Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants

• Published date: 15 February 2019
• Citation: 84 FR 4393
• Record Number: 2019-02154
• Section: Proposed rules
• Court: Patent And Trademark Office

4393

Federal Register / Vol. 84, No. 32 / Friday, February 15, 2019 / Proposed Rules

List of Subjects in 33 CFR Part 100

Marine safety, Navigation (water),

Reporting and recordkeeping

requirements, Waterways.

For the reasons discussed in the

preamble, the Coast Guard proposes to

amend 33 CFR part 100 as follows:

PART 100—SAFETY OF LIFE ON

NAVIGABLE WATERS

■1. The authority citation for part 100

continues to read as follows:

Authority: 33 U.S.C. 1233; 33 CFR

1.05–1.

■2. Add § 100.501T05–1102 to read as

follows:

§ 100.501T05–1102 Special Local

Regulation; Chesapeake Bay, between

Sandy Point and Kent Island, MD.

(a) Regulated area. The following

location is a regulated area: All

navigable waters of the Chesapeake Bay,

adjacent to the shoreline at Sandy Point

State Park and between and adjacent to

the spans of the William P. Lane Jr.

Memorial Bridges, from shoreline to

shoreline, bounded to the north by a

line drawn from the western shoreline

at latitude 39°01′05.23″ N, longitude

076°23′47.93″ W; thence eastward to

latitude 39°01′02.08″ N, longitude

076°22′40.24″ W; thence southeastward

to eastern shoreline at latitude

38°59′13.70″ N, longitude 076°19′58.40″

W; and bounded to the south by a line

drawn parallel and 500 yards south of

the south bridge span that originates

from the western shoreline at latitude

39°00′17.08″ N, longitude 076°24′28.36″

W; thence southward to latitude

38°59′38.36″ N, longitude 076°23′59.67″

W; thence eastward to latitude

38°59′26.93″ N, longitude 076°23′25.53″

W; thence eastward to the eastern

shoreline at latitude 38°58′40.32″ N,

longitude 076°20′10.45″ W, located

between Sandy Point and Kent Island,

MD. All coordinates reference North

American Datum 83 (NAD 1983).

(b) Definitions. As used in this

section:

Captain of the Port (COTP) Maryland-

National Capital Region means the

Commander, U.S. Coast Guard Sector

Maryland-National Capital Region or

any Coast Guard commissioned, warrant

or petty officer who has been authorized

by the COTP to act on the COTP’s

behalf.

Coast Guard Patrol Commander

(PATCOM) means a commissioned,

warrant, or petty officer of the U.S.

Coast Guard who has been designated

by the Commander, Coast Guard Sector

Maryland-National Capital Region.

Official Patrol means a vessel

assigned or approved by the

Commander, Coast Guard Sector

Maryland-National Capital Region with

a commissioned, warrant, or petty

officer on board and displaying a Coast

Guard ensign.

Participant means a person or vessel

registered with the event sponsor as

participating in the Bay Bridge Paddle

event or otherwise designated by the

event sponsor as having a function tied

to the event.

Spectator means a person or vessel

not registered with the event sponsor as

a participant or assigned as an official

patrol.

(c) Special local regulations: (1) The

COTP Maryland-National Capital

Region or PATCOM may forbid and

control the movement of all vessels and

persons, including event participants, in

the regulated area. When hailed or

signaled by an official patrol, a vessel or

person in the regulated area must

immediately comply with the directions

given by the patrol. Failure to do so may

result in the Coast Guard expelling the

person or vessel from the area, issuing

a citation for failure to comply, or both.

The COTP Maryland-National Capital

Region or PATCOM may terminate the

event, or a participant’s operations at

any time the COTP Maryland-National

Capital Region or PATCOM believes it

necessary to do so for the protection of

life or property.

(2) Except for participants and vessels

already at berth, a person or vessel

within the regulated area at the start of

enforcement of this section must

immediately depart the regulated area.

(3) A spectator must contact the

PATCOM to request permission to

either enter or pass through the

regulated area. The PATCOM, and

official patrol vessels enforcing this

regulated area, can be contacted on

marine band radio VHF–FM channel 16

(156.8 MHz) and channel 22A (157.1

MHz). If permission is granted, the

spectator may enter the regulated area or

pass directly through the regulated area

as instructed by PATCOM. A vessel

within the regulated area must operate

at a safe speed that minimizes wake. A

spectator vessel must not loiter within

the navigable channel while within the

regulated area.

