represented by an attorney. This requirement ensures that the USPTO has an electronic means of contacting the applicant if the attorney’s email address cannot be used, such as when the attorney is suspended or excluded from practice before the USPTO or when representation otherwise ceases. The USPTO does not undertake double correspondence with both the applicant or registrant and the attorney of record. E:\FR\FM\31JYR1.SGM 31JYR1 37088 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations Accordingly, if an applicant or registrant is represented by an attorney, the USPTO corresponds and conducts business only with the attorney. Once representation ceases, under this rule, the USPTO will correspond only with the applicant or registrant. Therefore, the applicant or registrant must provide an email address belonging to the applicant or registrant itself for receipt of correspondence from the USPTO in such a circumstance. The USPTO appreciates the commenters’ concerns that scams and misleading solicitations may increase if the email addresses required under these rules are publicly available in the USPTO’s systems. Currently, all owner email addresses that appear in the ‘‘status’’ view of USPTO records are masked from public view. In addition, the USPTO plans to similarly mask from public view in application and registration files the correspondence email addresses of applicants and registrants who are not represented by counsel to reduce the likelihood that they will be subjected to scams and other unwanted solicitations. The contact information of attorneys appearing in USPTO records, including email addresses and telephone numbers, will remain publicly available and viewable, as this information is publicly available from other sources already and could be used for legitimate purposes by third parties. Comment: One commenter stated that, to the extent that the USPTO does not already comply with the European Union’s General Data Protection Regulation (GDPR), mandating the provision of email addresses of individuals associated with applicants and registrants, will subject the USPTO to this regulation, as well as to the penalties and obligations associated with any data breach. Response: The USPTO is aware of the GDPR and has taken into account any implications it might have for the implementation of these amended rules. Comment: Regarding the proposed amendment of § 2.151 to state that the USPTO will issue ‘‘to the owner’’ a certificate of registration, one commenter asked how the Office will know who ‘‘the owner’’ is, noting that, at most, the Office will know only who the owner of record is. This commenter also noted that, to avoid the need for future rulemaking, the USPTO should consider broadening the requirement for an email address, so that the requirement also encompasses an ‘‘alphanumeric identifier that is capable of receiving electronic communications.’’ The commenter then suggested that the ability of users to VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 input an email address into a TEAS form should be restricted to forms for which doing so actually updates the information. Response: Under amended § 2.151, a certificate of registration will be issued to the owner of record, as indicated in the USPTO electronic record at the time the certificate is issued. The USPTO appreciates the suggestion to use broader terminology than ‘‘email address,’’ but has determined that ‘‘email address’’ is sufficiently accurate and will serve the intended purpose under the rule. The USPTO also appreciates the suggestion regarding the ability to input and update email addresses in TEAS forms, and will take that feedback into account when considering enhancements to TEAS. Comment: One commenter stated the USPTO should provide another filing mechanism to ensure that customers have access to protect their trademark rights without having to incur the uncertainty or additional fees and time associated with filing a separate petition, if having to file on paper. This commenter suggested that a more predictable and desirable remedy in this situation may include submitting with the relevant filing a declaration or other statement attesting to the outage, lack of access, or other reason for not filing electronically, and that the filer may also include evidence of the problem, such as a screen shot. The commenter noted that, to ease the administrative burden on the USPTO and add certainty for applicants and counsel as to permissible exceptions, any USPTO form could acknowledge clear exceptions through use of a box to be checked, but for unusual or unique circumstances, a free-form text box could be provided in the relevant form. Relatedly, one commenter recommended that the rules be modified to provide specific examples of documentation the user can provide to satisfy the USPTO’s requirement for proof that TEAS was unavailable for electronic filing because of a ‘‘technical problem.’’ This commenter suggested that such documentation might include screenshots showing the time and date and the error statement encountered by the user, or a signed declaration under 37 CFR 2.20 indicating the circumstances of the unsuccessful electronic filing. Response: The USPTO believes that a petition describing the reasons for a paper submission is the most efficient and effective mechanism for providing the information necessary to enable the USPTO to determine whether the submission should be accepted. PO 00000 Frm 00030 Fmt 4700 Sfmt 4700 However, the USPTO also agrees with the commenters that the petition process may be simplified by the use of a standard preformatted petition form, listing the most common reasons for requesting acceptance of a paper submission. The user could complete the form by selecting the appropriate reason and include the completed form with the paper submission. The USPTO is working to make such a form available before this rule takes effect. The USPTO appreciates the suggestion that the rules should be modified to provide specific examples of documentation a user can provide to satisfy the USPTO’s requirement for proof that TEAS was unavailable for electronic filing because of a ‘‘technical problem.’’ However, considering the type and nature of evidence that may suffice will differ depending on the circumstances, the USPTO believes it is preferable to enact a rule that provides flexibility as to the type of evidence the USPTO may accept as proof. However, the Office will consider adding such examples in other USPTO materials, such as web pages or the TMEP, to provide guidance. Comment: One commenter urged the USPTO to continue its practice of attempting to contact the correspondent by other means if a transmission to the email address of record fails, including physical correspondence by mail. This commenter noted that email addresses frequently change due to companies adopting new domain names and staffing changes, and that technical issues due to hardware malfunction, software bugs, or malicious cyberattacks increase the chances of electronic communication being disrupted. Response: Although the USPTO previously attempted to contact the correspondent by other means if an email transmission failed and, in some cases, sent a paper copy of the correspondence to the physical address of record, it no longer does so. As the commenter indicated, email transmissions may fail for a variety of reasons outside of the USPTO’s control. Even if the number of failed transmissions are relatively low, attempting to contact the applicant or registrant in every instance is administratively burdensome to the USPTO. In addition, continuing to send paper correspondence after implementing mandatory electronic filing would be counterproductive to the goal of maximizing end-to-end electronic processing. Moreover, under § 2.18(c), applicants and registrants are required to maintain a current and accurate correspondence email address, and to monitor the status E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations of their applications or registrations for any notices issued or action taken by the USPTO, in accordance with § 2.23(d). Comment: One commenter stated that, for a paper filed during a time when TEAS is unavailable, a petition requirement is unneeded and burdensome because the USPTO will usually already be aware of instances when its filing system is broken. This commenter suggested that, when the USPTO is unaware of an outage, the USPTO could respond to a paper filing with a request for a showing by the filer as to the nature and time of the outage. Some commenters objected to any requirement that the filer postpone a filing until such time as a TEAS outage is repaired and another commenter stated that an applicant or registrant should not be required to wait until the day of the deadline to be eligible for an exception to the electronic filing requirement when TEAS is unavailable. Response: When a paper submission is necessary because of an unscheduled TEAS outage or some other technical problem, the USPTO believes that the mechanism of a petition, which permits inclusion of a description of the reasons for the paper submission, is the only appropriate mechanism for providing the information necessary to enable the USPTO to determine whether the particular submission should be accepted. Regarding known TEAS outages, the USPTO intends to continue to follow the approach employed in the past. For example, when verifiable issues with USPTO systems prevent electronic filing for extended periods, the USPTO has waived non-statutory deadlines on petition, such as the deadline for response to a post-registration Office action, as well as petition fees. Even when the USPTO is aware of an outage, a petition would typically still be required, because the party requesting relief would need to establish that the outage prevented electronic filing of the particular submission. However, because the impact of technical problems varies depending on the specific facts, the Office cannot provide advance guidance about all possibilities or specific measures the USPTO may take in the future. The USPTO acknowledges the commenters’ concerns about waiting until the date of the deadline to be eligible for an exception to the requirement to file electronically. However, this requirement applies only if the party is relying on § 2.147(a), which provides that the petition may be submitted if TEAS is unavailable on the date of the deadline for the submission VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 specified in a regulation in parts 2 or 7 of this chapter or in a section of the Act. If an extraordinary situation prevents an applicant or registrant from waiting until the deadline for a submission to be eligible for an exception to the requirement to file electronically, or otherwise postponing a TEAS submission, § 2.147(c) provides that the applicant or registrant may petition the Director under § 2.146(a)(5), requesting a waiver of § 2.21(a) or § 2.23(a) and documenting the nature of the extraordinary situation that prevented the party from submitting the correspondence electronically at the relevant time. Because petitions for extraordinary situations are not automatically granted, and the assessment of what would qualify as an extraordinary situation depends on the specific facts, the Office will address particular situations on a case-by-case basis. Discussion of Regulatory Changes The USPTO amends § 2.2 to revise paragraph (e) to include the abbreviation ‘‘USPTO’’ and paragraphs (f) and (g) to indicate that the definitions of ‘‘TEAS’’ and ‘‘ESTTA’’ include all related electronic systems required to complete an electronic submission through each and to delete the URLs. The USPTO also adds: § 2.2(q), defining ‘‘ETAS;’’ § 2.2(r), defining ‘‘Eastern Time;’’ § 2.2(s), defining ‘‘electronic submission;’’ and § 2.2(t) defining ‘‘USPS.’’ The paragraph designations (q) through (t) do not correspond to the proposed changes published at 83 FR 24701. The revisions to these designations reflect additional changes published in an intervening rule published at 84 FR 31498. The USPTO amends § 2.6 to clarify that § 2.6(a)(1)(ii) applies to applications filed under section 66(a) of the Act. The USPTO also changes the wording ‘‘Reduced Fee (RF)’’ to ‘‘Standard’’ and deletes the reference to § 2.23 in § 2.6(a)(1)(iii), rewords § 2.6(a)(1)(iv) for clarity, and deletes the reference to § 2.23(c) in § 2.6(a)(1)(iv). The USPTO deletes the wording ‘‘and attorney’’ and the reference to TEAS in current § 2.17(d)(1), because it is unnecessary in view of amended § 2.23(a), redesignates § 2.17(d)(1) as § 2.17(d), and deletes § 2.17(d)(2) as unnecessary as a result of updates to the electronic form for filing a power of attorney. The USPTO amends the title to § 2.18(a) to ‘‘Establishing the correspondent’’ and adds introductory text indicating that the following paragraphs set out the procedures by which the Office will determine the PO 00000 Frm 00031 Fmt 4700 Sfmt 4700 37089 address to which correspondence will be sent. The USPTO revises § 2.18(a)(1) to define when the Office will send correspondence to the applicant, registrant, or party to a proceeding and § 2.18(a)(2) to define when the Office will send correspondence to an attorney. The USPTO also deletes current paragraphs (a)(3)–(a)(5), redesignates current § 2.18(a)(6) as § 2.18(b), adds the title ‘‘Ex parte matters,’’ and rewords the text for clarity, and deletes current paragraph (a)(7). The USPTO redesignates current § 2.18(b) as § 2.18(c), changes the title to ‘‘Maintaining and changing the correspondence addresses,’’ and deletes current § 2.18(b)(1)–(4). The USPTO redesignates current § 2.18(c)(1) as § 2.18(d), deletes the word ‘‘Trademark’’ in the first sentence, deletes the second and third sentences in current § 2.18(c)(1), clarifies that the Office will change the address if a new address is provided, adds a cross reference to § 2.18(a), and deletes current § 2.18(c)(2). The USPTO amends § 2.21(a) to require that applications under section 1 or section 44 be filed through TEAS, to require the domicile and email addresses for each applicant, and if the applicant is represented by a qualified practitioner, to require the postal and email addresses for the practitioner. The USPTO rewords § 2.21(a)(5) for clarity, rewords § 2.21(b) and includes a reference to § 2.21(c), and adds § 2.21(c), which sets out an exemption for certain countries. The USPTO amends § 2.22(a) to specify that TEAS Plus applications must satisfy the requirements of § 2.21, to delete current paragraphs (a)(1), (a)(5), and (a)(6) and renumber the remaining paragraphs, to change ‘‘an individual’’ and ‘‘a juristic’’ to ‘‘each individual’’ and ‘‘each juristic’’ in redesignated paragraph (a)(2), to clarify that the requirement in redesignated paragraph (a)(3) applies to domestic partnerships and to add a requirement for the names and citizenship of the active members of a domestic joint venture, to add a requirement for the citizenship of a sole proprietorship and for the name and citizenship of the sole proprietor to redesignated paragraph (a)(4), to correct the cross reference in redesignated paragraph (a)(8) to § 2.6(a)(1)(iv), to delete the first sentence and the reference to a particular format in redesignated paragraph (a)(10), and to delete the URL in redesignated paragraph (a)(11). The USPTO revises § 2.22(b) to indicate that the applicant must comply with amended § 2.23(a) and (b), to delete § 2.22(b)(1) and (2), E:\FR\FM\31JYR1.SGM 31JYR1 37090 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations and to delete the second sentence in § 2.22(c). The USPTO amends the title of § 2.23 to ‘‘Requirement to correspond electronically with the Office and duty to monitor status’’ and deletes the current text of the section. The USPTO revises § 2.23(a) to require that, unless stated otherwise, all trademark correspondence must be submitted through TEAS; revises § 2.23(b) to require that applicants, registrants, and parties to a proceeding provide and maintain a valid email correspondence address; revises current § 2.23(c) to set out an exemption for nationals of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks; and adds § 2.23(d) to indicate that applicants and registrants are responsible for monitoring the status of their applications and registrations. The USPTO amends § 2.24(a) to clarify that only an applicant or registrant that is not domiciled in the U.S. may designate a domestic representative. The USPTO deletes § 2.24(a)(1)(i), redesignates § 2.24(a)(1)(ii) as § 2.24(b) and revises it to require an email and postal address for a designated domestic representative, and deletes § 2.24(a)(2). The USPTO redesignates § 2.24(a)(3) as § 2.24(c) and rewords it for clarity, and deletes current § 2.24(b). The USPTO amends § 2.32(a)(2) to add a statement that if the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide an email address does not apply. The USPTO amends § 2.32(a)(3)(i) to require the legal entity as well as the citizenship of the applicant(s), deletes ‘‘or’’ from § 2.32(a)(3)(iii), adds ‘‘or’’ to § 2.32(a)(3)(iv), and adds § 2.32(a)(3)(v) to require the state of organization of a sole proprietorship and the name and citizenship of a sole proprietor. The USPTO amends § 2.32(d) to add the word ‘‘the’’ before ‘‘fee.’’ The USPTO amends § 2.56(a) to indicate that the specimen must show the mark as actually used in commerce for the identified goods or services and to add cross references to §§ 2.160 and 7.36. The USPTO amends § 2.56(b) and (c) to codify existing requirements for specimens. The USPTO amends § 2.56(d) to set out the requirements for submitting a specimen through TEAS, revises current § 2.56(d)(1) and (2) to set out the exceptions to the requirements, and deletes § 2.56(d)(3) and (4). The USPTO amends the title of § 2.62 to ‘‘Procedure for submitting response,’’ revises § 2.62(a) slightly for clarity, and VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 revises § 2.62(c) for consistency with amended § 2.23 and to add that responses filed via facsimile will not be accorded a date of receipt. The USPTO amends § 2.111(c)(2) for consistency with § 2.147(b). The USPTO amends § 2.146(a) to add the words ‘‘in a trademark case’’ and revises § 2.146(a)(2) and (4) to specify that the regulation applies to ‘‘parts 2, 3, 6, and 7’’ of Title 37. The USPTO adds § 2.147 to set out the requirements for submitting a petition requesting acceptance of a paper submission. The USPTO amends § 2.148 to clarify that it applies to ‘‘parts 2, 3, 6, and 7 of this chapter.’’ The USPTO amends § 2.151 to indicate that the certificate of registration will issue to the owner, to reword the second and third sentences for clarity, and to change the wording ‘‘accompany’’ in the last sentence to ‘‘issue with.’’ The USPTO amends § 2.162 to change the word ‘‘includes’’ to ‘‘issues with the certificate’’ and to add the wording ‘‘or section 71’’ after ‘‘section 8’’ for consistency with § 2.151. The USPTO amends § 2.190(a) to clarify that the paragraph refers to paper documents, and to clarify that the stated mailing address is for documents to be sent by mail and that the address for hand delivery is the address for delivery by private courier or another delivery service. The USPTO amends § 2.190(b) to state that trademark documents filed electronically must be submitted through TEAS and that documents related to TTAB proceedings must be filed through ESTTA, and to delete the URLs. The USPTO rewords § 2.190(c) for clarity and to delete the mailing address and URL. The USPTO amends § 2.190(d) to add ‘‘certified’’ to the title and to delete the first sentence and the wording ‘‘or uncertified’’ in the second sentence and to change ‘‘should’’ to ‘‘must.’’ The USPTO corrects the mailing address in § 2.190(e). The USPTO amends the title of § 2.191 to ‘‘Action of the Office based on the written record’’ and revises the section to state that all business must be recorded in writing, to reword for clarity, and to delete the last sentence. The USPTO amends § 2.193(a)(2) and (b) to delete wording regarding submission of a photocopy or facsimile or by facsimile transmission. The USPTO amends § 2.193(c)(1) to change the wording ‘‘he or she’’ to ‘‘the signer,’’ and revises § 2.193(d) to require submission of the first and last name and the title or position of the signatory and to delete the wording ‘‘in printed or typed form’’ and the wording after ‘‘the PO 00000 Frm 00032 Fmt 4700 Sfmt 4700 signature.’’ The USPTO amends the introductory text of § 2.193(e) to clarify that documents must be signed as specified in paragraphs (e)(1) through (9). The USPTO amends the title and introductory text of § 2.193(e)(5) to add ‘‘or § 2.147’’ after the wording ‘‘§ 2.146.’’ The USPTO also deletes § 2.193(e)(10), rewords § 2.193(g)(1) for clarity, and revises § 2.193(g)(2) to change ‘‘correspondence’’ to ‘‘documents’’ and to delete the last sentence. The USPTO amends the title of § 2.195 to ‘‘Filing date of trademark correspondence.’’ The USPTO deletes current § 2.195(a)–(d) and sets out the procedures for determining the filing date of electronic and paper submissions in § 2.195(a) and (b)(1) through (b)(2), indicates when the Office is closed in § 2.195(b)(3), indicates that email and facsimile submissions are not permitted in § 2.195(c), redesignates current § 2.195(e)(1) through (e)(2)(iii) as § 2.195(d)(1) through (3) and changes U.S Postal Service and United States Postal Service to USPS. The USPTO deletes current § 2.195(e)(3). The USPTO amends the title of § 2.197 to ‘‘Certificate of mailing.’’ The USPTO deletes current § 2.197(a) through (c) and sets out the requirements for obtaining a filing date based on a certificate of mailing in § 2.197(a), the procedure when correspondence is mailed in accordance with paragraph (a) of this section but not received by the Office in § 2.197(b), and the filing date when the certificate of mailing does not meet the requirements in § 2.197(c). The USPTO deletes current § 2.198(a) through (f) and clarifies the filing date of correspondence submitted under this section in amended § 2.198(a) and (b) and the procedures when there is a discrepancy, error, or non-receipt in amended § 2.198(c)–(e). The USPTO amends § 7.1(c) to indicate that the definition of TEAS includes all related electronic systems required to complete an electronic submission through TEAS and to delete a URL. The USPTO amends § 7.1(d) to add ‘‘or the abbreviation USPTO.’’ The USPTO amends the title of § 7.4 to ‘‘International applications and registrations originating from the USPTO—Requirements to electronically file and communicate with the Office.’’ The USPTO amends § 7.4(a) to specify that all correspondence relating to international applications and registrations originating from the USPTO must be submitted through TEAS and include a valid email correspondence address. The USPTO amends § 7.4(b) to require that applicants and registrants provide and E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations maintain a valid email correspondence address and to delete current paragraphs (b)(1) and (b)(2). The USPTO amends § 7.4(c) to set out an exemption for nationals of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks and § 7.4(d) to set out the procedure if TEAS is unavailable or when there is an extraordinary situation, and to delete paragraphs (d)(1)–(d)(6). The USPTO also deletes § 7.4(e). The USPTO amends § 7.11(a) to delete the word ‘‘either,’’ to add a cross reference to § 7.4(a), and to specify that the Office will grant a date of receipt to an international application typed on the official paper form issued by the IB if a paper submission is permitted under § 7.4(c) or accepted on petition pursuant to § 7.4(d). The USPTO also adds the word ‘‘and’’ to § 7.11(a)(10), deletes the word ‘‘and’’ from § 7.11(a)(11), and deletes § 7.11(a)(12). The USPTO amends § 7.21(b) to delete the word ‘‘either,’’ to add a cross reference to § 7.4(a), and to specify that the Office will grant a date of receipt to a subsequent designation typed on the official paper form issued by the IB if a paper submission is permitted under § 7.4(c) or accepted on petition pursuant to § 7.4(d). The USPTO also adds the word ‘‘and’’ to § 7.21(b)(7), deletes the word ‘‘and’’ from § 7.21(b)(8), and deletes § 7.21(b)(9). The USPTO revises § 7.25 to delete the reference to § 2.23 and replace it with a reference to § 2.22 and to delete the reference to § 2.197. This rule revises sections of 37 CFR parts 2 and 7 that were revised in the final rule entitled Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, published at 84 FR 31498 (July 2, 2019). The revisions published here supplement the changes implemented in that earlier rule and do not change the requirements for obtaining U.S. counsel. However, this rule has resulted in a few changes to the revisions that were made in the earlier rule. In this regard, USPTO in the earlier rule had revised § 2.32(a)(2); under that revision, an application would be required to include the ‘‘name and domicile address of each applicant.’’ In this rule, USPTO is amending § 2.32(a)(2) to require an application to also include the ‘‘email address of each applicant’’ (as discussed above, the requirement to provide an email address does not apply if the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks). In addition, this rule includes a reorganization of VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 § 2.22 (‘‘Requirements for a TEAS Plus Application’’), which was revised by the earlier rule, to streamline the regulations and improve clarity. As a result of this reorganization, paragraphs (a)(19), (20), and (21) of § 2.22 of the earlier rule are being redesignated— without change—as paragraphs (a)(17), (18), and (19). Also, the requirement for the applicant’s name and domicile address, which was in § 2.22(a)(1) of the earlier rule, is now a requirement of § 2.21(a)(1) of this rule, and applies to all applicants. Finally, we note that the regulatory revisions that were made in that earlier rule are going into effect on August 3, 2019, whereas the regulatory revisions in this rule are going into effect on October 5, 2019. 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. Regulatory Flexibility Act: For the reasons set forth herein, the Senior PO 00000 Frm 00033 Fmt 4700 Sfmt 4700 37091 Counsel for Regulatory and Legislative Affairs, Office of General Law, of the USPTO 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 amends the regulations to require that applications filed under section 1 or section 44 of the Act, and all submissions regarding an application or registration under section 1, section 44, and section 66(a), be filed electronically. The rule also requires that applicants, registrants, and parties to a proceeding maintain a valid email correspondence address and continue to receive communications from the Office by email. The rule applies to all applicants and registrants unless acceptance of a submission filed on paper or a waiver of the proposed requirements is granted on petition, the applicant/registrant is a national of a country to which the requirements will not apply, or the requirement to file electronically is otherwise excepted, as for certain types of specimens. Applicants for a trademark are not industry specific and may consist of individuals, small businesses, nonprofit organizations, and large corporations. The USPTO does not collect or maintain statistics on smallversus 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 burdens to all entities, including small entities, imposed by these rule changes will be minor procedural requirements on parties submitting applications or documents and communications in connection with an application or registration. The vast majority of users already file and prosecute applications electronically in response to previous initiatives to increase end-to-end electronic processing. For example, the USPTO amended its rules to encourage electronic filing through TEAS and email communication by establishing the TEAS Plus and TEAS RF filing options for applications that are based on section 1 and/or section 44. See 37 CFR 2.6. The TEAS RF filing option is now the most popular filing option among USPTO customers, followed by TEAS Plus. These two filing options currently account for approximately 97% of all trademark applications filed under section 1 and/or section 44, and more than 99% of trademark applications under section 1 and/or section 44 in total are now filed electronically through TEAS, suggesting E:\FR\FM\31JYR1.SGM 31JYR1 37092 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations that most applicants are comfortable with filing and communicating with the USPTO electronically. Furthermore, in January 2017, the USPTO revised its rules to (1) increase fees for paper filings to bring the fees nearer to the cost of processing the filings and encourage customers to use lower-cost electronic options and (2) require that all submissions to the TTAB be filed through ESTTA. As a result of these rule changes, the USPTO is now processing approximately 88% of applications filed under section 1 and/ or section 44 electronically end to end. The changes enacted herein do not impose any additional economic burden unless the applicant or registrant fails to file electronically. In such cases, the economic burden to the applicant or registrant would be the higher paper fee for the submission (if a fee is required) and the fee for the petition seeking acceptance of a submission filed on paper or a waiver of the requirement to file electronically. However, as mentioned above, since the vast majority of current users already file and prosecute applications electronically, the economic impact of filing on paper is expected to be small. Moreover, this rule will lead to a greater adoption of lower filing-fee options and therefore outweigh any cost burdens and likely save applicants and registrants money. For these reasons, this rule is not expected to have a significant economic impact on a substantial number of small entities. C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not 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 online access to the rulemaking docket; (7) attempted to promote coordination, simplification, and harmonization across government agencies and identified goals designed to promote VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 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 rule is not an Executive Order 13771 regulatory action because this rule is not significant under Executive Order 12866. 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 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 PO 00000 Frm 00034 Fmt 4700 Sfmt 4700 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 foreignbased 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. This rulemaking has an overall change on the public burdens within these approved collections including a reduction of 862 in burden hours and a reduction of $5,175 in cost burdens. 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 E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations information displays a currently valid OMB control number. List of Subjects 37 CFR Part 2 Administrative practice and procedure, Courts, Lawyers, Trademarks. 37 CFR Part 7 Administrative practice and procedure, 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 amends parts 2 and 7 of title 37 as follows: § 2.6 Trademark fees. (a) * * * (1) * * * (ii) For filing an application under section 66(a) of the Act, per class— $400.00 (iii) For filing a TEAS Standard application, per class—$275.00 (iv) For filing a TEAS Plus application under § 2.22, per class—$225.00 (v) Additional processing fee under § 2.22(c), per class—$125.00 * * * * * ■ 4. Amend § 2.17 by revising paragraph (d) to read as follows: § 2.17 Recognition for representation. 2. Amend § 2.2 by revising paragraphs (e), (f), and (g) and adding paragraphs (q) through (t) to read as follows: * * * * (d) Power of attorney relating to multiple applications or registrations. 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. * * * * * ■ 5. Revise § 2.18 to read as follows: § 2.2 § 2.18 PART 2—RULES OF PRACTICE IN TRADEMARK CASES 1. The authority citation for part 2 continues to read as follows: ■ Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section 10(c) of Pub. L. 112–29, unless otherwise noted. ■ Definitions. * * * * * (e) The term Office or abbreviation USPTO means the United States Patent and Trademark Office. (f) The acronym TEAS means the Trademark Electronic Application System and, as used in this part, includes all related electronic systems required to complete an electronic submission through TEAS. (g) The acronym ESTTA means the Electronic System for Trademark Trials and Appeals and, as used in this part, includes all related electronic systems required to complete an electronic submission through ESTTA. * * * * * (q) The acronym ETAS means the Electronic Trademark Assignment System and, as used in this part, includes all related electronic systems required to complete an electronic submission through ETAS. (r) Eastern Time means Eastern Standard Time or Eastern Daylight Time, as appropriate. (s) The term electronic submission as used in this part refers to any submission made through an electronic filing system available on the Office’s website, but not through email or facsimile transmission. (t) The abbreviation USPS as used in this part means the U.S. Postal Service. ■ 3. Amend § 2.6 by revising paragraphs (a)(1)(ii) through (v) to read as follows: VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 * Correspondence, with whom held. (a) Establishing the correspondent. The Office will send correspondence as follows: (1) If the applicant, registrant, or party to a proceeding is not represented by an attorney qualified to practice before the Office under § 11.14(a) of this chapter, the Office will send correspondence to the applicant, registrant, or party to the proceeding. (2) If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney. A request to change the correspondence address does not revoke a power of attorney. Except for service of a cancellation petition, the Office will not correspond directly with the applicant, registrant, or a party to a proceeding, or with another attorney from a different firm, unless: (i) The applicant or registrant files a revocation of the power of attorney under § 2.19(a) and/or a new power of attorney that meets the requirements of § 2.17(c); (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; or (iii) Recognition of the attorney has ended pursuant to § 2.17(g). (b) Ex parte matters. Only one correspondence address may be designated in an ex parte matter. (c) Maintaining and changing the correspondence addresses. The applicant, registrant, or party to a PO 00000 Frm 00035 Fmt 4700 Sfmt 4700 37093 proceeding must maintain current and accurate correspondence addresses, as required by § 2.23, for itself and its attorney, if one is designated. If any of these addresses change, a request to change the address, signed in accordance with § 2.193(e)(9), must be promptly filed. (d) Post registration filings under sections 7, 8, 9, 12(c), 15, and 71 of the Act. Even if there is no new power of attorney or written request to change the correspondence address, the Office will change the correspondence address upon the examination of an affidavit under section 8, 12(c), 15, or 71 of the Act, renewal application under section 9 of the Act, or request for amendment or correction under section 7 of the Act, if a new address is provided, in accordance with paragraph (a) of this section. ■ 6. Revise § 2.21 to read as follows: § 2.21 date. Requirements for receiving a filing (a) The Office will grant a filing date to an application under section 1 or section 44 of the Act that is filed through TEAS, is written in the English language, and contains all of the following: (1) The name, domicile address, and email address of each applicant; (2) If the applicant is represented by a practitioner qualified under § 11.14 of this chapter, the practitioner’s name, postal address, and email address; (3) A clear drawing of the mark; (4) A listing of the goods or services; and (5) The filing fee required under § 2.6 for at least one class of goods or services. (b) If the applicant does not satisfy all the elements required in paragraph (a) of this section, the Office will deny a filing date to the application unless the applicant meets the requirements of paragraph (c) of this section. (c) If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraph (a) of this section to file through TEAS and provide an email address do not apply. ■ 7. Revise § 2.22 to read as follows: § 2.22 Requirements for a TEAS Plus application. (a) A trademark/service mark application for registration on the Principal Register under section 1 and/ or section 44 of the Act that meets the requirements for a filing date under § 2.21 will be entitled to a reduced filing fee under § 2.6(a)(1)(iv) if it includes: E:\FR\FM\31JYR1.SGM 31JYR1 37094 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations (1) The applicant’s legal entity; (2) The citizenship of each individual applicant, or the state or country of incorporation or organization of each juristic applicant; (3) If the applicant is a domestic partnership, the names and citizenship of the general partners, or if the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture; (4) If the applicant is a sole proprietorship, the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor; (5) One or more bases for filing that satisfy all the requirements of § 2.34. If more than one basis is set forth, the applicant must comply with the requirements of § 2.34 for each asserted basis; (6) Correctly classified goods and/or services, with an identification of goods and/or services from the Office’s Acceptable Identification of Goods and Services Manual, available through the TEAS Plus form. In an application based on section 44 of the Act, the scope of the goods and/or services covered by the section 44 basis may not exceed the scope of the goods and/or services in the foreign application or registration; (7) If the application contains goods and/or services in more than one class, compliance with § 2.86; (8) A filing fee for each class of goods and/or services, as required by § 2.6(a)(1)(iv); (9) A verified statement that meets the requirements of § 2.33, dated and signed by a person properly authorized to sign on behalf of the owner pursuant to § 2.193(e)(1); (10) If the applicant does not claim standard characters, the applicant must attach a digitized image of the mark. If the mark includes color, the drawing must show the mark in color; (11) If the mark is in standard characters, a mark comprised only of characters in the Office’s standard character set, typed in the appropriate field of the TEAS Plus form; (12) If the mark includes color, a statement naming the color(s) and describing where the color(s) appears on the mark, and a claim that the color(s) is a feature of the mark; (13) If the mark is not in standard characters, a description of the mark; (14) If the mark includes non-English wording, an English translation of that wording; (15) If the mark includes non-Latin characters, a transliteration of those characters; (16) If the mark includes an individual’s name or portrait, either (i) a statement that identifies the living VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 individual whose name or likeness the mark comprises and written consent of the individual, or (ii) a statement that the name or portrait does not identify a living individual (see section 2(c) of the Act). (17) 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; (18) If the application is a concurrent use application, compliance with § 2.42; and (19) An applicant whose domicile is not located within the United States or its territories must designate an attorney as the applicant’s representative, pursuant to § 2.11(a), and include the attorney’s name, postal address, email address, and bar information. (b) In addition to the filing requirements under paragraph (a) of this section, the applicant must comply with § 2.23(a) and (b). (c) If an application does not fulfill the requirements of paragraph (a) of this section, the applicant must pay the processing fee required by § 2.6(a)(1)(v). (d) The following types of applications cannot be filed as TEAS Plus applications: (1) Applications for certification marks (see § 2.45); (2) Applications for collective trademarks and service marks (see § 2.44); (3) Applications for collective membership marks (see § 2.44); and (4) Applications for registration on the Supplemental Register (see § 2.47). ■ 8. Revise § 2.23 to read as follows: § 2.23 Requirement to correspond electronically with the Office and duty to monitor status. (a) Unless stated otherwise in this chapter, all trademark correspondence must be submitted through TEAS. (b) Applicants, registrants, and parties to a proceeding must provide and maintain a valid email address for correspondence. (c) If the applicant or registrant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraphs (a) and (b) of this section do not apply. (d) Notices issued or actions taken by the USPTO are displayed in the USPTO’s publicly available electronic systems. Applicants and registrants are responsible for monitoring the status of PO 00000 Frm 00036 Fmt 4700 Sfmt 4700 their applications and registrations in the USPTO’s electronic systems during the following time periods: (1) At least every six months between the filing date of the application and issuance of a registration; and (2) After filing an affidavit of use or excusable nonuse under section 8 or section 71 of the Act, or a renewal application under section 9 of the Act, at least every six months until the registrant receives notice that the affidavit or renewal application has been accepted. ■ 9. Revise § 2.24 to read as follows: § 2.24 Designation and revocation of domestic representative by foreign applicant. (a) An applicant or registrant that is not domiciled in the United States may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served). (b) The designation, or a request to change or revoke a designation, must set forth the name, email address, and postal address of the domestic representative and be signed pursuant to § 2.193(e)(8). (c) The mere designation of a domestic representative does not authorize the person designated to represent the applicant or registrant. ■ 10. Amend § 2.32 by revising paragraphs (a)(2) and (3) and (d) to read as follows: § 2.32 Requirements for a complete trademark or service mark application. (a) * * * (2) The name, domicile address, and email address of each applicant. If the applicant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide an email address does not apply; (3)(i) The legal entity type and citizenship of the applicant(s); and (ii) If the applicant is a corporation, association, partnership or other juristic person, the jurisdiction (usually state or nation) under the laws of which the applicant is organized; (iii) If the applicant is a domestic partnership, the names and citizenship of the general partners; (iv) If the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture; or (v) If the applicant is a sole proprietorship, the state of organization E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations of the sole proprietorship and the name and citizenship of the sole proprietor. * * * * * (d) The application must include the fee required by § 2.6 for each class of goods or services. * * * * * ■ 11. Revise § 2.56 to read as follows: 2.56 Specimens. (a) An application under section 1(a) of the Act, an amendment to allege use under § 2.76, a statement of use under § 2.88, an affidavit or declaration of continued use or excusable nonuse under § 2.160, or an affidavit or declaration of use or excusable nonuse under § 7.36 must include one specimen per class showing the mark as actually used in commerce on or in connection with the goods or services identified. When requested by the Office as reasonably necessary to proper examination, additional specimens must be provided. (b)(1) A trademark specimen must show use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. To constitute a display associated with the goods, a specimen must show use of the mark directly associated with the goods and such use must be of a pointof-sale nature. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods, packaging for the goods, or displays associated with the goods. (2) A service mark specimen must show the mark as used in the sale of the services, including use in the performance or rendering of the services, or in the advertising of the services. The specimen must show a direct association between the mark and the services. (3) A collective trademark or collective service mark specimen must show how a member uses the mark on the member’s goods or in the sale of the services, including use in the performance or rendering of the services, or advertising of the member’s services. (4) A collective membership mark specimen must show use by members to indicate membership in the collective organization. (5) A certification mark specimen must show how a person other than the owner uses the mark to reflect certification of regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of that person’s goods or services; or that members of a union or other VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 organization performed the work or labor on the goods or services. (c) A clear and legible photocopy, photograph, web page printout, or other similar type of reproduction of an actual specimen that meets the requirements of paragraphs (a) and (b) of this section is acceptable. The reproduction must show the entire specimen or enough of the specimen that the nature of the specimen, the mark, and the good or service with which the mark is used are identifiable. A web page must include the URL and access or print date. An artist’s rendering, a printer’s proof, a computer illustration, digital image, or similar mockup of how the mark may be displayed, or a photocopy of the drawing required by § 2.51, are not proper specimens. (d) The specimen must be submitted through TEAS in a file format designated as acceptable by the Office, unless: (1) The mark consists of a scent, flavor, or similar non-traditional mark type, in which case the specimen may be mailed to the Office, pursuant to § 2.190(a), without resort to the procedures set forth in § 2.147; or (2) Submission on paper is permitted under § 2.23(c) or is accepted on petition pursuant to § 2.147. ■ 12. Revise § 2.62 to read as follows: § 2.62 Procedure for submitting response. (a) Deadline. The applicant’s response to an Office action must be received by the USPTO within six months from the issue date. (b) Signature. The response must be 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). (c) Form. Responses must be submitted through TEAS pursuant to § 2.23(a). Responses sent via email or facsimile will not be accorded a date of receipt. ■ 13. Amend § 2.111 by revising paragraph (c)(2) to read as follows: § 2.111 Filing petition for cancellation. * * * * * (c) * * * (2)(i) In the event that ESTTA is unavailable due to technical problems, or when extraordinary circumstances are present, a petition to cancel may be filed in paper form. A paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the fees therefor and the showing required under this paragraph (c). Timeliness of the PO 00000 Frm 00037 Fmt 4700 Sfmt 4700 37095 paper submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198. (ii) For a petition to cancel a registration on the fifth year anniversary of the date of registration of the mark, a petitioner for cancellation who meets the requirements of § 2.147(b) may submit a petition to the Director to accept a timely filed paper petition to cancel. * * * * * ■ 14. Amend § 2.146 by revising paragraph (a) to read as follows: § 2.146 Petitions to the Director. (a) Petition may be taken to the Director in a trademark case: (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); (2) In any case for which the Act of 1946, Title 35 of the United States Code, or parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations specifies that the matter is to be determined directly or reviewed by the Director; (3) To invoke the supervisory authority of the Director in appropriate circumstances; (4) In any case not specifically defined and provided for by parts 2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or (5) In an extraordinary situation, when justice requires and no other party is injured thereby, to request a suspension or waiver of any requirement of the rules not being a requirement of the Act of 1946. * * * * * ■ 15. Add § 2.147 to read as follows: § 2.147 Petition to the Director to accept a paper submission. (a) Paper submission when TEAS is unavailable on the date of a filing deadline. (1) An applicant or registrant may file a petition to the Director under this section requesting acceptance of a submission filed on paper if: (i) TEAS is unavailable on the date of the deadline for the submission specified in a regulation in part 2 or 7 of this chapter or in a section of the Act; and (ii) The petition is timely filed, pursuant to § 2.197 or § 2.198, on the date of the deadline. (2) The petition must include: (i) The paper submission; (ii) Proof that TEAS was unavailable on the date of the deadline; (iii) A statement of the facts relevant to the petition, supported by a declaration under § 2.20 or 28 U.S.C. E:\FR\FM\31JYR1.SGM 31JYR1 37096 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations 1746 that is signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter; (iv) The fee for a petition filed on paper under § 2.6(a)(15)(i); and (v) Any other required fee(s) under § 2.6 for the paper submission. (b) Certain paper submissions timely filed before the date of a filing deadline. (1) An applicant, registrant, or petitioner for cancellation may file a petition to the Director under this section, requesting acceptance of any of the following submissions that was timely submitted on paper and otherwise met the minimum filing requirements, but not processed or examined by the Office because it was not submitted electronically pursuant to § 2.21(a), § 2.23(a), or § 2.111(c)(1), and the applicant, registrant, or petitioner for cancellation is unable to timely resubmit the document electronically by the deadline: (i) An application seeking a priority filing date with a deadline under section 44(d)(1) of the Act; (ii) A statement of use