Changes to Duration of Attorney Recognition; Notice of Public Listening Session and Request for Comments, 54305-54308 [2023-17144]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 88, Number 153 (Thursday, August 10, 2023)]
[Notices]
[Pages 54305-54308]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-17144]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No. PTO-T-2023-0028]


Changes to Duration of Attorney Recognition; Notice of Public 
Listening Session and Request for Comments

AGENCY: United States Patent and Trademark Office, U.S. Department of 
Commerce.

ACTION: Notice of public listening session; request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO or 
Office) seeks public comments on changes to the trademark rule 
regarding the duration of attorney recognition. In addition, the USPTO 
is announcing a public listening session on September 26, 2023, titled 
``Changes to Duration of Attorney Recognition,'' to offer further 
opportunity for the public to provide input on this topic.

DATES: The public listening session will take place on September 26, 
2023, from 2-3:30 p.m. ET. Anyone wishing to present oral testimony at 
the hearing, either in person or virtually, must submit a written 
request for an opportunity to do so no later than September 15, 2023. 
Persons seeking to attend, either in person or virtually, but not to 
speak at the event must register by September 18, 2023. Seating is 
limited for in-person attendance. The USPTO will accept written 
comments until October 6, 2023.

ADDRESSES: 

Public Listening Session

    The public listening session will take place in person in the Clara 
Barton Auditorium at the USPTO, 600 Dulany Street, Alexandria, VA 
22314. The session will also be available via live feed for those 
wishing to attend remotely. Registration is required for both in-person 
and virtual attendance. Information on registration is available on the 
USPTO's website at www.uspto.gov/about-us/events/trademark-public-listening-session-changes-duration-attorney-recognition.

Request for Comments

    For reasons of Government efficiency, commenters must submit their 
comments through the Federal eRulemaking Portal at www.regulations.gov. 
To submit comments via the portal, enter docket number PTO-T-2023-0028 
on the homepage and click ``search.'' The site will provide a search 
results page listing all documents associated with this docket. Find a 
reference to this request

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for comments and click on the ``Comment'' icon, complete the required 
fields, and enter or attach your comments. Attachments to electronic 
comments will be accepted in ADOBE[supreg] portable document format 
(PDF) or MICROSOFT WORD[supreg] format. Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.
    Visit the Federal eRulemaking Portal for additional instructions on 
providing comments via the portal. If electronic submission of comments 
is not feasible due to a lack of access to a computer and/or the 
internet, please contact the USPTO using the contact information below 
for special instructions regarding how to submit comments by mail or by 
hand delivery.

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

SUPPLEMENTARY INFORMATION:

I. Background

    Under the Trademark Rules of Practice, the USPTO will recognize an 
attorney qualified under 37 CFR 11.14 as an applicant's or registrant's 
representative if that attorney files a power of attorney, signs a 
document on behalf of an applicant or registrant who is not already 
represented, or is otherwise identified in a document submitted on 
behalf of an applicant or registrant who is not already represented. 37 
CFR 2.17(b). Once an attorney is recognized, the USPTO will correspond 
only with that attorney until recognition ends. 37 CFR 2.18(a)(2). 
Recognition as to a pending application ends when the mark registers, 
when ownership changes, or when the application is abandoned. 37 CFR 
2.17(g)(1). Recognition as to a registration ends when the registration 
is canceled or expired, when ownership changes, or upon acceptance or 
final rejection of a post registration maintenance filing. 37 CFR 
2.17(g)(2). The USPTO does not inquire into any engagement agreement 
between the attorney and the applicant or registrant to determine 
whether representation continues after the events that trigger the end 
of recognition under Sec.  2.17(g). Therefore, following such an event, 
the trademark rules dictate that the USPTO correspond only with the 
applicant or registrant. 37 CFR 2.18(a). However, past customer 
feedback indicated that, in most cases, even after the occurrence of an 
event listed in the current Sec.  2.17(g), representation continued, 
and the attorney should be the only recipient of the trademark 
registration certificate, maintenance and renewal reminders, and any 
other correspondence. For this reason, the USPTO currently sends, as a 
courtesy, correspondence to the attorney of record, except in 
connection with petitions to cancel filed with the Trademark Trial and 
Appeal Board, which are served on the registrant.
    For several years, some outside practitioners have expressed 
concern that the current recognition rule, when read in conjunction 
with the correspondence rule, is problematic for practitioners whose 
recognition before the Office ends even though their representation of 
the applicant or registrant continues based on engagement agreements. 
These practitioners are concerned about missing response deadlines when 
representation continues, if they are removed from the record when 
recognition ends and will no longer receive correspondence from the 
USPTO regarding their clients' matters following abandonment or 
registration. Many of these practitioners have instructed their clients 
to disregard anything sent directly to them about their trademark 
application or registration to avoid having the clients subjected to a 
misleading solicitation, which is a growing problem for the USPTO and 
its customers. If their clients disregard all communications, including 
USPTO correspondence sent to them pursuant to Sec.  2.18(a), and the 
practitioner is no longer receiving correspondence from the USPTO, 
deadlines for taking action would likely be missed. This group would 
like the USPTO to presume that representation, and therefore 
recognition, continues until the attorney withdraws or is revoked so 
that they, and not their clients, will continue to receive 
correspondence from the USPTO.
    Other practitioners have expressed that they did not have any 
concerns with the current recognition rule because they do not wish to 
be subject to continuing legal and ethical obligations to the client 
after a listed event occurs. The current rule works to their advantage 
because they have no obligation to file a withdrawal form with the 
USPTO if recognition ends automatically. However, these practitioners 
have expressed concern as to whether there is an ethical obligation to 
contact their former clients about correspondence sent to them as a 
courtesy by the USPTO. As noted above, the USPTO continues to list all 
practitioners as the attorney of record and to send correspondence to 
them, even after recognition ended under the rule, because of the 
concerns over missed response deadlines.
    In response to practitioner requests, the USPTO sends the courtesy 
email reminder that goes out in advance of the due date for a post 
registration maintenance document to both the owner and the last 
attorney of record (who is no longer recognized under the current rule 
and should not receive correspondence). The USPTO implemented this 
courtesy practice by sending the email reminders to both the applicant/
registrant and the attorney as well as the notice of registration, the 
notice of abandonment, and the notice that an expungement or 
reexamination petition had been filed against the registration.
    However, the practice has caused confusion among practitioners and 
has created some uncertainty for the USPTO in implementing its 
regulations. Sending email reminders and notices to attorneys who are 
no longer recognized under Sec.  2.17(g) constitutes an unofficial 
waiver of Sec.  2.18(a), which governs the parties with whom the USPTO 
will correspond in trademark matters. Moreover, despite the obligation 
under Sec.  2.18(c) to maintain current and accurate correspondence 
addresses, the USPTO cannot be certain that the correspondence 
information in its records is still accurate, particularly regarding 
post registration reminders and notices that are sent 5-10 years or 
more after registration.

II. Trademark Modernization Act Notice of Proposed Rulemaking

    In a notice of proposed rulemaking (NPRM) to implement provisions 
of the Trademark Modernization Act (TMA), published in the Federal 
Register on May 18, 2021, the USPTO proposed to revise 37 CFR 2.17(g) 
(86 FR 26862). The suggested revisions indicated that, for purposes of 
an application or registration, recognition of a qualified attorney as 
the applicant's or registrant's representative would continue until the 
owner revoked the appointment or the attorney withdrew from 
representation, even when there was a change of ownership. Therefore, 
owners and/or attorneys would be required to proactively file an 
appropriate revocation or withdrawal document under 37 CFR 2.19 before 
a new attorney could be recognized. The amendment was proposed to 
address the issues discussed above.
    As noted in the final rule published on November 17, 2021, the 
USPTO received mixed comments regarding the