(4) A person or vessel that desires to

transit, moor, or anchor within the

regulated area must first obtain

authorization from the COTP Maryland-

National Capital Region or PATCOM. A

person or vessel seeking such

permission can contact the COTP

Maryland-National Capital Region at

telephone number 410–576–2693 or on

Marine Band Radio, VHF–FM channel

16 (156.8 MHz) or the PATCOM on

Marine Band Radio, VHF–FM channel

16 (156.8 MHz).

(5) The Coast Guard will publish a

notice in the Fifth Coast Guard District

Local Notice to Mariners and issue a

marine information broadcast on VHF–

FM marine band radio announcing

specific event date and times.

(d) Enforcement period. This section

will be enforced from 7 a.m. to 1 p.m.

on June 1, 2019, and, if necessary due

to inclement weather, from 7 a.m. to 1

p.m. on June 2, 2019.

Dated: February 11, 2019.

Joseph B. Loring,

Captain, U.S. Coast Guard, Captain of the

Port Maryland-National Capital Region.

[FR Doc. 2019–02466 Filed 2–14–19; 8:45 am]

BILLING CODE 9110–04–P

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 11

[Docket No. PTO–T–2018–0021]

RIN 0651–AD30

Requirement of U.S. Licensed Attorney

for Foreign Trademark Applicants and

Registrants

AGENCY

: United States Patent and

Trademark Office, Commerce.

ACTION

: Notice of proposed rulemaking.

SUMMARY

: The United States Patent and

Trademark Office (USPTO or Office)

proposes to amend the Rules of Practice

in Trademark Cases and the rules

regarding Representation of Others

Before the United States Patent and

Trademark Office to require applicants,

registrants, or parties to a proceeding

whose domicile or principal place of

business is not located within the

United States (U.S.) or its territories

(hereafter foreign applicants, registrants,

or parties) to be represented by an

attorney who is an active member in

good standing of the bar of the highest

court of a state in the U.S. (including the

District of Columbia and any

Commonwealth or territory of the U.S.).

A requirement that such foreign

applicants, registrants, or parties be

represented by a qualified U.S. attorney

will instill greater confidence in the

public that U.S. registrations that issue

to foreign applicants are not subject to

invalidation for reasons such as

improper signatures and use claims and

enable the USPTO to more effectively

use available mechanisms to enforce

foreign applicant compliance with

statutory and regulatory requirements in

trademark matters.

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DATES

: Comments must be received by

March 18, 2019 to ensure consideration.

ADDRESSES

: The USPTO prefers that

comments be submitted via electronic

mail message to TMFRNotices@

uspto.gov. Written comments also may

be submitted by mail to the

Commissioner for Trademarks, P.O. Box

1451, Alexandria, VA 22313–1451,

attention Catherine Cain; by hand

delivery to the Trademark Assistance

Center, Concourse Level, James Madison

Building-East Wing, 600 Dulany Street,

Alexandria, VA 22314, attention

Catherine Cain; or by electronic mail

message via the Federal eRulemaking

Portal at https://www.regulations.gov.

See the Federal eRulemaking Portal

website for additional instructions on

providing comments via the Federal

eRulemaking Portal. All comments

submitted directly to the USPTO or

provided on the Federal eRulemaking

Portal should include the docket

number (PTO–T–2018–0021).

Although comments may be

submitted by postal mail, the Office

prefers to receive comments by

electronic mail message over the

internet because the Office may easily

share such comments with the public.

Electronic comments are preferred to be

submitted in plain text, but also may be

submitted in portable document format

or DOC file format. Comments not

submitted electronically should be

submitted on paper in a format that

facilitates convenient digital scanning

into portable document format.

The comments will be available for

public inspection on the USPTO’s

website at https://www.uspto.gov, on the

Federal eRulemaking Portal, and at the

Office of the Commissioner for

Trademarks, Madison East, Tenth Floor,

600 Dulany Street, Alexandria, VA

22314. Because comments will be made

available for public inspection,

information that is not desired to be

made public, such as an address or

phone number, should not be included.

FOR FURTHER INFORMATION CONTACT

:

Catherine Cain, Office of the Deputy

Commissioner for Trademark

Examination Policy, TMPolicy@

uspto.gov, (571) 272–8946.