filed within the last six months of the period specified in section 1(d)(2) of the Act; (iii) An affidavit or declaration of continued use or excusable nonuse with a deadline under section 8(a)(3) or section 71(a)(3) of the Act; (iv) A request for renewal of a registration with a deadline under section 9(a) of the Act; (v) An application for transformation of an extension of protection into a United States application with a deadline under section 70(c) of the Act; or (vi) A petition to cancel a registration under section 14 of the Act on the fifth year anniversary of the date of the registration of the mark. (2) The petition must be filed by not later than two months after the issue date of the notice denying acceptance of the paper filing and must include: (i) A statement of the facts relevant to the petition, supported by a declaration under § 2.20 or 28 U.S.C. 1746 that is signed by the petitioner, someone with legal authority to bind the petitioner (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter; (ii) A copy of the relevant paper submission and proof that it was timely filed; (iii) Proof that a sufficient fee accompanied the original paper submission; VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 (iv) The required fee(s) under § 2.6 for the paper submission; and (v) The relevant petition fee under § 2.6(a)(15). (c) Petition under § 2.146. If the applicant or registrant is unable to meet the requirements under paragraphs (a) or (b) of this section for filing the petition, the applicant or registrant may submit a petition to the Director under § 2.146(a)(5) to request a waiver of § 2.21(a) or § 2.23(a). (d) This section does not apply to requirements for paper submissions to the Trademark Trial and Appeal Board except as specified in paragraph (b)(vi). ■ 16. Revise § 2.148 to read as follows: § 2.148 rules. Director may suspend certain In an extraordinary situation, when justice requires and no other party is injured thereby, any requirement of the rules in parts 2, 3, 6, and 7 of this chapter that is not a requirement of the Act may be suspended or waived by the Director. ■ 17. Revise § 2.151 to read as follows: § 2.151 Certificate. When the Office determines that a mark is registrable, the Office will issue to the owner a certificate of registration on the Principal Register or the Supplemental Register. The certificate will state the application filing date, the act under which the mark is registered, the date of issue, and the number of the registration and will include a reproduction of the mark and pertinent data from the application. A notice of the requirements of sections 8 and 71 of the Act will issue with the certificate. ■ 18. Revise § 2.162 to read as follows: § 2.162 Notice to registrant. When a certificate of registration is originally issued, the Office issues with the certificate a notice of the requirement for filing the affidavit or declaration of use or excusable nonuse under section 8 or section 71 of the Act. However, the affidavit or declaration must be filed within the time period required by section 8 or section 71 of the Act even if this notice is not received. ■ 19. Revise § 2.190 to read as follows: § 2.190 Addresses for trademark correspondence with the United States Patent and Trademark Office. (a) Paper trademark documents. In general, trademark documents to be delivered by the USPS must be addressed to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313–1451. Trademark-related documents to be delivered by hand, PO 00000 Frm 00038 Fmt 4700 Sfmt 4700 private courier, or other delivery service may be delivered during the hours the Office is open to receive correspondence to the Trademark Assistance Center, James Madison Building—East Wing, Concourse Level, 600 Dulany Street, Alexandria, Virginia 22314. (b) Electronic trademark documents. Trademark documents filed electronically must be submitted through TEAS. Documents that relate to proceedings before the Trademark Trial and Appeal Board must be filed electronically with the Board through ESTTA. (c) Trademark assignment documents. Requests to record documents in the Assignment Recordation Branch may be filed electronically through ETAS. Paper documents and cover sheets to be recorded in the Assignment Recordation Branch should be addressed as designated in § 3.27 of this chapter. (d) Requests for certified copies of trademark documents. Paper requests for certified copies of trademark documents must be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313–1450. (e) Certain documents relating to international applications and registrations. International applications under § 7.11, subsequent designations under § 7.21, responses to notices of irregularity under § 7.14, requests to record changes in the International Register under § 7.23 and § 7.24, requests to note replacements under § 7.28, requests for transformation under § 7.31 of this chapter, and petitions to the Director to review an action of the Office’s Madrid Processing Unit must be addressed to: Madrid Processing Unit, 600 Dulany Street, Alexandria, VA 22314–5796. ■ 20. Revise § 2.191 to read as follows: § 2.191 Action of the Office based on the written record. All business with the Office must be transacted in writing. The action of the Office will be based exclusively on the written record. No consideration will be given to any alleged oral promise, stipulation, or understanding when there is disagreement or doubt. ■ 21. Amend § 2.193 by: ■ a. Revising paragraphs (a)(2), (b), (c)(1), (d), (e) introductory text, (e)(5) introductory text, and (e)(9); ■ b. Removing paragraph (e)(10); and ■ c. Revising paragraphs (f) and (g). The revisions read as follows: § 2.193 Trademark correspondence and signature requirements. (a) * * * E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations (2) An electronic signature that meets the requirements of paragraph (c) of this section, personally entered by the person named as the signatory. The Office will accept an electronic signature that meets the requirements of paragraph (c) of this section on correspondence filed on paper or through TEAS or ESTTA. (b) Copy of original signature. If a copy of an original signature is filed, the filer should retain the original as evidence of authenticity. If a question of authenticity arises, the Office may require submission of the original. (c) * * * (1) Personally enter any combination of letters, numbers, spaces and/or punctuation marks that the signer has adopted as a signature, placed between two forward slash (‘‘/’’) symbols in the signature block on the electronic submission; or * * * * * (d) Signatory must be identified. The first and last name, and the title or position, of the person who signs a document in connection with a trademark application, registration, or proceeding before the Trademark Trial and Appeal Board must be set forth immediately below or adjacent to the signature. (e) Proper person to sign. Documents filed in connection with a trademark application or registration must be signed as specified in paragraphs (e)(1) through (9) of this section: * * * * * (5) Petitions to Director under § 2.146 or § 2.147. A petition to the Director under § 2.146 or § 2.147 must be signed by the petitioner, someone with legal authority to bind the petitioner (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 following guidelines: * * * * * (9) Requests to change correspondence address in an application or registration. A notice of change of correspondence address in an application or registration must be signed by the applicant or registrant, someone with legal authority to bind the applicant or registrant (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 following guidelines: (i) If the applicant or registrant is represented by a practitioner qualified to practice before the Office under § 11.14 of this chapter, the practitioner must sign; or VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 (ii) If the applicant or registrant is not represented by a practitioner qualified to practice before the Office under § 11.14, the individual applicant or registrant or someone with legal authority to bind the applicant or registrant (e.g., a corporate officer or general partner of a partnership) must sign. In the case of joint applicants or joint registrants, all must sign. (f) Signature as certification. The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any document by any person, whether a practitioner or nonpractitioner, constitutes a certification under § 11.18(b) of this chapter. Violations of § 11.18(b) of this chapter may jeopardize the validity of the application or registration, and may result in the imposition of sanctions under § 11.18(c) of this chapter. Any practitioner violating § 11.18(b) of this chapter may also be subject to disciplinary action. See § 11.18(d) and § 11.804 of this chapter. (g) Separate copies for separate files. (1) Since each file must be complete in itself, a separate copy of every document filed in connection with a trademark application, registration, or inter partes proceeding must be furnished for each file to which the document pertains, even though the documents filed in multiple files may be identical. (2) Parties should not file duplicate copies of documents in a single application, registration, or proceeding file, unless the Office requires the filing of duplicate copies. * * * * * ■ 22. Revise § 2.195 to read as follows: § 2.195 Filing date of trademark correspondence. The filing date of trademark correspondence is determined as follows: (a) Electronic submissions. The filing date of an electronic submission is the date the Office receives the submission, based on Eastern Time, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia. (b) Paper correspondence. The filing date of a submission submitted on paper is the date the Office receives the submission, except as follows: (1) Priority Mail Express®. The filing date of the submission is the date of deposit with the USPS, if filed pursuant to the requirements of § 2.198. (2) Certificate of mailing. The filing date of the submission is the date of deposit with the USPS, if filed pursuant to the requirements of § 2.197. PO 00000 Frm 00039 Fmt 4700 Sfmt 4700 37097 (3) Office closed. The Office is not open to receive paper correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. (c) Email and facsimile submissions. Email and facsimile submissions are not permitted and, if submitted, will not be accorded a date of receipt. (d) Interruptions in USPS. If the Director designates a postal service interruption or emergency within the meaning of 35 U.S.C. 21(a), any person attempting to file correspondence by Priority Mail Express® Post Office to Addressee service who was unable to deposit the correspondence with the USPS due to the interruption or emergency may petition the Director to consider such correspondence as filed on a particular date in the Office. The petition must: (1) Be filed promptly after the ending of the designated interruption or emergency; (2) Include the original correspondence or a copy of the original correspondence; and (3) Include a statement that the correspondence would have been deposited with the USPS on the requested filing date but for the designated interruption or emergency in Priority Mail Express® service; and that the correspondence attached to the petition is the original correspondence or a true copy of the correspondence originally attempted to be deposited as Priority Mail Express® on the requested filing date. ■ 23. Revise § 2.197 to read as follows: § 2.197 Certificate of mailing. (a) The filing date of correspondence submitted under this section is the date of deposit with the USPS if the correspondence: (1) Is addressed as set out in § 2.190 and deposited with the USPS with sufficient postage as first-class mail; and (2) Includes a certificate of mailing for each piece of correspondence that: (i) Attests to the mailing and the address used; (ii) Includes the name of the document and the application serial number or USPTO reference number, if assigned, or registration number to which the document pertains; (iii) Is signed separately from any signature for the correspondence by a person who has a reasonable basis to expect that the correspondence would be mailed on the date indicated; and (iv) Sets forth the date of deposit with the USPS. (b) If correspondence is mailed in accordance with paragraph (a) of this section, but not received by the Office, E:\FR\FM\31JYR1.SGM 31JYR1 37098 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations the party who mailed such correspondence may file a petition to the Director under § 2.146(a)(2) to consider such correspondence filed in the Office on the date of deposit with the USPS. The petition must: (1) Be filed within two months after the date of mailing; (2) Include a copy of the previously mailed correspondence and certificate; and (3) Include a verified statement attesting to the facts of the original mailing. (c) If the certificate of mailing does not meet the requirements of paragraph (a)(2) of this section, the filing date is the date the Office receives the submission. ■ 24. Revise § 2.198 to read as follows: § 2.198 Filing of correspondence by Priority Mail Express®. (a) The filing date of correspondence submitted under this section is the date of deposit with the USPS, as shown by the ‘‘date accepted’’ on the Priority Mail Express® label or other official USPS notation. (b) If the USPS deposit date cannot be determined, the filing date is the date the Office receives the submission. (c) If there is a discrepancy between the filing date accorded by the Office to the correspondence and the ‘‘date accepted,’’ the party who submitted the correspondence may file a petition to the Director under § 2.146(a)(2) to accord the correspondence a filing date as of the ‘‘date accepted.’’ The petition must: (1) Be filed within two months after the date of deposit; (2) Include a true copy of the Priority Mail Express® mailing label showing the ‘‘date accepted,’’ and any other official notation by the USPS relied upon to show the date of deposit; and (3) Include a verified statement attesting to the facts of the original mailing. (d) If the party who submitted the correspondence can show that the ‘‘date accepted’’ was incorrectly entered or omitted by the USPS, the party may file a petition to the Director under § 2.146(a)(2) to accord the correspondence a filing date as of the date the correspondence is shown to have been deposited with the USPS. The petition must: (1) Be filed within two months after the date of deposit; (2) Include proof that the correspondence was deposited in the Priority Mail Express® Post Office to Addressee service prior to the last scheduled pickup on the requested filing date. Such proof must be VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 corroborated by evidence from the USPS or evidence that came into being within one business day after the date of deposit; and (3) Include a verified statement attesting to the facts of the original mailing. (e) If correspondence is properly addressed to the Office pursuant to § 2.190 and deposited with sufficient postage in the Priority Mail Express® Post Office to Addressee service of the USPS, but not received by the Office, the party who submitted the correspondence may file a petition to the Director under § 2.146(a)(2) to consider such correspondence filed in the Office on the USPS deposit date. The petition must: (1) Be filed within two months after the date of deposit; (2) Include a copy of the previously mailed correspondence showing the number of the Priority Mail Express® mailing label thereon; and (3) Include a verified statement attesting to the facts of the original mailing. PART 7—RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS 25. The authority citation for part 7 continues to read as follows: ■ Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted. 26. Amend § 7.1 by revising paragraphs (c) and (d) to read as follows: ■ § 7.1 Definitions of terms as used in this part. * * * * * (c) The acronym TEAS means the Trademark Electronic Application System, and, as used in this part, includes all related electronic systems required to complete an electronic submission through TEAS. (d) The term Office or the abbreviation USPTO means the United States Patent and Trademark Office. * * * * * ■ 27. Revise § 7.4 to read as follows: § 7.4 International applications and registrations originating from the USPTO— Requirements to electronically file and communicate with the Office. (a) Unless stated otherwise in this chapter, all correspondence filed with the USPTO relating to international applications and registrations originating from the USPTO must be submitted through TEAS and include a valid email address for correspondence. PO 00000 Frm 00040 Fmt 4700 Sfmt 4700 (b) Applicants and registrants under this section must provide and maintain a valid email address for correspondence with the Office. (c) If an applicant or registrant under this section is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirements of paragraphs (a) and (b) of this section do not apply. (d) If TEAS is unavailable, or in an extraordinary situation, an applicant or registrant under this section who is required to file a submission through TEAS may submit a petition to the Director under § 2.146(a)(5) and (c) of this chapter to accept the submission filed on paper. ■ 28. Amend § 7.11 by: ■ a. Revising paragraphs (a) introductory text and (a)(10) and (11); ■ b. Removing paragraph (a)(12); and ■ c. Revising paragraph (b). The revisions read as follows: § 7.11 Requirements for international application originating from the United States. (a) The Office will grant a date of receipt to an international application that is filed through TEAS in accordance with § 7.4(a), or typed on the official paper form issued by the International Bureau, if permitted under § 7.4(c) or accepted on petition pursuant to § 7.4(d). The international application must include all of the following: * * * * * (10) If the application is filed through TEAS, the international application fees for all classes, and the fees for all designated Contracting Parties identified in the international application (see § 7.7); and (11) A statement that the applicant is entitled to file an international application in the Office, specifying that applicant: Is a national of the United States; has a domicile in the United States; or has a real and effective industrial or commercial establishment in the United States. Where an applicant’s address is not in the United States, the applicant must provide the address of its U.S. domicile or establishment. (b) For requirements for certification, see § 7.13. ■ 29. Amend § 7.21 by: ■ a. Revising paragraphs (b) introductory text and (b)(7) and (8); ■ b. Removing paragraph (b)(9); and ■ c. Revising paragraph (c). The revisions read as follows: § 7.21 Subsequent designation. * * * * * (b) The Office will grant a date of receipt to a subsequent designation that E:\FR\FM\31JYR1.SGM 31JYR1 Federal Register / Vol. 84, No. 147 / Wednesday, July 31, 2019 / Rules and Regulations AGENCY: Pollution Control Bureau by a letter dated September 12, 2018. The revision updates the National Ambient Air Quality Standards (NAAQS) in the Chattanooga portion of the Tennessee SIP. The amendments in the Tennessee SIP reflect recent revisions made to the federal NAAQS. EPA is approving the changes because they are consistent with the Clean Air Act (CAA or Act). DATES: This rule will be effective August 30, 2019. ADDRESSES: EPA has established a docket for this action under Docket ID No. EPA–R04–OAR–2019–0004. All documents in the docket are listed on the www.regulations.gov website. Although listed in the index, some information is not publicly available, i.e., Confidential Business Information or other information whose disclosure 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 www.regulations.gov or in hard copy at the Air Regulatory Management Section, Air Planning and Implementation Branch, Air and Radiation Division (formerly the Air, Pesticides and Toxics Management Division), U.S. Environmental Protection Agency, Region 4, 61 Forsyth Street, SW, Atlanta, Georgia 30303–8960. EPA requests that if at all possible, 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 a.m. to 4:30 p.m., excluding Federal holidays. FOR FURTHER INFORMATION CONTACT: Evan Adams of the Air Regulatory Management Section, Air Planning and Implementation Branch, Air and Radiation Division, U.S. Environmental Protection Agency, Region 4, 61 Forsyth Street SW, Atlanta, Georgia 30303–8960. The telephone number is (404) 562– 9009. Mr. Adams can also be reached via electronic mail at adams.evan@ epa.gov. SUPPLEMENTARY INFORMATION: The Environmental Protection Agency (EPA or Agency) is taking final action to approve a revision to the Chattanooga portion of the Tennessee State Implementation Plan (SIP), provided by the State of Tennessee, through the Tennessee Department of Environment and Conservation from Chattanooga/Hamilton County Air I. Background Sections 108 and 109 of the CAA govern the establishment, review, and revision, as appropriate, of the NAAQS to protect public health and welfare for six criteria pollutants: ozone, particulate matter (PM) (including fine particulate matter, or PM2.5), carbon monoxide, lead, sulfur dioxide, and nitrogen dioxide. The CAA requires periodic review of the air quality criteria, the is filed through TEAS in accordance with § 7.4(a), or typed on the official paper form issued by the International Bureau, if permitted under § 7.4(c) or accepted on petition pursuant to § 7.4(d). The subsequent designation must contain all of the following: * * * * * (7) The U.S. transmittal fee required by § 7.6; and (8) If the subsequent designation is filed through TEAS, the subsequent designation fees (see § 7.7). (c) If the subsequent designation is accorded a date of receipt, the Office will then forward the subsequent designation to the International Bureau. * * * * * ■ 30. Amend § 7.25 by revising paragraph (a) to read as follows: § 7.25 Sections of part 2 applicable to extension of protection. (a) Except for §§ 2.21, 2.22, 2.76, 2.88, 2.89, 2.130, 2.131, 2.160 through 2.166, 2.168, 2.173, 2.175, and 2.181 through 2.186, 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. * * * * * Dated: July 25, 2019. Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. [FR Doc. 2019–16259 Filed 7–30–19; 8:45 am] BILLING CODE 3510–16–P ENVIRONMENTAL PROTECTION AGENCY 40 CFR Part 52 [EPA–R04–OAR–2019–0004; FRL–9997–38Region 4] Air Plan Approval; TN; Updates to the National Ambient Air Quality Standards for Chattanooga Environmental Protection Agency (EPA). ACTION: Final rule. SUMMARY: VerDate Sep<11>2014 19:26 Jul 30, 2019 Jkt 247001 PO 00000 Frm 00041 Fmt 4700 Sfmt 4700 37099 science upon which the standards are based, and the standards themselves. EPA’s regulatory provisions that govern the NAAQS are found at 40 CFR 50, National Primary and Secondary Ambient Air Quality Standards. EPA is taking final action to approve changes to the Chattanooga portion of the Tennessee SIP that were provided to EPA through a letter dated September 12, 2018.1 EPA is finalizing approval of the portions of this SIP revision that make changes to air quality rules in Part II, Chapter 4, Article II, Section 4–41.2 The September 12, 2018, SIP revision makes changes to the SIP that deletes the current version and substitutes a revised version of Part II, Chapter 4, Article II, Section 4–41, Rule 21 of the Chattanooga City Code ‘‘Ambient Air Quality Standards.’’ Hamilton County revised its rule to be consistent with changes to the federal NAAQS. In a notice of proposed rulemaking (NPRM) published on March 29, 2019 (84 FR 11917), EPA proposed to approve the aforementioned changes to Part II, Chapter 4, Article II, Section 4–41 in the Chattanooga portion of the Tennessee SIP, which address the NAAQS. The NPRM provides additional details regarding EPA’s action. Comments on the NPRM were due on or before April 29, 2019. II. Response to Comments EPA received one potentially adverse comment on its March 29, 2019, NPRM. This comment is provided in the docket for today’s final action. EPA has summarized and responded to the comment below. Comment: The Commenter notes that ‘‘high levels of ground level ozone, airborne particles and other matter’’ pose a threat to human health, ‘‘making this proposal a public concern.’’ The Commenter also states that any changes to the SIP ‘‘must consider any changes in location of monitoring sites, protocol of air quality monitoring and quality standards sample so that there is no heteroskedasticity which could lead to corruption of time measure data.’’ According to the Commenter, if any of these changes have been made, ‘‘further scrutiny should be made concerning the motive or whether data has been skewed in favor of noncompliance.’’ The Commenter further states that it is ‘‘important that careful consideration and verification be given to this proposed revision.’’ 1 EPA notes that the Agency received the SIP revision on September 18, 2018. 2 As discussed in the NPRM, EPA does not recognize gaseous fluorides as criteria pollutants and EPA is not acting to approve the standard related to gaseous fluorides. See 84 FR 11917, n.4. E:\FR\FM\31JYR1.SGM 31JYR1

