Changes To Implement Provisions of the Trademark Modernization Act of 2020
| Published date | 18 May 2021 |
| Record Number | 2021-10116 |
| Section | Proposed rules |
| Court | Patent And Trademark Office |
Federal Register, Volume 86 Issue 94 (Tuesday, May 18, 2021)
[Federal Register Volume 86, Number 94 (Tuesday, May 18, 2021)]
[Proposed Rules]
[Pages 26862-26888]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2021-10116]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. PTO-T-2021-0008]
RIN 0651-AD55
Changes To Implement Provisions of the Trademark Modernization
Act of 2020
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) proposes to amend the rules of practice in trademark cases to
implement provisions of the Trademark Modernization Act of 2020. The
proposed rule establishes ex parte expungement and reexamination
proceedings for cancellation of a registration when the required use in
commerce of the registered mark has not been made; provides for a new
nonuse ground for cancellation before the Trademark Trial and Appeal
Board; establishes flexible Office action response periods; and amends
the existing letter-of-protest rule to indicate that letter-of-protest
determinations are final and non-reviewable. The USPTO also proposes to
set fees for petitions requesting institution of ex parte expungement
and reexamination proceedings, and for requests to extend Office action
response deadlines. Amendments are also proposed for the rules
concerning the suspension of USPTO proceedings and the rules governing
attorney recognition in trademark matters. Finally, a new rule is
proposed to address procedures regarding court orders cancelling or
affecting registrations.
DATES: Written comments must be received on or before July 19, 2021.
[[Page 26863]]
ADDRESSES: For reasons of government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, one should
enter docket number PTO-T-2021-0008 on the homepage and click
``search.'' The site will provide search results listing all documents
associated with this docket. Commenters can find a reference to this
notice and click on the ``Comment Now!'' icon, complete the required
fields, and enter or attach their comments. Attachments to electronic
comments will be accepted in Adobe[supreg] portable document format 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 or
access to 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.
FOR FURTHER INFORMATION CONTACT: Robert Lavache, Office of the Deputy
Commissioner for Trademark Examination Policy, at 571-272-5881, or by
email at [email protected].
SUPPLEMENTARY INFORMATION:
The Trademark Modernization Act of 2020 (TMA) was enacted on
December 27, 2020. See Public Law 116-260, Div. Q, Tit. II, Subtit. B,
Sec. Sec. 221-228 (Dec. 27, 2020). The TMA amends the Trademark Act of
1946 (the Act) to establish new ex parte expungement and reexamination
proceedings to cancel, either in whole or in part, registered marks for
which the required use in commerce was not made. Id. at Sec. 225(a),
(c). Furthermore, the TMA amends Sec. 14 of the Act to allow a party
to allege that a mark has never been used in commerce as a basis for
cancellation before the Trademark Trial and Appeal Board (TTAB). Id. at
Sec. 225(b). The TMA also authorizes the USPTO to promulgate
regulations to set flexible Office action response periods between 60
days and 6 months, with an option for applicants to extend the deadline
up to a maximum of 6 months from the Office action issue date. Id. at
Sec. 224. In addition, the TMA includes statutory authority for the
USPTO's letter-of-protest procedures, which allow third parties to
submit evidence to the USPTO relevant to a trademark's registrability
during the initial examination of the trademark application, and
provides that the decision whether to include such evidence in the
application record is final and non-reviewable. Id. at Sec. 223. The
TMA requires the USPTO to promulgate regulations to implement the
provisions relating to the new ex parte expungement and reexamination
proceedings, and the letter-of-protest procedures, within one year of
the TMA's enactment. Id. at Sec. Sec. 223(b), 225(f).
Accordingly, the USPTO proposes to revise the rules in 37 CFR parts
2 and 7 to implement the TMA's provisions and set fees for the new ex
parte expungement and reexamination proceedings and for response
deadline extensions. The proposed rule is also intended to clarify that
the new ex parte expungement and reexamination proceedings are subject
to suspension in appropriate cases and to ensure that the rules reflect
existing practice regarding suspension of proceedings before the USPTO
and the TTAB. The USPTO also proposes to amend the rules regarding
attorney recognition and correspondence to allow attorney recognition
to continue until it is revoked or the attorney withdraws. This change
is proposed to align the rules with current USPTO practice and
facilitate implementation of a role-based access control system
intended to improve USPTO database security and integrity. Finally, the
USPTO proposes to add a new rule formalizing the USPTO's longstanding
procedures concerning action on court orders cancelling or affecting a
registration under section 37 of the Act, 15 U.S.C. 1119.
I. Ex Parte Expungement and Reexamination Proceedings
As the House Report for the TMA explained, ``[t]rademarks are at
the foundation of a successful commercial marketplace. Trademarks allow
companies to identify their goods and services, and they ensure that
consumers know whose product they are buying. . . . By guarding against
deception in the marketplace, trademarks also serve an important
consumer protection role.'' H. Rep. No. 116-645, at 8-9 (2020)
(citation omitted).
In order to have a well-functioning trademark system, the trademark
register should accurately reflect trademarks that are currently in
use. Id. at 9. When the register includes marks that are not currently
in use, it is more difficult for legitimate businesses to clear and
register their own marks. Id. It has become apparent in recent years
that registrations are being obtained and maintained for marks that are
not properly in use in commerce. Id. at 9-10. Moreover, this
``cluttering'' has real-world consequences when the availability of
marks is depleted. Id. at 9.
The House Report also noted that ``[a] recent rise in fraudulent
trademark applications has put further strain on the accuracy of the
Federal Register. . . . Although trademark applications go through an
examination process, some of these forms of fraud are difficult to
detect in individual applications (even if patterns of fraud can be
seen across multiple applications), leading to illegitimate
registrations. Although the USPTO can try to develop better systems to
detect fraud during the examination process, its authority to
reconsider applications after registration is currently limited.'' Id.
at 10-11 (citation omitted).
To address these problems, the TMA created two new ex parte
processes that will allow a third party, or the Director, to challenge
whether a registrant made use of its registered trademark in commerce.
If the registered mark was not properly used, the Office will be able
to cancel the registration. Id. at 11. The TMA also provided for
improvements to make the trademark examination process more efficient
and more effective at clearing applications that may block later-filed
applications from proceeding to registration. Id.
The two new ex parte proceedings created by the TMA--one for
expungement and one for reexamination--are intended to help ensure the
accuracy of the trademark register by providing a new mechanism for
removing a registered mark from the trademark register, or cancelling
the registration as to certain goods and/or services, when the
registrant has not used the mark in commerce as of the relevant date as
required by the Act. In an expungement proceeding, the USPTO must
determine whether the evidence of record supports a finding that the
registered mark has never been used in commerce on or in connection
with some or all of the goods and/or services recited in the
registration. In a reexamination proceeding, the USPTO must determine
whether the evidence of record supports a finding that the mark
registered under section 1 of the Act was not in use in commerce on or
in connection with some or all of the goods and/or services as of the
filing date of the application or amendment to allege use, or before
the deadline for filing a statement of use, as applicable. If the USPTO
finds that the required use was not made for the goods or services at
issue in the proceeding, and that
[[Page 26864]]
determination is not overturned on review, the registration will be
cancelled in whole or in part, as appropriate.
These new proceedings are intended to provide a faster, more
efficient, and less expensive alternative to a contested inter partes
cancellation proceeding before the TTAB. While the authority for the
expungement and reexamination proceedings is set forth in separate
subsections of the Act, the procedures for instituting the proceedings,
the nature of the evidence required, and the process for evaluating
evidence and corresponding with the registrant will be essentially the
same. Thus, for administrative efficiency, proceedings involving the
same registration may be consolidated by the USPTO for review.
To implement these new proceedings and related procedures, as
required by the TMA, the USPTO proposes the following new rules:
Section 2.91, setting forth the requirements for a
petition requesting the institution of expungement or reexamination
proceedings;
Section 2.92, regarding the institution of expungement and
reexamination proceedings;
Sections 2.93 through 2.94, setting forth the procedures
for expungement and reexamination proceedings; and
Section 2.143, addressing appeals to the TTAB in
connection with these new proceedings.
In addition, conforming amendments are proposed for the following
existing rules:
Section 2.11, which requires U.S. counsel for foreign-
domiciled petitioners and registrants;
Section 2.23, which addresses the duty to monitor the
status of a registration;
Section 2.142, which addresses the time and manner of ex
parte appeals;
Section 2.145, which addresses appeals to the U.S. Court
of Appeals for the Federal Circuit;
Section 2.146, which addresses petitions to the Director;
and
Section 2.193, which addresses signature requirements.
A. Timing for Requests for Proceedings
The TMA specifies the time periods during which a petitioner can
request institution of expungement and reexamination proceedings, and
during which the Director may institute such proceedings based on a
petition or on the Director's own initiative. Accordingly, under
proposed Sec. 2.91(b)(1), a petitioner may request, and the Director
may institute, an ex parte expungement proceeding between 3 and 10
years following the date of registration. However, the TMA provides
that, until December 27, 2023 (3 years from the TMA's enactment date),
a petitioner may request, and the Director may institute, an
expungement proceeding for a registration that is at least 3 years old,
regardless of the 10-year limit. Under proposed Sec. 2.91(b)(2), a
petitioner may request, and the Director may institute, a reexamination
proceeding during the first five years following the date of
registration.
The TMA gives discretion to the Director to establish by rule a
limit on the number of petitions for expungement or reexamination that
can be filed against a registration. However, it is envisioned that the
USPTO will not initially propose such a limitation to foster clearing
of the register of unused marks and also to determine whether existing
safeguards in the statute and the proposed regulations suffice to
protect registrants from potential misuse of the proceedings. These
safeguards include the fact that the registrant does not participate
until after the Director institutes a proceeding based on a prima facie
case of nonuse of the mark, and the registrant cannot be subject to
another proceeding for the same goods and/or services for which use of
the mark was established in a prior proceeding. If the existing
safeguards in the statute and the proposed regulations do not suffice
to protect registrants from misuse of the proceedings, the USPTO may
establish a limit on the number of petitions for expungement or
reexamination that can be filed against a registration. The USPTO seeks
comment on this approach.
B. Petition Requirements
Under the TMA, and proposed Sec. 2.91, any person may file a
petition with the USPTO requesting institution of an expungement or
reexamination proceeding. Although the USPTO does not anticipate
requiring real-party-in-interest information from the petitioner, the
USPTO is seeking comments on whether and when the Director should
require a petitioner to identify the name of the real party in interest
on whose behalf the petition is filed.
Reexamination and expungement petitions are intended to allow third
parties to bring unused registered marks to the attention of the USPTO.
To the extent a registrant believes its own mark was not used in
commerce, or is no longer used in commerce, on or in connection with
some or all of the goods and/or services listed in the registration,
the registrant should utilize the existing mechanisms for voluntarily
amending the registration to delete the goods and/or services or
surrendering the registration in its entirety, pursuant to section 7 of
the Act, 15 U.S.C. 1057. To incentivize registrants to keep their
registrations accurate and up to date as to the goods and/or services
on which the mark is actually used in commerce, the USPTO established a
$0 fee for voluntary deletions of goods and/or services made outside of
a maintenance examination as of January 2, 2021, in the Trademark Fee
Adjustment rule (85 FR 73197, November 17, 2020).
A petition for expungement must allege that the relevant registered
trademark has never been used in commerce on or in connection with some
or all of the goods and/or services listed in the registration.
A petition for reexamination must allege that the trademark was not
in use in commerce on or in connection with some or all of the goods
and/or services listed in the registration on or before the relevant
date, which, for any particular goods and/or services, is determined as
follows:
In a use-based application for registration of a mark with
an initial filing basis of section 1(a) of the Act for the goods and/or
services listed in the petition, and not amended at any point to be
filed pursuant to section 1(b) of the Act, 15 U.S.C. 1051(b), the
relevant date is the filing date of the application; or
In an intent to use application for registration of a mark
with an initial filing basis or amended basis of section 1(b) of the
Act for the goods and/or services listed in the petition, the relevant
date is the later of the filing date of an amendment to allege use
identifying the goods and/or services listed in the petition, pursuant
to section 1(c) of the Act, or the expiration of the deadline for
filing a statement of use for the goods and/or services listed in the
petition, pursuant to section 1(d), including all approved extensions
thereof.
Under proposed Sec. 2.91(c), the Director will consider only
complete petitions for expungement or reexamination. To be considered
complete, the petition must be made in writing and filed through the
USPTO's Trademark Electronic Application System (TEAS), and must
include:
(1) The fee required under proposed Sec. 2.6(a)(26);
(2) The U.S. trademark registration number corresponding to the
registration that is the subject of the petition;
(3) The basis for the petition under proposed Sec. 2.91(a);
(4) The name, domicile address, and email address of the
petitioner;
(5) If the domicile of the petitioner is not located within the
United States or
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its territories, a designation of an attorney, as defined in Sec.
11.1, who is qualified to practice under Sec. 11.14;
(6) If the petitioner is, or must be, represented by an attorney,
as defined in Sec. 11.1, who is qualified to practice under Sec.
11.14, the attorney's name, postal address, email address, and bar
information under Sec. 2.17(b)(3);
(7) Identification of each good and/or service recited in the
registration for which the petitioner requests that the proceeding be
instituted on the basis identified in the petition;
(8) A verified statement that sets forth in numbered paragraphs:
(i) The elements of the reasonable investigation of nonuse the
petitioner conducted, and, for each source of information relied upon,
a description of how and when the searches were conducted and what the
searches disclosed;
(ii) A concise factual statement of the relevant basis for the
petition, including any additional facts that support the allegation of
nonuse of the mark in commerce on or in connection with the relevant
goods and services; and
(9) A clear and legible copy of all documentary evidence supporting
a prima facie case of nonuse of the mark in commerce and an itemized
index of such evidence.
If a petition does not satisfy the requirements for a complete
petition, the USPTO plans to issue a letter providing the petitioner 30
days to perfect the petition by complying with the outstanding
requirements, if otherwise appropriate.
C. Petition Fee
Proposed Sec. 2.6(a)(26) sets a fee of $600, per class, for a
petition for expungement or reexamination. In setting this fee, the
USPTO intends to strike a balance between recovering the costs
associated with conducting these proceedings (including Director-
initiated proceedings) and providing a less expensive alternative to a
contested inter partes cancellation proceeding before the TTAB.
D. Reasonable Investigation Requirement
Under proposed Sec. 2.91(c), a petition requesting institution of
an expungement or reexamination proceeding must include a verified
statement that sets forth the elements of the reasonable investigation
the petitioner conducted to determine that the mark was never used in
commerce (for expungement petitions) or not in use in commerce as of
the relevant date (for reexamination petitions) on or in connection
with the goods and/or services identified in the petition.
A reasonable investigation is an appropriately comprehensive search
likely to reveal use of the mark in commerce on or in connection with
the relevant goods and/or services, if such use was, in fact, made.
Thus, what constitutes a reasonable investigation is a case-by-case
determination, but any investigation should focus on the mark disclosed
in the registration and the identified goods and/or services, keeping
in mind their scope and applicable trade channels.
The elements of a petitioner's investigation should demonstrate
that a search for use in relevant channels of trade and advertising for
the identified goods and/or services did not reveal any relevant use.
In addition, the petitioner's statement regarding the elements of the
reasonable investigation should specifically describe the sources
searched, how and when the searches were conducted, and what
information and evidence, if any, the searches produced.
Sources of information and evidence should include reasonably
accessible sources that can be publicly disclosed, because petitions
requesting institution of expungement and reexamination proceedings
will be entered in the registration record and thus publicly viewable
through the USPTO's Trademark Status & Document Retrieval (TSDR)
database. The number and nature of the sources a petitioner must check
in order for its investigation to be considered reasonable, and the
corresponding evidence that would support a prima facie case, will vary
depending on the goods and/or services involved, their normal trade
channels, and whether the petition is for expungement or reexamination.
Because nonuse for purposes of expungement and reexamination is
necessarily determined in reference to a time period that includes past
activities (not just current activities), a petitioner's investigation
normally would include research into past usage of the mark for the
goods and/or services at issue in the petition and thus may include
archival evidence.
As a general matter, a single search using an internet search
engine likely would not be considered a reasonable investigation. See
H. Rep. No. 116-645, at 15 (2020). On the other hand, a reasonable
investigation does not require a showing that all of the potentially
available sources of evidence were searched. Generally, an
investigation that produces reliable and credible evidence of nonuse at
the relevant time should be sufficient.
As set forth in proposed Sec. 2.91(d)(2), appropriate sources of
evidence and information for a reasonable investigation may include,
but are not limited to:
State and Federal trademark records;
internet websites and other media likely to or believed to
be owned or controlled by the registrant;
internet websites, other online media, and publications
where the relevant goods and/or services likely would be advertised or
offered for sale;
Print sources and web pages likely to contain reviews or
discussion of the relevant goods and/or services;
Records of filings made with or of actions taken by any
State or Federal business registration or regulatory agency;
The registrant's marketplace activities, including, for
example, any attempts to contact the registrant or purchase the
relevant goods and/or services;
Records of litigation or administrative proceedings
reasonably likely to contain evidence bearing on the registrant's use
or nonuse of the registered mark; and
Any other reasonably accessible source with information
establishing that the mark was never in use in commerce (expungement),
or was not in use in commerce as of the relevant date (reexamination),
on or in connection with the relevant goods and/or services.
A petitioner is not required or expected to commission a private
investigation, but may choose to generally reference the results of any
report from such an investigation, without disclosing specific
information that would waive any applicable privileges.