SUPPLEMENTARY INFORMATION

: The

USPTO proposes to revise the rules in

parts 2 and 11 of title 37 of the Code of

Federal Regulations to require foreign

applicants, registrants, or parties to a

proceeding to be represented by an

attorney, as defined in § 11.1, 37 CFR

11.1, that is, an attorney who is an

active member in good standing of the

bar of the highest court of a U.S. state

or territory (including the District of

Columbia and any Commonwealth or

territory) and who is qualified under

§ 11.14(a), 37 CFR 11.14(a), to represent

others before the Office in trademark

matters. A requirement that such foreign

applicants, registrants, or parties be

represented by a qualified U.S. attorney

will (1) instill greater confidence in the

public that U.S. registrations that issue

to foreign applicants are not subject to

invalidation for reasons such as

improper signatures and use claims and

(2) enable the USPTO to more

effectively use available mechanisms to

enforce foreign applicant compliance

with statutory and regulatory

requirements in trademark matters.

I. Integrity of the U.S. Trademark

Register

The trademark register must

accurately reflect marks that are actually

in use in commerce in the U.S. for the

goods/services identified in the

registrations. By registering trademarks,

the USPTO has a significant role in

protecting consumers, as well as

providing important benefits to U.S.

commerce by allowing businesses to

strengthen and safeguard their brands

and related investments.

The public relies on the register to

determine whether a chosen mark is

available for use or registration. When a

person’s search of the register discloses

a potentially confusingly similar mark,

that person may incur a variety of

resulting costs and burdens, such as

those associated with investigating the

actual use of the disclosed mark to

assess any conflict, initiating

proceedings to cancel the registration or

oppose the application of the disclosed

mark, engaging in civil litigation to

resolve a dispute over the mark, or

choosing a different mark and changing

business plans regarding its mark. In

addition, such persons may incur costs

and burdens unnecessarily if the

disclosed registered mark is not actually

in use in U.S. commerce, or is not in use

in commerce in connection with all the

goods/services identified in the

registration. An accurate and reliable

trademark register helps avoid such

needless costs and burdens.

A valid claim of use made as to a

registered mark likewise benefits the

registrant. Fraudulent or inaccurate

claims of use jeopardize the validity of

any resulting registration and may

render it vulnerable to cancellation.

Furthermore, trademark documents

submitted in support of registration

require statutorily prescribed averments

and must be signed in accordance with

§ 2.193(e)(1). 37 CFR 2.193(e)(1). If

signed by a person determined to be an

unauthorized signatory, a resulting

registration may be invalid.

Therefore, the USPTO anticipates that

implementation of the proposed rule

would have the benefit of generally

reducing costs to applicants, registrants,

and other parties and providing greater

value to consumers who rely on

registered marks.

As discussed below, in the past few

years, the USPTO has seen many

instances of unauthorized practice of

law (UPL) where foreign parties who are

not authorized to represent trademark

applicants are improperly representing

foreign applicants before the USPTO. As

a result, increasing numbers of foreign

applicants are likely receiving

inaccurate or no information about the

legal requirements for trademark

registration in the U.S., such as the

standards for use of a mark in

commerce, who can properly aver to

matters and sign for the mark owner, or

even who the true owner of a mark is

under U.S. law. This practice raises

legitimate concerns that affected

applications and any resulting

registrations are potentially invalid, and

thus negatively impacts the integrity of

the trademark register.

II. Enforce Compliance With U.S.

Statutory and Regulatory Requirements

The proposed requirement for

representation by a qualified U.S.

attorney is also necessary to enforce

compliance by all foreign applicants,

registrants, and parties with U.S.

statutory and regulatory requirements in

trademark matters. It will not only aid

the USPTO in its efforts to improve and

preserve the integrity of the U.S.

trademark register, but will also ensure

that foreign applicants, registrants, and

parties are assisted only by authorized

practitioners who are subject to the

USPTO’s disciplinary rules.

The requirement for representation by

a qualified U.S. attorney is being

proposed in response to the increasing

problem of foreign trademark applicants

who purportedly are pro se (i.e., one

who does not retain a lawyer and

appears for himself or herself) and who

are filing inaccurate and possibly

fraudulent submissions that violate the

Trademark Act (Act) and/or the

USPTO’s rules. For example, such

foreign applicants file applications

claiming use of a mark in commerce, but

frequently support the use claim with

mocked-up or digitally altered

specimens that indicate the mark may

not actually be in use. Many appear to

be doing so on the advice, or with the

assistance, of foreign individuals and

entities who are not authorized to

represent trademark applicants before

the USPTO. This practice undermines

the accuracy and integrity of the U.S.

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trademark register and its utility as a

means for the public to reliably

determine whether a chosen mark is

available for use or registration, and

places a significant burden on the

trademark examining operation.