Agencies

[Federal Register Volume 84, Number 147 (Wednesday, July 31, 2019)]
[Rules and Regulations]
[Pages 37081-37099]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-16259]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2017-0004]
RIN 0651-AD15


Changes to the Trademark Rules of Practice To Mandate Electronic 
Filing

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) amends the Rules of Practice in Trademark Cases and the Rules 
of Practice in Filings Pursuant to the Protocol Relating to the Madrid 
Agreement Concerning the International Registration of Marks to mandate 
electronic filing of trademark applications and all submissions 
associated with trademark applications and registrations, and to 
require the designation of an email address for receiving USPTO 
correspondence, with limited exceptions. This rule advances the USPTO's 
IT strategy to achieve complete end-to-end electronic processing of 
trademark-related submissions, thereby improving administrative 
efficiency by facilitating electronic file management, optimizing 
workflow processes, and reducing processing errors.

DATES: This rule is effective on October 5, 2019.

FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy 
Commissioner for Trademark Examination Policy, [email protected], 
(571) 272-8946.

SUPPLEMENTARY INFORMATION: 
    Purpose: The USPTO revises the rules in parts 2 and 7 of title 37 
of the Code of Federal Regulations to require electronic filing through 
the USPTO's

[[Page 37082]]

Trademark Electronic Application System (TEAS) of all trademark 
applications based on section 1 and/or section 44 of the Trademark Act 
(Act), 15 U.S.C. 1051, 1126, and submissions filed with the USPTO 
concerning applications or registrations. These submissions include, 
for example, responses to Office actions, registration maintenance 
filings, international applications, subsequent designations, and 
direct filings with the USPTO relating to extensions of protection 
through the international registration system. In addition, this 
rulemaking requires the designation of an email address for receiving 
USPTO correspondence concerning these submissions.
    The requirement to file an initial application through TEAS does 
not apply to applications based on section 66(a) of the Act, 15 U.S.C. 
1141f, because these applications are initially filed with the 
International Bureau (IB) of the World Intellectual Property 
Organization and subsequently transmitted electronically to the USPTO. 
However, section 66(a) applicants and registrants are required to 
electronically file all subsequent submissions concerning their 
applications or registrations and to designate an email address for 
receiving USPTO correspondence. This rulemaking does not encompass 
electronic filing of submissions made to the Trademark Trial and Appeal 
Board (TTAB) in ex parte or inter partes proceedings. Such submissions 
are currently required to be filed through the USPTO's Electronic 
System for Trademark Trials and Appeals (ESTTA).
    This rule is intended to maximize end-to-end electronic processing 
of applications and related submissions, as well as registration 
maintenance filings. Achieving complete end-to-end electronic 
processing of all trademark submissions is an IT objective of the 
USPTO. End-to-end electronic processing means that an application and 
all application- and registration-related submissions are filed and 
processed electronically, and any related correspondence between the 
USPTO and the relevant party is conducted entirely electronically. 
Thus, an application that is processed electronically end to end would 
be filed through TEAS, and all submissions related to the application, 
such as voluntary amendments, responses to Office actions, or 
allegations of use, would also be filed through TEAS. With this change, 
outgoing USPTO correspondence regarding the application will be sent by 
email. Likewise, all submissions related to a registration must be 
filed through TEAS and outgoing USPTO correspondence regarding the 
registration will be sent by email.
    Although more than 99% of applications under section 1 or section 
44 are now filed electronically, just under 88% are currently 
prosecuted electronically from end to end. This means that 
approximately 12% of these filings still involve paper processing. 
Prior reductions in the filing fees for electronic submissions resulted 
in almost 100% of new applications being filed electronically, but have 
not achieved complete end-to-end electronic processing. By mandating 
electronic filing of trademark applications and submissions concerning 
applications or registrations through TEAS, the amended rules will 
reduce paper processing to an absolute minimum and thus maximize end-
to-end electronic processing.
    End-to-end electronic processing of all applications, related 
correspondence, statutorily required registration maintenance 
submissions, and other submissions will benefit trademark customers and 
increase the USPTO's administrative efficiency by facilitating 
electronic file management, optimizing workflow processes, and reducing 
processing errors. Paper submissions hinder efficiency and accuracy and 
are more costly to process than electronic submissions because they 
require manual uploading of scanned copies of the documents into the 
USPTO electronic records system and manual data entry of information in 
the documents. Electronic submissions through TEAS, on the other hand, 
generally do not require manual processing and are automatically 
categorized, labeled, and uploaded directly into an electronic file in 
the USPTO electronic records system for review by USPTO employees and 
the public. If a TEAS submission contains amendments or other changes 
to the information in the record, often those amendments and changes 
are automatically entered into the electronic records system. 
Furthermore, TEAS submissions are more likely to include all necessary 
information because the USPTO can update its forms to specifically 
tailor the requirements for a particular submission and require that 
the information be validated prior to submission. Consequently, 
preparing and submitting an application or related document, or a 
registration maintenance filing, through TEAS is likely to result in a 
more complete submission and take less time than preparing and mailing 
the paper equivalent. Thus, TEAS submissions help ensure more complete 
filings, expedite processing, shorten pendency, minimize manual data 
entry and potential data-entry errors, and eliminate the potential for 
lost or missing papers.
    This rule also requires the designation of an email address for 
receiving USPTO correspondence concerning these submissions, which is 
either that of the applicant or registrant, if unrepresented, or an 
authorized attorney, if one has been appointed. Currently, in order to 
receive a filing date for a new application under section 1 or section 
44, the USPTO requires, among other things, that the applicant 
designate an ``address for correspondence.'' 37 CFR 2.21(a)(2). 
Applicants who filed using the TEAS Plus or TEAS Reduced Fee (TEAS RF) 
filing options have been required to designate an email address for 
correspondence, while those who filed on paper or through the regular 
TEAS application were permitted to designate a postal address. This 
rule requires applicants and registrants, and parties to a proceeding 
before the TTAB, to provide and maintain an email address for 
correspondence. The requirement to designate an email address for 
receiving USPTO correspondence benefits the USPTO and its customers by 
reducing costs and increasing efficiency. Email correspondence can be 
sent, received, and processed faster than paper correspondence, which 
must be printed, collated, scanned, and uploaded to the electronic 
records system, and mailed domestically or internationally, at greater 
expense. Under this rule, applicants and registrants, and parties to a 
proceeding before the TTAB, are also required to provide and maintain a 
postal address. The domicile address specified for an applicant, 
registrant, or party to a proceeding will be treated by the Office as 
the postal address for the applicant, registrant, or party. In the rare 
circumstance where mail cannot be delivered to its domicile address, 
the applicant, registrant, or party may request to designate a postal 
address where mail can be delivered.
    A qualified practitioner representing an applicant, registrant, or 
party also is required to provide and maintain a postal address. This 
requirement ensures the USPTO's ability to contact the applicant, 
registrant, party, or practitioner by mail in certain limited 
circumstances, such as when an appointed practitioner is suspended or 
excluded from practice before the USPTO and is no longer the 
correspondent, or when the Office sends a physical registration 
certificate.
    Previous Initiatives to Increase End-to-End Electronic Processing: 
The

[[Page 37083]]

USPTO previously amended its rules to encourage electronic filing 
through TEAS and email communication by establishing the TEAS Plus and 
TEAS RF filing options for applications based on section 1 and/or 
section 44. See 37 CFR 2.6. These filing options have lower application 
fees than a regular TEAS application, but, unlike a regular TEAS 
application, they require the applicant to (1) provide, authorize, and 
maintain an email address for receiving USPTO correspondence regarding 
the application and (2) file certain application-related submissions 
through TEAS. See 37 CFR 2.22, 2.23. If the applicant does not fulfill 
these requirements, the applicant must pay an additional processing 
fee. See 37 CFR 2.6, 2.22, 2.23.
    Despite these additional requirements, and the potential additional 
processing fee for noncompliance, the TEAS RF filing option is now the 
most popular filing option among USPTO customers, followed by TEAS 
Plus. These two filing options currently account for nearly 99% of all 
new trademark applications filed under section 1 and/or section 44, 
suggesting that applicants are comfortable with filing and 
communicating with the USPTO electronically.
    Furthermore, in January 2017, the USPTO revised its rules to 
increase fees for paper filings to bring the fees nearer to the cost of 
processing the filings and encourage customers to use lower-cost 
electronic options. As a result of these rule changes, the USPTO is now 
processing nearly 88% of applications filed under section 1 and/or 
section 44 electronically end to end.

Discussion of Rule Changes

    (1) New Applications. Under this rule, Sec.  2.21 is amended to 
require applicants to file electronically, through TEAS, any trademark, 
service mark, certification mark, collective membership mark, or 
collective trademark or service mark application for registration on 
the Principal or Supplemental Register under section 1 and/or section 
44. As noted above, the requirement to file an application through TEAS 
does not apply to applications based on section 66(a) because they are 
initially processed by the IB and subsequently transmitted 
electronically to the USPTO.
    The TEAS RF filing option, which required applicants to maintain an 
email address for receiving USPTO correspondence regarding the 
application and to file the application and related submissions through 
TEAS, will become the default, or ``standard,'' filing option and will 
be renamed ``TEAS Standard'' on the effective date of this rule. The 
filing fee for this option remains at $275 per class. The TEAS Plus 
option also remains at $225 per class, while the TEAS option under 37 
CFR 2.6(a)(1)(ii) at $400 per class is eliminated. However, the per-
class fee of $400 in Sec.  2.6(a)(1)(ii), which is the current filing 
fee for applications under section 66(a), is retained as the filing fee 
for such applications.
    Under this rule, an application filed on paper under section 1 and/
or section 44 will not receive a filing date unless it falls under one 
of the limited exceptions discussed below.
    (2) Additional Processing Fee. Previously, the additional 
processing fee under Sec.  2.6(a)(1)(v) applied to TEAS Plus and TEAS 
RF applications that failed to meet the requirements under Sec.  
2.22(a) or Sec.  2.23(a) at filing, and to TEAS Plus and TEAS RF 
applications when certain submissions were not filed through TEAS or 
when the applicant failed to maintain a valid email address for receipt 
of communications from the Office. Under this rule, the processing fee 
applies only to TEAS Plus applications that fail to meet the amended 
filing requirements under Sec.  2.22(a). All applicants and 
registrants, except those specifically exempted, are now required to 
electronically file any submissions in connection with an application 
or registration and to designate and maintain an email address for 
correspondence. A TEAS Plus or TEAS Standard (previously TEAS RF) 
applicant who meets the amended filing requirements, but thereafter 
seeks acceptance of a submission filed on paper, pursuant to new Sec.  
2.147, or a waiver of the requirement to file such submissions 
electronically, must then pay the relevant paper filing fee and the 
paper petition fee for any submission filed on paper.
    (3) Submissions Required to Be Filed Through TEAS. This rule amends 
Sec.  2.23 to also require that correspondence concerning a trademark 
application or registration under section 1, section 44, or section 
66(a) be filed through TEAS, except for correspondence required to be 
submitted to the Assignment Recordation Branch or through ESTTA. 
Although all correspondence is required to be filed electronically, the 
USPTO recognizes that there may be certain circumstances when a paper 
filing is necessary. For those instances, the Office codifies a new 
regulatory section, at 37 CFR 2.147, which sets out a procedure for 
requesting acceptance of paper submissions under particular 
circumstances. This section is discussed below in the explanation of 
the limited exceptions to the amended requirements.
    Although this rule requires correspondence to be filed through 
TEAS, current USPTO practice regarding informal communications is 
unchanged. Thus, for example, an applicant or an applicant's attorney 
may still conduct informal communications with an examining attorney 
regarding a particular application by telephone or email. See Trademark 
Manual of Examining Procedure (TMEP) Sec.  709.05.
    (4) Email Correspondence Address. This rule amends Sec. Sec.  2.21, 
2.23, and 7.4 to require that applicants and registrants provide a 
valid email address for themselves and any appointed practitioner for 
receipt of correspondence from the USPTO. Thus, except in the case of 
nationals from exempted treaty countries, as discussed below, the 
USPTO's required method of corresponding with applicants and 
registrants is via Office actions and notices sent to the designated 
email address. If the email transmission were to fail because, for 
example, the applicant or registrant provided an incorrect email 
address, the recipient's mailbox is full, or the email provider has a 
service outage, the USPTO will not attempt to contact the correspondent 
designated pursuant to Sec.  2.18(a) by other means. Instead, pursuant 
to amended Sec.  2.23(d), the applicant or registrant is responsible 
for monitoring the status of the application or registration using the 
USPTO's Trademark Status and Document Retrieval (TSDR) system, which 
displays any USPTO Office actions and notices that have issued, any 
submissions properly filed with the USPTO, and any other actions taken 
by the USPTO.
    As noted above, applications under section 66(a) are processed and 
transmitted electronically to the USPTO from the IB. These applications 
do not include an email address for receiving USPTO correspondence, and 
the USPTO does not anticipate the IB will update its systems to include 
email addresses prior to implementation of this rule. In addition, only 
2.9% of Madrid applications were approved for publication upon first 
action in fiscal year 2017. Therefore, the USPTO believes it is 
appropriate to waive the requirement for an email address prior to 
publication in this limited situation and until such time as the IB's 
systems are updated. However, Madrid applicants are subject to the 
requirements under Sec. Sec.  2.23(b) and 2.32(a)(2), (4) to file all 
submissions electronically and to provide an email

[[Page 37084]]

address on such submissions for receipt of correspondence from the 
USPTO.
    Under Sec.  2.18(c), an applicant, registrant, or party to a 
proceeding must maintain a current and accurate correspondence address 
for itself and its qualified practitioner, if one is designated.
    (5) Changes from the Proposed Rule. The USPTO further amends Sec.  
2.22(a) by revising amended paragraph (a)(3) to limit the requirement 
for the names and citizenship of general partners to domestic 
partnerships and to add a requirement for the names and citizenship of 
active members of domestic joint ventures. These changes are added for 
consistency with current Sec. Sec.  2.32(a)(3)(iii) and (iv). The USPTO 
also revises Sec.  2.22(a)(4) to set out the requirements for sole 
proprietorships in order to further clarify the requirements for TEAS 
Plus applicants at filing.
    The USPTO amends Sec.  2.32(a)(3)(i) to require the applicant's 
legal entity type in addition to its citizenship and adds Sec.  
2.32(a)(1)(v) to require the state of organization of a sole 
proprietorship and the name and citizenship of the sole proprietor. 
These requirements are added for consistency with current Sec.  
2.22(a)(2) and new Sec.  2.22(a)(4).
    The USPTO further amends Sec.  2.56(a) to include cross references 
to Sec.  2.160 and Sec.  7.36 and also amends Sec.  2.56(b) and (c) to 
update these paragraphs with criteria for electronic submissions and 
better conform them to existing requirements in the Trademark Act and 
precedential case law for specimens of use, including that web pages 
must show the URL and access or print date. The amendments also more 
clearly conform the rule language to the statutory requirements for use 
in commerce by requiring that the specimen show use of the mark placed 
on the goods, on containers or packaging for the goods, or on labels or 
tags affixed to the goods.
    The USPTO further amends Sec.  2.147(b)(2) to require a copy of the 
previously mailed paper submission since the USPTO will not process the 
original submission and will destroy it after 90 days. This requirement 
is analogous to the requirements in Sec. Sec.  2.64(a)(2)(i), 
2.197(b)(2), and 2.198(e)(2) for a copy of previously submitted 
correspondence in order to establish timeliness.
    The USPTO further amends Sec.  7.25 to delete the proposed cross 
reference to Sec.  2.198 and to delete the cross reference to Sec.  
2.197 since these sections could be applicable to extensions of 
protection in some circumstances.
    Limited Exceptions for Paper Submissions: As discussed below, the 
USPTO will permit paper submissions of applications and correspondence 
in limited situations. This rule establishes a process for filing paper 
submissions in such situations.
    (1) International Agreements: The United States (U.S.) is a member 
of both the Trademark Law Treaty (TLT) and the subsequent Singapore 
Treaty on the Law of Trademarks (STLT), which treaties constitute two 
separate international instruments that may be ratified or acceded to 
independently by member countries. One provision of TLT mandates that 
its members accept paper trademark applications from nationals of other 
TLT members. STLT, on the other hand, allows its members to choose the 
means of transmittal of communications, whether on paper, in electronic 
form, or in any other form. This incongruity between the treaties was 
addressed in Article 27(2) of STLT, which provides that any Contracting 
Party to both STLT and TLT shall continue to apply TLT in its relations 
with Contracting Parties to TLT that are not parties to STLT. 
Accordingly, nationals of TLT members that are not also members of STLT 
at the time of submission of the relevant document to the USPTO are not 
required to file applications electronically or receive communications 
from the USPTO via email, nor are they required to submit a petition 
with a paper filing, until such time as their country joins STLT. 
Currently, the USPTO must accept paper trademark applications from 
nationals of the following countries: Bahrain, Bosnia and Herzegovina, 
Burkina Faso, Chile, Colombia, Costa Rica, Cyprus, Czech Republic, 
Dominican Republic, Egypt, El Salvador, Guatemala, Guinea, Honduras, 
Hungary, Indonesia, Monaco, Montenegro, Morocco, Nicaragua, Oman, 
Panama, Slovenia, Sri Lanka, Trinidad and Tobago, Turkey, and 
Uzbekistan.
    (2) Specimens for Scent, Flavor, or Other Non-Traditional Marks: 
This rule allows for the separate submission of physical specimens when 
it is not possible to submit the specimens using TEAS because of the 
nature of the mark. For example, if the application or registration is 
for a scent or flavor mark, because the required specimen must show 
use, or continued use, of the flavor or scent, it cannot be uploaded 
electronically. In that situation, the applicant may submit the 
application through TEAS and indicate that it is mailing the specimen 
to the USPTO. In these circumstances, all other requirements of this 
rulemaking apply. However, the applicant or registrant is not required 
to submit a petition requesting acceptance of a specimen filed on paper 
or waiver of the requirement to file the specimen electronically. This 
exception does not apply to specimens for sound marks, which can be 
attached to the TEAS form as an electronic file.
    (3) Petition to Accept a Paper Submission: This rule includes a new 
regulatory section titled ``Petition to the Director to accept a paper 
submission,'' which is codified at Sec.  2.147. Under this section, an 
applicant or registrant may file a petition to the Director requesting 
acceptance of a submission filed on paper in three situations.
    Under new Sec.  2.147(a), the petition may be submitted if TEAS is 
unavailable on the date of the deadline for the submission specified in 
a regulation in parts 2 or 7 of this chapter or in a section of the 
Act. Under this provision, the applicant or registrant is required to 
submit proof that TEAS was unavailable because a technical problem, on 
either the USPTO's part or the user's part, prevented the user from 
submitting the document electronically. Generally, if users receive an 
error message the first time they attempt to submit a filing 
electronically, the USPTO expects that they will try to resolve any 
failures due to user error. In situations where the inability to submit 
the filing was not due to user error, the USPTO encourages users to try 
to submit the document again electronically before resorting to the 
paper petition process.
    The second scenario applies to the specific documents with 
statutory deadlines identified in new Sec.  2.147(b) when such a 
document was timely submitted on paper, but not examined by the Office 
because it was not submitted electronically in accordance with Sec.  
2.21(a) or Sec.  2.23(a). The Office will issue a notice informing the 
applicant, registrant, or petitioner for cancellation that the paper 
submission will not be processed or examined because it was not 
submitted electronically. The applicant, registrant, or party may file 
a petition to request that the timely filed paper submission be 
accepted only if the applicant, registrant, or party is unable to 
timely resubmit the document electronically by the statutory deadline.
    Finally, under new Sec.  2.147(c), when an applicant or registrant 
does not meet the requirements under Sec.  2.147(a) or (b) for 
requesting acceptance of the paper submission, the applicant or 
registrant may petition the Director under Sec.  2.146(a)(5), 
requesting a waiver of Sec.  2.21(a) or Sec.  2.23(a) and documenting 
the nature of the extraordinary situation that prevented the party from