Finally, any party practicing before the USPTO, including those
filing petitions to request institution of these ex parte proceedings,
is bound by all ethical rules involving candor toward the USPTO as the
adjudicating tribunal. Of particular relevance in expungement and ex
parte reexamination proceedings is 37 CFR 11.303(d), which provides:
``In an ex parte proceeding, a practitioner shall inform the tribunal
of all material facts known to the practitioner that will enable the
tribunal to make an informed decision, whether or not the facts are
adverse.''
E. Director-Initiated Proceedings
As authorized by the TMA, proposed Sec. 2.92(b) provides that the
Director may, within the time periods set forth in proposed Sec.
2.91(b), institute an expungement or reexamination proceeding on the
Director's own
[[Page 26866]]
initiative, if the information and evidence available to the USPTO
supports a prima facie case of nonuse.
Proposed Sec. 2.92(e)(1) provides that, for efficiency and
consistency, the Director may consolidate proceedings (including a
Director-initiated proceeding with a petition-initiated proceeding).
Consolidated proceedings are related parallel proceedings that may
include both expungement and reexamination grounds.
In addition, under proposed Sec. 2.92(e)(2), if two or more
petitions under proposed Sec. 2.91 are directed to the same
registration and are pending concurrently (i.e., expungement or
reexamination proceedings based on these petitions are not yet
instituted), or the Director wishes to institute an ex parte
expungement or reexamination proceeding on the Director's own
initiative under proposed Sec. 2.92(b) concerning a registration for
which one or more petitions under Sec. 2.91 are pending, the Director
may elect to institute a single proceeding.
F. Establishing a Prima Facie Case
Under proposed Sec. 2.92, as provided for explicitly in the TMA,
an expungement or reexamination proceeding will be instituted only in
connection with the goods and/or services for which a prima facie case
of relevant nonuse has been established. See Public Law 116-260, Div.
Q, Tit. II, Subtit. B, Sec. 225(a), (c). For the purpose of the
proposed rule, a ``prima facie case'' requires only that a reasonable
predicate concerning nonuse be established. See H. Rep. No. 116-645, at
8, citing In re Pacer Tech., 338 F.3d 1348, 1351 (Fed. Cir. 2003) and
In re Loew's Theatres, Inc., 769 F.2d 764, 768 (Fed. Cir. 1985). Thus,
with respect to these proceedings, a prima facie case includes
sufficient notice of the claimed nonuse to allow the registrant to
respond to and potentially rebut the claim with competent evidence,
which the USPTO must then consider before making a determination as to
whether the registration should be cancelled in whole or in part, as
appropriate.
For expungement and reexamination proceedings instituted based on a
petition under proposed Sec. 2.91, the determination of whether a
prima facie case has been made is based on the evidence and information
that is collected as a result of the petitioner's reasonable
investigation and set forth in the petition along with the USPTO's
electronic record of the involved registration. Appropriate sources of
such evidence and information include those listed in proposed Sec.
2.91(d)(2).
For Director-initiated expungement and reexamination proceedings,
the evidence and information that may be relied upon to establish a
prima facie case may be from essentially the same sources as in the
petition-initiated proceeding.
G. Notice of Petition and Proceedings
When a petitioner files a petition requesting institution of
expungement or reexamination proceedings, the petition will be uploaded
into the registration record and viewable through TSDR. The USPTO plans
to send a courtesy email notification to the registrant and/or
registrant's attorney, as appropriate, if a valid email address is of
record. The registrant may not respond to this courtesy notice. No
response from the registrant will be accepted unless and until the
Director institutes a proceeding under proposed Sec. 2.92.
Once the Director has determined whether to institute a proceeding
based on the petition, notice of that determination will be sent to the
petitioner and the registrant, along with the means to access the
petition and supporting documents and evidence.
If a proceeding is instituted, the petitioner will not have any
further involvement. In the case of Director-initiated proceedings,
there is no petitioner, and thus all relevant notices will be provided
only to the registrant. In both types of proceedings, official
documents associated with the proceeding will be uploaded into the
registration record and will be publicly viewable through TSDR.
Under the TMA and proposed Sec. 2.92(c)(1), any determination by
the Director whether to institute an expungement or reexamination
proceeding, based either on a petition or on the Director's own
initiative, is final and non-reviewable. See Public Law 116-260, Div.
Q, Tit. II, Subtit. B, Sec. 225(a), (c).
Finally, for purposes of correspondence relating to these
proceedings, the ``registrant'' is the owner/holder currently listed in
USPTO records.
H. Procedures for Expungement and Reexamination Proceedings
Under proposed Sec. 2.92(f), a proceeding is instituted by
notifying the registrant through an Office action, which, in accordance
with proposed Sec. 2.93(a), will require the registrant to provide
such evidence of use, information, exhibits, affidavits, or
declarations as may be reasonably necessary to rebut the prima facie
case by establishing that the required use in commerce has been made on
or in connection with the goods and/or services at issue as required by
the Act. While institution necessitates a response from the registrant
that includes evidence rebutting the prima facie case, the ultimate
burden of proving nonuse by a preponderance of the evidence remains
with the Office.
Although the Office action will be substantively limited in scope
to the question of use in commerce, the registrant will also be subject
to the requirements of Sec. Sec. 2.11 (requirement for
representation), 2.23 (requirement to correspond electronically), and
2.189 (requirement to provide a domicile address). Thus, the USPTO will
require the registrant to furnish domicile information to determine
whether the registrant is required to be represented by a U.S.-licensed
attorney. In addition, all registrants will be required to provide a
valid email address for correspondence, if one is not already in the
record, and to update the email address as necessary to facilitate
communication with the USPTO.
The TMA provides that any documentary evidence of use provided by
the registrant need not be the same as that required under the USPTO's
rules of practice for specimens of use under section 1(a) of the Act,
15 U.S.C. 1051(a), but must be consistent with the definition of ``use
in commerce'' set forth in section 45 of the Act, 15 U.S.C. 1127, and
in relevant case law. Although testimonial evidence may be submitted,
it should be supported by corroborating documentary evidence.
The expected documentary evidence of use in most cases will, in
fact, take the form of specimens of use, but the TMA contemplates
situations where, for example, specimens for particular goods and/or
services are no longer available, even if they may have been available
at the time the registrant filed an allegation of use. In these cases,
the registrant may be permitted to provide additional evidence and
explanations supported by declaration to explain how the mark was used
in commerce at the relevant time. As a general matter, because the
registration file, including any specimens, already has been considered
in instituting the proceeding based on a prima facie case of nonuse,
merely resubmitting the same specimen of use previously submitted prior
to registration or a verified statement alone, without additional
supporting evidence, will likely be insufficient to rebut a prima facie
case of nonuse.
For expungement proceedings, the registrant's evidence of use must
show that the use occurred before the filing date of the granted
petition to expunge
[[Page 26867]]
under Sec. 2.91(a), or before the date the proceeding was instituted
by the Director under Sec. 2.92(b), as appropriate. For reexamination
proceedings, the registrant's evidence of use must demonstrate use of
the mark on or in connection with the goods and/or services at issue on
or before the relevant date established under the TMA and the relevant
section of the Act.
Under proposed Sec. 2.93(b)(4)(ii), a registrant in an expungement
proceeding may provide verified statements and evidence to establish
that any nonuse as to particular goods and/or services with a sole
registration basis under section 44(e) of the Act, 15 U.S.C. 1126(e),
or section 66(a) of the Act, 15 U.S.C. 1141f(a), is due to special
circumstances that excuse such nonuse, as set forth in Sec.
2.161(a)(6)(ii). However, excusable nonuse will not be considered for
any goods and/or services registered under section 1 of the Act, 15
U.S.C. 1051.
Proposed Sec. 2.93(d) provides that a registrant in an expungement
or reexamination proceeding may also respond to an Office action by
deleting some or all of the goods and/or services at issue in the
proceeding and that an acceptable deletion will be immediately
effective. The proposed rule further specifies that no other amendment
to the identification of goods and/or services in a registration will
be permitted as part of the proceeding. If goods and/or services that
are subject to an expungement or reexamination proceeding are deleted
after the filing, and before the acceptance, of an affidavit or
declaration under section 8 or 71 of the Act, the deletion will be
subject to the fee under Sec. 2.161(c) or Sec. 7.37(c).
In addition, a registrant may submit a request to surrender the
subject registration for cancellation under Sec. 2.172 or a request to
amend the registration under Sec. 2.173, but the mere filing of these
requests will not constitute a sufficient response to an Office action
requiring the registrant to provide evidence of use of the mark in the
expungement or reexamination proceeding. The registrant must
affirmatively notify the Office of the separate request in a timely
response to the Office action.
Any deletion of goods and/or services at issue in a pending
proceeding requested in a response, a surrender for cancellation under
Sec. 2.172, or an amendment of the registration under Sec. 2.173,
shall render the proceeding moot as to those goods and/or services, and
the Office will not make any further determination regarding the
registrant's use of the mark in commerce as to those goods and/or
services.
Under proposed Sec. 2.93(b)(1), the registrant must respond to the
initial Office action via TEAS within two months of the issue date. If
the registrant fails to timely respond, the proposed rule provides that
the USPTO will terminate the proceedings and the registration will be
cancelled, in whole or in part, as appropriate. However, a registrant
may request reinstatement of the registration and resumption of the
proceeding if the registrant failed to respond to the Office action
because of an extraordinary situation. Under proposed Sec.
2.146(d)(2)(iv), such a petition must be filed no later than two months
after the date of actual knowledge of the cancellation of goods and/or
services in a registration and not later than six months after the date
of cancellation as indicated in TSDR. Proposed Sec. 2.146(c)(2)
requires the registrant to include a response to the Office action with
the petition.
Relatedly, proposed Sec. 2.23(d)(3) provides that registrants are
responsible for monitoring the status of their applications and
registrations in the USPTO's electronic systems at least every two
months after notice of the institution of an expungement or
reexamination proceeding until a notice of termination issues under
Sec. 2.94, or, if no notice of institution was received, at least
every six months following the issue date of the registration.
The USPTO is also considering whether proposed Sec. 2.93 should
provide that, when a timely response by the registrant is a bona fide
attempt to advance the proceeding and is a substantially complete
response to the Office action, but consideration of some matter or
compliance with a requirement has been omitted, the registrant may be
granted thirty days, or to the end of the response period set forth in
the Office action to which the substantially complete response was
submitted, whichever is longer, to resolve the issue before the
question of terminating the proceeding is considered. The USPTO seeks
comments on whether to include this provision.
In addition, the USPTO is considering whether it should take
additional action when a registrant's failure to respond in an
expungement or reexamination proceeding leads to cancellation of some
of the goods and/or services in the registration. Specifically, the
USPTO is considering whether, in these cases, the registration should
also be selected for audit under 37 CFR 2.161(b) or 7.37(b) if a
registration maintenance filing is pending or, if one is not pending,
when the next maintenance filing is submitted. As under current
practice, if selected for audit, the registrant would be required to
substantiate use for some or all of the remaining goods and/or services
recited in the registration. The USPTO seeks comments on this
alternative.
If the registrant timely responds to the initial Office action in
the expungement or reexamination proceeding, the USPTO will review the
response to determine if use of the mark in commerce at the relevant
time has been established for each of the goods and/or services at
issue. If the USPTO finds during the course of the proceeding that the
registrant has demonstrated relevant use of the mark in commerce on or
in connection with the goods and/or services at issue sufficient to
rebut the prima facie case, demonstrated excusable nonuse in
appropriate expungement cases, or deleted the relevant goods and/or
services, such that no goods and/or services remain at issue, the USPTO
will issue a notice of termination under proposed Sec. 2.94, the
proceeding will be terminated, and the registration will not be
cancelled.
If, however, the response fails to establish use of the mark in
commerce at the relevant time (or excusable nonuse, if applicable) for
all of the goods and/or services at issue, or otherwise fails to comply
with all outstanding requirements, the USPTO will issue a final action.
In an expungement proceeding, the final action will include the
examiner's decision that the registration should be cancelled for each
good or service for which the mark was determined to have never been
used in commerce or for which no excusable nonuse was established. In a
reexamination proceeding, the final action will include the examiner's
decision that the registration should be cancelled for each good and/or
service for which it was determined the mark was not in use in commerce
on or before the relevant date. As appropriate, in either an
expungement or reexamination proceeding, the final action will include
the examiner's decision that the registration should be cancelled in
whole for noncompliance with any requirement under Sec. Sec. 2.11,
2.23, and 2.189.
If a final action is issued, the registrant will have two months to
file a request for reconsideration or an appeal to the TTAB, if
appropriate. In accordance with proposed Sec. Sec. 2.93(c)(3)(ii) and
2.94, if the registrant fails to timely appeal or file a request for
reconsideration that establishes use of the mark in commerce
[[Page 26868]]
at the relevant time for all goods and/or services that remain at issue
in a final action (or that deletes the relevant goods and/or services),
the USPTO will issue a notice of termination of the proceeding, clearly
setting forth the goods and/or services for which relevant use was, or
was not, established, as well as any other additional outstanding
requirements. The notice of termination is a statement intended to
provide notice to the registrant and the public of the ultimate outcome
of the proceedings and is not itself reviewable. The USPTO will also
issue, as appropriate, an order cancelling the registration in whole or
in part in accordance with the examiner's decision in the final action.
The proposed rule provides that, if the registrant fails to timely
respond, the USPTO will terminate the proceedings, and the registration
will be cancelled, in whole or in part, as appropriate. However, a
registrant may request reinstatement of the registration and resumption
of the proceeding if the registrant failed to respond to the Office
action because of an extraordinary situation. Under proposed Sec.
2.146(d)(2)(iv), such a petition must be filed no later than two months
after the date of actual knowledge of the cancellation of goods and/or
services in a registration and may not be filed later than six months
after the date of cancellation in TSDR. Proposed Sec. 2.146(c)(2)
requires the registrant to include a response to the Office action with
the petition.
Under proposed Sec. 2.94, if the required use in commerce (or
excusable nonuse, in appropriate cases) is not established, the notice
of termination will indicate a cancellation of either some of the goods
and/or services or the entire registration, depending on the
circumstances. If the goods and/or services for which use (or excusable
nonuse) was not demonstrated are the only goods and/or services in the
registration, or there remain any additional outstanding requirements,
the whole registration will be cancelled. However, if the notice of
termination relates only to a portion of the goods and/or services in
the registration, and there are no other outstanding requirements, the
registration will be cancelled in part, as appropriate. A notice of
termination will not issue until all outstanding issues are
satisfactorily resolved (and thus no cancellation is necessary) or the
time for appeal has expired or any appeal proceeding has terminated.
Petitioners and other interested parties may monitor the progress of a
proceeding by reviewing the status and associated documents through
TSDR.
In setting the proposed deadlines for expungement and reexamination
proceedings, the USPTO considered the amount of time a registrant might
need in order to research and collect relevant evidence of use, as well
as the fact that some proceedings may involve more goods and/or
services than others. The USPTO also weighed these considerations
against the goal that these proceedings be faster and more efficient
than other available options for cancellation of registrations for
marks not used with goods and/or services listed therein, as well as
the fact that most registrants are likely to have evidence of use that
is contemporaneous with the relevant date at issue.
I. Estoppel and Co-Pending Proceedings
Proposed Sec. 2.92(d) includes provisions for estoppel and bars
co-pending proceedings involving the same registration and the same
goods and/or services.
Specifically, proposed Sec. 2.92(d)(1) provides that, upon
termination of an expungement proceeding, including after any appeal,
where it has been established that the registered mark was used in
commerce on or in connection with any of the goods and/or services at
issue in the proceedings prior to the date a petition to expunge was
filed under proposed Sec. 2.91 or the Director-initiated proceedings
were instituted under proposed Sec. 2.92, no further expungement
proceedings may be instituted as to those particular goods and/or
services. Subsequent reexamination proceedings for marks registered
under section 1 of the Act are not barred under these circumstances
because reexamination proceedings involve a question of whether the
mark was in use in commerce as of a particular relevant date, whereas
earlier expungement proceedings would only have involved a
determination of whether the mark was never used. Proof of use
sufficient to rebut a prima facie case of nonuse in an expungement
proceeding might not establish use as of a particular relevant date, as
required in a reexamination proceeding.
Proposed Sec. 2.92(d)(2) provides that, upon termination of a
reexamination proceeding, including after any appeal, where it is
determined that the registered mark was used in commerce on or in
connection with any of the goods and/or services at issue, on or before
the relevant date at issue in the proceedings, no further expungement
or reexamination proceedings may be instituted as to those particular
goods and/or services. The TMA does not explicitly bar a subsequent
expungement proceeding following a determination in a reexamination
proceeding. However, the rule takes into account that it would be
unnecessary for the registrant to be subjected to a later-instituted
proceeding alleging the mark was never used in commerce when the USPTO
has already determined that the mark was used in commerce on or before
the relevant date.
In addition, proposed Sec. 2.92(d)(3) provides that, with respect
to a particular registration, while an expungement proceeding is
pending, no later expungement proceeding may be instituted with respect
to the same goods and/or services at issue in the pending proceeding.
Proposed Sec. 2.92(d)(4) establishes that, with respect to a
particular registration, while a reexamination proceeding is pending,
no later expungement or reexamination proceeding may be instituted with
respect to the same goods and/or services at issue in the pending
proceeding.
