Changes to the Trademark Rules of Practice To Mandate Electronic Filing

CourtPatent And Trademark Office
Citation84 FR 69330
Published date18 December 2019
SectionRules and Regulations
Record Number2019-27426
Federal Register, Volume 84 Issue 243 (Wednesday, December 18, 2019)
[Federal Register Volume 84, Number 243 (Wednesday, December 18, 2019)]
                [Rules and Regulations]
                [Pages 69330-69331]
                From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
                [FR Doc No: 2019-27426]
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                DEPARTMENT OF COMMERCE
                Patent and Trademark Office
                37 CFR Parts 2 and 7
                [Docket No. PTO-T-2017-0004]
                RIN 0651-AD15
                Changes to the Trademark Rules of Practice To Mandate Electronic
                Filing
                AGENCY: Patent and Trademark Office, Commerce.
                ACTION: Final rule; delay of effective date.
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                SUMMARY: On July 31, 2019, the United States Patent and Trademark
                Office published in the Federal Register a final rule amending the
                regulations to mandate electronic filing of trademark applications and
                all submissions associated with trademark applications and
                registrations, and to require the designation of an email address for
                receiving USPTO correspondence, with limited exceptions. That final
                rule had an effective date of October 5, 2019, which was subsequently
                delayed until December 21, 2019. A correction to the July 31, 2019 rule
                was published on December 13, 2019 and is also effective on December
                21, 2019. This action further delays the effective date of the both the
                July 31, 2019 final rule, and the December 13, 2019 correction, until
                February 15, 2020.
                DATES: The effective date of the final rule published on July 31, 2019
                (84 FR 37081), delayed on October 2, 2019 (84 FR 52363), is further
                delayed from December 21, 2019 to February 15, 2020. The correction
                published on December 13, 2019 (84 FR 68045), is delayed from December
                21, 2019 to February 15, 2020.
                FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy
                Commissioner for Trademark Examination Policy, [email protected],
                (571) 272-8946.
                SUPPLEMENTARY INFORMATION: On July 31, 2019, the United States Patent
                and Trademark Office (USPTO) published in the Federal Register (84 FR
                37081, July 31, 2019) a final rule amending the regulations to mandate
                electronic filing of trademark applications and all submissions
                associated with trademark applications and registrations, and to
                require the designation of an email address for receiving USPTO
                correspondence, with limited exceptions. The effective date of the July
                31, 2019 rule was delayed from October 5, 2019 until December 21, 2019
                (84 FR 52363, October 2, 2019). A correction to the July 31, 2019 rule
                was published on December 13, 2019 (84 FR 68045) and is also effective
                on December 21, 2019.
                 In response to recent feedback received from external stakeholders
                regarding their need to more fully comprehend the nature of, and
                prepare to comply with, the new requirements before they become
                effective, the effective date of both the July 31, 2019 final rule and
                the December 13, 2019 correction is being delayed until February 15,
                2020. This final rule will also allow the USPTO additional time to
                ensure that internal implementation of the requirements associated with
                the mandate that applicants and registrants electronically file their
                trademark applications and all submissions associated with trademark
                applications and registrations, and that they designate an email
                address for receiving USPTO correspondence, is in place.
                [[Page 69331]]
                Rulemaking Requirements
                 Administrative Procedure Act: This final rule revises the effective
                date of the July 31, 2019 final rule implementing procedures requiring
                the electronic filing of trademark applications and all submissions
                associated with trademark applications and registrations, and the
                subsequent correction rule published on December 13, 2019, and it is a
                rule of agency practice and procedure, and/or interpretive rules
                pursuant to 5 U.S.C. 553(b)(A). See JEM Broad. Co. v. F.C.C., 22 F.3d
                32. (D.C. Cir. 1994) (``[T]he `critical feature' of the procedural
                exception [in 5 U.S.C. 553(b)(A)] `is that it covers agency actions
                that do not themselves alter the rights or interests of parties,
                although [they] may alter the manner in which the parties present
                themselves or their viewpoints to the agency.''' (quoting Batterton v.
                Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980))); see also Bachow
                Commc'ns Inc. v. F.C.C., 237 F.3d 683, 690 (D.C. Cir. 2001) (rules
                governing an application process are procedural under the
                Administrative Procedure Act); Inova Alexandria Hosp. v. Shalala, 244
                F.3d 342, 350 (4th Cir. 2001) (rules for handling appeals were
                procedural where they did not change the substantive standard for
                reviewing claims). Accordingly, prior notice and opportunity for public
                comment are not required pursuant to 5 U.S.C. 553(b) or (c) (or any
                other law). See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
                (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C.
                2(b)(2)(B), does not require notice and comment rulemaking for
                ``interpretative rules, general statements of policy, or rules of
                agency organization, procedure, or practice'' (quoting 5 U.S.C.
                553(b)(A)).
                 Moreover, the Director of the USPTO, pursuant to authority at 5
                U.S.C. 553(b)(B), finds good cause to adopt the change in this final
                rule without prior notice and an opportunity for public comment, as
                such procedures would be impracticable and contrary to the public
                interest. Immediate implementation of the delay in effective date is in
                the public interest, because it is responsive to recent feedback
                received from external stakeholders regarding their need to more fully
                comprehend the nature of, and prepare to comply with, the new
                requirements before they are effective. It will also allow the USPTO
                additional time to ensure that internal implementation of the
                requirements associated with the July 31, 2019 final rule and the
                December 13, 2019 correction is in place. Delay of the July 31, 2019
                final rule and the December 13, 2019 correction to provide prior notice
                and comment procedures is impracticable, because it would allow the
                July 31, 2019 final rule and December 13, 2019 correction to go into
                effect before external stakeholders are ready to comply with, and the
                agency is ready to implement, the new requirements. Therefore, the
                Director finds there is good cause to waive notice and comment
                procedures for this rule.
                 Finally, the change in this final rule may be made effective
                earlier than the required 30-day delay in effectiveness because this is
                not a substantive rule under 35 U.S.C. 553(d). Moreover, pursuant to 5
                U.S.C. 553(d)(3), the Director finds good cause to waive the 30-day
                delay in effectiveness for this final rule because such a delay would
                allow the July 31, 2019 final rule and December 13, 2019 correction to
                go into effect before external stakeholders are ready to comply with,
                and the agency is ready to implement, the new requirements.
                 Dated: December 16, 2019.
                Andrei Iancu,
                Under Secretary of Commerce for Intellectual Property and Director of
                the United States Patent and Trademark Office.
                [FR Doc. 2019-27426 Filed 12-17-19; 8:45 am]
                 BILLING CODE 3510-16-P
                

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