[[Page 37085]]

submitting the correspondence electronically. The Office addresses 
petitions under Sec.  2.146(a)(5) on a case-by-case basis because the 
assessment of what would qualify as an extraordinary situation depends 
on the specific facts and evidence presented.
    With respect to USPTO technical problems that render TEAS 
unavailable, the USPTO intends to continue to follow its current 
approach. For example, when verifiable issues with USPTO systems 
prevent electronic filing for extended periods, the Office has waived 
non-statutory deadlines on petition, such as the deadline for response 
to a post-registration Office action, as well as petition fees. Such 
measures help avoid negatively impacting applicants and registrants in 
the event of USPTO technical problems. Because the impact of technical 
problems varies depending on the specific facts, the USPTO cannot 
provide advance guidance about all possibilities or specific measures 
the USPTO may take in the future. Moreover, applicants and registrants 
must be mindful of the fact that statutory deadlines, such as those for 
submission of a statement of use or an affidavit or declaration of use 
under section 8 or section 71, cannot be waived. The USPTO strongly 
encourages applicants and registrants to ensure that they are able to 
timely submit the relevant document by mail using the certificate of 
mailing or Priority Mail procedures in Sec.  2.197 and Sec.  2.198 in 
the event of an unexpected technical problem to avoid missing a 
statutory deadline.
    Furthermore, the inability to submit an application or submission 
electronically due to USPTO regularly scheduled system maintenance 
generally does not qualify for relief under new Sec.  2.147 or as an 
extraordinary situation under Sec.  2.146. The USPTO routinely performs 
system maintenance between midnight and 5:30 a.m. Eastern Time on 
weeknights and at all hours on Saturdays, Sundays, and holidays. 
Advance notice of the maintenance is generally posted on the USPTO 
Systems Status and Availability page on the USPTO website.
    (4) Postal-service Interruptions or Emergencies. The Office intends 
to continue the approach it has employed when there has been a postal-
service interruption or emergency related to a natural disaster. In 
such events, the Office has generally waived certain requirements of 
the rules for those in the affected area, such as non-statutory 
deadlines and petition fees. The Office also issues notices regarding 
the specific procedures to be followed in such circumstances and posts 
the notices on the ``Operating Status'' page of the USPTO website.
    (5) Applications and Post-Registration Maintenance Documents Filed 
Prior to the Effective Date of this Rule. Paper, TEAS Regular, and 
Madrid applications filed prior to the effective date of this rule are 
not subject to the requirements to provide an email address for the 
applicant and its attorney, if represented, or to communicate with the 
USPTO electronically. Such applications are ``grandfathered'' under the 
prior rules until the application registers or is abandoned and cannot 
be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146. 
Similarly, post-registration maintenance documents submitted prior to 
the effective date of the rule are not subject to the requirements and 
are grandfathered under the prior rules until the document has been 
accepted or the registration has been cancelled or expired and cannot 
be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146.
    However, on the effective date of this rule, because all new 
applications and post-registration maintenance documents are required 
to be filed electronically through TEAS, all TEAS forms will be updated 
to require the applicant's or registrant's email address and the email 
address of applicant's or registrant's attorney, if represented. 
Therefore, if a grandfathered applicant or registrant files a TEAS 
document after the effective date of this rule, the TEAS form will not 
validate for submission without the email address(es) being provided. 
Furthermore, if such an applicant, registrant, or attorney chooses to 
correspond electronically with the Office using one of the TEAS forms, 
the USPTO will presume that email communication is authorized and will 
send all future correspondence to the email address of the applicant, 
registrant, or attorney, as appropriate.
    Applicants who filed an application prior to the effective date of 
the rule using the TEAS RF or TEAS Plus option are currently subject to 
the requirement to correspond electronically with the USPTO, as well as 
all the other requirements in current Sec.  2.22(a)-(b) and Sec.  
2.23(a)-(b). After the effective date of this rule, if a TEAS Plus or 
TEAS RF applicant submits a response to an Office action or other 
document on paper, the applicant will no longer be charged the 
additional processing fee under prior Sec.  2.22(c) or Sec.  2.23(c), 
but must submit a petition requesting acceptance of the paper filing 
under Sec.  2.146 or Sec.  2.147, as appropriate.
    Requirements for Paper Submissions: Because paper submissions are 
permitted in the limited circumstances described above, the current 
rules addressing the requirements for paper submissions are retained 
and modified, as necessary, for consistency with the other revisions in 
this rulemaking. In addition, the rules governing the certificate-of-
mailing and Priority Mail Express[supreg] procedures, 37 CFR 2.197 and 
2.198, are amended to make filing with a certificate of mailing or via 
Priority Mail Express[supreg] available for all submissions, including 
new applications, on the rare occasions when filing on paper is 
permitted. This rule also simplifies how the filing date of a 
submission utilizing these procedures is determined. Streamlining the 
requirements for filing with a certificate of mailing or via Priority 
Mail Express[supreg] provides greater clarity to parties who seek to 
use these procedures and make the rules easier to administer for the 
Office. Although the certificate-of-mailing and Priority Mail 
Express[supreg] procedures are retained, facsimile transmissions, which 
are currently permitted for certain types of trademark correspondence, 
are not permitted under this rule for any applications or submissions. 
Continuing to accept fax transmissions would be counterproductive to 
maximizing end-to-end electronic processing because such submissions 
require manual processing similar to paper submissions.

Proposed Rule: Comments and Responses

    The USPTO published a proposed rule on May 30, 2018, at 83 FR 
24701, soliciting comments on the proposed amendments. In response, the 
USPTO received comments from four groups and ten individual commenters, 
representing law firms, organizations, individuals, and other 
interested parties. Some commenters expressed general support for the 
amendments, while raising concerns or providing suggestions about 
particular provisions. Other commenters objected to the amendments 
mandating electronic filing because of concerns about the stability and 
usability of the USPTO's current electronic filing systems or the 
possibility that some parties may not have adequate access to the 
internet. In addition, some commenters objected to the requirement that 
an email address be provided for correspondence, because of concerns 
that this would be burdensome to applicants or that the public 
availability of email addresses will be misused by third parties 
engaging in scams or unwanted solicitations. Similar or related

[[Page 37086]]

comments have been grouped together and summarized below, followed by 
the USPTO's responses. All comments are posted on the USPTO's website 
at https://www.uspto.gov/trademark/trademark-updates-and-announcements/comments-proposed-rulemaking-related-changes-trademark.
    Comment: Several commenters objected to the requirement to file 
submissions electronically because they believe it will adversely 
affect parties who do not have adequate internet access or are 
otherwise unable to file electronically.
    Response: The USPTO appreciates the concerns raised in these 
comments and has given them careful consideration. As noted above, more 
than 99% of all initial applications based on section 1 and/or section 
44 of the Act are now filed electronically. For example, in fiscal year 
2018, a total of 468,926 applications were filed, with only 144 
applications filed on paper. Accordingly, the USPTO has determined 
that, as a general matter, the requirement to file all submissions 
electronically would not be impracticable or burdensome for the USPTO's 
customers, most of whom already file electronically.
    Customers who do not have personal access to the internet have the 
option to use the internet at one of the 85 Patent and Trademark 
Resource Centers (PTRC) around the U.S. to electronically file 
submissions with the USPTO. A PTRC is part of a nationwide network of 
public, state, and academic libraries designated by the USPTO to 
support the public with federal trademark- and patent-filing 
assistance. Although PTRC representatives are not attorneys and cannot 
provide legal advice, they can provide access to USPTO resources and 
explain the application process and fee schedule. Public libraries 
provide another resource for parties without internet access. According 
to the American Library Association Fact Sheet 26, ``Internet Access 
and Digital Holdings in Libraries,'' 98% of libraries offer free public 
internet access and 76% of libraries assist patrons in using online 
government programs and services (http://www.ala.org/tools/libfactsheets/alalibraryfactsheet26; accessed Sept. 24, 2018). 
Applicants, registrants, or parties also have the option to hire an 
attorney to file electronically on their behalf. Finally, if an 
extraordinary situation requires a particular applicant, registrant, or 
party to file on paper, the rule allows such submissions to be 
considered on petition by the USPTO on a case-by-case basis.
    Comment: A commenter suggested that the USPTO has already 
sufficiently advanced its objective of electronic filing by increasing 
the fees associated with paper filing.
    Response: As noted above, the USPTO previously revised its rules to 
increase fees for paper filings to bring the fees nearer to the cost of 
processing the filings and to encourage customers to use lower-cost 
electronic options. Despite these fee increases, approximately 12% of 
applications and registrations under section 1 and/or section 44 of the 
Act still involve some paper processing. Fee increases have not been 
effective in eliminating the volume of non-application paper 
submissions. Therefore, the USPTO has determined that mandatory 
electronic filing is necessary to attain, as closely as possible, its 
goal of end-to-end electronic processing.
    Comment: The USPTO received several comments regarding its 
electronic systems. Some commenters expressed concerns that the USPTO's 
current electronic systems, including the payment system, are not 
sufficiently reliable to support a mandate of electronic filing, noting 
that removing the paper filing option eliminates a failsafe way to file 
if the internet or the electronic filing system is unavailable. Other 
commenters suggested that the usability of TEAS forms should be 
improved and stated that TEAS currently lacks forms to address all 
filing situations. Some commenters noted that TEAS sometimes will not 
allow submissions due to erroneous status information in the USPTO's 
electronic record. Relatedly, a commenter urged that any rulemaking 
that would remove the paper filing option should be accompanied by the 
provision of a ``none of the above'' TEAS form to address the 
circumstances when the internet or TEAS is unavailable, and that every 
TEAS form should include a ``miscellaneous'' section in which free-text 
comments and evidence can be provided. One commenter asked whether fax 
transmission will remain as an alternative method for filing if the 
electronic system is not available and suggested that the USPTO either 
provide an alternative method that is electronic but not tied to the 
TEAS system or allow for a deadline extension when the TEAS system is 
not operational at the time of deadline. Finally, a commenter suggested 
that the USPTO implement contingency servers and systems that would 
serve as a backup to the USPTO's primary electronic systems and reduce 
the need for paper filings if the primary systems experience an outage.
    Response: The USPTO recognizes that the successful implementation 
of mandatory electronic filing requires reliable, well-functioning 
electronic filing and payment systems. To that end, the USPTO is 
actively engaged in enhancing the Office's systems to significantly 
improve reliability and stability with the result of reducing 
unscheduled outages and instabilities and mitigating any that do occur. 
For example, the USPTO recently upgraded the main server that houses 
the TEAS and payment systems, which will significantly enhance 
reliability and responsiveness.
    The USPTO also acknowledges the comments concerning the general 
usability of TEAS forms and is enhancing its electronic systems to 
accommodate the requirements of mandatory electronic filing, and also 
plans to improve the overall functionality of the TEAS forms. In 
addition, remedies are already available to customers who are unable to 
file a TEAS submission because of incorrect status information in the 
USPTO electronic record. To request assistance, such as correction of 
the status information so that TEAS will allow submission of the 
appropriate form, customers may call or email the USPTO. Furthermore, 
when a party is unable to file electronically because of an 
extraordinary situation, Sec.  2.147(c) allows the party to petition 
the Director under Sec.  2.146(a)(5), requesting that the Director 
waive Sec.  2.23(a) and accept a paper submission.
    Regarding the commenter's request to retain fax transmission, the 
rule removes this submission option. As noted above, continuing to 
accept fax transmissions would be counterproductive to maximizing end-
to-end electronic processing because such submissions require manual 
processing similar to paper submissions. If a significant outage or 
other emergency occurs, the USPTO may consider waiving the relevant 
rules to accept certain submissions by fax or another means for 
specific purposes.
    Regarding the comment requesting the rule allow for a deadline 
extension when the TEAS system is not operational at the time of 
deadline, the USPTO has previously waived non-statutory deadlines on 
petition when verifiable issues with USPTO systems prevented electronic 
filing for extended periods. The USPTO may make this option available, 
if appropriate. However, the USPTO has no authority to extend deadlines 
set by statute.

[[Page 37087]]

    Comment: One commenter who assists ``low-wealth entrepreneurs'' 
with trademark matters noted that, while most of these entrepreneurs 
have computer access and an email address, some have little 
understanding of the application and prosecution process and the rules 
governing this process. This commenter expressed concern that these 
entrepreneurs would be required to handle email communications from the 
USPTO that may significantly impact their ability to conduct their 
business. The commenter urged that USPTO communications be written in a 
way that ensures understanding by a lay person. Other commenters 
expressed concerns that the current TEAS forms are too complicated for 
the lay person, with one commenter suggesting that the USPTO permit 
applicants to file already completed applications in .pdf form.
    Response: The USPTO is dedicated to making its communications 
comprehensible for all customers, but recognizes that the trademark 
application process is legal in nature and can be complex and difficult 
to understand for some applicants, regardless of whether submissions 
are filed on paper or electronically. Filing a trademark application 
with the USPTO starts a legal proceeding that is governed by U.S. law. 
Therefore, it may be advisable for an applicant to hire a qualified 
trademark attorney licensed to practice law in the United States who 
can give legal advice, help avoid pitfalls with the filing and 
prosecution of an application, and help enforce trademark rights. 
Applicants may also seek to avail themselves of free or reduced-fee 
legal services through such resources as the USPTO's Law School Clinic 
Certification Program, the list of Pro Bono IPL Resources provided by 
the American Bar Association, and the International Trademark 
Association trademark pro bono clearinghouse pilot program.
    Further, the USPTO believes that the requirement to file 
electronically benefits those applicants who are unable to hire an 
attorney and must represent themselves. Specifically, electronic filing 
costs less than paper filing, especially if the lower-fee TEAS Plus 
application filing option is utilized. In addition, electronic filing 
simplifies and increases the efficiency of the application process for 
applicants. Those who file electronically are more likely to provide 
the necessary information in their submissions because the USPTO can 
update its electronic forms to specifically tailor the requirements for 
a particular submission and require that the information be validated 
prior to submission. Consequently, preparing and submitting an 
application or related document through TEAS is likely to result in a 
more complete submission and take less time than preparing and mailing 
the paper equivalent. In addition, the USPTO is dedicated to providing 
future enhancements to its online filing systems to further simplify 
the process for applicants by, for example, providing more informative, 
interactive, and user-friendly forms.
    Regarding the comment suggesting that applicants be permitted to 
file completed applications in .pdf form, this approach would be 
counterproductive to maximizing end-to-end electronic processing 
because submissions in .pdf form require manual processing similar to 
paper submissions.
    Comment: A commenter noted that the electronic filing requirement 
may lead to librarians being asked legal questions by those filing 
electronic submissions with the USPTO using a library computer and that 
referring these patrons to a PTRC might not be an effective solution to 
this problem.
    Response: The USPTO acknowledges the possibility that library 
patrons may ask librarians legal questions about the trademark process, 
but does not believe this is an impediment to implementing mandatory 
electronic filing. The USPTO presumes that if a librarian is asked for 
legal information regarding trademark law, or any other area of law, he 
or she would direct the patron to a local bar association or other 
appropriate resource. As noted above, filing a trademark application 
with the USPTO starts a legal proceeding that is governed by U.S. law. 
It is therefore advisable for their patrons to seek legal guidance from 
a qualified private trademark attorney.
    If a patron has questions regarding the trademark application 
process, a librarian can direct the patron to the USPTO website for 
information, including the email address and toll-free phone number for 
the Trademark Assistance Center. In addition, although PTRC library 
representatives cannot provide legal advice, they can: (1) Provide 
access to USPTO resources such as search systems and demonstrate how to 
use search tools to conduct a trademark search; (2) direct patrons to 
website information and explain the application process/timeline and 
fees; and (3) offer classes on intellectual property in some locations.
    Comment: One commenter recommended that the proposed rule include 
information on the economic impact on entities who still choose the 
paper filing option and also provide means to reduce the economic 
burden for that group rather than impose additional costs.
    Response: The USPTO believes that the overall economic impact on 
affected parties will be minimal. As noted above, in fiscal year 2018, 
more than 99% of all initial applications based on section 1 and/or 
section 44 of the Act were filed electronically--only 144 out of 
468,926 applications were filed on paper. Thus, as a practical matter, 
almost all USPTO customers who may use the USPTO's electronic systems 
to file their trademark applications have already done so. Moreover, 
under the current system TEAS filers are subsidizing those who file on 
paper because current fees for paper filers do not cover the full cost 
of processing paper filings. The change to mandatory electronic filing 
also will improve the quality of Trademark applications and 
registrations because paper filings require manual uploading of scanned 
copies into USPTO electronic systems and manual data entry of 
information in the documents, which results in data-entry errors.
    Thus, given the additional costs associated with filing 
applications and related submissions by paper, including higher fees, a 
requirement to file electronically will likely result in reduced costs 
overall for most customers who previously filed on paper.
    Comment: Some commenters objected to the changes to Sec. Sec.  
2.21, 2.23, and 7.4, requiring the provision of an email address for 
applicants and registrants. One commenter noted that, when an applicant 
or registrant is represented by counsel, and counsel has provided a 
correspondence email address, the rule changes impose additional 
burdens on both the trademark owner and its counsel. Another commenter 
stated that the TEAS system appears to be open to abuse and fraud, and 
some commenters were concerned that the requirement to provide the 
applicant's email address for correspondence would lead to an increase 
in scams and misleading solicitations by third parties. One commenter 
had similar concerns about applicants' telephone numbers.
    Response: The amended rules include a requirement for the 
applicant's email address, even when the applicant is represented by an 
attorney. This requirement ensures that the USPTO has an electronic 
means of contacting the applicant if the attorney's email address 
cannot be used, such as when the attorney is suspended or excluded from 
practice before the USPTO or when representation otherwise ceases. The 
USPTO does not undertake double correspondence with both the applicant 
or registrant and the attorney of record.