For the purposes of these rules, the wording ``same goods and/or
services'' refers to identical goods and/or services that are the
subject of the pending proceeding or the prior determination. Thus, for
example, if a subsequent petition for reexamination identifies goods
that are already the subject of a pending reexamination proceeding and
goods that are not, only the latter goods could potentially be the
subject of a new proceeding. The fact that there is some overlap
between the goods and/or services in the pending proceeding and those
identified in a petition would not preclude the goods and/or services
that are not the same from being the subject of a new proceeding, if
otherwise appropriate. This situation is addressed in proposed rule
Sec. 2.92(c)(2), which permits the Director to institute a proceeding
on petition for fewer than all of the goods and/or services identified
in the petition.
II. New Nonuse Ground for Cancellation Before the TTAB
The TMA created a new nonuse ground for cancellation under section
14 of the Act, allowing a petitioner to allege that a mark has never
been used in commerce as a basis for cancellation before the TTAB. This
ground is available at any time after the first three years from the
registration date. Therefore, the USPTO proposes amending Sec.
2.111(b) to indicate when a petition on this ground may be filed and to
distinguish it from the timing of other nonuse claims.
III. Flexible Response Periods
The TMA amended section 12(b) of the Act, 15 U.S.C. 1062(b), to
allow the
[[Page 26869]]
USPTO to set response periods by regulation for a time period between
60 days and 6 months, with the option for extensions to a full 6-month
period. Under current Sec. 2.62(a), applicants have six months to
respond to Office actions issued during examination of a trademark
application. Many examination issues, particularly formal requirements
like amendments to identifications or mark descriptions, can be
resolved well before the current six-month deadline. However, the USPTO
also recognizes that Office actions containing statutory refusals may
present complex issues that require more time to address, and thus
applicants and their attorneys may need the full response period to
prepare and submit a response.
USPTO data analytics indicate that, in fiscal year (FY) 2020, 42%
of represented applicants and 66% of unrepresented applicants responded
to an Office action with a single substantive ground of refusal within
three months from the issuance of a non-final Office action. Where the
Office action covered multiple refusals, 31% of represented applicants
and 56% of unrepresented applicants responded within three months.
Accordingly, the USPTO proposes amending Sec. 2.62 to set a
response period of three months for responses to Office actions in
applications under sections 1 and/or 44 of the Act. Under proposed
Sec. 2.62(a)(2), applicants may request a single three-month extension
of this three-month deadline, subject to payment of the fee in proposed
Sec. 2.6(a)(27), namely, $125 for an extension request filed through
TEAS and $225 for a permitted paper-filed request. To be considered
timely, the request for an extension must be received by the USPTO on
or before the deadline for response, which, consistent with current
examination practice, will be set forth in the Office action. If an
applicant fails to respond or request an extension within the specified
time period, the application will be abandoned. This extension will not
affect the existing practice under Sec. 2.65(a)(2) that permits an
examiner to grant an applicant 30 days, or to the end of the response
period set forth in the action to which a substantially complete and
timely response was submitted, whichever period is longer, to explain
or supply an omission. The proposed amendments to Sec. 2.66 address
the requirement for the extension fee in situations where an applicant
files a petition to revive past a three-month deadline.
Although post-registration actions are not subject to the response
provisions in section 12 of the Act, for convenience and
predictability, the USPTO proposes to have the same three-month
response period and single three-month extension apply to Office
actions issued in connection with post-registration review of
registration maintenance and renewal filings.
However, applications under section 66(a) of the Act will not be
subject to the three-month deadline for Office action responses; the
deadline will instead remain at six months. USPTO data analytics
indicate that in FY 2020, only 11% of Madrid applicants filed a
response to a non-final Office action with multiple grounds within
three months, while 62% of Madrid applicants took six months to file a
response. The additional processing required for these applications,
both at the USPTO and the World Intellectual Property Organization's
International Bureau, per article 5(2) of the Madrid Protocol,
introduces time constraints that justify maintaining the current
deadlines.
These flexible response periods are intended to promote efficiency
in examination by shortening the prosecution timeline for applications
with issues that are relatively simple to address, while providing
sufficient time, through an optional extension, for responses to Office
actions with more complex issues. In addition, shorter response periods
may result in faster disposal of applications and thus reduce the
potential delay in examination of later-filed applications for similar
marks.
The proposed rule includes conforming revisions to Sec. Sec. 2.63,
2.65, 2.66, 2.141, 2.142, 2.163, 2.165, 2.184, 2.186, 7.6, 7.39, and
7.40 to account for the proposed deadlines and extensions.
These flexible response periods and extensions will likely involve
significant changes to examination processes and the USPTO's
information technology (IT) systems. Although the rules regarding
expungement and reexamination proceedings must be implemented within
one year of the TMA's enactment, there is no required date of
implementation for the flexible response and extension provisions. The
Office proposes a delayed implementation date of June 27, 2022, in
order to allow customers to update their practices and IT systems for
these changes. The USPTO seeks comments on this approach.
Finally, the USPTO is seeking comments on two alternatives to the
procedures proposed above. One alternative under consideration is a
two-phase examination system, with each phase having separate
shortened, but extendable, response periods. This alternative may allow
more flexibility in setting response periods to promote efficiency in
examination to address the recent increase in applications. For
example, a USPTO examiner could review application formalities and
issue a formalities Office action with a shortened response period of
two months, extendable in two-month increments to a full six months
upon request and payment of a fee. Once the formalities are addressed,
the application could enter the second phase of the examination,
whereby an examiner would issue an Office action, containing any
substantive refusals, that identifies a response deadline of the time
of three months, extendable for another three months to a total of six
months, upon request and payment of a fee.
The other alternative under consideration is to set the initial
period for responding to an Office action at two months, but allow
applicants to file a response in the third, fourth, fifth, or sixth
month after issuance of the Office action by submitting an extension
request and fee payment along with the response. The fee for extension
would be progressively higher the later the filing of the response and
extension request. For example, responses filed in the third, fourth,
fifth, and sixth month after issuance of the Office action would have
an extension fee of $50, $75, $125, and $150, respectively. An
application would be abandoned when a response is not received within
the two-month period or such other extended deadline as requested and
paid for by applicant, not to exceed six months from the Office action
issue date. If an application abandons, the applicant may submit a
petition to revive the application that must include the applicable
petition fee and the appropriate extension fee. For example, if the
petition to revive is filed in the fifth month after the Office action
issues, the extension fee would be $125. If the petition is filed in
the sixth month or later, the extension fee would be $150. The USPTO
seeks comments on these alternatives.
IV. Letters of Protest
The TMA amends section 1 of the Act, 15 U.S.C. 1051, to add a new
paragraph (f), providing express statutory authority for the USPTO's
existing letter-of-protest procedure, which allows third parties to
submit to the USPTO for consideration and entry into the record
evidence bearing on the registrability of a mark. This procedure is
intended to aid in examination without causing undue delay or
compromising the integrity and
[[Page 26870]]
objectivity of the ex parte examination process. The TMA also provides
that the Director shall determine whether evidence should be included
in the record of the relevant application within two months of the date
on which a letter-of-protest submission is filed.
The USPTO promulgated letter-of-protest procedures at 37 CFR 2.149
in a final rule published in the Federal Register on November 17, 2020
(85 FR 73197). The requirements set out in Sec. 2.149 are consistent
with those in the TMA. However, the TMA further provides that any
determination by the Director of the USPTO whether to include letter-
of-protest evidence in the record of an application shall be final and
non-reviewable, and that such a determination shall not prejudice any
party's right to raise any issue and rely on any evidence in any other
proceeding. See Public Law 116-260, Div. Q, Tit. II, Subtit. B, Sec.
223(a) (Dec. 27, 2020). The USPTO proposes to revise Sec. 2.149 to
include these additional provisions.
The TMA also authorizes the USPTO to charge a fee for letters of
protest. Id. Under existing Sec. 2.6(a)(25), the USPTO currently
charges $50 per letter-of-protest submission. That fee is not changed
in this proposed rulemaking.
V. Suspension of Proceedings
The USPTO proposes to revise Sec. Sec. 2.67 and 2.117 to clarify
that expungement and reexamination proceedings are included among the
types of proceedings for which suspension of action by the Office or
the TTAB is authorized. In addition, the USPTO proposes to revise these
rules to align them with the existing practice regarding suspension of
proceedings before the USPTO or the TTAB. Generally, the USPTO will
suspend prosecution of a trademark application or a matter before the
TTAB during the pendency of a court or TTAB proceeding that is relevant
to the issue of registrability of the involved mark, and so the USPTO
proposes to eliminate the limitation in Sec. 2.117 to other
proceedings in which a party or parties are engaged.
Suspension normally will be maintained until the outcome of the
proceeding has been finally determined. As set forth in the current
version of the Trademark Trial and Appeal Board Manual of Procedure
Sec. 510.02(b), the USPTO considers a proceeding to have been finally
determined when an order or ruling that ends litigation has been
rendered and noticed, and no appeal has been filed, or all appeals
filed have been decided and the time for any further review has expired
without further review being sought. The expiration of any further
review includes the time for petitioning for rehearing or U.S. Supreme
Court review. Thus, the Office normally will not lift a suspension
until after the time for seeking such review has expired, a decision
denying or granting such review has been rendered, and any further
review has been completed.
VI. Attorney Recognition
The USPTO proposes revising Sec. 2.17(g) to indicate that, for the
purposes of an application or registration, recognition of a qualified
attorney as the applicant's or registrant's representative will
continue until the owner revokes the appointment or the attorney
withdraws from representation. Thus, recognition would continue when,
for example, an application abandons, post-registration documents are
filed and accepted, or a registration expires or is cancelled.
Accordingly, to end attorney recognition by the USPTO under the
proposed rule, owners and attorneys would be required to proactively
file an appropriate revocation or withdrawal document under Sec. 2.19,
rather than the current situation, where recognition automatically ends
when one of the events listed in current Sec. 2.17(g) occurs.
Under current Sec. 2.17(g), once recognition has ended because of
one of these events, either the previously recognized attorney or a
newly appearing attorney may be recognized as the attorney of record by
signing a submission to the USPTO on behalf of the applicant or
registrant or by being named as the attorney in a submission filed on
behalf of the applicant. See 37 CFR 2.17(b)(1)(ii), (iii). By contrast,
under the proposed revision to Sec. 2.17(g), if the applicant or
registrant wishes to retain a new attorney for submissions to the USPTO
following abandonment or registration, the applicant or registrant
would be required to revoke the original power of attorney, or the
attorney would need to request to withdraw from representation, before
a new attorney could be recognized.
The proposed revision to Sec. 2.17(g) would also apply to attorney
recognition when a change of ownership occurs. The USPTO does not
require an assignment to be filed when a change of ownership occurs,
and when an assignment is filed, the ownership information must be
reviewed and manually entered into the relevant database fields.
Therefore, the USPTO records may not reflect that an ownership change
has occurred, and, in some cases, an ownership change does not result
in a change in attorney representation. Accordingly, under the proposed
rule, recognition of the attorney of record will continue, even when
there is a change of ownership, until the attorney affirmatively
withdraws or representation is revoked.
The USPTO is proposing this revision because current Sec. 2.17(g)
does not align with USPTO practice under Sec. 2.18(a), which requires
the USPTO to correspond with the applicant's or registrant's attorney
if one is recognized. Section 2.18 states that the USPTO will
correspond only with the applicant or registrant if the applicant or
registrant is not represented by an attorney. Further, because
recognition of representation ends at registration or abandonment under
current Sec. 2.17(g), the USPTO should cease recognition of the
attorney and stop sending correspondence to the attorney's
correspondence address. However, the USPTO's existing practice reflects
that, in most cases, after an occurrence of an event list in current
Sec. 2.17(g), representation continues and the attorney is the
intended recipient of the trademark registration certificate, renewal
reminders, and any other correspondence. For this reason, the USPTO
continues to send correspondence to the attorney of record, except in
connection with petitions to cancel filed with the TTAB, which are
served on the registrant.
The USPTO's existing practice concerning attorney information is
based on feedback from some stakeholders who expressed a preference for
the USPTO to retain the information in the USPTO's database so that
they would continue to receive correspondence without needing to be re-
designated as attorney of record. In addition, despite the requirements
of Sec. Sec. 2.18(c) and 2.23(a), registrants do not always maintain
up-to-date correspondence addresses. Therefore, they might not receive
correspondence from the USPTO regarding post-registration actions, such
as USPTO courtesy reminder notices to registrants regarding the time
periods to file maintenance or renewal documents. Likewise, registrants
who do not update their correspondence address might not receive
notices of a petition to cancel filed with the TTAB. To help ensure
receipt, in addition to emailing certain notices to the registrant's
email address, the USPTO generally also emails them to the former
attorney's email address.
Furthermore, the proposed revision is needed to facilitate
implementation of a role-based access control system intended to
improve USPTO database integrity. The USPTO recently required anyone
filing applications or other documents to create a MyUSPTO.gov
[[Page 26871]]
account to log in and access the filing and response forms in TEAS.
This login requirement is intended to increase the security of the
USPTO's electronic systems. In the near future, the USPTO plans to
introduce identity verification requirements, assign roles to customer
accounts (role-based access control), and restrict access to files to
exclude actions by unauthorized parties. As part of the USPTO's
forthcoming identity verification process, users are likely to be
assigned a limited number of roles to control and delegate access to
filings, including attorney, attorney support, owner, and public
administrator roles. If the USPTO were to retain Sec. 2.17(g) in its
current form, while the last attorney of record could submit the TEAS
form to file a maintenance document, the role-based access controls
would require the attorney to first request IT permission from the
owner to do so. This could result in missed deadlines.
Another consideration in revising this rule is the USPTO's
continued efforts to track and combat misleading solicitations sent to
trademark applicants and registrants. These misleading solicitations
often offer unnecessary services to owners of trademark applications
and registrations, and are created so as to deceive owners into
believing the solicitations are official USPTO correspondence. Some of
these solicitations offer services that are never provided, potentially
putting a trademark application or registration at risk of abandonment,
cancellation, or expiration. In other cases, these entities may engage
in the unauthorized practice of law and file renewals and affidavits
with bad specimens of use or improper signatures. These entities also
frequently charge inflated fees for questionable and predominantly
unnecessary services. Because an experienced trademark attorney may be
in a better position than an unrepresented applicant or registrant to
discern whether a particular item of correspondence is legitimate, the
continuation of attorney recognition after abandonment or registration
would allow attorneys of record to either intercept potentially
fraudulent correspondence from reaching registrants or be alerted to
solicitations their clients are receiving and counsel them
appropriately.
Should the proposed revision to Sec. 2.17(g) become effective, the
USPTO plans to remove the name of any attorney whose recognition has
already 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,
will be retained so that relevant correspondence and notices can
continue to be sent to both the formerly recognized attorney and the
owner. This will facilitate a period of transition to the new attorney
recognition procedures while allowing the USPTO to proceed with its
plans to implement updates to TEAS login processes. In accordance with
Sec. 2.17(b)(1), any attorney whose name is removed as attorney of
record for this reason who wishes to be re-recognized as attorney of
record may do one of the following: (1) File an attorney appointment
consistent with Sec. 2.17(c); (2) sign a document on behalf of an
unrepresented applicant, registrant, or party to a proceeding; or (3)
appear by being identified as the attorney of record in a document
submitted to the USPTO on behalf of an unrepresented applicant,
registrant, or party to a proceeding.
The USPTO also proposes to add Sec. 2.17(b)(4) to specify that,
when a practitioner has been mistakenly, falsely, or fraudulently
designated as an attorney for an applicant, registrant, or party to a
proceeding without the practitioner's prior authorization or knowledge,
recognition of that practitioner shall be ineffective.
In addition, the USPTO proposes to revise Sec. 2.18(a)(1) to refer
to ``recognition'' instead of ``representation,'' consistent with the
wording in Sec. 2.18(a)(2). The term ``recognition'' reflects the fact
that the USPTO does not control representation agreements between
practitioners and clients but merely recognizes an attorney for
purposes of representation before the USPTO. A revision is also
proposed for Sec. 2.18(a)(2) to indicate that, as with service of a
cancellation petition, the USPTO may correspond directly with a
registrant in connection with notices of institution of expungement or
reexamination proceedings. Accordingly, the USPTO plans to send notices
of institution of expungement and reexamination proceedings to the
owner currently identified in the registration record and to the
attorney of record, if any, or any previous attorney of record whose
contact information is still in the record.
The USPTO also proposes revising Sec. 2.19 to clarify practitioner
obligations when withdrawing from representation and to specifically
differentiate the grounds under which the attorney may request to
withdraw versus those situations where an attorney must request
withdrawal, consistent with the USPTO Rules of Professional Conduct.
See 37 CFR 11.116.
Finally, the USPTO proposes amending Sec. 2.61 to remove paragraph
(c), which provides that, ``[w]henever it shall be found that two or
more parties whose interests are in conflict are represented by the
same attorney, each party and also the attorney shall be notified of
this fact.'' This provision directly conflicts with Sec. 2.18, and the
attorney conduct addressed by this rule is encompassed and superseded
by the USPTO Rules of Professional Conduct. See 37 CFR 11.107, 11.108.
VII. Court Orders Concerning Registrations
The USPTO also proposes the new Sec. 2.177 to codify the USPTO's
longstanding procedures concerning action on court orders cancelling or
affecting a registration under section 37, 15 U.S.C. 1119, that are
currently set forth in Sec. 1610 of the Trademark Manual of Examining
Procedure. The USPTO requires submission of a certified copy of the
order and normally does not act on such orders until the case is
finally determined.
