Changes to the Trademark Rules of Practice To Mandate Electronic Filing; Correction, 68045-68046 [2019-26899]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 84, Number 240 (Friday, December 13, 2019)]
[Rules and Regulations]
[Pages 68045-68046]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-26899]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

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


Changes to the Trademark Rules of Practice To Mandate Electronic 
Filing; Correction

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule; correction.

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SUMMARY: The United States Patent and Trademark Office published in the 
Federal Register on July 31, 2019 (delayed on October 2, 2019), a final 
rule amending its regulations 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 
rulemaking clarifies the mandatory electronic filing regulation 
addressing the requirements for receiving a filing date, by amending it 
to remove the word ``domicile.'' This rulemaking also clarifies the 
mandatory electronic filing regulation addressing the requirements for 
a TEAS Plus application.

DATES: This correction is effective on December 21, 2019.

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

SUPPLEMENTARY INFORMATION: On July 31, 2019 (84 FR 37081), the United 
States Patent and Trademark Office (USPTO) published in the Federal 
Register a final rule amending 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 based on 
section 1 and/or section 44 of the Trademark Act (Act), 15 U.S.C. 1051, 
1126, 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 (Mandatory 
Electronic Filing Rule). The effective date of the July 31, 2019, rule 
was delayed until December 21, 2019 (84 FR 52363, October 2, 2019). In 
Sec.  2.21, the Mandatory Electronic Filing Rule addressing the 
requirements for receiving a filing date were amended to require the 
``domicile address'' of each applicant. Prior to the July 31, 2019, 
Mandatory Electronic Filing Rule, the regulations at Sec.  2.21(a) 
required ``[t]he name of the applicant'' and ``[a] name and address for 
correspondence.'' 37 CFR 2.21(a)(1), (2). In the May 30, 2018 notice of 
proposed rulemaking, the USPTO proposed to amend Sec.  2.21(a)(1) to 
require ``[t]he name, postal address, and email address of each 
applicant'' to receive a filing date and made a conforming amendment to 
Sec.  2.32(a)(2) to require the same information for a complete 
application. In the July 31, 2019, final rule, the USPTO replaced the 
word ``postal'' with ``domicile'' in amended Sec.  2.21(a)(1) and 
amended Sec.  2.32(a)(2) to reconcile the final rule with the 
provisions of another final rule entitled ``Requirement of U.S. 
Licensed Attorney for Foreign Trademark Applicants and Registrants'' 
(84 FR 31498, July 2, 2019) (U.S. Counsel rule) that required provision 
of domicile addresses. The USPTO has determined that substituting the 
wording ``domicile address'' for ``postal address'' in the July 31, 
2019, final rule might result in the unintended consequence of the loss 
of a filing date for some applicants who provide an address that is 
later determined not to be their domicile address. Therefore, the USPTO 
has determined that the better practice is to retain the existing 
requirement for an ``address'' as a filing-date requirement. The 
requirement for a ``domicile address'' remains a requirement for a 
complete application in amended Sec.  2.32(a)(2). Thus, this rulemaking 
amends Sec.  2.21(a)(1) in the July 31, 2019, final rule to remove the 
word ``domicile.''
    In addition, in light of the amendment made to Sec.  2.21(a)(1), 
the USPTO makes a conforming change to Sec.  2.22(a)(1) in the July 31, 
2019, final rule to reinsert the requirement for a domicile address. In 
the U.S. Counsel rule, the USPTO added the requirement for the 
applicant's domicile address to the regulation addressing the 
requirements for a TEAS Plus application. 37 CFR 2.22(a)(1). 
Subsequently, in the July 31, 2019, Mandatory Electronic Filing Rule, 
the USPTO removed this requirement from Sec.  2.22(a)(1) as duplicative 
because the domicile requirement added to Sec.  2.21(a)(1) also applied 
to TEAS Plus applications. The amendment made to Sec.  2.21(a)(1) in 
this rulemaking removes the requirement for a domicile address from 
Sec.  2.21(a)(1), as discussed above, and requires the USPTO to 
reinsert it back in Sec.  2.22(a)(1) so that it will

[[Page 68046]]

continue to apply to TEAS Plus applications as a requirement for 
receiving a reduced filing fee.

Rulemaking Requirements

    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))).
    In addition, good cause exists under 5 U.S.C. 553(b)(B) and (d)(3) 
to issue this rule without prior notice and opportunity for comment and 
the 30-day delay in effectiveness, as it would be impracticable and 
contrary to the public interest. This action amends Sec.  2.21(a)(1) to 
avoid a possible unintended consequence (i.e., possible loss of a 
filing date for some applicants who provide an address that is later 
determined not to be their domicile address) that might result from 
substituting the wording ``domicile address'' for ``postal address'' in 
the July 31, 2019 final rule. Therefore, the USPTO has determined that 
the better practice is to retain the existing requirement for an 
``address'' as a filing-date requirement. The requirement for a 
``domicile address'' remains a requirement for a complete application 
in amended Sec.  2.32(a)(2). Delay of this correction to allow for 
prior notice and opportunity for comment would result in the 
implementation of a requirement that may result in a loss of a filing 
date for some applicants as well as confusion among applicants 
regarding the requirements for a filing date. In addition, because the 
July 31, 2019 final rule is not effective until December 21, 2019, no 
party has been negatively impacted or affected by this rulemaking, 
which is being published prior to that effective date. Therefore, the 
USPTO waives the requirement for prior notice and opportunity for 
comment, and implements this correction on the effective date of this 
rule.

Corrections

    In FR Doc. 2019-16259 appearing on page 37081 in the Federal 
Register of Wednesday, July 31, 2019, delayed at 84 FR 52363, October 
2, 2019, the following corrections are made:


Sec.  2.21  [Corrected]

0
1. On page 37093, in the third column, in Sec.  2.21, in paragraph 
(a)(1), ``The name, domicile address, and email address of each 
applicant;'' is corrected to read ``The name, address, and email 
address of each applicant;''

0
2. On page 37094, in the first and second columns, in Sec.  2.22, 
paragraphs (a)(1) through (19) are redesignated as paragraphs (a)(2) 
through (20) and new paragraph (a)(1) is added to read as follows:


Sec.  2.22  Requirements for a TEAS Plus application.

    (a) * * *
    (1) The applicant's name and domicile address;
* * * * *

    Dated: December 9, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-26899 Filed 12-12-19; 8:45 am]
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