[[Page 37088]]

Accordingly, if an applicant or registrant is represented by an 
attorney, the USPTO corresponds and conducts business only with the 
attorney. Once representation ceases, under this rule, the USPTO will 
correspond only with the applicant or registrant. Therefore, the 
applicant or registrant must provide an email address belonging to the 
applicant or registrant itself for receipt of correspondence from the 
USPTO in such a circumstance.
    The USPTO appreciates the commenters' concerns that scams and 
misleading solicitations may increase if the email addresses required 
under these rules are publicly available in the USPTO's systems. 
Currently, all owner email addresses that appear in the ``status'' view 
of USPTO records are masked from public view. In addition, the USPTO 
plans to similarly mask from public view in application and 
registration files the correspondence email addresses of applicants and 
registrants who are not represented by counsel to reduce the likelihood 
that they will be subjected to scams and other unwanted solicitations. 
The contact information of attorneys appearing in USPTO records, 
including email addresses and telephone numbers, will remain publicly 
available and viewable, as this information is publicly available from 
other sources already and could be used for legitimate purposes by 
third parties.
    Comment: One commenter stated that, to the extent that the USPTO 
does not already comply with the European Union's General Data 
Protection Regulation (GDPR), mandating the provision of email 
addresses of individuals associated with applicants and registrants, 
will subject the USPTO to this regulation, as well as to the penalties 
and obligations associated with any data breach.
    Response: The USPTO is aware of the GDPR and has taken into account 
any implications it might have for the implementation of these amended 
rules.
    Comment: Regarding the proposed amendment of Sec.  2.151 to state 
that the USPTO will issue ``to the owner'' a certificate of 
registration, one commenter asked how the Office will know who ``the 
owner'' is, noting that, at most, the Office will know only who the 
owner of record is. This commenter also noted that, to avoid the need 
for future rulemaking, the USPTO should consider broadening the 
requirement for an email address, so that the requirement also 
encompasses an ``alphanumeric identifier that is capable of receiving 
electronic communications.'' The commenter then suggested that the 
ability of users to input an email address into a TEAS form should be 
restricted to forms for which doing so actually updates the 
information.
    Response: Under amended Sec.  2.151, a certificate of registration 
will be issued to the owner of record, as indicated in the USPTO 
electronic record at the time the certificate is issued.
    The USPTO appreciates the suggestion to use broader terminology 
than ``email address,'' but has determined that ``email address'' is 
sufficiently accurate and will serve the intended purpose under the 
rule. The USPTO also appreciates the suggestion regarding the ability 
to input and update email addresses in TEAS forms, and will take that 
feedback into account when considering enhancements to TEAS.
    Comment: One commenter stated the USPTO should provide another 
filing mechanism to ensure that customers have access to protect their 
trademark rights without having to incur the uncertainty or additional 
fees and time associated with filing a separate petition, if having to 
file on paper. This commenter suggested that a more predictable and 
desirable remedy in this situation may include submitting with the 
relevant filing a declaration or other statement attesting to the 
outage, lack of access, or other reason for not filing electronically, 
and that the filer may also include evidence of the problem, such as a 
screen shot. The commenter noted that, to ease the administrative 
burden on the USPTO and add certainty for applicants and counsel as to 
permissible exceptions, any USPTO form could acknowledge clear 
exceptions through use of a box to be checked, but for unusual or 
unique circumstances, a free-form text box could be provided in the 
relevant form. Relatedly, one commenter recommended that the rules be 
modified to provide specific examples of documentation the user can 
provide to satisfy the USPTO's requirement for proof that TEAS was 
unavailable for electronic filing because of a ``technical problem.'' 
This commenter suggested that such documentation might include 
screenshots showing the time and date and the error statement 
encountered by the user, or a signed declaration under 37 CFR 2.20 
indicating the circumstances of the unsuccessful electronic filing.
    Response: The USPTO believes that a petition describing the reasons 
for a paper submission is the most efficient and effective mechanism 
for providing the information necessary to enable the USPTO to 
determine whether the submission should be accepted. However, the USPTO 
also agrees with the commenters that the petition process may be 
simplified by the use of a standard preformatted petition form, listing 
the most common reasons for requesting acceptance of a paper 
submission. The user could complete the form by selecting the 
appropriate reason and include the completed form with the paper 
submission. The USPTO is working to make such a form available before 
this rule takes effect.
    The USPTO appreciates the suggestion that the rules should be 
modified to provide specific examples of documentation a user can 
provide to satisfy the USPTO's requirement for proof that TEAS was 
unavailable for electronic filing because of a ``technical problem.'' 
However, considering the type and nature of evidence that may suffice 
will differ depending on the circumstances, the USPTO believes it is 
preferable to enact a rule that provides flexibility as to the type of 
evidence the USPTO may accept as proof. However, the Office will 
consider adding such examples in other USPTO materials, such as web 
pages or the TMEP, to provide guidance.
    Comment: One commenter urged the USPTO to continue its practice of 
attempting to contact the correspondent by other means if a 
transmission to the email address of record fails, including physical 
correspondence by mail. This commenter noted that email addresses 
frequently change due to companies adopting new domain names and 
staffing changes, and that technical issues due to hardware 
malfunction, software bugs, or malicious cyberattacks increase the 
chances of electronic communication being disrupted.
    Response: Although the USPTO previously attempted to contact the 
correspondent by other means if an email transmission failed and, in 
some cases, sent a paper copy of the correspondence to the physical 
address of record, it no longer does so. As the commenter indicated, 
email transmissions may fail for a variety of reasons outside of the 
USPTO's control. Even if the number of failed transmissions are 
relatively low, attempting to contact the applicant or registrant in 
every instance is administratively burdensome to the USPTO. In 
addition, continuing to send paper correspondence after implementing 
mandatory electronic filing would be counterproductive to the goal of 
maximizing end-to-end electronic processing.
    Moreover, under Sec.  2.18(c), applicants and registrants are 
required to maintain a current and accurate correspondence email 
address, and to monitor the status

[[Page 37089]]

of their applications or registrations for any notices issued or action 
taken by the USPTO, in accordance with Sec.  2.23(d).
    Comment: One commenter stated that, for a paper filed during a time 
when TEAS is unavailable, a petition requirement is unneeded and 
burdensome because the USPTO will usually already be aware of instances 
when its filing system is broken. This commenter suggested that, when 
the USPTO is unaware of an outage, the USPTO could respond to a paper 
filing with a request for a showing by the filer as to the nature and 
time of the outage. Some commenters objected to any requirement that 
the filer postpone a filing until such time as a TEAS outage is 
repaired and another commenter stated that an applicant or registrant 
should not be required to wait until the day of the deadline to be 
eligible for an exception to the electronic filing requirement when 
TEAS is unavailable.
    Response: When a paper submission is necessary because of an 
unscheduled TEAS outage or some other technical problem, the USPTO 
believes that the mechanism of a petition, which permits inclusion of a 
description of the reasons for the paper submission, is the only 
appropriate mechanism for providing the information necessary to enable 
the USPTO to determine whether the particular submission should be 
accepted.
    Regarding known TEAS outages, the USPTO intends to continue to 
follow the approach employed in the past. For example, when verifiable 
issues with USPTO systems prevent electronic filing for extended 
periods, the USPTO has waived non-statutory deadlines on petition, such 
as the deadline for response to a post-registration Office action, as 
well as petition fees. Even when the USPTO is aware of an outage, a 
petition would typically still be required, because the party 
requesting relief would need to establish that the outage prevented 
electronic filing of the particular submission. However, because the 
impact of technical problems varies depending on the specific facts, 
the Office cannot provide advance guidance about all possibilities or 
specific measures the USPTO may take in the future.
    The USPTO acknowledges the commenters' concerns about waiting until 
the date of the deadline to be eligible for an exception to the 
requirement to file electronically. However, this requirement applies 
only if the party is relying on Sec.  2.147(a), which provides that the 
petition may be submitted if TEAS is unavailable on the date of the 
deadline for the submission specified in a regulation in parts 2 or 7 
of this chapter or in a section of the Act.
    If an extraordinary situation prevents an applicant or registrant 
from waiting until the deadline for a submission to be eligible for an 
exception to the requirement to file electronically, or otherwise 
postponing a TEAS submission, Sec.  2.147(c) provides that the 
applicant or registrant may petition the Director under Sec.  
2.146(a)(5), requesting a waiver of Sec.  2.21(a) or Sec.  2.23(a) and 
documenting the nature of the extraordinary situation that prevented 
the party from submitting the correspondence electronically at the 
relevant time. Because petitions for extraordinary situations are not 
automatically granted, and the assessment of what would qualify as an 
extraordinary situation depends on the specific facts, the Office will 
address particular situations on a case-by-case basis.

Discussion of Regulatory Changes

    The USPTO amends Sec.  2.2 to revise paragraph (e) to include the 
abbreviation ``USPTO'' and paragraphs (f) and (g) to indicate that the 
definitions of ``TEAS'' and ``ESTTA'' include all related electronic 
systems required to complete an electronic submission through each and 
to delete the URLs. The USPTO also adds: Sec.  2.2(q), defining 
``ETAS;'' Sec.  2.2(r), defining ``Eastern Time;'' Sec.  2.2(s), 
defining ``electronic submission;'' and Sec.  2.2(t) defining ``USPS.'' 
The paragraph designations (q) through (t) do not correspond to the 
proposed changes published at 83 FR 24701. The revisions to these 
designations reflect additional changes published in an intervening 
rule published at 84 FR 31498.
    The USPTO amends Sec.  2.6 to clarify that Sec.  2.6(a)(1)(ii) 
applies to applications filed under section 66(a) of the Act. The USPTO 
also changes the wording ``Reduced Fee (RF)'' to ``Standard'' and 
deletes the reference to Sec.  2.23 in Sec.  2.6(a)(1)(iii), rewords 
Sec.  2.6(a)(1)(iv) for clarity, and deletes the reference to Sec.  
2.23(c) in Sec.  2.6(a)(1)(iv).
    The USPTO deletes the wording ``and attorney'' and the reference to 
TEAS in current Sec.  2.17(d)(1), because it is unnecessary in view of 
amended Sec.  2.23(a), redesignates Sec.  2.17(d)(1) as Sec.  2.17(d), 
and deletes Sec.  2.17(d)(2) as unnecessary as a result of updates to 
the electronic form for filing a power of attorney.
    The USPTO amends the title to Sec.  2.18(a) to ``Establishing the 
correspondent'' and adds introductory text indicating that the 
following paragraphs set out the procedures by which the Office will 
determine the address to which correspondence will be sent. The USPTO 
revises Sec.  2.18(a)(1) to define when the Office will send 
correspondence to the applicant, registrant, or party to a proceeding 
and Sec.  2.18(a)(2) to define when the Office will send correspondence 
to an attorney. The USPTO also deletes current paragraphs (a)(3)-
(a)(5), redesignates current Sec.  2.18(a)(6) as Sec.  2.18(b), adds 
the title ``Ex parte matters,'' and rewords the text for clarity, and 
deletes current paragraph (a)(7). The USPTO redesignates current Sec.  
2.18(b) as Sec.  2.18(c), changes the title to ``Maintaining and 
changing the correspondence addresses,'' and deletes current Sec.  
2.18(b)(1)-(4). The USPTO redesignates current Sec.  2.18(c)(1) as 
Sec.  2.18(d), deletes the word ``Trademark'' in the first sentence, 
deletes the second and third sentences in current Sec.  2.18(c)(1), 
clarifies that the Office will change the address if a new address is 
provided, adds a cross reference to Sec.  2.18(a), and deletes current 
Sec.  2.18(c)(2).
    The USPTO amends Sec.  2.21(a) to require that applications under 
section 1 or section 44 be filed through TEAS, to require the domicile 
and email addresses for each applicant, and if the applicant is 
represented by a qualified practitioner, to require the postal and 
email addresses for the practitioner. The USPTO rewords Sec.  
2.21(a)(5) for clarity, rewords Sec.  2.21(b) and includes a reference 
to Sec.  2.21(c), and adds Sec.  2.21(c), which sets out an exemption 
for certain countries.
    The USPTO amends Sec.  2.22(a) to specify that TEAS Plus 
applications must satisfy the requirements of Sec.  2.21, to delete 
current paragraphs (a)(1), (a)(5), and (a)(6) and renumber the 
remaining paragraphs, to change ``an individual'' and ``a juristic'' to 
``each individual'' and ``each juristic'' in redesignated paragraph 
(a)(2), to clarify that the requirement in redesignated paragraph 
(a)(3) applies to domestic partnerships and to add a requirement for 
the names and citizenship of the active members of a domestic joint 
venture, to add a requirement for the citizenship of a sole 
proprietorship and for the name and citizenship of the sole proprietor 
to redesignated paragraph (a)(4), to correct the cross reference in 
redesignated paragraph (a)(8) to Sec.  2.6(a)(1)(iv), to delete the 
first sentence and the reference to a particular format in redesignated 
paragraph (a)(10), and to delete the URL in redesignated paragraph 
(a)(11). The USPTO revises Sec.  2.22(b) to indicate that the applicant 
must comply with amended Sec.  2.23(a) and (b), to delete Sec.  
2.22(b)(1) and (2),

[[Page 37090]]

and to delete the second sentence in Sec.  2.22(c).
    The USPTO amends the title of Sec.  2.23 to ``Requirement to 
correspond electronically with the Office and duty to monitor status'' 
and deletes the current text of the section. The USPTO revises Sec.  
2.23(a) to require that, unless stated otherwise, all trademark 
correspondence must be submitted through TEAS; revises Sec.  2.23(b) to 
require that applicants, registrants, and parties to a proceeding 
provide and maintain a valid email correspondence address; revises 
current Sec.  2.23(c) to set out an exemption for nationals of a 
country that has acceded to the Trademark Law Treaty, but not to the 
Singapore Treaty on the Law of Trademarks; and adds Sec.  2.23(d) to 
indicate that applicants and registrants are responsible for monitoring 
the status of their applications and registrations.
    The USPTO amends Sec.  2.24(a) to clarify that only an applicant or 
registrant that is not domiciled in the U.S. may designate a domestic 
representative. The USPTO deletes Sec.  2.24(a)(1)(i), redesignates 
Sec.  2.24(a)(1)(ii) as Sec.  2.24(b) and revises it to require an 
email and postal address for a designated domestic representative, and 
deletes Sec.  2.24(a)(2). The USPTO redesignates Sec.  2.24(a)(3) as 
Sec.  2.24(c) and rewords it for clarity, and deletes current Sec.  
2.24(b).
    The USPTO amends Sec.  2.32(a)(2) to add a statement that if the 
applicant is a national of a country that has acceded to the Trademark 
Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, 
the requirement to provide an email address does not apply. The USPTO 
amends Sec.  2.32(a)(3)(i) to require the legal entity as well as the 
citizenship of the applicant(s), deletes ``or'' from Sec.  
2.32(a)(3)(iii), adds ``or'' to Sec.  2.32(a)(3)(iv), and adds Sec.  
2.32(a)(3)(v) to require the state of organization of a sole 
proprietorship and the name and citizenship of a sole proprietor. The 
USPTO amends Sec.  2.32(d) to add the word ``the'' before ``fee.''
    The USPTO amends Sec.  2.56(a) to indicate that the specimen must 
show the mark as actually used in commerce for the identified goods or 
services and to add cross references to Sec. Sec.  2.160 and 7.36. The 
USPTO amends Sec.  2.56(b) and (c) to codify existing requirements for 
specimens. The USPTO amends Sec.  2.56(d) to set out the requirements 
for submitting a specimen through TEAS, revises current Sec.  
2.56(d)(1) and (2) to set out the exceptions to the requirements, and 
deletes Sec.  2.56(d)(3) and (4).
    The USPTO amends the title of Sec.  2.62 to ``Procedure for 
submitting response,'' revises Sec.  2.62(a) slightly for clarity, and 
revises Sec.  2.62(c) for consistency with amended Sec.  2.23 and to 
add that responses filed via facsimile will not be accorded a date of 
receipt.
    The USPTO amends Sec.  2.111(c)(2) for consistency with Sec.  
2.147(b).
    The USPTO amends Sec.  2.146(a) to add the words ``in a trademark 
case'' and revises Sec.  2.146(a)(2) and (4) to specify that the 
regulation applies to ``parts 2, 3, 6, and 7'' of Title 37.
    The USPTO adds Sec.  2.147 to set out the requirements for 
submitting a petition requesting acceptance of a paper submission.
    The USPTO amends Sec.  2.148 to clarify that it applies to ``parts 
2, 3, 6, and 7 of this chapter.''
    The USPTO amends Sec.  2.151 to indicate that the certificate of 
registration will issue to the owner, to reword the second and third 
sentences for clarity, and to change the wording ``accompany'' in the 
last sentence to ``issue with.''
    The USPTO amends Sec.  2.162 to change the word ``includes'' to 
``issues with the certificate'' and to add the wording ``or section 
71'' after ``section 8'' for consistency with Sec.  2.151.
    The USPTO amends Sec.  2.190(a) to clarify that the paragraph 
refers to paper documents, and to clarify that the stated mailing 
address is for documents to be sent by mail and that the address for 
hand delivery is the address for delivery by private courier or another 
delivery service. The USPTO amends Sec.  2.190(b) to state that 
trademark documents filed electronically must be submitted through TEAS 
and that documents related to TTAB proceedings must be filed through 
ESTTA, and to delete the URLs. The USPTO rewords Sec.  2.190(c) for 
clarity and to delete the mailing address and URL. The USPTO amends 
Sec.  2.190(d) to add ``certified'' to the title and to delete the 
first sentence and the wording ``or uncertified'' in the second 
sentence and to change ``should'' to ``must.'' The USPTO corrects the 
mailing address in Sec.  2.190(e).
    The USPTO amends the title of Sec.  2.191 to ``Action of the Office 
based on the written record'' and revises the section to state that all 
business must be recorded in writing, to reword for clarity, and to 
delete the last sentence.
    The USPTO amends Sec.  2.193(a)(2) and (b) to delete wording 
regarding submission of a photocopy or facsimile or by facsimile 
transmission. The USPTO amends Sec.  2.193(c)(1) to change the wording 
``he or she'' to ``the signer,'' and revises Sec.  2.193(d) to require 
submission of the first and last name and the title or position of the 
signatory and to delete the wording ``in printed or typed form'' and 
the wording after ``the signature.'' The USPTO amends the introductory 
text of Sec.  2.193(e) to clarify that documents must be signed as 
specified in paragraphs (e)(1) through (9). The USPTO amends the title 
and introductory text of Sec.  2.193(e)(5) to add ``or Sec.  2.147'' 
after the wording ``Sec.  2.146.'' The USPTO also deletes Sec.  
2.193(e)(10), rewords Sec.  2.193(g)(1) for clarity, and revises Sec.  
2.193(g)(2) to change ``correspondence'' to ``documents'' and to delete 
the last sentence.
    The USPTO amends the title of Sec.  2.195 to ``Filing date of 
trademark correspondence.'' The USPTO deletes current Sec.  2.195(a)-
(d) and sets out the procedures for determining the filing date of 
electronic and paper submissions in Sec.  2.195(a) and (b)(1) through 
(b)(2), indicates when the Office is closed in Sec.  2.195(b)(3), 
indicates that email and facsimile submissions are not permitted in 
Sec.  2.195(c), redesignates current Sec.  2.195(e)(1) through 
(e)(2)(iii) as Sec.  2.195(d)(1) through (3) and changes U.S Postal 
Service and United States Postal Service to USPS. The USPTO deletes 
current Sec.  2.195(e)(3).
    The USPTO amends the title of Sec.  2.197 to ``Certificate of 
mailing.'' The USPTO deletes current Sec.  2.197(a) through (c) and 
sets out the requirements for obtaining a filing date based on a 
certificate of mailing in Sec.  2.197(a), the procedure when 
correspondence is mailed in accordance with paragraph (a) of this 
section but not received by the Office in Sec.  2.197(b), and the 
filing date when the certificate of mailing does not meet the 
requirements in Sec.  2.197(c).
    The USPTO deletes current Sec.  2.198(a) through (f) and clarifies 
the filing date of correspondence submitted under this section in 
amended Sec.  2.198(a) and (b) and the procedures when there is a 
discrepancy, error, or non-receipt in amended Sec.  2.198(c)-(e).
    The USPTO amends Sec.  7.1(c) to indicate that the definition of 
TEAS includes all related electronic systems required to complete an 
electronic submission through TEAS and to delete a URL. The USPTO 
amends Sec.  7.1(d) to add ``or the abbreviation USPTO.''
    The USPTO amends the title of Sec.  7.4 to ``International 
applications and registrations originating from the USPTO--Requirements 
to electronically file and communicate with the Office.'' The USPTO 
amends Sec.  7.4(a) to specify that all correspondence relating to 
international applications and registrations originating from the USPTO 
must be submitted through TEAS and include a valid email correspondence 
address. The USPTO amends Sec.  7.4(b) to require that applicants and 
registrants provide and

[[Page 37091]]

maintain a valid email correspondence address and to delete current 
paragraphs (b)(1) and (b)(2). The USPTO amends Sec.  7.4(c) to set out 
an exemption for nationals of a country that has acceded to the 
Trademark Law Treaty, but not to the Singapore Treaty on the Law of 
Trademarks and Sec.  7.4(d) to set out the procedure if TEAS is 
unavailable or when there is an extraordinary situation, and to delete 
paragraphs (d)(1)-(d)(6). The USPTO also deletes Sec.  7.4(e).
    The USPTO amends Sec.  7.11(a) to delete the word ``either,'' to 
add a cross reference to Sec.  7.4(a), and to specify that the Office 
will grant a date of receipt to an international application typed on 
the official paper form issued by the IB if a paper submission is 
permitted under Sec.  7.4(c) or accepted on petition pursuant to Sec.  
7.4(d). The USPTO also adds the word ``and'' to Sec.  7.11(a)(10), 
deletes the word ``and'' from Sec.  7.11(a)(11), and deletes Sec.  
7.11(a)(12).
    The USPTO amends Sec.  7.21(b) to delete the word ``either,'' to 
add a cross reference to Sec.  7.4(a), and to specify that the Office 
will grant a date of receipt to a subsequent designation typed on the 
official paper form issued by the IB if a paper submission is permitted 
under Sec.  7.4(c) or accepted on petition pursuant to Sec.  7.4(d). 
The USPTO also adds the word ``and'' to Sec.  7.21(b)(7), deletes the 
word ``and'' from Sec.  7.21(b)(8), and deletes Sec.  7.21(b)(9).
    The USPTO revises Sec.  7.25 to delete the reference to Sec.  2.23 
and replace it with a reference to Sec.  2.22 and to delete the 
reference to Sec.  2.197.
    This rule revises sections of 37 CFR parts 2 and 7 that were 
revised in the final rule entitled Requirement of U.S. Licensed 
Attorney for Foreign Trademark Applicants and Registrants, published at 
84 FR 31498 (July 2, 2019). The revisions published here supplement the 
changes implemented in that earlier rule and do not change the 
requirements for obtaining U.S. counsel. However, this rule has 
resulted in a few changes to the revisions that were made in the 
earlier rule. In this regard, USPTO in the earlier rule had revised 
Sec.  2.32(a)(2); under that revision, an application would be required 
to include the ``name and domicile address of each applicant.'' In this 
rule, USPTO is amending Sec.  2.32(a)(2) to require an application to 
also include the ``email address of each applicant'' (as discussed 
above, the requirement to provide an email address does not apply if 
the applicant is a national of a country that has acceded to the 
Trademark Law Treaty, but not to the Singapore Treaty on the Law of 
Trademarks). In addition, this rule includes a reorganization of Sec.  
2.22 (``Requirements for a TEAS Plus Application''), which was revised 
by the earlier rule, to streamline the regulations and improve clarity. 
As a result of this reorganization, paragraphs (a)(19), (20), and (21) 
of Sec.  2.22 of the earlier rule are being redesignated--without 
change--as paragraphs (a)(17), (18), and (19). Also, the requirement 
for the applicant's name and domicile address, which was in Sec.  
2.22(a)(1) of the earlier rule, is now a requirement of Sec.  
2.21(a)(1) of this rule, and applies to all applicants. Finally, we 
note that the regulatory revisions that were made in that earlier rule 
are going into effect on August 3, 2019, whereas the regulatory 
revisions in this rule are going into effect on October 5, 2019.