Discussion of Proposed Rule Changes
The USPTO proposes to add Sec. 2.6(a)(26) to establish a fee of
$600, per class, for filing a petition for expungement and/or
reexamination under Sec. 2.91. The USPTO proposes to add Sec.
2.6(a)(27)(i) to establish a fee of $225 for a request for an extension
of time for filing a response to an Office action, under Sec. Sec.
2.62(a)(2), 2.163(c), 2.165(c), 2.184(a)(2), or 2.186(c), on paper and
Sec. 2.6(a)(27)(ii) to establish a fee of $125 for a request for an
extension of time for filing a response to an Office action, under
Sec. Sec. 2.62(a)(2), 2.163(c), 2.165(c), 2.184(a)(2), or 2.186(c),
via TEAS.
The USPTO proposes to amend Sec. 2.11(d) to add cross-reference
citations to Sec. Sec. 2.93, 2.163, and 7.39, and to amend Sec.
2.11(f) to add a cross-reference citation to Sec. 2.93(c)(1).
The USPTO proposes to add Sec. 2.17(b)(4) to specify that when a
practitioner has been mistakenly, falsely, or fraudulently designated
as a representative for an applicant, registrant, or party to a
proceeding without the practitioner's prior authorization or knowledge,
recognition of that practitioner shall be ineffective.
The USPTO proposes to amend Sec. 2.17(g) to indicate that, for the
purposes of a pending application or registration, recognition of a
power of attorney will continue until the applicant or registrant
revokes it or the attorney withdraws from representation.
The USPTO proposes to amend Sec. 2.18 to revise paragraph (a)(1)
to clarify the
[[Page 26872]]
circumstances when the Office will communicate directly with an
applicant, registrant, or party to a proceeding and to revise paragraph
(a)(2) to indicate that, with respect to notices of institution of
expungement and reexamination proceedings, the Office may correspond
directly with the applicant, registrant, or party to a proceeding.
The USPTO proposes to amend Sec. 2.19 to revise paragraph (b) and
add paragraphs (c) and (d) to better align this rule with attorney
obligations under the USPTO Rules of Professional Conduct by clarifying
practitioner obligations regarding withdrawing from representation and
aligning the rules for permissive withdrawal with Office practice.
The USPTO proposes to amend Sec. 2.23 to add paragraph (d)(3) to
address the duty to monitor the status of a registration once an
expungement or reexamination proceeding has been instituted.
The USPTO proposes to amend Sec. 2.61 to remove paragraph (c).
The USPTO proposes to amend Sec. 2.62 to revise paragraph (a) to
provide for flexible response periods and extensions of time to respond
and paragraph (c) to include a reference to requests for extensions of
time to respond.
The USPTO proposes to amend Sec. 2.63 to revise paragraph (b) to
include a request for an extension of time to respond or appeal under
Sec. 2.62(a)(2) as a response option, and other minor stylistic
changes; to revise paragraph (c) to include a reference to requests for
extensions of time to respond or appeal under Sec. 2.62(a)(2), and
other minor stylistic changes; and to revise paragraph (d) to remove
the wording ``six-month.''
The USPTO proposes to amend Sec. 2.65 to revise paragraph (a) to
replace ``six months from the date of issuance'' with ``the relevant
time period for response under Sec. 2.62(a), including any granted
extension of time to respond under Sec. 2.62(a)(2).''
The USPTO proposes to amend Sec. 2.66 to revise paragraph (b)(1)
to replace the citation to Sec. 2.6 with a citation to Sec.
2.6(a)(15); revise paragraph (b)(3) by removing a portion to create new
paragraph (b)(5); and add paragraph (b)(4) to include a provision for
Office actions with a three-month response period.
The USPTO proposes to amend Sec. 2.67 to codify the existing
practice regarding suspension of proceedings before the USPTO and the
TTAB.
The USPTO proposes to revise the undesignated center heading
appearing before Sec. 2.91 from ``CONCURRENT USE PROCEEDINGS'' to ``EX
PARTE EXPUNGEMENT AND REEXAMINATION.''
The USPTO proposes to add Sec. 2.91 to set forth the procedures
for petitions for expungement or reexamination.
The USPTO proposes to add Sec. 2.92 to set forth the procedures
for instituting ex parte expungement and reexamination proceedings.
The USPTO proposes to add Sec. 2.93 to set forth the procedures
for conducting expungement and reexamination proceedings.
The USPTO proposes to add Sec. 2.94 to set forth the procedures
for action after expungement or reexamination.
The USPTO proposes to add the undesignated center heading
``CONCURRENT USE PROCEEDINGS'' before existing Sec. 2.99.
The USPTO proposes to revise the undesignated center heading
appearing before Sec. 2.111 from ``CANCELLATION'' to ``CANCELLATION
PROCEEDINGS BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD'' to
differentiate cancellation proceedings before the TTAB from ex parte
expungement and reexamination proceedings.
The USPTO proposes to amend Sec. 2.111(b) to specify the time for
filing a petition for cancellation with the TTAB on the ground
specified in Sec. 14(6) of the Act and to distinguish it from the
timing of other nonuse claims.
The USPTO proposes to amend Sec. 2.117(a) to include a reference
to an expungement or reexamination proceeding instituted under Sec.
2.92, to eliminate the limitation to other proceedings in which a party
or parties are engaged, and to indicate that a civil action or
proceeding is not considered to have been terminated until an order or
ruling that ends litigation has been rendered and noticed and the time
for any further review has expired with no further review sought.
The USPTO proposes to amend Sec. 2.141 to revise the heading to
``Ex parte appeals from refusal to register by action of trademark
examining attorney''; revise paragraph (a) to replace the six-month
deadline with a reference to the deadline and extension of time under
proposed Sec. 2.62(a); and revise paragraph (b) to remove the wording
``six-month statutory'' and to clarify that, if the applicant does not
submit the required fee or specify the class(es) being appealed within
the set time period, the TTAB will apply the fee(s) to the class(es) in
ascending order, beginning with the lowest numbered class containing
goods and/or services at issue in the appeal.
The USPTO proposes to amend Sec. 2.142 to revise paragraph (a) to
replace the six-month deadline with a reference to the deadline and
extension of time under proposed Sec. 2.62(a); revise paragraph (b)(3)
to include reference to proceedings involving registrations; revise
paragraph (d) for clarity and to create paragraphs (d)(1) and (d)(2) to
address appeals from a refusal to register and appeals from an
expungement or reexamination proceeding respectively; and add a
subheading to paragraph (f) to clarify that this paragraph only applies
to an appeal from a refusal to register.
The USPTO proposes to add Sec. 2.143, which sets forth the
procedures and requirements for ex parte appeals in expungement and
reexamination proceedings.
The USPTO proposes to amend Sec. 2.145 to revise paragraph (a)(1)
to include a reference to ex parte expungement or reexamination
proceedings and to revise paragraph (c)(1) to add an exception for ex
parte expungement or reexamination proceedings.
The USPTO proposes to amend Sec. 2.146 to include expungement and
reexamination in paragraph (b); revise paragraph (c) to indicate that a
petition requesting reinstatement of a registration cancelled in whole
or in part for failure to timely respond to an Office action issued in
an expungement and/or reexamination proceeding must include a response
to the Office action, signed in accordance with Sec. 2.193; and add
paragraph (d)(2)(iv) to specify the filing deadline for a petition in
connection with an expungement or reexamination proceeding.
The USPTO proposes to amend Sec. 2.149 to revise paragraph (a) to
replace the word ``entry'' with ``inclusion'' and amend paragraph (i)
for clarity and to replace the words ``not petitionable'' with ``final
and non-reviewable and that a determination to include or not include
evidence in the record shall not prejudice any party's right to raise
any issue and rely on any evidence in any other proceeding.''
The USPTO proposes to amend Sec. 2.163 to revise paragraph (b) to
specify a response deadline of three months; revise paragraph (c) to
provide for extensions of time to respond; add paragraph (d) to address
substantially complete responses; and add paragraph (e) to set forth
the wording formerly in paragraph (c) with conforming revisions.
The USPTO proposes to amend Sec. 2.165 to revise paragraph (a) to
revise the internal citation to Sec. 2.163(b)-(c); revise paragraph
(b) to specify a response deadline of three months; revise paragraph
(c) to provide for
[[Page 26873]]
extensions of time to respond; add paragraph (d) to specify that a
registration will be cancelled if a response is not timely filed; and
add paragraph (e) to set forth wording formerly in paragraph (c).
The USPTO proposes to add the undesignated center heading ``COURT
ORDERS UNDER SECTION 37'' before Sec. 2.177.
The USPTO proposes to add Sec. 2.177 to address procedures
concerning action on court orders cancelling or affecting a
registration under section 37 of the Act.
The USPTO proposes to amend Sec. 2.184 to revise paragraph (b)(1)
to specify a response deadline of three months; revise paragraph (b)(2)
to provide for extensions of time to respond; add paragraph (b)(3) to
address substantially complete responses; add paragraph (b)(4) to set
forth wording formerly in paragraph (b)(1); and add paragraph (b)(5) to
set forth wording formerly in paragraph (b)(2).
The USPTO proposes to amend Sec. 2.186 to revise paragraph (b) to
specify a response deadline of three months; revise paragraph (c) to
provide for extensions of time to respond; add paragraph (d) to specify
that a registration will expire if a response is not timely filed; and
add paragraph (e) to set forth wording formerly in paragraph (c).
The USPTO proposes to amend Sec. 2.193(e)(5) to include a
reference to petitions for expungement or reexamination.
The USPTO proposes to amend Sec. 7.6 to add paragraph (a)(9)(i) to
establish a fee of $225 for a request for an extension of time for
filing a response to an Office action under Sec. Sec. 7.39(b) or
7.40(c) on paper and to add paragraph (a)(9)(ii) to establish a fee of
$125 for a request for an extension of time for filing a response to an
Office action under Sec. Sec. 7.39(b) or 7.40(c) via TEAS.
The USPTO proposes to amend Sec. 7.39 to revise paragraph (a) to
specify a response deadline of three months; revise paragraph (b) to
provide for extensions of time to respond; revise paragraph (c) to
address substantially complete responses; revise paragraph (d) to set
forth wording formerly in paragraph (b); add paragraph (e) to set forth
wording formerly in paragraph (c); and add paragraph (f) to set forth
wording formerly in paragraph (d).
The USPTO proposes to amend Sec. 7.40 to revise paragraph (a) to
revise the internal citation to Sec. 7.39(b)-(c); revise paragraph (b)
to specify a response deadline of three months; revise paragraph (c) to
provide for extensions of time to respond; add paragraph (d) to specify
that a registration will be cancelled if a response is not timely
filed; and add paragraph (e) to set forth wording formerly in paragraph
(c).
Rulemaking Requirements
A. Administrative Procedure Act: The changes proposed in this
rulemaking involve rules of agency practice and procedure, and/or
interpretive rules. See 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
are procedural where they do not change the substantive standard for
reviewing claims); 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).
Accordingly, prior notice and opportunity for public comment for
the changes proposed in this rulemaking 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), do 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 USPTO has chosen to seek public comment
before implementing the rule to benefit from the public's input.
B. Regulatory Flexibility Act: The USPTO publishes this Initial
Regulatory Flexibility Analysis (IRFA), as required by the Regulatory
Flexibility Act (RFA) (5 U.S.C. 601 et seq.), to examine the impact of
the Office's proposed changes to trademark fees on small entities and
to seek the public's views. Under the RFA, whenever an agency is
required by 5 U.S.C. 553 (or any other law) to publish a notice of
proposed rulemaking (NPRM), the agency must prepare and make available
for public comment an IRFA, unless the agency certifies under 5 U.S.C.
605(b) that the proposed rule, if implemented, will not have a
significant economic impact on a substantial number of small entities.
5 U.S.C. 603, 605.
Items 1-5 below discuss the five items specified in 5 U.S.C.
603(b)(1)-(5) to be addressed in an IRFA. Item 6 below discusses
alternatives to this proposal that the Office considered. The USPTO
invites public comments on these items.
1. Description of the reasons that action by the USPTO is being
considered:
The USPTO proposes to amend the rules of practice in trademark
cases to implement provisions of the Trademark Modernization Act of
2020, Public Law 116-260, Div. Q, Tit. II, Subtit. B, Sec. 228 (Dec.
27, 2020). The TMA sets a deadline of December 27, 2021, for the USPTO
to promulgate rules governing letter-of-protest procedures and
implementing ex parte expungement and reexamination proceedings for
cancellation of a registration when the required use in commerce of the
registered mark has not been made. In addition, the TMA authorizes the
USPTO to promulgate rules to provide for flexible Office action
response periods. The USPTO also proposes to set fees for petitions
requesting institution of ex parte expungement and reexamination
proceedings and for requests to extend Office action response
deadlines, as required or authorized by the TMA, and to amend the rules
concerning the suspension of USPTO proceedings and the rules governing
attorney recognition in trademark matters.
2. Succinct statement of the objectives of, and legal basis for,
the proposed rule:
As required or authorized by the TMA, the objective of the proposed
rule is to implement the provisions of the TMA by: (1) Establishing ex
parte expungement and reexamination proceedings for cancellation of a
registration when the required use in commerce of the registered mark
has not been made, to ensure an accurate trademark register that
supports and promotes commerce; (2) amending the rules governing the
USPTO's letter-of-protest procedures, which allow third parties to
submit evidence to the USPTO regarding a trademark's registrability
during the initial examination of the trademark application, to provide
that the decision whether to include such evidence in the application
record is final and non-reviewable and that such a determination shall
not prejudice any party's right to raise any issue and rely on any
evidence in any other proceeding; and (3) implementing flexible
response periods, along with optional extensions of time, to promote
efficiency in examination by shortening the prosecution timeline for
applications with issues that are relatively simple to address, while
providing sufficient time for response to Office actions with more
complex issues. In addition, this proposed rule is also intended to
formalize existing practice regarding suspension of proceedings before
the Office and the TTAB; to align the rules on attorney
[[Page 26874]]
recognition with current USPTO practice, facilitate implementation of a
role-based access control system intended to improve USPTO database
integrity, and ensure trademark correspondence is sent to the
appropriate party; and to add a new rule to address procedures
regarding court orders cancelling or affecting registrations. Finally,
the proposed rule establishes fees for the ex parte expungement and
reexamination proceedings and for extensions of time to respond to an
Office action.
3. Description of and, where feasible, estimate of the number of
affected small entities:
The USPTO does not collect or maintain statistics in trademark
cases 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 proposed rule would
apply to all persons who are filing a response to an Office action, are
represented by an attorney, are seeking to submit a petition requesting
institution of an expungement or reexamination proceeding, or are
providing a response in such a proceeding.
The proposed rule includes provisions for flexible response periods
to respond to Office actions. Under this proposed rule, all filers
would have an option to file a no-cost response if they do so within
three months of the Office action's issue date. The proposed changes
would benefit all trademark owners by encouraging faster prosecution of
applications, and USPTO believes this three-month response period is
reasonable for all applicants, including small entities, given the
efficiencies of current practices utilizing email and electronic filing
and notification of all documents.
The proposed changes to the rule regarding attorney recognition
benefit all parties, including small entities, by conforming USPTO
rules with current practices, facilitating implementation of a role-
based access control system intended to improve USPTO database
integrity, and aiding the USPTO's continued efforts to track and combat
misleading solicitations sent to trademark applicants and registrants.
Lastly, the proposed provisions governing the ex parte expungement
and reexamination proceedings created under the TMA will benefit all
parties, including small entities, by helping to ensure the accuracy of
the USPTO's trademark register by cancelling registrations, in whole or
in part, for which the required use of the registered mark in commerce
has not been made. Moreover, these proceedings will provide a faster,
more efficient, and less costly alternative to proceedings before the
TTAB or civil litigation in the courts. This should decrease or
eliminate the potential costs that otherwise would have been incurred
to litigate in proceedings to cancel a registration or resolve a
dispute over a mark, or to change business plans to avoid the use of a
chosen mark when the required use has not been made.
4. Description of the reporting, recordkeeping, and other
compliance requirements of the proposed rule, including an estimate of
the classes of small entities which will be subject to the requirement
and the type of professional skills necessary for preparation of the
report or record:
The proposed rule will require creation of new online forms to
submit a request to institute an expungement or reexamination
proceeding, to respond to Office actions issued during such
proceedings, and to request extensions of time to respond to Office
actions, as further described in the preamble of this proposed rule.
The USPTO does not anticipate the proposed rule to have a
disproportionate impact upon any particular class of small or large
entities. Any entity that has a pending trademark application or a
registered trademark could potentially be impacted by this proposed
rule.
The professional skills necessary for completion of the online
forms are not more burdensome than the skills necessary for completion
of current USPTO reporting requirements and would not be
disproportionately burdensome for small entities.
5. Identification, to the extent practicable, of all relevant
Federal rules which may duplicate, overlap, or conflict with the
proposed rule:
The proposed rule would not duplicate, overlap, or conflict with
any other Federal rules.
6. Description of any significant alternatives to the proposed rule
which accomplish the stated objectives of applicable statutes and which
minimize any significant economic impact of the rule on small entities:
The TMA mandates the framework for many of the procedures proposed
in this rulemaking, particularly in regard to the changes to the letter
of protest procedures and most of the procedures for the new ex parte
expungement and reexamination proceedings, except for those indicated
below. Thus, the USPTO has little to no discretion in the rulemaking
required to implement those procedures. Accordingly, the discussion
below addresses only those provisions for which alternatives were
possible because the TMA provided the Director discretion to implement
regulations. In those cases, the USPTO chose the option that best
balanced the need to achieve the stated objectives with the need to
create processes that are the least burdensome on all parties.