[[Page 54307]]

proposed revisions to Sec.  2.17(g) (86 FR 64300). While several 
commenters were generally in favor of ongoing attorney recognition, 
others preferred the current practice, citing burdens associated with 
the new rules.
    The USPTO also proposed to remove the name of any attorney whose 
recognition had ended under existing Sec.  2.17(g) from the current 
attorney-of-record field in the USPTO's database, along with the 
attorney's bar information and any docketing information. However, the 
attorney's correspondence information, including any correspondence 
email address, would be retained so the USPTO could continue to send 
relevant correspondence and notices to both the formerly recognized 
attorney and the owner. Most commenters were opposed to removing the 
attorney information during the transition period, stating that this 
would cause unnecessary burdens to reappear in records.
    Based on the public comments to the TMA NPRM, the USPTO determined 
that additional time was needed to address the concerns expressed. 
Therefore, the changes proposed in the TMA NPRM were not included in 
the TMA final rule. The USPTO now seeks additional input on whether 
Sec.  2.17(g): (1) should be amended as discussed below, or (2) should 
not be amended, and all attorney information be removed when 
recognition ends following a listed event in Sec.  2.17(g).

III. Changes to Duration of Recognition for Representation

    The USPTO now seeks additional feedback regarding possible changes 
to the provisions addressing the duration of recognition for 
representation in Sec.  2.17(g). The changes under consideration would 
allow recognition as to a pending application or registration to 
continue until the applicant, registrant, or party to a proceeding 
revokes the power of attorney or the representative withdraws from 
representation.
    As noted above, such a rule change would require an attorney who no 
longer represents an applicant to affirmatively withdraw or be revoked 
for recognition to end. Shifting the burden to the attorney to 
withdraw, or to the owner to file a revocation, would give the USPTO 
greater assurance that it is communicating with the correct party. If 
stakeholders support the rule change, there are at least two challenges 
to address:
    (1) How to make withdrawal easier.
    (2) How to implement the transition in the USPTO database.
    Although withdrawal is relatively easy, it is worth exploring 
whether the USPTO can make it even easier. In addition, the USPTO must 
ensure that if an attorney is deceased, it can efficiently remove that 
practitioner from its records. Moreover, the process must be consistent 
with the Rules of Professional Conduct, which dictate the terms of 
withdrawal.
    The other area of concern is the transition of the USPTO's 
electronic records from recognition for a set duration to continued 
recognition following any rule change. Two categories of attorneys 
would be immediately affected by any rule change: (1) attorneys who are 
recognized at the time the rule goes into effect, and (2) attorneys 
whose information remains in the record but who are not currently 
recognized by virtue of the previous recognition rule. The revisions 
under consideration would have limited effect on the first set of 
attorneys because their existing recognition would continue. There 
would be some impact on attorneys whose representation does not 
continue past a certain event or date and who no longer wish to be 
recognized by the Office as the attorney of record because they would 
have to proactively withdraw to avoid any ambiguity.
    The attorneys in the second group for whom recognition has ended 
under the current rule, even though their information remains of 
record, cannot be retroactively recognized by implementation of the 
revisions under consideration even if they prefer recognition to 
continue. See Bowen v. Georgetown Univ. Hosp., 488 U.S. 204, 208, 109 
S. Ct. 468, 471-472, 102 L. Ed. 2d 493, 500 (1988). On the date the 
USPTO recognized these attorneys, the current rule was in effect, and 
they had no notice that recognition would continue beyond the events 
listed in Sec.  2.17(g). To avoid this retroactive effect, the USPTO 
proposed in the TMA NPRM that all attorney information would be removed 
from the database if a recognition-ending event had already occurred. 
To be recognized again, these attorneys would need to: (1) reappear by 
filing a document, and (2) reenter bar and docket information. Some 
public comments filed in response to this proposal demonstrated a 
concern with this approach because of the burden this would place on 
trademark owners and attorneys. However, removal of attorney 
information comports with the current recognition rule and the 
attorneys subject to it.
    The USPTO is now considering deleting all attorney information, 
after a listed event, from the records of all applications filed or 
registrations issued prior to the date of implementation of a change to 
Sec.  2.17(g) stating that recognition continues until there is a 
revocation or withdrawal of the recognized attorney of record. The 
USPTO has considered requests that attorneys be given the opportunity 
to opt in to remaining of record in such situations. However, the USPTO 
has neither the staff nor the technological resources to implement an 
opt-in alternative as to the affected applications and registrations. 
In addition, such a provision would not reconcile inaccuracies in older 
records.