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. Regulatory Flexibility Act: For the reasons set forth herein, 
the Senior Counsel for Regulatory and Legislative Affairs, Office of 
General Law, of the USPTO 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 amends the regulations to require that applications filed 
under section 1 or section 44 of the Act, and all submissions regarding 
an application or registration under section 1, section 44, and section 
66(a), be filed electronically. The rule also requires that applicants, 
registrants, and parties to a proceeding maintain a valid email 
correspondence address and continue to receive communications from the 
Office by email. The rule applies to all applicants and registrants 
unless acceptance of a submission filed on paper or a waiver of the 
proposed requirements is granted on petition, the applicant/registrant 
is a national of a country to which the requirements will not apply, or 
the requirement to file electronically is otherwise excepted, as for 
certain types of specimens. Applicants for a trademark are not industry 
specific and may consist of individuals, small businesses, non-profit 
organizations, and large corporations. The USPTO does not collect or 
maintain statistics 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 burdens to all entities, including small entities, imposed by 
these rule changes will be minor procedural requirements on parties 
submitting applications or documents and communications in connection 
with an application or registration. The vast majority of users already 
file and prosecute applications electronically in response to previous 
initiatives to increase end-to-end electronic processing. For example, 
the USPTO amended its rules to encourage electronic filing through TEAS 
and email communication by establishing the TEAS Plus and TEAS RF 
filing options for applications that are based on section 1 and/or 
section 44. See 37 CFR 2.6. The TEAS RF filing option is now the most 
popular filing option among USPTO customers, followed by TEAS Plus. 
These two filing options currently account for approximately 97% of all 
trademark applications filed under section 1 and/or section 44, and 
more than 99% of trademark applications under section 1 and/or section 
44 in total are now filed electronically through TEAS, suggesting

[[Page 37092]]

that most applicants are comfortable with filing and communicating with 
the USPTO electronically.
    Furthermore, in January 2017, the USPTO revised its rules to (1) 
increase fees for paper filings to bring the fees nearer to the cost of 
processing the filings and encourage customers to use lower-cost 
electronic options and (2) require that all submissions to the TTAB be 
filed through ESTTA. As a result of these rule changes, the USPTO is 
now processing approximately 88% of applications filed under section 1 
and/or section 44 electronically end to end.
    The changes enacted herein do not impose any additional economic 
burden unless the applicant or registrant fails to file electronically. 
In such cases, the economic burden to the applicant or registrant would 
be the higher paper fee for the submission (if a fee is required) and 
the fee for the petition seeking acceptance of a submission filed on 
paper or a waiver of the requirement to file electronically. However, 
as mentioned above, since the vast majority of current users already 
file and prosecute applications electronically, the economic impact of 
filing on paper is expected to be small. Moreover, this rule will lead 
to a greater adoption of lower filing-fee options and therefore 
outweigh any cost burdens and likely save applicants and registrants 
money. For these reasons, this rule is not expected to have a 
significant economic impact on a substantial number of small entities.
    C. Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking has been determined to be not 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 rule is not an Executive Order 13771 regulatory 
action because this rule is not significant under Executive Order 
12866.
    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 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. This rulemaking has an overall change on the 
public burdens within these approved collections including a reduction 
of 862 in burden hours and a reduction of $5,175 in cost burdens.
    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

[[Page 37093]]

information displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, 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 
amends parts 2 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

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

    Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section 
10(c) of Pub. L. 112-29, unless otherwise noted.


0
2. Amend Sec.  2.2 by revising paragraphs (e), (f), and (g) and adding 
paragraphs (q) through (t) to read as follows:


Sec.  2.2  Definitions.

* * * * *
    (e) The term Office or abbreviation USPTO means the United States 
Patent and Trademark Office.
    (f) The acronym TEAS means the Trademark Electronic Application 
System and, as used in this part, includes all related electronic 
systems required to complete an electronic submission through TEAS.
    (g) The acronym ESTTA means the Electronic System for Trademark 
Trials and Appeals and, as used in this part, includes all related 
electronic systems required to complete an electronic submission 
through ESTTA.
* * * * *
    (q) The acronym ETAS means the Electronic Trademark Assignment 
System and, as used in this part, includes all related electronic 
systems required to complete an electronic submission through ETAS.
    (r) Eastern Time means Eastern Standard Time or Eastern Daylight 
Time, as appropriate.
    (s) The term electronic submission as used in this part refers to 
any submission made through an electronic filing system available on 
the Office's website, but not through email or facsimile transmission.
    (t) The abbreviation USPS as used in this part means the U.S. 
Postal Service.

0
3. Amend Sec.  2.6 by revising paragraphs (a)(1)(ii) through (v) to 
read as follows:


Sec.  2.6  Trademark fees.

    (a) * * *
    (1) * * *
    (ii) For filing an application under section 66(a) of the Act, per 
class--$400.00
    (iii) For filing a TEAS Standard application, per class--$275.00
    (iv) For filing a TEAS Plus application under Sec.  2.22, per 
class--$225.00
    (v) Additional processing fee under Sec.  2.22(c), per class--
$125.00
* * * * *

0
4. Amend Sec.  2.17 by revising paragraph (d) to read as follows:


Sec.  2.17  Recognition for representation.

* * * * *
    (d) Power of attorney relating to multiple applications or 
registrations. 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.
* * * * *

0
5. Revise Sec.  2.18 to read as follows:


Sec.  2.18  Correspondence, with whom held.

    (a) Establishing the correspondent. The Office will send 
correspondence as follows:
    (1) If the applicant, registrant, or party to a proceeding is not 
represented by an attorney qualified to practice before the Office 
under Sec.  11.14(a) of this chapter, the Office will send 
correspondence to the applicant, registrant, or party to the 
proceeding.
    (2) If an attorney is recognized as a representative pursuant to 
Sec.  2.17(b)(1), the Office will correspond only with that attorney. A 
request to change the correspondence address does not revoke a power of 
attorney. Except for service of a cancellation petition, the Office 
will not correspond directly with the applicant, registrant, or a party 
to a proceeding, or with another attorney from a different firm, 
unless:
    (i) The applicant or registrant files a revocation of the power of 
attorney under Sec.  2.19(a) and/or a new power of attorney that meets 
the requirements of Sec.  2.17(c);
    (ii) The attorney has been suspended or excluded from practicing in 
trademark matters before the USPTO; or
    (iii) Recognition of the attorney has ended pursuant to Sec.  
2.17(g).
    (b) Ex parte matters. Only one correspondence address may be 
designated in an ex parte matter.
    (c) Maintaining and changing the correspondence addresses. The 
applicant, registrant, or party to a proceeding must maintain current 
and accurate correspondence addresses, as required by Sec.  2.23, for 
itself and its attorney, if one is designated. If any of these 
addresses change, a request to change the address, signed in accordance 
with Sec.  2.193(e)(9), must be promptly filed.
    (d) Post registration filings under sections 7, 8, 9, 12(c), 15, 
and 71 of the Act. Even if there is no new power of attorney or written 
request to change the correspondence address, the Office will change 
the correspondence address upon the examination of an affidavit under 
section 8, 12(c), 15, or 71 of the Act, renewal application under 
section 9 of the Act, or request for amendment or correction under 
section 7 of the Act, if a new address is provided, in accordance with 
paragraph (a) of this section.

0
6. Revise Sec.  2.21 to read as follows:


Sec.  2.21  Requirements for receiving a filing date.

    (a) The Office will grant a filing date to an application under 
section 1 or section 44 of the Act that is filed through TEAS, is 
written in the English language, and contains all of the following:
    (1) The name, domicile address, and email address of each 
applicant;
    (2) If the applicant is represented by a practitioner qualified 
under Sec.  11.14 of this chapter, the practitioner's name, postal 
address, and email address;
    (3) A clear drawing of the mark;
    (4) A listing of the goods or services; and
    (5) The filing fee required under Sec.  2.6 for at least one class 
of goods or services.
    (b) If the applicant does not satisfy all the elements required in 
paragraph (a) of this section, the Office will deny a filing date to 
the application unless the applicant meets the requirements of 
paragraph (c) of this section.
    (c) If the applicant is a national of a country that has acceded to 
the Trademark Law Treaty, but not to the Singapore Treaty on the Law of 
Trademarks, the requirements of paragraph (a) of this section to file 
through TEAS and provide an email address do not apply.

0
7. Revise Sec.  2.22 to read as follows:


Sec.  2.22  Requirements for a TEAS Plus application.

    (a) A trademark/service mark application for registration on the 
Principal Register under section 1 and/or section 44 of the Act that 
meets the requirements for a filing date under Sec.  2.21 will be 
entitled to a reduced filing fee under Sec.  2.6(a)(1)(iv) if it 
includes:

[[Page 37094]]

    (1) The applicant's legal entity;
    (2) The citizenship of each individual applicant, or the state or 
country of incorporation or organization of each juristic applicant;
    (3) If the applicant is a domestic partnership, the names and 
citizenship of the general partners, or if the applicant is a domestic 
joint venture, the names and citizenship of the active members of the 
joint venture;
    (4) If the applicant is a sole proprietorship, the state of 
organization of the sole proprietorship and the name and citizenship of 
the sole proprietor;
    (5) One or more bases for filing that satisfy all the requirements 
of Sec.  2.34. If more than one basis is set forth, the applicant must 
comply with the requirements of Sec.  2.34 for each asserted basis;
    (6) Correctly classified goods and/or services, with an 
identification of goods and/or services from the Office's Acceptable 
Identification of Goods and Services Manual, available through the TEAS 
Plus form. In an application based on section 44 of the Act, the scope 
of the goods and/or services covered by the section 44 basis may not 
exceed the scope of the goods and/or services in the foreign 
application or registration;
    (7) If the application contains goods and/or services in more than 
one class, compliance with Sec.  2.86;
    (8) A filing fee for each class of goods and/or services, as 
required by Sec.  2.6(a)(1)(iv);
    (9) A verified statement that meets the requirements of Sec.  2.33, 
dated and signed by a person properly authorized to sign on behalf of 
the owner pursuant to Sec.  2.193(e)(1);
    (10) If the applicant does not claim standard characters, the 
applicant must attach a digitized image of the mark. If the mark 
includes color, the drawing must show the mark in color;
    (11) If the mark is in standard characters, a mark comprised only 
of characters in the Office's standard character set, typed in the 
appropriate field of the TEAS Plus form;
    (12) If the mark includes color, a statement naming the color(s) 
and describing where the color(s) appears on the mark, and a claim that 
the color(s) is a feature of the mark;
    (13) If the mark is not in standard characters, a description of 
the mark;
    (14) If the mark includes non-English wording, an English 
translation of that wording;
    (15) If the mark includes non-Latin characters, a transliteration 
of those characters;
    (16) If the mark includes an individual's name or portrait, either 
(i) a statement that identifies the living individual whose name or 
likeness the mark comprises and written consent of the individual, or 
(ii) a statement that the name or portrait does not identify a living 
individual (see section 2(c) of the Act).
    (17) 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;
    (18) If the application is a concurrent use application, compliance 
with Sec.  2.42; and
    (19) An applicant whose domicile 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), and include the attorney's 
name, postal address, email address, and bar information.
    (b) In addition to the filing requirements under paragraph (a) of 
this section, the applicant must comply with Sec.  2.23(a) and (b).
    (c) If an application does not fulfill the requirements of 
paragraph (a) of this section, the applicant must pay the processing 
fee required by Sec.  2.6(a)(1)(v).
    (d) The following types of applications cannot be filed as TEAS 
Plus applications:
    (1) Applications for certification marks (see Sec.  2.45);
    (2) Applications for collective trademarks and service marks (see 
Sec.  2.44);
    (3) Applications for collective membership marks (see Sec.  2.44); 
and
    (4) Applications for registration on the Supplemental Register (see 
Sec.  2.47).

0
8. Revise Sec.  2.23 to read as follows:


Sec.  2.23  Requirement to correspond electronically with the Office 
and duty to monitor status.

    (a) Unless stated otherwise in this chapter, all trademark 
correspondence must be submitted through TEAS.
    (b) Applicants, registrants, and parties to a proceeding must 
provide and maintain a valid email address for correspondence.
    (c) If the applicant or registrant is a national of a country that 
has acceded to the Trademark Law Treaty, but not to the Singapore 
Treaty on the Law of Trademarks, the requirements of paragraphs (a) and 
(b) of this section do not apply.
    (d) Notices issued or actions taken by the USPTO are displayed in 
the USPTO's publicly available electronic systems. Applicants and 
registrants are responsible for monitoring the status of their 
applications and registrations in the USPTO's electronic systems during 
the following time periods:
    (1) At least every six months between the filing date of the 
application and issuance of a registration; and
    (2) After filing an affidavit of use or excusable nonuse under 
section 8 or section 71 of the Act, or a renewal application under 
section 9 of the Act, at least every six months until the registrant 
receives notice that the affidavit or renewal application has been 
accepted.

0
9. Revise Sec.  2.24 to read as follows:


Sec.  2.24  Designation and revocation of domestic representative by 
foreign applicant.

    (a) An applicant or registrant that is not domiciled in the United 
States may designate a domestic representative (i.e., a person residing 
in the United States on whom notices or process in proceedings 
affecting the mark may be served).
    (b) The designation, or a request to change or revoke a 
designation, must set forth the name, email address, and postal address 
of the domestic representative and be signed pursuant to Sec.  
2.193(e)(8).
    (c) The mere designation of a domestic representative does not 
authorize the person designated to represent the applicant or 
registrant.

0
10. Amend Sec.  2.32 by revising paragraphs (a)(2) and (3) and (d) to 
read as follows:


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

    (a) * * *
    (2) The name, domicile address, and email address of each 
applicant. If the applicant is a national of a country that has acceded 
to the Trademark Law Treaty, but not to the Singapore Treaty on the Law 
of Trademarks, the requirement to provide an email address does not 
apply;
    (3)(i) The legal entity type and citizenship of the applicant(s); 
and
    (ii) If the applicant is a corporation, association, partnership or 
other juristic person, the jurisdiction (usually state or nation) under 
the laws of which the applicant is organized;
    (iii) If the applicant is a domestic partnership, the names and 
citizenship of the general partners;
    (iv) If the applicant is a domestic joint venture, the names and 
citizenship of the active members of the joint venture; or
    (v) If the applicant is a sole proprietorship, the state of 
organization

[[Page 37095]]

of the sole proprietorship and the name and citizenship of the sole 
proprietor.
* * * * *
    (d) The application must include the fee required by Sec.  2.6 for 
each class of goods or services.
* * * * *

0
11. Revise Sec.  2.56 to read as follows:


2.56  Specimens.

    (a) An application under section 1(a) of the Act, an amendment to 
allege use under Sec.  2.76, a statement of use under Sec.  2.88, an 
affidavit or declaration of continued use or excusable nonuse under 
Sec.  2.160, or an affidavit or declaration of use or excusable nonuse 
under Sec.  7.36 must include one specimen per class showing the mark 
as actually used in commerce on or in connection with the goods or 
services identified. When requested by the Office as reasonably 
necessary to proper examination, additional specimens must be provided.
    (b)(1) A trademark specimen must show use of the mark on the goods, 
on containers or packaging for the goods, on labels or tags affixed to 
the goods, or on a display associated with the goods. To constitute a 
display associated with the goods, a specimen must show use of the mark 
directly associated with the goods and such use must be of a point-of-
sale nature. The Office may accept another document related to the 
goods or the sale of the goods when it is impracticable to place the 
mark on the goods, packaging for the goods, or displays associated with 
the goods.
    (2) A service mark specimen must show the mark as used in the sale 
of the services, including use in the performance or rendering of the 
services, or in the advertising of the services. The specimen must show 
a direct association between the mark and the services.
    (3) A collective trademark or collective service mark specimen must 
show how a member uses the mark on the member's goods or in the sale of 
the services, including use in the performance or rendering of the 
services, or advertising of the member's services.
    (4) A collective membership mark specimen must show use by members 
to indicate membership in the collective organization.
    (5) A certification mark specimen must show how a person other than 
the owner uses the mark to reflect certification of regional or other 
origin, material, mode of manufacture, quality, accuracy, or other 
characteristics of that person's goods or services; or that members of 
a union or other organization performed the work or labor on the goods 
or services.
    (c) A clear and legible photocopy, photograph, web page printout, 
or other similar type of reproduction of an actual specimen that meets 
the requirements of paragraphs (a) and (b) of this section is 
acceptable. The reproduction must show the entire specimen or enough of 
the specimen that the nature of the specimen, the mark, and the good or 
service with which the mark is used are identifiable. A web page must 
include the URL and access or print date. An artist's rendering, a 
printer's proof, a computer illustration, digital image, or similar 
mockup of how the mark may be displayed, or a photocopy of the drawing 
required by Sec.  2.51, are not proper specimens.
    (d) The specimen must be submitted through TEAS in a file format 
designated as acceptable by the Office, unless:
    (1) The mark consists of a scent, flavor, or similar non-
traditional mark type, in which case the specimen may be mailed to the 
Office, pursuant to Sec.  2.190(a), without resort to the procedures 
set forth in Sec.  2.147; or
    (2) Submission on paper is permitted under Sec.  2.23(c) or is 
accepted on petition pursuant to Sec.  2.147.

0
12. Revise Sec.  2.62 to read as follows:


Sec.  2.62  Procedure for submitting response.

    (a) Deadline. The applicant's response to an Office action must be 
received by the USPTO within six months from the issue date.
    (b) Signature. The response must be 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).
    (c) Form. Responses must be submitted through TEAS pursuant to 
Sec.  2.23(a). Responses sent via email or facsimile will not be 
accorded a date of receipt.

0
13. Amend Sec.  2.111 by revising paragraph (c)(2) to read as follows:


Sec.  2.111  Filing petition for cancellation.

* * * * *
    (c) * * *
    (2)(i) In the event that ESTTA is unavailable due to technical 
problems, or when extraordinary circumstances are present, a petition 
to cancel may be filed in paper form. A paper petition to cancel a 
registration must be accompanied by a Petition to the Director under 
Sec.  2.146, with the fees therefor and the showing required under this 
paragraph (c). Timeliness of the paper submission, if relevant to a 
ground asserted in the petition to cancel, will be determined in 
accordance with Sec. Sec.  2.195 through 2.198.
    (ii) For a petition to cancel a registration on the fifth year 
anniversary of the date of registration of the mark, a petitioner for 
cancellation who meets the requirements of Sec.  2.147(b) may submit a 
petition to the Director to accept a timely filed paper petition to 
cancel.
* * * * *

0
14. Amend Sec.  2.146 by revising paragraph (a) to read as follows:


Sec.  2.146  Petitions to the Director.