Fees: As authorized by the TMA, the proposed rule establishes fees
for petitions requesting ex parte expungement or reexamination of a
registration and for extensions of time to respond to an Office action.
The USPTO proposes a fee of $600 per class for a petition requesting ex
parte expungement or reexamination of a registration, with the intent
to balance the need for cost recovery with the objective of providing a
lower-cost alternative for third parties to seek cancellation of
registered marks for which the required use in commerce has not been
made. The USPTO considered alternative fee proposals for these newly
created ex parte proceedings. One option was to charge $250 per
petition, which is the same amount as the current fee for
electronically filed petitions to the Director under Sec. 2.146.
However, that amount was determined to be insufficient for cost
recovery because petitions for expungement or reexamination are
different proceedings than other petitions to the Director, because
reviewing these petitions and conducting any resulting proceeding will
require more time and resources. Therefore they are likely to incur
higher processing costs. In addition, the USPTO considered setting the
fee at $1,000 per class of goods or services involved in the petition.
However, this amount was deemed too high in view of the USPTO's
objective to provide an inexpensive mechanism for cancellation of a
registration when the required use in commerce of the registered mark
has not been made.
The USPTO is also proposing a fee of $125 for electronically filed
extensions of time to respond to an Office action and a fee of $225 for
such extensions that are filed on paper. These fees are consistent with
the current fees for requesting an extension of time to file a
statement of use and are intended to recover associated costs while
incentivizing applicants to respond to Office actions within the
initial three-month deadline. The USPTO considered the alternative to
charge no fee for such extensions, but that option would not aid in
cost recovery and would not provide an incentive to respond earlier,
undermining the purpose of the proposed flexible response periods.
Limit on petitions requesting expungement or reexamination: The
[[Page 26875]]
USPTO is not currently proposing a limitation on the number of
petitions for expungement or reexamination that can be filed against a
registration. However, the Office did consider such a limit of
petition-initiated proceedings against a registration that had already
been the subject of instituted proceedings in order to provide a
definite end to challenges, leaving any further challenges to TTAB
cancellation proceedings. Considering that there are already safeguards
in place to prevent abuse, the Office was concerned that imposing
artificial limitations might undermine the utility of the proceedings
to clear the register of unused marks. In addition, the USPTO
considered the alternatives of limiting the number of petitions a
particular petitioner or real party in interest may file, but those
options did not further the ultimate purpose of the expungement or
reexamination proceeding, which is to cancel a registration in whole or
in part when evidence shows that use of the mark in commerce has not
been made.
Reasonable investigation and evidence: Under the TMA and the
proposed rule, a petition for expungement or reexamination must include
a verified statement that sets forth the elements of the reasonable
investigation the petitioner conducted to determine that the mark was
never used in commerce (for expungement petitions) or not in use in
commerce as of the relevant date (for reexamination petitions) on or in
connection with the goods and/or services identified in the petition.
The proposed rule defines a ``reasonable investigation'' as one that is
based on available information and must include searches calculated to
return information about the underlying inquiry from reasonably
accessible sources where evidence concerning use of the mark during the
relevant time period on or in connection with the relevant goods and/or
services would normally be found. The proposed rule indicates that a
sufficient reasonable investigation will depend on the individual
circumstances, but includes a non-exhaustive list of sources of
evidence for a reasonable investigation. These include State and
Federal trademark records, internet websites, records from State and
Federal agencies, litigation records, knowledge of marketplace
activities, and any other reasonably accessible source with information
relevant to whether the mark at issue was used in commerce.
The USPTO considered an alternative approach of providing a more
exhaustive list of the types of evidence that would meet the burden for
these newly created proceedings. However, the USPTO acknowledges that
the types of evidence will vary by industry and the types of goods and
services being challenged. Therefore, it is not practical to create a
complete list in the rule that would apply in all situations. Instead,
the USPTO opted to identify a standard in line with the statute and
legislative history, and to include a non-exhaustive list of efforts
and evidence to meet the standard. This alternative provides guidance
to filers while not limiting them to specific types of evidence listed
in the rule.
Director-initiated proceedings: The TMA authorizes Director-
initiated expungement and reexamination proceedings. In addition to the
requirements in the TMA, the proposed rule explains that the Director
may institute a proceeding that includes additional goods and/or
services identified in the subject registration on the Director's own
initiative and consolidate consideration of the new proceeding with the
pending proceeding. The USPTO considered an alternative approach that
involved not allowing consolidation of proceedings in this
circumstance, but this option would hinder proper and efficient
management of multiple related proceedings.
Response time periods in new ex parte proceedings: The proposed
rule sets a deadline of two months for responding to a non-final or
final Office action issued in a reexamination and/or expungement
proceeding. The USPTO considered a number of alternatives to this
response deadline framework. These alternatives included a two-month
response period with an optional one-month extension; a three-month
response period for the initial Office action and a three-month period
for the final Office action; and different response periods for the
initial Office action and the final Office action.
In weighing these options, the Office considered the fact that,
once an Office action has been received by a registrant, the registrant
will need time to review the content of the Office action, hire counsel
if needed, and conduct fact-finding and evidence gathering in order to
provide a response. The Office also considered the fact that a
traditional six-month response period maximizes the time for the
registrant to engage in these necessary activities but could
potentially result in prolonged review, which is contrary to the
objective to provide a faster and more efficient alternative to
addressing claims of lack of proper use.
The selected two-month response period balances this objective with
the registrant's need for time to engage in the necessary activities to
provide a response to the Office action. Furthermore, the USPTO plans
to provide a courtesy notification to the registrant that a petition
has been filed so as to facilitate early notice of a possible
proceeding.
Flexible response periods: The TMA authorizes the USPTO to
establish flexible response periods to respond to Office actions. The
proposed rule sets a period of three months for responding to an Office
action in applications under sections 1 and/or 44 of the Act, but
provides an option for applicants to request a single three-month
extension of this three-month deadline, for a total response time of up
to six months. The same response deadline framework is also proposed
for post-registration Office actions issued in connection with the
examination of registration maintenance documents. This proposed
alternative was selected because it is supported by the USPTO's data
analytics regarding average response times, is the option with the
least burden and costs for filers, and avoids uncertainty in filing
deadlines by providing consistent deadlines for responses.
The USPTO considered three alternatives to the proposals to
implement flexible response periods. The first alternative was to
maintain six-month response periods for any Office action that contains
a substantive refusal and provide a shorter response period for any
Office action that contained only formal requirements, because
responses for these typically require less time. This alternative may
require some discretion by examining attorneys to decide which response
period applies if, for example, it is not clear whether the Office
action contains a substantive refusal. Additionally, public feedback
indicated that this approach results in the length of the response
period being unknown until the Office action is received and would
require the monitoring of multiple possible deadlines.
A second alternative considered was to offer shorter response
periods for all Office actions, but to offer an initial response period
of two months, with one-month extensions with a corresponding fee, to
reach the full six months. The fee for extension would be progressively
higher, depending on when the response and extension request were
filed. For example, responses filed in the third, fourth, fifth, or
sixth month would, respectively, have an extension fee of $50, $75,
$125, and $150. An application would be abandoned when a response is
not received within the two-month period
[[Page 26876]]
or such other extended deadline as requested and paid for by applicant,
not to exceed six months from the Office action issue date. This
alternative puts a greater burden on filers to track multiple deadlines
and could also increase costs to filers to file and pay for multiple
extensions to reach the full six-month period for response.
Finally, the USPTO considered a two-phase examination system. Under
this approach, a USPTO examiner could review application formalities
and issue a formalities Office action with a shortened response period
of two months, extendable in two-month increments to a full six months
upon request and payment of a fee. Once the formalities were addressed,
the application could enter the second phase of the examination,
whereby an examiner would issue an Office action containing any
substantive refusals that identifies a response deadline of three
months, extendable for another three months to a total of six months,
upon request and payment of a fee.
Suspension of proceedings: The USPTO proposes amendments to the
rules concerning suspension of proceedings to align them with current
practice and to clarify that the new ex parte expungement and
reexamination proceedings are among the types of proceedings for which
suspension of action by the Office or the TTAB is authorized.
The alternative was to take no action in amending these rules, but
that option would result in a continued misalignment of the rules and
USPTO practice, and could hinder proper and efficient management of
multiple related proceedings.
Attorney recognition: The proposed rule provides that, for the
purposes of an application or registration, recognition of a qualified
attorney as the applicant's or registrant's representative will
continue until the owner revokes the appointment or the attorney
withdraws from representation. This would allow recognition to continue
when an application abandons, post-registration documents are filed, or
a registration expires or is cancelled. Accordingly, owners and
attorneys would be required to proactively file documents to,
respectively, revoke an appointment or withdraw from representation
when the representation has ended, rather than simply having
recognition by the USPTO end automatically when certain events,
including abandonment or registration, occur. In addition, the proposed
rule provides that, when a practitioner has been mistakenly, falsely,
or fraudulently designated as a representative for an applicant,
registrant, or party to a proceeding without the practitioner's prior
authorization or knowledge, recognition of that practitioner shall be
ineffective. It also clarifies practitioners' obligations when
withdrawing from representation and proposes to delete a provision
relating to conflicts of interest that has been superseded by the
USPTO's Rules of Professional Conduct.
The USPTO considered not updating the current rules on attorney
recognition as an alternative to the proposed rule. However, leaving
the regulations as they are currently written would result in continued
inconsistency between the rule and current USPTO practice, would
complicate the implementation a role-based access control system that
is intended to improve USPTO database integrity, and would potentially
hinder the USPTO's ability to combat misleading solicitations sent to
trademark applicants and registrants as well as other improper
activities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rule has been determined to be Significant for purposes of Executive
Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The USPTO has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, the USPTO 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) provided the public with a meaningful opportunity to
participate in the regulatory process, including soliciting the views
of those likely affected prior to issuing an NPRM, 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 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, to the extent applicable.
E. 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).
F. 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).
G. 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).
H. 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).
I. 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).
J. 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).
K. 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 proposed rule are not
expected to result in an annual effect on the economy of $100 million
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 proposed rule is not expected to result in a ``major
rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local,
[[Page 26877]]
and tribal governments, in the aggregate, of $100 million (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 (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.
M. National Environmental Policy Act of 1969: 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.
N. National Technology Transfer and Advancement Act of 1995: 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.
O. Paperwork Reduction Act of 1995: In accordance with section
3507(d) of the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.), some of the paperwork and other information collection burdens
discussed in this proposed rulemaking have already been approved under
Office of Management and Budget (OMB) Control Numbers 0651-0040
(Trademark Trial and Appeal Board (TTAB) Actions), 0651-0050 (Response
to Office Action and Voluntary Amendment Forms), and 0651-0055 (Post
Registration (Trademark Processing)).
In addition, this proposed rulemaking adds new items and fees
regarding petitions requesting institution of expungement and
reexamination proceedings, responses to Office actions issued in
connection with expungement and reexamination, and requests for an
extension of time to respond to an Office action. The new information
collection requirements included in this proposed rulemaking have been
submitted as a new information collection request (ICR) for approval to
OMB.
Please send comments on this new ICR to OMB's Office of Information
and Regulatory Affairs via email to [email protected],
Attention: Desk Officer for USPTO, Washington, DC 20503. Please state
that your comments refer to Docket No. PTO-T-2021-0008. Please send a
copy of your comments to USPTO using one of the methods described under
ADDRESSES at the beginning of this document.
Title of information collection: Expungement and Reexamination
Proceedings.
Affected public: Private sector, individuals, and households.
Estimated annual number of respondents: 10,561.
Estimated annual number of responses: 11,116.
Estimated total annual burden hours: 10,865.
Estimated total annual respondent hourly cost burden: $4,346,000.
Table 1--Proposed Burden Hours for Private Sector Respondents
--------------------------------------------------------------------------------------------------------------------------------------------------------
Estimated
Estimated annual Estimated time Estimated Rate \1\ ($/ Estimated
Item No. Item annual responses for response annual burden hour) annual burden
respondents (year) (hour) (hour/year)
.......................... .............. (a) (b) (a) x (b) = (d) (c) x (d) =
(c) (e)
--------------------------------------------------------------------------------------------------------------------------------------------------------
1........................... Petition for Ex Parte 1,843 1,940 1.5 2,910 $400 $1,164,000
Expungement.
2........................... Response to Ex Parte 1,659 1,746 1 1,746 400 698,400
Expungement Office Action.
3........................... Response to Director- 185 194 1 194 400 77,600
Initiated Expungement
Office Action.
4........................... Petition for Ex Parte 1,229 1,294 1.5 1941 400 776,400
Reexamination.
5........................... Response to Ex Parte 1,106 1,164 1 1,164 400 465,600
Reexamination Office
Action.
6........................... Response to Ex Parte 123 130 1 130 400 52,000
Director-Initiated
Reexamination Office
Action.
7........................... Request for Extension of 2,304 2,425 0.25 606 400 242,400
Time for Filing a
Response to Office Action.
-----------------------------------------------------------------------------------------------
Totals.................. .......................... 8,449 8,893 .............. 8,691 .............. 3,476,400
--------------------------------------------------------------------------------------------------------------------------------------------------------
\1\ 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association
(AIPLA), https://www.aipla.org/detail/journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms,
which is $400 per hour.
[[Page 26878]]
Table 2--Proposed Burden Hours for Individual and Household Respondents
--------------------------------------------------------------------------------------------------------------------------------------------------------
Estimated
Estimated annual Estimated time Estimated Rate \2\ ($/ Estimated
Item No. Item annual responses for response annual burden hour) annual burden
respondents (year) (hour) (hour/year)
.......................... .............. (a) (b) (a) x (b) = (d) (c) x (d) =
(c) (e)
--------------------------------------------------------------------------------------------------------------------------------------------------------
1........................... Petition for Ex Parte 461 485 1.5 728 $400 $291,200
Expungement.
2........................... Response to Ex Parte 415 437 1 437 400 174,800
Expungement Office Action.
3........................... Response to Director- 46 49 1 49 400 19,600
Initiated Expungement
Office Action.
4........................... Petition for Ex Parte 307 323 1.5 485 400 194,000
Reexamination.
5........................... Response to Ex Parte 276 291 1 291 400 116,400
Reexamination Office
Action.
6........................... Response to Ex Parte 31 32 1 32 400 12,800
Director-Initiated
Reexamination Office
Action.
7........................... Request for Extension of 576 606 0.25 152 400 60,800
Time for Filing a
Response to Office Action.
-----------------------------------------------------------------------------------------------
Totals.................. .......................... 2,112 2,223 .............. 2,174 .............. 869,600
--------------------------------------------------------------------------------------------------------------------------------------------------------
\2\ 2019 Report of the Economic Survey, published by the Committee on Economics of Legal Practice of the American Intellectual Property Law Association
(AIPLA), https://www.aipla.org/detail/journal-issue/2019-report-of-the-economic-survey. The USPTO uses the mean rate for attorneys in private firms,
which is $400 per hour.
Estimated total annual respondent non-hourly cost burden:
$2,810,175.
This information collection has non-hourly cost burden in fees paid
by the respondents. There are filing fees associated with this
information collection for a total of $2,810,175 per year as outlined
in Table 3 below. The filing fees for petitions for expungement or
reexamination are based on the number of classes of goods and/or
services in the petition; therefore, the total filing fees for these
submissions can vary depending on the number of classes. The filing
fees shown here are the minimum fees associated with this information
collection.
Table 3--Filing Fees/Non-Hourly Cost Burden to Respondents
----------------------------------------------------------------------------------------------------------------
Estimated
Item No. Item annual Filing fees Total cost
responses
.............................. (a) (b) (a) x (b) =
(c)
----------------------------------------------------------------------------------------------------------------
1............................... Petition for Ex Parte 2,425 $600 $1,455,000
Expungement.
4............................... Petition for Ex Parte 1,617 600 970,200
Reexamination.
7............................... Request for Extension of Time 61 225 13,725
for Filing a Response to
Office Action (paper).
8............................... Request for Extension of Time 2,970 125 371,250
for Filing a Response to
Office Action (TEAS).
-----------------------------------------------
Totals...................... .............................. 7,073 .............. 2,810,175
----------------------------------------------------------------------------------------------------------------
The USPTO is soliciting public comments on this new ICR to:
(a) Evaluate whether the proposed collection of information is
necessary for the proper performance of the functions of the Agency,
including whether the information will have practical utility;
(b) Evaluate the accuracy of the Agency's estimate of the burden of
the proposed collection of information, including the validity of the
methodology and assumptions used;
(c) Enhance the quality, utility, and clarity of the information to
be collected; and
(d) Minimize the burden of the collection of information on those
who are to respond, including through the use of appropriate automated,
electronic, mechanical, or other technological collection techniques or
other forms of IT, e.g., permitting electronic submission of responses.
Please submit comments on this new collection of information at
www.reginfo.gov/public/do/PRAMain. Find this particular information
collection by selecting ``Currently under Review'' or by using the
search function and entering the title of the collection. Please send a
copy of your comments to the USPTO using one of the methods described
under ADDRESSES at the beginning of this document.
All comments submitted in response to this proposed rulemaking are
a matter of public record. The USPTO will respond to any ICR-related
comments in
[[Page 26879]]
the final rulemaking. Copies of this information collection may be
viewed at the Federal eRulemaking Portal (www.regulations.gov) or can
be requested from the USPTO via email at
[email protected].