IV. Retaining the Current Provisions on Recognition for Representation

    If the USPTO does not amend Sec.  2.17(g) to allow continued 
recognition until there is a revocation or withdrawal of the recognized 
attorney of record, the USPTO would not continue the courtesy practice 
of sending notices or reminders to the listed attorney in addition to 
the applicant or registrant. Pursuant to the plain language of Sec.  
2.17(g) that recognition ends when a listed event occurs, all attorney 
information would be removed when such an event occurs or if it has 
already occurred. Thus, correspondence and relevant notices would no 
longer be sent to both the formerly recognized attorney and the owner. 
Following Sec.  2.18(a), correspondence and notices would be sent to 
the applicant or registrant or to a newly recognized attorney. This 
option would also require a transition period during which attorney 
information would be removed for attorneys whose information remains in 
the record but who are not currently recognized by virtue of the rule.

V. Listening Session and Questions for Comments

    The USPTO is holding a listening session on September 26, 2023, and 
is requesting public comments on the questions listed below. The USPTO 
will use a portion of the listening session to provide an overview of 
the changes under consideration. An agenda will be available 
approximately five days before the listening session on the USPTO 
website at www.uspto.gov/about-us/events/trademark-public-listening-session-changes-duration-attorney-recognition, which is the same link 
for registration.
    The USPTO poses the following questions for public comment. These 
questions are not meant to be exhaustive. We encourage interested 
stakeholders to address these and/or other related issues and to submit 
research and data that inform and

[[Page 54308]]

support their comments on these topics. Commenters are welcome to 
respond to any or all of the questions, and are encouraged to indicate 
which questions their comments address.
    1. Do you think the current rule should remain unchanged, or are 
you in favor of the revisions under consideration?
    2. Do you have suggestions for handling the transition period 
during which attorney information is removed from the record whether 
the current rule is retained or revised?
    3. Do you have any suggestions for making withdrawal or re-
recognition easier if the rule is revised to continue recognition?
    Anyone wishing to participate as a speaker, either in person or 
virtually, must submit a request in writing no later than September 15, 
2023. Requests to participate as a speaker must be submitted to 
[email protected] and must include:
    1. The name of the person desiring to participate;
    2. The organization(s) that person represents, if any; and
    3. The person's contact information (address, telephone number, and 
email).
    Speaking slots are limited; the USPTO will give preference to 
speakers wishing to address one of the questions raised in this request 
for comments. Speakers will be announced a few days prior to the public 
listening session. The USPTO will inform each speaker in advance of 
their assigned time slot. If the USPTO receives more requests to speak 
than time allows and is unable to assign a time slot as requested, the 
agency will invite the requestor to submit written comments. Time slots 
will be at least three minutes and may be longer, depending on the 
number of speakers registered. A panel of USPTO personnel may reserve 
time to ask questions of particular speakers after the delivery of a 
speaker's remarks.
    The public listening session will be physically accessible to 
people with disabilities. Individuals requiring accommodation, such as 
sign language interpretation or other ancillary aids, should 
communicate their needs to the individuals listed under the FOR FURTHER 
INFORMATION CONTACT section of this notice at least seven business days 
prior to the session.

Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2023-17144 Filed 8-9-23; 8:45 am]
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