    (a) Petition may be taken to the Director in a trademark case:
    (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);
    (2) In any case for which the Act of 1946, Title 35 of the United 
States Code, or parts 2, 3, 6, and 7 of Title 37 of the Code of Federal 
Regulations specifies that the matter is to be determined directly or 
reviewed by the Director;
    (3) To invoke the supervisory authority of the Director in 
appropriate circumstances;
    (4) In any case not specifically defined and provided for by parts 
2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or
    (5) In an extraordinary situation, when justice requires and no 
other party is injured thereby, to request a suspension or waiver of 
any requirement of the rules not being a requirement of the Act of 
1946.
* * * * *

0
15. Add Sec.  2.147 to read as follows:


Sec.  2.147  Petition to the Director to accept a paper submission.

    (a) Paper submission when TEAS is unavailable on the date of a 
filing deadline. (1) An applicant or registrant may file a petition to 
the Director under this section requesting acceptance of a submission 
filed on paper if:
    (i) TEAS is unavailable on the date of the deadline for the 
submission specified in a regulation in part 2 or 7 of this chapter or 
in a section of the Act; and
    (ii) The petition is timely filed, pursuant to Sec.  2.197 or Sec.  
2.198, on the date of the deadline.
    (2) The petition must include:
    (i) The paper submission;
    (ii) Proof that TEAS was unavailable on the date of the deadline;
    (iii) A statement of the facts relevant to the petition, supported 
by a declaration under Sec.  2.20 or 28 U.S.C.

[[Page 37096]]

1746 that is signed by the petitioner, someone with legal authority to 
bind the petitioner (e.g., a corporate officer or general partner of a 
partnership), or a practitioner qualified to practice under Sec.  11.14 
of this chapter;
    (iv) The fee for a petition filed on paper under Sec.  
2.6(a)(15)(i); and
    (v) Any other required fee(s) under Sec.  2.6 for the paper 
submission.
    (b) Certain paper submissions timely filed before the date of a 
filing deadline. (1) An applicant, registrant, or petitioner for 
cancellation may file a petition to the Director under this section, 
requesting acceptance of any of the following submissions that was 
timely submitted on paper and otherwise met the minimum filing 
requirements, but not processed or examined by the Office because it 
was not submitted electronically pursuant to Sec.  2.21(a), Sec.  
2.23(a), or Sec.  2.111(c)(1), and the applicant, registrant, or 
petitioner for cancellation is unable to timely resubmit the document 
electronically by the deadline:
    (i) An application seeking a priority filing date with a deadline 
under section 44(d)(1) of the Act;
    (ii) A statement of use filed within the last six months of the 
period specified in section 1(d)(2) of the Act;
    (iii) An affidavit or declaration of continued use or excusable 
nonuse with a deadline under section 8(a)(3) or section 71(a)(3) of the 
Act;
    (iv) A request for renewal of a registration with a deadline under 
section 9(a) of the Act;
    (v) An application for transformation of an extension of protection 
into a United States application with a deadline under section 70(c) of 
the Act; or
    (vi) A petition to cancel a registration under section 14 of the 
Act on the fifth year anniversary of the date of the registration of 
the mark.
    (2) The petition must be filed by not later than two months after 
the issue date of the notice denying acceptance of the paper filing and 
must include:
    (i) A statement of the facts relevant to the petition, supported by 
a declaration under Sec.  2.20 or 28 U.S.C. 1746 that is signed by the 
petitioner, someone with legal authority to bind the petitioner (e.g., 
a corporate officer or general partner of a partnership), or a 
practitioner qualified to practice under Sec.  11.14 of this chapter;
    (ii) A copy of the relevant paper submission and proof that it was 
timely filed;
    (iii) Proof that a sufficient fee accompanied the original paper 
submission;
    (iv) The required fee(s) under Sec.  2.6 for the paper submission; 
and
    (v) The relevant petition fee under Sec.  2.6(a)(15).
    (c) Petition under Sec.  2.146. If the applicant or registrant is 
unable to meet the requirements under paragraphs (a) or (b) of this 
section for filing the petition, the applicant or registrant may submit 
a petition to the Director under Sec.  2.146(a)(5) to request a waiver 
of Sec.  2.21(a) or Sec.  2.23(a).
    (d) This section does not apply to requirements for paper 
submissions to the Trademark Trial and Appeal Board except as specified 
in paragraph (b)(vi).

0
16. Revise Sec.  2.148 to read as follows:


Sec.  2.148  Director may suspend certain rules.

    In an extraordinary situation, when justice requires and no other 
party is injured thereby, any requirement of the rules in parts 2, 3, 
6, and 7 of this chapter that is not a requirement of the Act may be 
suspended or waived by the Director.

0
17. Revise Sec.  2.151 to read as follows:


Sec.  2.151  Certificate.

    When the Office determines that a mark is registrable, the Office 
will issue to the owner a certificate of registration on the Principal 
Register or the Supplemental Register. The certificate will state the 
application filing date, the act under which the mark is registered, 
the date of issue, and the number of the registration and will include 
a reproduction of the mark and pertinent data from the application. A 
notice of the requirements of sections 8 and 71 of the Act will issue 
with the certificate.

0
18. Revise Sec.  2.162 to read as follows:


Sec.  2.162  Notice to registrant.

    When a certificate of registration is originally issued, the Office 
issues with the certificate a notice of the requirement for filing the 
affidavit or declaration of use or excusable nonuse under section 8 or 
section 71 of the Act. However, the affidavit or declaration must be 
filed within the time period required by section 8 or section 71 of the 
Act even if this notice is not received.

0
19. Revise Sec.  2.190 to read as follows:


Sec.  2.190  Addresses for trademark correspondence with the United 
States Patent and Trademark Office.

    (a) Paper trademark documents. In general, trademark documents to 
be delivered by the USPS must be addressed to: Commissioner for 
Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. Trademark-related 
documents to be delivered by hand, private courier, or other delivery 
service may be delivered during the hours the Office is open to receive 
correspondence to the Trademark Assistance Center, James Madison 
Building--East Wing, Concourse Level, 600 Dulany Street, Alexandria, 
Virginia 22314.
    (b) Electronic trademark documents. Trademark documents filed 
electronically must be submitted through TEAS. Documents that relate to 
proceedings before the Trademark Trial and Appeal Board must be filed 
electronically with the Board through ESTTA.
    (c) Trademark assignment documents. Requests to record documents in 
the Assignment Recordation Branch may be filed electronically through 
ETAS. Paper documents and cover sheets to be recorded in the Assignment 
Recordation Branch should be addressed as designated in Sec.  3.27 of 
this chapter.
    (d) Requests for certified copies of trademark documents. Paper 
requests for certified copies of trademark documents must be addressed 
to: Mail Stop Document Services, Director of the United States Patent 
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
    (e) Certain documents relating to international applications and 
registrations. International applications under Sec.  7.11, subsequent 
designations under Sec.  7.21, responses to notices of irregularity 
under Sec.  7.14, requests to record changes in the International 
Register under Sec.  7.23 and Sec.  7.24, requests to note replacements 
under Sec.  7.28, requests for transformation under Sec.  7.31 of this 
chapter, and petitions to the Director to review an action of the 
Office's Madrid Processing Unit must be addressed to: Madrid Processing 
Unit, 600 Dulany Street, Alexandria, VA 22314-5796.

0
20. Revise Sec.  2.191 to read as follows:


Sec.  2.191  Action of the Office based on the written record.

    All business with the Office must be transacted in writing. The 
action of the Office will be based exclusively on the written record. 
No consideration will be given to any alleged oral promise, 
stipulation, or understanding when there is disagreement or doubt.

0
21. Amend Sec.  2.193 by:
0
a. Revising paragraphs (a)(2), (b), (c)(1), (d), (e) introductory text, 
(e)(5) introductory text, and (e)(9);
0
b. Removing paragraph (e)(10); and
0
c. Revising paragraphs (f) and (g).
    The revisions read as follows:


Sec.  2.193  Trademark correspondence and signature requirements.

    (a) * * *

[[Page 37097]]

    (2) An electronic signature that meets the requirements of 
paragraph (c) of this section, personally entered by the person named 
as the signatory. The Office will accept an electronic signature that 
meets the requirements of paragraph (c) of this section on 
correspondence filed on paper or through TEAS or ESTTA.
    (b) Copy of original signature. If a copy of an original signature 
is filed, the filer should retain the original as evidence of 
authenticity. If a question of authenticity arises, the Office may 
require submission of the original.
    (c) * * *
    (1) Personally enter any combination of letters, numbers, spaces 
and/or punctuation marks that the signer has adopted as a signature, 
placed between two forward slash (``/'') symbols in the signature block 
on the electronic submission; or
* * * * *
    (d) Signatory must be identified. The first and last name, and the 
title or position, of the person who signs a document in connection 
with a trademark application, registration, or proceeding before the 
Trademark Trial and Appeal Board must be set forth immediately below or 
adjacent to the signature.
    (e) Proper person to sign. Documents filed in connection with a 
trademark application or registration must be signed as specified in 
paragraphs (e)(1) through (9) of this section:
* * * * *
    (5) Petitions to Director under Sec.  2.146 or Sec.  2.147. A 
petition to the Director under Sec.  2.146 or Sec.  2.147 must be 
signed by the petitioner, someone with legal authority to bind the 
petitioner (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 following guidelines:
* * * * *
    (9) Requests to change correspondence address in an application or 
registration. A notice of change of correspondence address in an 
application or registration must be signed by the applicant or 
registrant, someone with legal authority to bind the applicant or 
registrant (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 following guidelines:
    (i) If the applicant or registrant is represented by a practitioner 
qualified to practice before the Office under Sec.  11.14 of this 
chapter, the practitioner must sign; or
    (ii) If the applicant or registrant is not represented by a 
practitioner qualified to practice before the Office under Sec.  11.14, 
the individual applicant or registrant or someone with legal authority 
to bind the applicant or registrant (e.g., a corporate officer or 
general partner of a partnership) must sign. In the case of joint 
applicants or joint registrants, all must sign.
    (f) Signature as certification. The presentation to the Office 
(whether by signing, filing, submitting, or later advocating) of any 
document by any person, whether a practitioner or non-practitioner, 
constitutes a certification under Sec.  11.18(b) of this chapter. 
Violations of Sec.  11.18(b) of this chapter may jeopardize the 
validity of the application or registration, and may result in the 
imposition of sanctions under Sec.  11.18(c) of this chapter. Any 
practitioner violating Sec.  11.18(b) of this chapter may also be 
subject to disciplinary action. See Sec.  11.18(d) and Sec.  11.804 of 
this chapter.
    (g) Separate copies for separate files. (1) Since each file must be 
complete in itself, a separate copy of every document filed in 
connection with a trademark application, registration, or inter partes 
proceeding must be furnished for each file to which the document 
pertains, even though the documents filed in multiple files may be 
identical.
    (2) Parties should not file duplicate copies of documents in a 
single application, registration, or proceeding file, unless the Office 
requires the filing of duplicate copies.
* * * * *

0
22. Revise Sec.  2.195 to read as follows:


Sec.  2.195  Filing date of trademark correspondence.

    The filing date of trademark correspondence is determined as 
follows:
    (a) Electronic submissions. The filing date of an electronic 
submission is the date the Office receives the submission, based on 
Eastern Time, regardless of whether that date is a Saturday, Sunday, or 
Federal holiday within the District of Columbia.
    (b) Paper correspondence. The filing date of a submission submitted 
on paper is the date the Office receives the submission, except as 
follows:
    (1) Priority Mail Express[supreg]. The filing date of the 
submission is the date of deposit with the USPS, if filed pursuant to 
the requirements of Sec.  2.198.
    (2) Certificate of mailing. The filing date of the submission is 
the date of deposit with the USPS, if filed pursuant to the 
requirements of Sec.  2.197.
    (3) Office closed. The Office is not open to receive paper 
correspondence on any day that is a Saturday, Sunday, or Federal 
holiday within the District of Columbia.
    (c) Email and facsimile submissions. Email and facsimile 
submissions are not permitted and, if submitted, will not be accorded a 
date of receipt.
    (d) Interruptions in USPS. If the Director designates a postal 
service interruption or emergency within the meaning of 35 U.S.C. 
21(a), any person attempting to file correspondence by Priority Mail 
Express[supreg] Post Office to Addressee service who was unable to 
deposit the correspondence with the USPS due to the interruption or 
emergency may petition the Director to consider such correspondence as 
filed on a particular date in the Office. The petition must:
    (1) Be filed promptly after the ending of the designated 
interruption or emergency;
    (2) Include the original correspondence or a copy of the original 
correspondence; and
    (3) Include a statement that the correspondence would have been 
deposited with the USPS on the requested filing date but for the 
designated interruption or emergency in Priority Mail Express[supreg] 
service; and that the correspondence attached to the petition is the 
original correspondence or a true copy of the correspondence originally 
attempted to be deposited as Priority Mail Express[supreg] on the 
requested filing date.

0
23. Revise Sec.  2.197 to read as follows:


Sec.  2.197  Certificate of mailing.

    (a) The filing date of correspondence submitted under this section 
is the date of deposit with the USPS if the correspondence:
    (1) Is addressed as set out in Sec.  2.190 and deposited with the 
USPS with sufficient postage as first-class mail; and
    (2) Includes a certificate of mailing for each piece of 
correspondence that:
    (i) Attests to the mailing and the address used;
    (ii) Includes the name of the document and the application serial 
number or USPTO reference number, if assigned, or registration number 
to which the document pertains;
    (iii) Is signed separately from any signature for the 
correspondence by a person who has a reasonable basis to expect that 
the correspondence would be mailed on the date indicated; and
    (iv) Sets forth the date of deposit with the USPS.
    (b) If correspondence is mailed in accordance with paragraph (a) of 
this section, but not received by the Office,

[[Page 37098]]

the party who mailed such correspondence may file a petition to the 
Director under Sec.  2.146(a)(2) to consider such correspondence filed 
in the Office on the date of deposit with the USPS. The petition must:
    (1) Be filed within two months after the date of mailing;
    (2) Include a copy of the previously mailed correspondence and 
certificate; and
    (3) Include a verified statement attesting to the facts of the 
original mailing.
    (c) If the certificate of mailing does not meet the requirements of 
paragraph (a)(2) of this section, the filing date is the date the 
Office receives the submission.

0
24. Revise Sec.  2.198 to read as follows:


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

    (a) The filing date of correspondence submitted under this section 
is the date of deposit with the USPS, as shown by the ``date accepted'' 
on the Priority Mail Express[supreg] label or other official USPS 
notation.
    (b) If the USPS deposit date cannot be determined, the filing date 
is the date the Office receives the submission.
    (c) If there is a discrepancy between the filing date accorded by 
the Office to the correspondence and the ``date accepted,'' the party 
who submitted the correspondence may file a petition to the Director 
under Sec.  2.146(a)(2) to accord the correspondence a filing date as 
of the ``date accepted.'' The petition must:
    (1) Be filed within two months after the date of deposit;
    (2) Include a true copy of the Priority Mail Express[supreg] 
mailing label showing the ``date accepted,'' and any other official 
notation by the USPS relied upon to show the date of deposit; and
    (3) Include a verified statement attesting to the facts of the 
original mailing.
    (d) If the party who submitted the correspondence can show that the 
``date accepted'' was incorrectly entered or omitted by the USPS, the 
party may file a petition to the Director under Sec.  2.146(a)(2) to 
accord the correspondence a filing date as of the date the 
correspondence is shown to have been deposited with the USPS. The 
petition must:
    (1) Be filed within two months after the date of deposit;
    (2) Include proof that the correspondence was deposited in the 
Priority Mail Express[supreg] Post Office to Addressee service prior to 
the last scheduled pickup on the requested filing date. Such proof must 
be corroborated by evidence from the USPS or evidence that came into 
being within one business day after the date of deposit; and
    (3) Include a verified statement attesting to the facts of the 
original mailing.
    (e) If correspondence is properly addressed to the Office pursuant 
to Sec.  2.190 and deposited with sufficient postage in the Priority 
Mail Express[supreg] Post Office to Addressee service of the USPS, but 
not received by the Office, the party who submitted the correspondence 
may file a petition to the Director under Sec.  2.146(a)(2) to consider 
such correspondence filed in the Office on the USPS deposit date. The 
petition must:
    (1) Be filed within two months after the date of deposit;
    (2) Include a copy of the previously mailed correspondence showing 
the number of the Priority Mail Express[supreg] mailing label thereon; 
and
    (3) Include a verified statement attesting to the facts of the 
original mailing.

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

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

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


0
26. Amend Sec.  7.1 by revising paragraphs (c) and (d) to read as 
follows:


Sec.  7.1  Definitions of terms as used in this part.

* * * * *
    (c) The acronym TEAS means the Trademark Electronic Application 
System, and, as used in this part, includes all related electronic 
systems required to complete an electronic submission through TEAS.
    (d) The term Office or the abbreviation USPTO means the United 
States Patent and Trademark Office.
* * * * *

0
27. Revise Sec.  7.4 to read as follows:


Sec.  7.4  International applications and registrations originating 
from the USPTO--Requirements to electronically file and communicate 
with the Office.

    (a) Unless stated otherwise in this chapter, all correspondence 
filed with the USPTO relating to international applications and 
registrations originating from the USPTO must be submitted through TEAS 
and include a valid email address for correspondence.
    (b) Applicants and registrants under this section must provide and 
maintain a valid email address for correspondence with the Office.
    (c) If an applicant or registrant under this section is a national 
of a country that has acceded to the Trademark Law Treaty, but not to 
the Singapore Treaty on the Law of Trademarks, the requirements of 
paragraphs (a) and (b) of this section do not apply.
    (d) If TEAS is unavailable, or in an extraordinary situation, an 
applicant or registrant under this section who is required to file a 
submission through TEAS may submit a petition to the Director under 
Sec.  2.146(a)(5) and (c) of this chapter to accept the submission 
filed on paper.

0
28. Amend Sec.  7.11 by:
0
a. Revising paragraphs (a) introductory text and (a)(10) and (11);
0
b. Removing paragraph (a)(12); and
0
c. Revising paragraph (b).
    The revisions read as follows:


Sec.  7.11  Requirements for international application originating from 
the United States.

    (a) The Office will grant a date of receipt to an international 
application that is filed through TEAS in accordance with Sec.  7.4(a), 
or typed on the official paper form issued by the International Bureau, 
if permitted under Sec.  7.4(c) or accepted on petition pursuant to 
Sec.  7.4(d). The international application must include all of the 
following:
* * * * *
    (10) If the application is filed through TEAS, the international 
application fees for all classes, and the fees for all designated 
Contracting Parties identified in the international application (see 
Sec.  7.7); and
    (11) A statement that the applicant is entitled to file an 
international application in the Office, specifying that applicant: Is 
a national of the United States; has a domicile in the United States; 
or has a real and effective industrial or commercial establishment in 
the United States. Where an applicant's address is not in the United 
States, the applicant must provide the address of its U.S. domicile or 
establishment.
    (b) For requirements for certification, see Sec.  7.13.

0
29. Amend Sec.  7.21 by:
0
a. Revising paragraphs (b) introductory text and (b)(7) and (8);
0
b. Removing paragraph (b)(9); and
0
c. Revising paragraph (c).
    The revisions read as follows:


Sec.  7.21  Subsequent designation.

* * * * *
    (b) The Office will grant a date of receipt to a subsequent 
designation that

[[Page 37099]]

is filed through TEAS in accordance with Sec.  7.4(a), or typed on the 
official paper form issued by the International Bureau, if permitted 
under Sec.  7.4(c) or accepted on petition pursuant to Sec.  7.4(d). 
The subsequent designation must contain all of the following:
* * * * *
    (7) The U.S. transmittal fee required by Sec.  7.6; and
    (8) If the subsequent designation is filed through TEAS, the 
subsequent designation fees (see Sec.  7.7).
    (c) If the subsequent designation is accorded a date of receipt, 
the Office will then forward the subsequent designation to the 
International Bureau.
* * * * *

0
30. 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, 2.22, 2.76, 2.88, 2.89, 2.130, 
2.131, 2.160 through 2.166, 2.168, 2.173, 2.175, and 2.181 through 
2.186, 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.
* * * * *

    Dated: July 25, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-16259 Filed 7-30-19; 8:45 am]
 BILLING CODE 3510-16-P