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any 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
information has a valid OMB control number.
P. E-Government Act Compliance: The USPTO is committed to
compliance with the E-Government Act to promote the use of the internet
and other information technologies to provide increased opportunities
for citizen access to Government information and services, and for
other purposes. For information pertinent to E-Government Act
compliance related to this proposed rule, please contact Kimberly
Hardy, USPTO Information Collection Officer, via email at
[email protected] or via telephone at 571-270-0968.
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 USPTO
proposes to amend parts 2 and 7 of title 37 as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
0
1. The authority citation for 37 CFR part 2 is revised to read as
follows:
Authority: 15 U.S.C. 1113, 1123; 35 U.S.C. 2; Section 10, Pub.
L. 112-29; Pub. L. 116-260, 134 Stat. 1182, unless otherwise noted.
Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 434; 15 U.S.C.
1066, 1067.
0
2. Amend Sec. 2.6 by adding paragraphs (a)(26) and (27) to read as
follows:
Sec. 2.6 Trademark fees.
(a) * * *
(26) Petition for expungement and/or reexamination. For filing a
petition for expungement and/or reexamination under Sec. 2.91, per
class--$600.00
(27) Extension of time for filing a response to an Office action
under Sec. Sec. 2.62(a)(2), 2.141(a), 2.163(c), 2.165(c), 2.184(b)(2)
or 2.186(c).
(i) For filing a request for extension of time for filing a
response to an Office action under Sec. Sec. 2.62(a)(2), 2.141(a),
2.163(c), 2.165(c), 2.184(b)(2) or 2.186(c) on paper--$225.00.
(ii) For filing a request for extension of time for filing a
response to an Office action under Sec. Sec. 2.62(a)(2), 2.141(a),
2.163(c), 2.165(c), 2.184(b)(2) or 2.186(c) via TEAS--$125.00.
0
3. Amend Sec. 2.11 by revising paragraphs (d) and (f) to read as
follows:
Sec. 2.11 Requirement for representation.
* * * * *
(d) Failure to respond to requirements issued pursuant to
paragraphs (a) through (c) of this section is governed by Sec. Sec.
2.65, 2.93, 2.163, and 7.39, as appropriate.
* * * * *
(f) Notwithstanding Sec. Sec. 2.63(b)(2)(ii) and 2.93(c)(1), if an
Office action maintains only requirements under paragraphs (a), (b),
and/or (c) of this section, or only requirements under paragraphs (a),
(b), and/or (c) of this section and the requirement for a processing
fee under Sec. 2.22(c), the requirements may be reviewed only by
filing a petition to the Director under Sec. 2.146.
0
4. Amend Sec. 2.17 by:
0
a. Adding a new paragraph (b)(4), and
0
b. Revising paragraph (g).
The addition and revision read as follows:
Sec. 2.17 Recognition for representation.
* * * * *
(b) * * *
(4) False, fraudulent, or mistaken designation. Regardless of
paragraph (b)(1) of this section, where a practitioner has been
mistakenly, falsely, or fraudulently designated as a representative for
an applicant, registrant, or party to a proceeding without the
practitioner's prior authorization or knowledge, recognition of that
practitioner shall be ineffective.
* * * * *
(g) Duration of recognition. The USPTO considers recognition as to
an application or registration to continue until the applicant,
registrant, or party to a proceeding revokes authority pursuant to
Sec. 2.19(a)(1) or the representative withdraws from representation
under Sec. 2.19(b).
0
5. Amend Sec. 2.18 by revising paragraphs (a)(1) and (2) to read as
follows:
Sec. 2.18 Correspondence, with whom held.
(a) * * *
(1) If an attorney is not recognized as a representative pursuant
to Sec. 2.17(b)(1), 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,
except as set forth below. A request to change the correspondence
address does not revoke a power of attorney. The Office will not
correspond with another attorney from a different firm and, except for
service of a cancellation petition and notices of institution of
expungement or reexamination proceedings, will not correspond directly
with the applicant, registrant, or a party to a proceeding, unless:
(i) Recognition of the attorney has ended pursuant to Sec. 2.19;
or
(ii) The attorney has been suspended or excluded from practicing in
trademark matters before the USPTO.
* * * * *
0
6. Amend Sec. 2.19 by:
0
a. Revising paragraph (b), and
0
b. Adding paragraphs (c) and (d).
The revision and addition read as follows:
Sec. 2.19 Revocation or withdrawal of attorney.
* * * * *
(b) Withdrawal of attorney required. If the requirements of Sec.
11.116(a) of this chapter are met, a practitioner authorized to
represent an applicant, registrant, or party to a proceeding in a
trademark case must withdraw from representation before the USPTO by
filing a request to withdraw or, when applicable, a motion with the
Trademark Trial and Appeal Board as soon as practicable, but no longer
than 30 days after the condition necessitating withdrawal unless the
applicant, registrant, or party to a proceeding has already revoked the
practitioner's authority pursuant to paragraph (a) of this section. The
request or motion to withdraw must include the following:
(1) The application serial number, registration number, or
proceeding number;
(2) A statement of the reason(s) why withdrawal is required under
the rules; and
(3) A statement that the practitioner shall take steps reasonably
practicable under the circumstances to protect the client's interests.
(c) Withdrawal of attorney permitted. A practitioner may withdraw
from representation before the USPTO if the requirements of Sec.
11.116(b) of this chapter are met, upon application to and approval by
the Director or, when applicable, upon motion granted by the Trademark
Trial and Appeal Board. The
[[Page 26880]]
practitioner must file the request to withdraw as soon as practicable,
but no longer than 30 days after the practitioner notifies the client
of the termination of representation unless the applicant, registrant,
or party to a proceeding has already revoked the practitioner's
authority pursuant to paragraph (a) of this section. The request to
withdraw must include the following:
(1) The application serial number, registration number, or
proceeding number;
(2) A statement of the reason(s) for the request to withdraw; and
(3) Either:
(i) A statement that the practitioner has given notice to the
client that the practitioner is withdrawing from employment and will be
filing the necessary documents with the Office; that the client was
given notice of the withdrawal at least two months before the
expiration of any applicable deadline; that the practitioner has
delivered to the client all documents and property in the
practitioner's file to which the client is entitled; and that the
practitioner has notified the client of any pending or upcoming
submission deadlines; or
(ii) If more than one qualified practitioner is of record, a
statement that representation by another currently recognized attorney
is ongoing.
(d) Recognition ineffective. If recognition is not effective under
Sec. 2.17(b)(4), then revocation under paragraph (a) of this section
or withdrawal under paragraph (b) or (c) of this section is not
required.
0
7. Amend Sec. 2.23 by adding paragraph (d)(3), to read as follows:
Sec. 2.23 Requirement to correspond electronically with the Office
and duty to monitor status.
* * * * *
(d) * * *
(3) After notice of the institution of an expungement or
reexamination proceeding under Sec. 2.92, at least every two months
until the registrant receives a notice of termination under Sec. 2.94,
or, if no notice of institution was received, at least every six months
following the issue date of the registration.
Sec. 2.61 [Amended]
0
8. Amend Sec. 2.61 by removing paragraph (c).
0
9. Amend Sec. 2.62 by revising paragraphs (a) and (c) to read as
follows:
Sec. 2.62 Procedure for submitting response.
(a) Deadline. Each Office action shall set forth the deadline for
response.
(1) Response periods. Unless the applicant is notified otherwise in
an Office action, the response periods for an Office action are as
follows:
(i) Three months from the issue date, for an Office action in an
application under section 1 and/or section 44 of the Act; and
(ii) Six months from the issue date, for an Office action in an
application under section 66(a) of the Act.
(2) Extensions of time. Unless the applicant is notified otherwise
in an Office action, the time for response designated in paragraph
(a)(1)(i) of this section may be extended by three months up to a
maximum of six months from the Office action issue date, upon timely
request and payment of the fee set forth in Sec. 2.6(a)(27). To be
considered timely, a request for extension of time must be received by
the Office on or before the deadline for response set forth in the
Office action.
* * * * *
(c) Form. Responses and requests for extensions of time to respond
must be submitted through TEAS pursuant to Sec. 2.23. Responses and
requests for extensions of time to respond sent via email or facsimile
will not be accorded a date of receipt.
0
10. Amend Sec. 2.63 by revising paragraphs (b) introductory text,
(b)(1) and (2), and (c) and (d) to read as follows:
Sec. 2.63 Action after response.
* * * * *
(b) Final refusal or requirement. Upon review of a response, the
examining attorney may state that any refusal to register or
requirement is final.
(1) If the examining attorney issues a final action that maintains
any substantive refusal to register, the applicant may respond by
timely filing:
(i) A request for reconsideration under paragraph (b)(3) of this
section that seeks to overcome any substantive refusal to register, and
comply with any outstanding requirement, maintained in the final
action;
(ii) An appeal to the Trademark Trial and Appeal Board under
Sec. Sec. 2.141 and 2.142; or
(iii) A request for extension of time to respond or appeal under
Sec. 2.62(a)(2).
(2) If the examining attorney issues a final action that contains
no substantive refusals to register, but maintains any requirement, the
applicant may respond by timely filing:
(i) A request for reconsideration under paragraph (b)(3) of this
section that seeks to comply with any outstanding requirement
maintained in the final action;
(ii) An appeal of any requirement to the Trademark Trial and Appeal
Board under Sec. Sec. 2.141 and 2.142;
(iii) A petition to the Director under Sec. 2.146 to review any
requirement, if the subject matter of the requirement is procedural,
and therefore appropriate for petition; or
(iv) A request for extension of time to respond or appeal under
Sec. 2.62(a)(2).
* * * * *
(c) Denial of petition. A requirement that is the subject of a
petition decided by the Director may not subsequently be the subject of
an appeal to the Trademark Trial and Appeal Board. If a petition to the
Director under Sec. 2.146 is denied, the applicant will have the later
of:
(1) The time remaining in the response period set forth in the
Office action that repeated the requirement or made it final;
(2) The time remaining after the filing of a timely request for
extension of time to respond or appeal under Sec. 2.62(a)(2); or
(3) Thirty days from the date of the decision on the petition to
comply with the requirement.
(d) Amendment to allege use. If an applicant in an application
under section 1(b) of the Act files an amendment to allege use under
Sec. 2.76 during the response period after issuance of a final action,
the examining attorney will examine the amendment. The filing of such
an amendment does not stay or extend the time for filing an appeal or
petition.
0
11. Amend Sec. 2.65 by revising paragraph (a) to read as follows:
Sec. 2.65 Abandonment.
(a) An application will be abandoned if an applicant fails to
respond to an Office action, or to respond completely, within the
relevant time period for response under Sec. 2.62(a), including any
granted extension of time to respond under Sec. 2.62(a)(2). A timely
petition to the Director pursuant to Sec. Sec. 2.63(a) and (b) and
2.146 or notice of appeal to the Trademark Trial and Appeal Board
pursuant to Sec. 2.142, if appropriate, is a response that avoids
abandonment (see Sec. 2.63(b)(4)).
(1) If all refusals and/or requirements are expressly limited to
certain goods and/or services, the application will be abandoned only
as to those goods and/or services.
(2) When a timely response by the applicant is a bona fide attempt
to advance the examination of the application and is a substantially
complete response to the examining attorney's action, but consideration
of some matter or compliance with a requirement has been omitted, the
examining attorney may grant the applicant 30 days, or to the end of
the
[[Page 26881]]
response period set forth in the action to which the substantially
complete response was submitted, whichever is longer, to explain and
supply the omission before the examining attorney considers the
question of abandonment.
* * * * *
0
12. Amend Sec. 2.66 by revising paragraph (b) to read as follows:
Sec. 2.66 Revival of applications abandoned in full or in part due to
unintentional delay.
* * * * *
(b) Petition to Revive Application Abandoned in Full or in Part for
Failure to Respond to an Office Action. A petition to revive an
application abandoned in full or in part because the applicant did not
timely respond to an Office action must include:
(1) The petition fee required by Sec. 2.6(a)(15);
(2) A statement, signed by someone with firsthand knowledge of the
facts, that the delay in filing the response on or before the due date
was unintentional; and
(3) A response to the Office action, signed pursuant to Sec.
2.193(e)(2), or a statement that the applicant did not receive the
Office action or the notification that an Office action issued. If the
applicant asserts that the unintentional delay is based on non-receipt
of an Office action or notification, the applicant may not assert non-
receipt of the same Office action or notification in a subsequent
petition.
(4) If the Office action was subject to a three-month response
period under Sec. 2.62(a)(1), and the applicant does not assert non-
receipt of the Office action or notification, the petition must also
include the fee under Sec. 2.6(a)(27) for a request for extension of
time to respond under Sec. 2.62(a)(2).
(5) If the abandonment was after a final Office action, the
response is treated as a request for reconsideration under Sec.
2.63(b)(3), and the applicant must also file:
(i) A notice of appeal to the Trademark Trial and Appeal Board
under Sec. 2.141 or a petition to the Director under Sec. 2.146, if
permitted by Sec. 2.63(b)(2)(iii); or
(ii) A statement that no appeal or petition is being filed from any
final refusal or requirement.
* * * * *
0
13. Revise Sec. 2.67 to read as follows:
Sec. 2.67 Suspension of action by the Patent and Trademark Office.
Action by the Office may be suspended for a reasonable time for
good and sufficient cause. The fact that a proceeding is pending before
the Office or a court that is relevant to the issue of initial or
continued registrability of a mark and that proceeding has not been
finally determined, or the fact that the basis for registration is,
under the provisions of section 44(e) of the Act, registration of the
mark in a foreign country and the foreign application is still pending,
will be considered prima facie good and sufficient cause. An Office or
court proceeding is not considered finally determined until an order or
ruling that ends the proceeding or litigation has been rendered and
noticed, and the time for any appeal or other further review has
expired with no further review sought. An applicant's request for a
suspension of action under this section filed within the response
period set forth in Sec. 2.62(a) may be considered responsive to the
previous Office action. The Office may require the applicant,
registrant, or party to a proceeding to provide status updates and
information relevant to the ground(s) for suspension, upon request.
0
14. Revise the undesignated center heading that precedes Sec. 2.91
``CONCURRENT USE PROCEEDINGS'' to read as follows:
Ex Parte Expungement and Reexamination
0
15. Add Sec. 2.91 to read as follows:
Sec. 2.91 Petition for expungement or reexamination.
(a) Petition basis. Any person may file a petition requesting
institution of an ex parte proceeding to cancel a registration of a
mark, in whole or in part, on one of the following bases:
(1) Expungement, if the mark is registered under sections 1, 44, or
66 of the Act and has never been used in commerce on or in connection
with some or all of the goods and/or services recited in the
registration; or
(2) Reexamination, if the mark is registered under section 1 of the
Act and was not in use in commerce on or in connection with some or all
of the goods and/or services recited in the registration on or before
the relevant date, which for any particular goods and/or services, is
determined as follows:
(i) In an application for registration of a mark with an initial
filing basis of section 1(a) of the Act for the goods and/or services
listed in the petition, and not amended at any point to be filed
pursuant to section 1(b) of the Act, the relevant date is the filing
date of the application; or
(ii) In an application for registration of a mark with an initial
filing basis or amended basis of section 1(b) of the Act for the goods
and/or services listed in the petition, the relevant date is the later
of the filing date of an amendment to allege use identifying the goods
and/or services listed in the petition, pursuant to section 1(c) of the
Act, or the expiration of the deadline for filing a statement of use
for the goods and/or services listed in the petition, pursuant to
section 1(d), including all approved extensions thereof.
(b) Time for filing. The petition must be filed while the
registration is in force and:
(1) Where the petition requests institution of an expungement
proceeding under paragraph (a)(1) of this section, at any time
following the expiration of 3 years after the date of registration and,
for petitions made after December 27, 2023, before the expiration of 10
years following the date of registration; or
(2) Where the petition requests institution of a reexamination
proceeding under paragraph (a)(2) of this section, at any time not
later than 5 years after the date of registration.
(c) Requirements for complete submission. Only complete petitions
under this section will be considered by the Director under Sec. 2.92,
and, once complete, may not be amended by the petitioner. A complete
petition must be made in writing, timely filed through TEAS, and
include the following:
(1) The fee required by Sec. 2.6(a)(26);
(2) The U.S. trademark registration number of the registration
subject to the petition;
(3) The basis for petition under paragraph (a) of this section;
(4) The name, domicile address, and email address of the
petitioner;
(5) If the domicile of the petitioner is not located within the
United States or its territories, a designation of an attorney, as
defined in Sec. 11.1 of this chapter, who is qualified to practice
under Sec. 11.14 of this chapter;
(6) If the petitioner is, or must be, represented by an attorney,
as defined in Sec. 11.1 of this chapter, who is qualified to practice
under Sec. 11.14 of this chapter, the attorney's name, postal address,
email address, and bar information under Sec. 2.17(b)(3);
(7) Identification of each good and/or service recited in the
registration for which the petitioner requests that the proceeding be
instituted on the basis identified in the petition;
(8) A verified statement that sets forth in numbered paragraphs:
(i) The elements of the reasonable investigation of nonuse
conducted, as defined under paragraph (d) of this section, where for
each source of information relied upon, the statement
[[Page 26882]]
includes a description of how and when the searches were conducted and
what the searches disclosed; and
(ii) A concise factual statement of the relevant basis for the
petition, including any additional facts that support the allegation of
nonuse of the mark in commerce on or in connection with the goods and
services as specified in paragraph (a) of this section;
(9) A clear and legible copy of all documentary evidence supporting
a prima facie case of nonuse of the mark in commerce and an itemized
index of such evidence. Evidence that supports a prima facie case of
nonuse may also include, but is not limited to:
(i) Verified statements;
(ii) Excerpts from USPTO electronic records in applications or
registrations;
(iii) Screenshots from relevant web pages, including the URL and
access or print date;
(iv) Excerpts from press releases, news articles, journals,
magazines, or other publications, identifying the publication name and
date of publication; and
(v) Evidence suggesting that the verification accompanying a
relevant allegation of use in the registration was improperly signed.
