Changes to the Trademark Rules of Practice To Mandate Electronic Filing, 69330-69331 [2019-27426]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 84, Number 243 (Wednesday, December 18, 2019)]
[Rules and Regulations]
[Pages 69330-69331]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-27426]


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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; delay of effective date.

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SUMMARY: On July 31, 2019, the United States Patent and Trademark 
Office published in the Federal Register a final rule amending the 
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. That final 
rule had an effective date of October 5, 2019, which was subsequently 
delayed until December 21, 2019. A correction to the July 31, 2019 rule 
was published on December 13, 2019 and is also effective on December 
21, 2019. This action further delays the effective date of the both the 
July 31, 2019 final rule, and the December 13, 2019 correction, until 
February 15, 2020.

DATES: The effective date of the final rule published on July 31, 2019 
(84 FR 37081), delayed on October 2, 2019 (84 FR 52363), is further 
delayed from December 21, 2019 to February 15, 2020. The correction 
published on December 13, 2019 (84 FR 68045), is delayed from December 
21, 2019 to February 15, 2020.

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, the United States Patent 
and Trademark Office (USPTO) published in the Federal Register (84 FR 
37081, July 31, 2019) a final rule amending the 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. The effective date of the July 
31, 2019 rule was delayed from October 5, 2019 until December 21, 2019 
(84 FR 52363, October 2, 2019). A correction to the July 31, 2019 rule 
was published on December 13, 2019 (84 FR 68045) and is also effective 
on December 21, 2019.
    In response to recent feedback received from external stakeholders 
regarding their need to more fully comprehend the nature of, and 
prepare to comply with, the new requirements before they become 
effective, the effective date of both the July 31, 2019 final rule and 
the December 13, 2019 correction is being delayed until February 15, 
2020. This final rule will also allow the USPTO additional time to 
ensure that internal implementation of the requirements associated with 
the mandate that applicants and registrants electronically file their 
trademark applications and all submissions associated with trademark 
applications and registrations, and that they designate an email 
address for receiving USPTO correspondence, is in place.

[[Page 69331]]

Rulemaking Requirements

    Administrative Procedure Act: This final rule revises the effective 
date of the July 31, 2019 final rule implementing procedures requiring 
the electronic filing of trademark applications and all submissions 
associated with trademark applications and registrations, and the 
subsequent correction rule published on December 13, 2019, and it is a 
rule of agency practice and procedure, and/or interpretive rules 
pursuant to 5 U.S.C. 553(b)(A). See JEM Broad. Co. v. F.C.C., 22 F.3d 
32. (D.C. Cir. 1994) (``[T]he `critical feature' of the procedural 
exception [in 5 U.S.C. 553(b)(A)] `is that it covers agency actions 
that do not themselves alter the rights or interests of parties, 
although [they] may alter the manner in which the parties present 
themselves or their viewpoints to the agency.''' (quoting Batterton v. 
Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980))); see also Bachow 
Commc'ns Inc. v. F.C.C., 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 are not required pursuant to 5 U.S.C. 553(b) or (c) (or any 
other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 
(Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A)).
    Moreover, the Director of the USPTO, pursuant to authority at 5 
U.S.C. 553(b)(B), finds good cause to adopt the change in this final 
rule without prior notice and an opportunity for public comment, as 
such procedures would be impracticable and contrary to the public 
interest. Immediate implementation of the delay in effective date is in 
the public interest, because it is responsive to recent feedback 
received from external stakeholders regarding their need to more fully 
comprehend the nature of, and prepare to comply with, the new 
requirements before they are effective. It will also allow the USPTO 
additional time to ensure that internal implementation of the 
requirements associated with the July 31, 2019 final rule and the 
December 13, 2019 correction is in place. Delay of the July 31, 2019 
final rule and the December 13, 2019 correction to provide prior notice 
and comment procedures is impracticable, because it would allow the 
July 31, 2019 final rule and December 13, 2019 correction to go into 
effect before external stakeholders are ready to comply with, and the 
agency is ready to implement, the new requirements. Therefore, the 
Director finds there is good cause to waive notice and comment 
procedures for this rule.
    Finally, the change in this final rule may be made effective 
earlier than the required 30-day delay in effectiveness because this is 
not a substantive rule under 35 U.S.C. 553(d). Moreover, pursuant to 5 
U.S.C. 553(d)(3), the Director finds good cause to waive the 30-day 
delay in effectiveness for this final rule because such a delay would 
allow the July 31, 2019 final rule and December 13, 2019 correction to 
go into effect before external stakeholders are ready to comply with, 
and the agency is ready to implement, the new requirements.

    Dated: December 16, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2019-27426 Filed 12-17-19; 8:45 am]
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