Trademarks Administrative Sanctions Process, 431-432 [2021-28536]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 87, Number 3 (Wednesday, January 5, 2022)]
[Notices]
[Pages 431-432]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-28536]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

[Docket No. PTO-T-2021-0055]


Trademarks Administrative Sanctions Process

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

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SUMMARY: As part of the United States Patent and Trademark Office's 
(USPTO or Office) continuing efforts to protect the integrity of the 
U.S. trademark register, the Commissioner for Trademarks (Commissioner) 
has established an administrative process for investigating submissions 
filed with the USPTO in trademark matters that appear to violate the 
Trademark Rules of Practice, including the rules concerning signatures, 
certificates, and representation of others in trademark matters before 
the USPTO (collectively, the USPTO rules), and/or the USPTO website's 
Terms of Use; and imposing sanctions, as appropriate.

DATES: Comments must be received by January 20, 2022 to ensure 
consideration.

ADDRESSES: Comments regarding this notice should be sent to 
uspto.gov">[email protected]uspto.gov with the subject line ``Trademarks Administrative 
Sanctions Process.'' If a submission by email is not feasible (e.g., 
due to a lack of access to a computer and/or the internet), please 
contact the USPTO for special instructions using the contact 
information provided in the For Further Information Contact section of 
this notice.

FOR FURTHER INFORMATION CONTACT: Robert Lavache, Office of the Deputy 
Commissioner for Trademark Examination Policy, at 571-272-5881 or 
uspto.gov">[email protected]uspto.gov.

SUPPLEMENTARY INFORMATION:  As part of the USPTO's continuing efforts 
to protect the integrity of the U.S. trademark register, the 
Commissioner has established an administrative process to investigate 
improper submissions filed with the USPTO in trademark matters. The 
USPTO Director has the authority to investigate submissions that appear 
to violate the USPTO rules and/or the USPTO website's Terms of Use and 
impose sanctions or actions as deemed appropriate. See 37 CFR 11.18. 
Sanctions may include terminating proceedings. See 37 CFR 11.18(c)(5). 
Pursuant to 35 U.S.C. 3(a)-(b), the Director has explicitly delegated 
to the Commissioner for Trademarks the authority to impose such 
sanctions or actions permitted under 37 CFR 11.18(c), as deemed 
appropriate in trademark matters, and to otherwise exercise the 
Director's authority in trademark-related matters. The Director has 
also provided that such authority may be further delegated by the 
Commissioner. See generally Delegation of Authority to Issue Sanctions 
in Trademark Proceedings (January 14, 2020) \1\ and Trademark Manual of 
Examining Procedure Sec.  1701.
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    \1\ A copy of the January 14, 2020 delegation of authority is 
available upon request. Please contact the USPTO using the contact 
information provided in the For Further Information Contact section 
of this notice.
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    To promote transparency regarding the sanctions process for 
applicants or registrants who may be impacted by sanctions, as well as 
third parties who may be concerned about a particular application or 
registration, the USPTO will place documents associated with the 
process, including administrative orders to show cause and orders for 
sanctions regarding particular applications or registrations, in the 
electronic file record, which can be viewed by the public in the USPTO 
Trademark Status and Document Retrieval (TSDR) database. Further, 
examination may be suspended while the application is subject to a 
pending administrative investigation or order, and, if so, the TSDR 
record will reflect that as well.

I. Reporting and Investigation of Suspicious Filings

    The administrative process begins when the USPTO identifies or 
otherwise learns of a suspicious submission in connection with a 
trademark application or registration, based on information 
communicated by internal sources, such as examining attorneys and data 
analytics personnel, or through external sources, such as Letters of

[[Page 432]]