(d) Reasonable investigation of nonuse. A petitioner must make a
bona fide attempt to determine if the registered mark was not in use in
commerce or never in use in commerce on or in connection with the goods
and/or services as specified in paragraph (a) of this section by
conducting a reasonable investigation.
(1) A reasonable investigation is an appropriately comprehensive
search, which may vary depending on the circumstances, but is
calculated to return information about the underlying inquiry from
reasonably accessible sources where evidence concerning use of the mark
during the relevant time period on or in connection with the relevant
goods and/or services would normally be found.
(2) Sources for a reasonable investigation may include, but are not
limited to:
(i) State and Federal trademark records;
(ii) Internet websites and other media likely to or believed to be
owned or controlled by the registrant;
(iii) Internet websites, other online media, and publications where
the relevant goods and/or services likely would be advertised or
offered for sale;
(iv) Print sources and web pages likely to contain reviews or
discussion of the relevant goods and/or services;
(v) Records of filings made with or of actions taken by any State
or Federal business registration or regulatory agency;
(vi) The registrant's marketplace activities, including, for
example, any attempts to contact the registrant or purchase the
relevant goods and/or services;
(vii) Records of litigation or administrative proceedings
reasonably likely to contain evidence bearing on the registrant's use
or nonuse of the registered mark; and
(viii) Any other reasonably accessible source with information
establishing nonuse of the mark as specified in paragraph (a) of this
section.
(3) A petitioner need not check all possible appropriate sources
for its investigation to be considered reasonable.
(e) Director's authority. The authority to act on petitions made
under this section is reserved to the Director, and may be delegated.
(f) Oral hearings. An oral hearing will not be held on a petition
except when considered necessary by the Director.
(g) No stay. The mere filing of a petition for expungement or
reexamination by itself will not act as a stay in any appeal or inter
partes proceeding that is pending before the Trademark Trial and Appeal
Board, nor will it stay the period for replying to an Office action in
any pending application or registration.
0
16. Add Sec. 2.92 to read as follows:
Sec. 2.92 Institution of ex parte expungement and reexamination
proceedings.
Notwithstanding section 7(b) of the Act, the Director may, upon a
determination that information and evidence supports a prima facie
case, institute a proceeding for expungement or reexamination of a
registration of a mark, either upon petition or upon the Director's
initiative. Information that supports a prima facie case of nonuse with
the goods and/or services at issue shall be based upon all information
and evidence available to the Office. The electronic record of the
registration for which a proceeding has been instituted forms part of
the record of the proceeding without any action by the Office, a
petitioner, or a registrant.
(a) Institution upon petition. For each good and/or service
identified in a complete petition under Sec. 2.91, the Director will
determine if the petition sets forth a prima facie case of nonuse to
support the petition basis and, if so, will institute an ex parte
expungement or reexamination proceeding.
(b) Institution upon the Director's initiative. The Director may
institute an ex parte expungement or reexamination proceeding on the
Director's own initiative, within the time periods set forth in Sec.
2.91(b), and for the reasons set forth in Sec. 2.91(a), based on
information that supports a prima facie case for expungement or
reexamination of a registration for some or all of the goods or
services identified in the registration.
(c) Director's authority. (1) Any determination by the Director
whether to institute an expungement or reexamination proceeding shall
be final and non-reviewable.
(2) The Director may institute an expungement and/or reexamination
proceeding for fewer than all of the goods and/or services identified
in a petition under Sec. 2.91. The identification of particular goods
and/or services in a petition does not limit the Director from
instituting a proceeding that includes additional goods and/or services
identified in the subject registration on the Director's own
initiative, under paragraph (b) of this section.
(d) Estoppel. (1) Upon termination of an expungement proceeding
under Sec. 2.93(c)(3), including after any appeal, where it has been
determined that the registered mark was used in commerce on or in
connection with any of the goods and/or services at issue in the
proceedings prior to the date a petition to expunge was filed under
Sec. 2.91 or the Director-initiated proceedings under Sec. 2.92, no
further expungement proceedings may be instituted as to those
particular goods and/or services.
(2) Upon termination of a reexamination proceeding under Sec.
2.93(c)(3), including any appeal, where it is has been determined that
the registered mark was used in commerce on or in connection with any
of the goods and/or services at issue, on or before the relevant date
established in the proceedings, no further expungement or reexamination
proceedings may be instituted as to those particular goods and/or
services.
(3) With respect to a particular registration, once an expungement
proceeding has been instituted and is pending, no later expungement
proceeding may be instituted with respect to the same goods and/or
services at issue in the pending proceeding.
(4) With respect to a particular registration, while a
reexamination proceeding is pending, no later expungement or
reexamination proceeding may be instituted with respect to the same
goods and/or services at issue in the pending proceeding.
(e) Consolidated proceedings.
(1) The Director may consolidate expungement and reexamination
proceedings involving the same
[[Page 26883]]
registration. Consolidated proceedings will be considered related
parallel proceedings.
(2) If two or more petitions under Sec. 2.91 are directed to the
same registration and are pending concurrently, or the Director wishes
to institute an ex parte expungement or reexamination proceeding on the
Director's own initiative under paragraph (b) of this section
concerning a registration for which one or more petitions under Sec.
2.91 are pending, the Director may elect to institute a single
proceeding.
(3) Unless barred under paragraph (d) of this section, if any
expungement or reexamination proceeding is instituted while a prior
expungement or reexamination proceeding directed to the same
registration is pending, the Director may consolidate the proceedings.
(f) Notice of Director's determination whether to institute
proceedings. (1) In a determination based on a petition under Sec.
2.91, if the Director determines that no prima facie case of nonuse has
been made and thus no proceeding will be instituted, notice of this
determination will be provided to the registrant and petitioner, and
will include the means to access the petition and supporting documents
and evidence.
(2) If the Director determines that a proceeding should be
instituted based on a prima facie case of nonuse of a registered mark
as to any goods and/or services recited in the registration, or
consolidates proceedings under paragraph (e) of this section, the
Director's determination and notice of the institution of the
proceeding will be set forth in an Office action under Sec. 2.93(a).
If a proceeding is instituted based in whole or in part on a petition
under Sec. 2.91, the Office action will include the means to access
any petition and the supporting documents and evidence supporting a
prima facie case that formed the basis for the Director's
determination. Notice of the Director's determination will also be
provided to the petitioner.
(g) Other mark types. (1) Registrations subject to expungement and
reexamination proceedings include collective trademarks, collective
service marks, and certification marks.
(2) The use that is the subject of the inquiry in expungement and
reexamination proceedings for these mark types is defined in Sec.
2.2(k)(2) for collective trademarks and collective service marks, and
Sec. 2.2(k)(4) for certification marks.
0
17. Add Sec. 2.93 to read as follows:
Sec. 2.93 Expungement and reexamination procedures.
(a) Office action. An Office action issued to a registrant pursuant
to Sec. 2.92 (f)(2) will require the registrant to provide such
evidence of use, information, exhibits, affidavits, or declarations as
may be reasonably necessary to rebut the prima facie case of nonuse by
establishing that the required use in commerce has been made on or in
connection with the goods and/or services at issue as of the date
relevant to the proceeding. The Office action may also include
requirements under Sec. Sec. 2.11, 2.23, and 2.189, as appropriate.
(b) Response--(1) Deadline. The registrant's response to an Office
action must be received by the Office within two months from the issue
date. If the registrant fails to timely respond to a non-final Office
action, the proceeding will terminate, and the registration will be
cancelled as to the relevant goods and/or services.
(2) Signature. The response must be signed by the registrant,
someone with legal authority to bind the 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 requirements of Sec. 2.193(e)(2).
(3) Form. Responses must be submitted through TEAS. Responses sent
via email or facsimile will not be accorded a date of receipt.
(4) Response in an expungement proceeding. In an expungement
proceeding, an acceptable response consists of one or more of the
following:
(i) Evidence of use, in accordance with paragraph (b)(6) of this
section, establishing that use of the mark in commerce occurred on or
in connection with the goods and/or services at issue either before the
filing date of the relevant granted petition to expunge under Sec.
2.91(a)(1) or before the date the proceeding was instituted by the
Director under Sec. 2.92(b), as appropriate;
(ii) Verified statements and supporting evidence to establish that
any nonuse as to particular goods and/or services with a sole basis
under section 44(e) or section 66(a) of the Act is due to special
circumstances that excuse such nonuse; and/or
(iii) Deletion of some or all of the goods and/or services at issue
in the proceeding, if appropriate, subject to the provisions of
paragraph (d) of this section.
(5) Response in a reexamination proceeding. In a reexamination
proceeding, an acceptable response consists of one or more of the
following:
(i) Evidence of use, in accordance with paragraph (b)(6) of this
section, establishing that use of the mark in commerce occurred on or
in connection with each particular good and/or service at issue, on or
before the relevant date set forth in Sec. 2.91(a)(2); and/or
(ii) Deletion of some or all of the goods and/or services at issue
in the proceeding, if appropriate, subject to the provisions of
paragraph (d) of this section.
(6) Evidence of use. Evidence of use of the mark in commerce on or
in connection with any particular good and/or service must be
consistent with the definition of ``use in commerce'' set forth in
section 45 of the Act and is not limited in form to that of specimens
under Sec. 2.56. Any evidence of use must be accompanied by a verified
statement setting forth in numbered paragraphs factual information
about the use of the mark in commerce and the supporting evidence,
including how the evidence demonstrates use of the mark in commerce as
of any relevant date for the goods and/or services at issue. Evidence
must be labeled, and an itemized index of the evidence must be provided
such that the particular goods and/or services supported by each item
submitted as evidence of use is clear.
(c) Action after response. After response by the registrant, the
Office will review the registrant's evidence of use or showing of
applicable excusable nonuse, and/or arguments, and determine compliance
with any requirement.
(1) Final Office action. If the registrant's timely response fails
to rebut the prima facie case of nonuse or fully comply with all
outstanding requirements, a final Office action will issue that
addresses the evidence, includes the examiner's decision, and maintains
any outstanding requirement. After issuance of a final Office action,
the registrant may respond by timely filing:
(i) A request for reconsideration of the final Office action that
seeks to further address the issue of use of the mark in commerce and/
or comply with any outstanding requirement maintained in the final
action; or
(ii) An appeal to the Trademark Trial and Appeal Board under Sec.
2.143.
(2) Time for filing a request for reconsideration or petition to
the Director. (i) A request for reconsideration must be filed prior to
the expiration of time provided for an appeal in Sec. 2.143. Filing a
request for reconsideration does not stay or extend the time for filing
an appeal or a petition under paragraph (c)(2)(iv) of this section.
[[Page 26884]]
(ii) Prior to the expiration of time for filing an appeal to the
Trademark Trial and Appeal Board under Sec. 2.143, a registrant may
file a petition to the Director under Sec. 2.146 for relief from any
outstanding requirement under Sec. Sec. 2.11, 2.23, and 2.189 made
final. If the petition is denied, the registrant will have 2 months
from the date of issuance of the final action that contained the final
requirement, or 30 days from the date of the decision on the petition,
whichever date is later, to comply with the requirement. A requirement
that is the subject of a petition decided by the Director may not
subsequently be the subject of an appeal to the Trademark Trial and
Appeal Board.
(3) Termination of proceeding. (i) If, upon review of any timely
response, the Office finds that the registrant has rebutted the prima
facie case of nonuse and complied with all outstanding requirements,
the proceeding will terminate and a notice of termination shall be
issued under Sec. 2.94.
(ii) If, after issuance of the final action, the registrant fails
to timely comply with any outstanding requirement, or the Office finds
that the registrant has failed to rebut the prima facie case of nonuse
of the mark on or in connection with any of the goods and/or services
at issue in the proceeding, the proceeding will terminate, and a notice
of termination shall be issued under Sec. 2.94 after the time for
appeal has expired or any appeal proceeding has terminated, pursuant to
Sec. Sec. 2.143-2.145.
(d) Deletion of goods and/or services. The registrant may respond
to an Office action under this section by requesting that some or all
of the goods and/or services at issue in the proceeding be deleted from
the registration. No other amendment to the identification of goods or
services in a registration will be permitted in a response.
(1) An acceptable deletion requested in a response under this
section shall be immediate in effect, and reinsertion of goods and/or
services or further amendments that would add to or expand the scope of
the goods and/or services shall not be permitted. Deletion of goods
and/or services in an expungement or reexamination proceeding after the
submission and prior to the acceptance of an affidavit or declaration
under section 8 or 71 of the Act will result in a fee under Sec. 2.161
(c) or Sec. 7.37(c).
(2) A submission other than one made under this section, including
a request to surrender the subject registration for cancellation under
Sec. 2.172 or a request to amend the registration under Sec. 2.173,
filed after the issuance of an Office action under this section, does
not constitute a sufficient response to an Office action under this
section. The registrant must notify the Office of such submission in a
timely response.
(3) Deletion of goods and/or services at issue in a pending
proceeding in a response, a surrender for cancellation under Sec.
2.172, an amendment of the registration under Sec. 2.173, or any other
accepted submission, shall render the proceeding moot as to those goods
and/or services, and no further determination will be made regarding
the registrant's use of the mark in commerce as to those goods and/or
services.
0
18. Add Sec. 2.94 to read as follows:
Sec. 2.94 Action after expungement or reexamination.
Upon termination of an expungement or reexamination proceeding, the
Office shall issue a notice of termination that memorializes the final
disposition of the proceeding as to each of the goods and/or services
at issue in the proceeding. Where appropriate, the registration will be
cancelled, in whole or in part, based on the final disposition of the
proceeding.
0
19. Add an undesignated center heading that precedes Sec. 2.99 to read
as follows:
Concurrent Use Proceedings
0
20. Revise the undesignated center heading that precedes Sec. 2.111
``CANCELLATION'' to read as follows:
Cancellation Proceedings Before the Trademark Trial and Appeal Board
0
21. Amend Sec. 2.111 by revising paragraph (b) to read as follows:
Sec. 2.111 Filing petition for cancellation.
* * * * *
(b) Any person who believes that he, she, or it is or will be
damaged by a registration may file a petition, addressed to the
Trademark Trial and Appeal Board, for cancellation of the registration
in whole or in part. The petition for cancellation need not be
verified, but must be signed by the petitioner or the petitioner's
attorney, as specified in Sec. 11.1 of this chapter, or other
authorized representative, as specified in Sec. 11.14(b) of this
chapter. Electronic signatures pursuant to Sec. 2.193(c) are required
for petitions submitted electronically via ESTTA. The petition for
cancellation may be filed at any time in the case of registrations on
the Supplemental Register or under the Act of 1920, or registrations
under the Act of 1881 or the Act of 1905, which have not been published
under section 12(c) of the Act, on any ground specified in section
14(3) or section 14(5) of the Act, or at any time after the three-year
period following the date of registration on the ground specified in
section 14(6) of the Act. In all other cases, including nonuse claims
not specified in section 14(6), the petition for cancellation and the
required fee must be filed within five years from the date of
registration of the mark under the Act or from the date of publication
under section 12(c) of the Act.
* * * * *
0
22. Amend Sec. 2.117 by revising paragraph (a) to read as follows:
Sec. 2.117 Suspension of proceedings.
(a) Whenever it shall come to the attention of the Trademark Trial
and Appeal Board that a civil action, another Board proceeding, or an
expungement or reexamination proceeding may have a bearing on a pending
case, proceedings before the Board may be suspended until termination
of the civil action, the other Board proceeding, or the expungement or
reexamination proceeding. A civil action or proceeding is not
considered to have been terminated until an order or ruling that ends
litigation has been rendered and noticed and the time for any appeal or
other further review has expired with no further review sought.
* * * * *
0
23. Revise Sec. 2.141 to read as follows:
Sec. 2.141 Ex parte appeals from refusal to register by action of
trademark examining attorney.
(a) An applicant may, upon final refusal to register by the
trademark examining attorney, appeal to the Trademark Trial and Appeal
Board upon payment of the prescribed fee for each class in the
application for which an appeal is taken, within the time provided in
Sec. 2.62(a), including any granted extension of time to respond or
appeal under Sec. 2.62(a)(2). A second refusal to register on the same
grounds may be considered as final by the applicant for purpose of
appeal.
(b) The applicant must pay an appeal fee for each class from which
the appeal is taken. If the applicant does not pay an appeal fee for at
least one class of goods or services before expiration of the filing
period, the application will be abandoned. In a multiple-class
application, if an appeal fee is submitted for fewer than all classes,
the applicant must specify the class(es) in which the appeal is taken.
If the applicant timely submits a fee sufficient to pay for an appeal
in at least one class, but insufficient to cover all the classes, and
the applicant has not specified the
[[Page 26885]]
class(es) to which the fee applies, the Board will issue a written
notice setting a time limit in which the applicant may either pay the
additional fees or specify the class(es) being appealed. If the
applicant does not submit the required fee or specify the class(es)
being appealed within the set time period, the Board will apply the
fee(s) to the class(es) in ascending order, beginning with the lowest
numbered class containing goods and/or services at issue in the appeal.
0
24. Amend Sec. 2.142 by revising paragraphs (a), (b)(3), and (d) to
read as follows:
Sec. 2.142 Time and manner of ex parte appeals.
(a) Any appeal filed under the provisions of Sec. 2.141 must be
filed within the time provided in Sec. 2.62(a), including any granted
extension of time to respond or appeal under Sec. 2.62(a)(2). An
appeal is taken by filing a notice of appeal, as prescribed in Sec.
2.126, and paying the appeal fee.
(b) * * *
(3) Citation to evidence in briefs should be to the documents in
the electronic record for the subject application or registration by
date, the name of the paper under which the evidence was submitted, and
the page number in the electronic record.
* * * * *
(d) The evidentiary record in the proceeding should be complete
prior to the filing of an appeal. Evidence should not be filed with the
Board after the filing of a notice of appeal.
(1) In an appeal from a refusal to register, if the appellant or
the examining attorney desires to introduce additional evidence after
an appeal is filed, the appellant or the examining attorney must submit
a request to the Board to suspend the appeal and to remand the
application for further examination.
(2) In an appeal from an expungement or reexamination proceeding,
no additional evidence may be included once an appeal is initiated, and
the Board may not remand for further examination.
* * * * *
0
25. Add Sec. 2.143 to read as follows:
Sec. 2.143 Ex parte appeals from expungement or reexamination
proceeding.
(a) A registrant may, upon issuance of a final Office action in an
expungement or reexamination proceeding under Sec. 2.93, appeal to the
Trademark Trial and Appeal Board by filing a notice of appeal, as
prescribed in Sec. 2.126, and upon payment of the prescribed fee for
each class in the registration for which the appeal is taken, within
two months of the date of issuance of the final Office action. If the
registrant does not pay an appeal fee for at least one class of goods
or services before expiration of the time for appeal, the Office shall
terminate the appeal proceeding. In a multiple-class registration, if
an appeal fee is submitted for fewer than all classes, the registrant
must specify the class(es) in which the appeal is taken. If the
registrant timely submits a fee sufficient to pay for an appeal in at
least one class, but insufficient to cover all the classes, and the
registrant has not specified the class(es) to which the fee applies,
the Board will issue a written notice setting a time limit in which the
registrant may either pay the additional fees or specify the class(es)
being appealed. If the registrant does not submit the required fee or
specify the class(es) being appealed within the set time period, the
Board will apply the fee to the class(es) in ascending order, beginning
with the lowest numbered class containing goods and/or services at
issue in the reexamination and/or expungement proceeding.
(b) The time and manner of ex parte appeals made under paragraph
(a) of this section shall, in all other respects, follow the time and
manner set forth in Sec. 2.142 (b)-(e).
0
26. Amend Sec. 2.145 by revising paragraphs (a)(1) and (c)(1) to read
as follows:
Sec. 2.145 Appeal to court and civil action.
(a) * * * (1) An applicant for registration, a registrant in an
expungement or reexamination proceeding, or any party to an
interference, opposition, or cancellation, or any party to an
application to register as a concurrent user, hereinafter referred to
as inter partes proceedings, who is dissatisfied with the decision of
the Trademark Trial and Appeal Board, and any registrant who has filed
an affidavit or declaration under section 8 or section 71 of the Act or
filed an application for renewal, and is dissatisfied with the decision
of the Director (Sec. Sec. 2.165, 2.184), may appeal to the United
States Court of Appeals for the Federal Circuit. It is unnecessary to
request reconsideration by the Board before filing any such appeal;
however, a party requesting reconsideration must do so before filing a
notice of appeal.
* * * * *
(c) * * * (1) Any person who may appeal to the United States Court
of Appeals for the Federal Circuit (paragraph (a) of this section),
except for a registrant subject to an ex parte expungement or
reexamination proceeding, may have remedy by civil action under section
21(b) of the Act. It is unnecessary to request reconsideration by the
Board before filing any such civil action; however, a party requesting
reconsideration must do so before filing a civil action.
* * * * *
0
27. Amend Sec. 2.146 by:
0
a. Revising paragraphs (b) and (c), and
0
b. Adding paragraph (d)(2)(iv).
The revision and addition read as follows:
Sec. 2.146 Petitions to the Director.
* * * * *
(b) Questions of substance arising during the ex parte prosecution
of applications, or expungement or reexamination of registrations,
including, but not limited to, questions arising under sections 2, 3,
4, 5, 6, 16A, 16B, and 23 of the Act of 1946, are not appropriate
subject matter for petitions to the Director.
(c)(1) Every petition to the Director shall include a statement of
the facts relevant to the petition, the points to be reviewed, the
action or relief requested, and the fee required by Sec. 2.6. Any
brief in support of the petition shall be embodied in or accompany the
petition. The petition 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
requirements of Sec. 2.193(e)(5). When facts are to be proved on
petition, the petitioner must submit proof in the form of verified
statements signed by someone with firsthand knowledge of the facts to
be proved, and any exhibits.
(2) A petition requesting reinstatement of a registration cancelled
in whole or in part for failure to timely respond to an Office action
issued in an expungement and/or reexamination proceeding must include a
response to the Office action, signed in accordance with Sec. 2.193.
(d) * * *
(2) * * *
(iv) Where an expungement or reexamination proceeding has been
instituted under Sec. 2.92, two months after the date of actual
knowledge of the cancellation of goods and/or services in a
registration and not later than six months after the date the trademark
electronic record system indicates that the goods and/or services are
cancelled.
0
28. Amend Sec. 2.149 by revising paragraphs (a) and (i) to read as
follows:
Sec. 2.149 Letters of protest against pending applications.
(a) A third party may submit, for consideration and inclusion in
the
[[Page 26886]]
record of a trademark application, objective evidence relevant to the
examination of the application for a ground for refusal of registration
if the submission is made in accordance with this section.
* * * * *
(i) Any determination whether to include evidence in the record of
an application in a submission under this section is final and non-
reviewable, and a determination to include or not include evidence in
the application record shall not prejudice any party's right to raise
any issue and rely on any evidence in any other proceeding.
* * * * *
0
29. Amend Sec. 2.163 by:
0
a. Revising paragraphs (b) and (c), and
0
b. Adding paragraphs (d) and (e).
The revisions and additions read as follows:
Sec. 2.163 Acknowledgment of receipt of affidavit or declaration.
* * * * *
(b) A response to the refusal must be filed within three months of
the date of issuance of the Office action, or before the end of the
filing period set forth in section 8(a) of the Act, whichever is later.
The response must be signed by the owner, someone with legal authority
to bind the owner (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) Unless notified otherwise in the Office action, the three-month
response period designated in paragraph (b) of this section may be
extended by three months up to a maximum of six months from the Office
action issue date, upon timely request and payment of the fee set forth
in Sec. 2.6(a)(27). To be considered timely, a request for extension
of time must be received by the Office on or before the deadline for
response set forth in the Office action.
(d) When a timely response is a bona fide attempt to advance the
examination of the affidavit or declaration and is a substantially
complete response to the outstanding Office action, but consideration
of some matter or compliance with a requirement has been omitted, the
owner may be granted 30 days, or to the end of the response period set
forth in the action to which the substantially complete response was
submitted, whichever is longer, to explain and supply the omission
before the cancellation is considered.
(e) If no response is filed within the time periods set forth
above, the registration will be cancelled, unless time remains in the
grace period under section 8(a)(3) of the Act. If time remains in the
grace period, the owner may file a complete new affidavit.
0
30. Revise Sec. 2.165 to read as follows:
Sec. 2.165 Petition to Director to review refusal.
(a) A response to the examiner's initial refusal to accept an
affidavit or declaration is required before filing a petition to the
Director, unless the examiner directs otherwise. See Sec. 2.163(b)-(c)
for the deadline for responding to an examiner's Office action.
(b) If the examiner maintains the refusal of the affidavit or
declaration, the owner may file a petition to the Director to review
the action. The petition must be filed within three months of the date
of issuance of the action maintaining the refusal.
(c) Unless notified otherwise in the Office action, the time for
response designated in paragraph (b) of this section may be extended by
three months up to a maximum of six months from the Office action issue
date, upon timely request and payment of the fee set forth in Sec.
2.6(a)(27). To be considered timely, a request for extension of time
must be received by the Office on or before the deadline for response
set forth in the Office action.
(d) If no response is filed within the time periods set forth
above, the registration will be cancelled and a notice of cancellation
will issue.
(e) A decision by the Director is necessary before filing an appeal
or commencing a civil action in any court.
0
31. Add an undesignated center heading before Sec. 2.177 to read as
follows:
Court Orders Under Section 37
0
32. Add Sec. 2.177 to read as follows:
Sec. 2.177 Action on court order under section 37.
(a) Providing the order to the Office. If a Federal court has
issued an order concerning a registration under section 37 of the Act,
a party to the court action must:
(i) Submit a certified copy of the order to the Director, addressed
to the Office of the General Counsel, as provided in Sec. 104.2 of
this chapter; and
(ii) If the party is aware of proceedings concerning the involved
registration that are pending or suspended before the Trademark Trial
and Appeal Board, file a copy of such order with the Trademark Trial
and Appeal Board via ESTTA.
(b) Time for submission. A submission under paragraph (a) of this
section should not be made until after the court proceeding has been
finally determined. A court proceeding is not considered finally
determined until an order or ruling that ends the litigation has been
rendered and noticed, and the time for any appeal or other further
review has expired with no further review sought.
(c) Action after submission. After the court proceeding has been
finally determined, appropriate action on a court order submitted under
this section will normally be taken by the Office without the necessity
of any submission by an interested party. In circumstances where the
Director or the Trademark Trial and Appeal Board, if the order under
section 37 involves a registration over which the Board has
jurisdiction, determines that it would be helpful to aid in
understanding the scope or effect of the court's order, a show cause or
other order may issue directing the registrant, and if appropriate, the
opposing parties to the action from which the order arose, to respond
and provide information or arguments regarding the order. The Director
may also request clarification of the order from the court that issued
the order.
0
33. Amend Sec. 2.184 by revising paragraph (b) to read as follows:
Sec. 2.184 Refusal of renewal.
* * * * *
(b)(1) The registrant must file a response to the refusal of
renewal within three months of the date of issuance of the Office
action or before the expiration date of the registration, whichever is
later.
(2) Unless notified otherwise in the Office action, the three-month
response period designated in paragraph (b)(1) of this section may be
extended by three months up to a maximum of six months from the Office
action issue date, upon timely request and payment of the fee set forth
in Sec. 2.6(a)(27). To be considered timely, a request for extension
of time must be received by the Office on or before the deadline for
response set forth in the Office action.
(3) When a timely response is a bona fide attempt to advance the
examination of the renewal application and is a substantially complete
response to the outstanding Office action, but consideration of some
matter or compliance with a requirement has been omitted, the owner may
be granted 30 days, or to the end of the response period set forth in
the action to which the substantially complete response was submitted,
whichever is longer, to explain and supply the omission before the
expiration is considered.
(4) If no response is filed within the time periods set forth
above, the
[[Page 26887]]
registration will expire, unless time remains in the grace period under
section 9(a) of the Act. If time remains in the grace period, the
registrant may file a complete new renewal application.
(5) The response must be signed by the registrant, someone with
legal authority to bind the registrant (e.g., a corporate officer or
general partner of a partnership), or a practitioner who meets the
requirements of Sec. 11.14 of this chapter, in accordance with the
requirements of Sec. 2.193(e)(2).
* * * * *
0
34. Amend Sec. 2.186 by:
0
a. Revising paragraphs (b) and (c), and
0
b. Adding paragraphs (d) and (e).
The revisions and additions read as follows:
Sec. 2.186 Petition to Director to review refusal of renewal.
* * * * *
(b) If the examiner maintains the refusal of the renewal
application, a petition to the Director to review the refusal may be
filed. The petition must be filed within three months of the date of
issuance of the Office action maintaining the refusal.
(c) Unless notified otherwise in the Office action, the three-month
response period designated in paragraph (b) of this section may be
extended by three months up to a maximum of six months from the Office
action issue date, upon timely request and payment of the fee set forth
in Sec. 2.6(a)(27). To be considered timely, a request for extension
of time must be received by the Office on or before the deadline for
response set forth in the Office action.
(d) If no response is filed within the time periods set forth
above, the renewal application will be abandoned and the registration
will expire.
(e) A decision by the Director is necessary before filing an appeal
or commencing a civil action in any court.
0
35. Amend Sec. 2.193 by revising paragraph (e)(5) introductory text to
read as follows:
Sec. 2.193 Trademark correspondence and signature requirements.
* * * * *
(e) * * *
(5) Petitions to Director under Sec. 2.146 or Sec. 2.147 or for
expungement or reexamination under Sec. 2.91. A petition to the
Director under Sec. 2.146 or Sec. 2.147 or for expungement or
reexamination under Sec. 2.91 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:
* * * * *
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
0
36. The authority citation for part 7 is revised to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, Pub. L. 116-260, 134
Stat. 1182, unless otherwise noted.
0
37. Amend Sec. 7.6 by adding paragraph (a)(9) to read as follows:
Sec. 7.6 Schedule of U.S. process fees.
(a) * * *
(9) Extension of time for filing a response to an Office action
under Sec. Sec. 7.39(b) or 7.40(c).
(i) For filing a request for extension of time for filing a
response to an Office action under Sec. Sec. 7.39(b) or 7.40(c) on
paper--$225.00.
(ii) For filing a request for extension of time for filing a
response to an Office action under Sec. Sec. 7.39(b) or 7.40(c) via
TEAS--$125.00.
* * * * *
0
38. Revise Sec. 7.39 to read as follows:
Sec. 7.39 Acknowledgment of receipt of and correcting deficiencies in
affidavit or declaration of use in commerce or excusable nonuse.
The Office will issue a notice as to whether an affidavit or
declaration is acceptable, or the reasons for refusal.
(a) A response to the refusal must be filed within three months of
the date of issuance of the Office action, or before the end of the
filing period set forth in section 71(a) of the Act, whichever is
later. The response must be signed by the holder, someone with legal
authority to bind the holder (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).
(b) Unless notified otherwise in the Office action, the three-month
response period designated in paragraph (a) of this section may be
extended by three months up to a maximum of six months from the Office
action issue date, upon timely request and payment of the fee set forth
in Sec. 7.6(a)(9). To be considered timely, a request for extension of
time must be received by the Office on or before the deadline for
response set forth in the Office action.
(c) When a timely response is a bona fide attempt to advance the
examination of the affidavit or declaration and is a substantially
complete response to the outstanding Office action, but consideration
of some matter or compliance with a requirement has been omitted, the
holder may be granted 30 days, or to the end of the response period set
forth in the action to which the substantially complete response was
submitted, whichever is longer, to explain and supply the omission
before the cancellation is considered.
(d) If no response is filed within this time period, the extension
of protection will be cancelled, unless time remains in the grace
period under section 71(a)(3) of the Act. If time remains in the grace
period, the holder may file a complete, new affidavit.
(e) If the affidavit or declaration is filed within the time
periods set forth in section 71 of the Act, deficiencies may be
corrected after notification from the Office, as follows:
(1) Correcting deficiencies in affidavits or declarations timely
filed within the periods set forth in sections 71(a)(1) and 71(a)(2) of
the Act. If the affidavit or declaration is timely filed within the
relevant filing period set forth in section 71(a)(1) or section
71(a)(2) of the Act, deficiencies may be corrected before the end of
this filing period without paying a deficiency surcharge. Deficiencies
may be corrected after the end of this filing period with payment of
the deficiency surcharge required by section 71(c) of the Act and Sec.
7.6.
(2) Correcting deficiencies in affidavits or declarations filed
during the grace period. If the affidavit or declaration is filed
during the six-month grace period provided by section 71(a)(3) of the
Act, deficiencies may be corrected before the expiration of the grace
period without paying a deficiency surcharge. Deficiencies may be
corrected after the expiration of the grace period with payment of the
deficiency surcharge required by section 71(c) of the Act and Sec.
7.6.
(f) If the affidavit or declaration is not filed within the time
periods set forth in section 71 of the Act, the registration will be
cancelled.
0
39. Revise Sec. 7.40 to read as follows:
Sec. 7.40 Petition to Director to review refusal.
(a) A response to the examiner's initial refusal to accept an
affidavit or declaration is required before filing a petition to the
Director, unless the examiner directs otherwise. See Sec. 7.39(b)-(c)
for the deadline for responding to an examiner's Office action.
[[Page 26888]]
(b) If the examiner maintains the refusal of the affidavit or
declaration, the holder may file a petition to the Director to review
the examiner's action. The petition must be filed within three months
of the date of issuance of the action maintaining the refusal.
(c) Unless notified otherwise in the Office action, the three-month
response period designated in paragraph (b) of this section may be
extended by three months up to a maximum of six months from the Office
action issue date, upon timely request and payment of the fee set forth
in Sec. 7.6(a)(9). To be considered timely, a request for extension of
time must be received by the Office on or before the deadline for
response set forth in the Office action.
(d) If no response is filed within the time periods set forth
above, the registration will be cancelled.
(e) A decision by the Director is necessary before filing an appeal
or commencing a civil action in any court.
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. 2021-10116 Filed 5-17-21; 8:45 am]
BILLING CODE 3510-16-P