Protest, the uspto.gov">[email protected]uspto.gov mailbox, law enforcement, or media 
reports.
    The USPTO will investigate suspicious submissions, and any related 
submissions, to determine whether they: (1) Appear to violate the USPTO 
rules and/or the USPTO website's Terms of Use, and (2) are part of an 
improper filing scheme. These determinations are made using filing data 
from the suspicious submissions and any related submissions, as well as 
any other information and evidence available to the USPTO.
    Once the USPTO initiates an investigation, the relevant 
application(s) may be removed from examination status to ensure that it 
does not move forward to approval for publication or registration while 
the administrative process is ongoing. In such cases, the USPTO will 
update the prosecution history to indicate that the application is 
suspended pending administrative review. In addition, a suspension 
letter will issue to all correspondence email addresses in the 
electronic record, as appropriate. When an application is suspended on 
this basis, any associated deadlines are also suspended, and the 
applicant will not be able to make any electronic submissions other 
than: (1) An express abandonment, (2) a withdrawal of attorney, or (3) 
a petition to the Director under Rule 2.146. 37 CFR 2.146. Thus, an 
applicant would be able to request permission to make a further 
submission by filing a petition to the Director under Rule 2.146. If an 
investigation ends without the issuance of an administrative order, the 
suspension will be lifted, and the application will then be assigned to 
an examining attorney for examination in the normal course or, if 
examination had begun prior to suspension, returned to the assigned 
examining attorney, who will issue a new Office action resetting any 
response deadline.

II. Show Cause Order

    If, upon investigation, the USPTO identifies conduct that 
illustrates violations of the USPTO rules and/or the USPTO website's 
Terms of Use, particularly conduct that indicates an intent to 
circumvent the USPTO rules, the Office may issue an order to show cause 
why sanctions should not be imposed on individuals or entities 
involved, which may include the applicants or registrants themselves, 
or third parties involved in an improper filing scheme. A copy of the 
order to show cause will be placed in the electronic records of the 
affected applications or registrations.
    The show cause order will inform the relevant parties of the 
conduct that indicates violations of the USPTO rules and/or the USPTO 
website's Terms of Use, identify the affected application(s) or 
registration(s), and specify the proposed action or sanction the USPTO 
deems appropriate, which may include terminating all involved 
applications, striking a submission, precluding a party from appearing 
before the USPTO in trademark matters, and/or deactivating all relevant 
uspto.gov accounts. The order will require the parties to respond by a 
certain date to explain why the USPTO should not impose the proposed 
sanctions. The USPTO will consider any timely response in determining 
whether to impose sanctions. Resubmitting documents or appointing a new 
attorney will not avoid the imposition of sanctions. Petitions such as 
those filed under 37 CFR 2.146 are not appropriate during the 
investigation or response period unless the USPTO made a mistake in 
including a specific application or registration in the show cause 
order. Furthermore, applicants and registrants are reminded that they 
are responsible for actions or omissions made by their representatives 
on their behalf. Moreover, any misrepresentation or deceit on the part 
of a representative does not necessarily constitute an ``extraordinary 
circumstance'' under 37 CFR 2.146 or 2.148.

III. Order for Sanctions

    The USPTO will issue a final decision that includes an order for 
sanctions, if appropriate. The order will indicate what sanctions were 
deemed appropriate to address the improper conduct, and will identify 
the application(s) or registration(s) subject to the sanctions. For 
transparency of process, a copy of the decision will be included in the 
TSDR record of the relevant application(s) or registration(s).
    For orders that include the sanction of termination and involve 
pending applications, the USPTO will terminate the involved 
applications and will update the USPTO's electronic records to include 
an appropriate entry in the application prosecution history in TSDR to 
indicate that the application was terminated upon the entry of 
sanctions. Generally, applicants may not revive a terminated 
application unless the applicant can demonstrate that the USPTO erred 
in including the application in the order for sanctions. The applicant 
should file a new application to seek registration of the mark that was 
the subject of a terminated application.
    For orders that include the sanction of termination and involve 
registrations that issued before the administrative sanctions process 
was initiated, the USPTO does not intend to terminate the 
registrations, but will update the USPTO's electronic records to 
include an appropriate entry in the prosecution history indicating that 
the registration was subject to an order for sanctions. Affected 
registrants should note that findings made in the sanctions order may 
affect the underlying validity of the registration. In addition, the 
USPTO will consider a sanctions order that includes the sanction of 
termination to be a final decision adverse to the owner's right to keep 
a mark on the register under section 15 of the Trademark Act of 1946, 
15 U.S.C. 1065. Therefore, owners of such registrations may wish to 
file a new application for the mark.
    The USPTO may take additional actions to enforce orders for 
sanctions in cases where a sanctioned actor continues to violate the 
USPTO rules and/or the USPTO website's Terms of Use.

Andrew Hirshfeld,
Commissioner for Patents, Performing the Functions and Duties of the 
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2021-28536 Filed 1-4-22; 8:45 am]
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