Current Mechanisms and Sanctions are

Inadequate

(1) Show-Cause Authority: Under 35

U.S.C. 3(b)(2)(A), the Commissioner for

Trademarks (Commissioner) possesses

the authority to manage and direct all

aspects of the activities of the USPTO

that affect the administration of

trademark operations. The

Commissioner may use that authority to

investigate and issue an order requiring

an applicant to show cause why the

applicant’s representative, or the

applicant itself, should not be

sanctioned under § 11.18(c), 37 CFR

11.18(c), for presenting a paper to the

USPTO in violation of § 11.18(b), 37

CFR 11.18(b). However, given the

location of foreign applicants and those

acting on their behalf, as well as

potential language barriers, the show-

cause authority has rarely been

successful in resolving the underlying

issues. Although all those who sign

documents in trademark matters before

the USPTO do so subject to criminal

penalties for knowing and willful false

statements made to a government

agency under 18 U.S.C. 1001, the

criminal perjury prosecution option

under 18 U.S.C. 1001 is similarly

difficult to enforce against those who

are not subject, or are not easily subject,

to U.S. jurisdiction. Further, proof to

support such sanctions under § 11.18 is

often difficult to obtain. For these

primary reasons, when a foreign

applicant fails to comply with statutory

and regulatory requirements in ex parte

examination, it has been challenging

and, in some cases, impossible for the

Commissioner to use her show-cause

authority to impose the sanctions

available under § 11.18(c).

(2) USPTO Disciplinary Authority

Under 35 U.S.C. 32: Requiring foreign

applicants, registrants, and parties to

retain U.S. counsel in all trademark

matters before the USPTO will likely

reduce the instances of UPL and

misconduct. In addition, when UPL

and/or misconduct does occur,

requiring foreign applicants, registrants,

and parties to retain U.S. counsel will

enable the Office of Enrollment and

Discipline (OED) to more effectively

pursue those who are engaged in the

UPL and/or misconduct. OED’s

disciplinary jurisdiction extends to a

‘‘Practitioner,’’ as that term is defined in

§ 11.1, 37 CFR 11.1, or a non-

practitioner who offers legal services to

people seeking to register trademarks

with the USPTO. For practitioners, OED

may investigate and institute formal

disciplinary proceedings, which can

result in discipline of the practitioner,

including: (1) Exclusion from practice

before the Office; (2) suspension from

practice before the Office; (3) reprimand

or censure; or (4) probation.

When formal discipline is issued

against a U.S. practitioner, OED may

also notify other federal agencies and

the U.S. state bar(s) where the

practitioner is licensed and/or

authorized to practice law, as

appropriate. A number of states have

criminal statutes penalizing UPL.

Depending on the state, the state bar,

consumer-protection arm of the state’s

attorney office, and/or state consumer-

protection agency may investigate UPL

and take action to protect the public.

Additionally, consumer-protection

organizations and law-enforcement

agencies can investigate possible civil or

criminal fraud at the federal and state

level. OED’s ability to refer a discipline

matter to a state bar for further action or

to a federal or state consumer-protection

agency, or law-enforcement agency, thus

effectively deters disciplined

practitioners from violating the terms of

their disciplinary orders.

However, the threat of a claim of UPL

has not been equally effective with

foreign applicants and the unqualified

foreign individuals, attorneys, or firms

advising them. Although the USPTO

investigates possible UPL by such

foreign parties, because these parties are

not practitioners authorized to practice

before the USPTO, the absence of any

realistic threat of disciplinary action has

impeded the USPTO’s efforts to deter

foreign parties from engaging in UPL or

violating a USPTO exclusion order. In

addition, while the USPTO can send a

letter to a foreign government regarding

the USPTO’s exclusion order, foreign

government officials have great

discretion regarding whether to pursue

further sanctions against their own

citizens. Further, since foreign parties

are representing foreign applicants,

there may be few U.S. stakeholders

directly affected by the unauthorized

practice of law by the foreign party.

There is little incentive for a state or

federal law-enforcement or consumer-

protection agency to take action against

a foreign party engaged in UPL to

protect U.S. interests, or to pursue

further action with consumer-protection

agencies in other countries where the

foreign national does business.

Moreover, the threat of criminal perjury

prosecution in U.S. courtrooms does not

have the same deterrent effect for

foreign nationals as it does for U.S.

nationals and domiciles.

As a practical matter, even if U.S. law

enforcement is able to devote resources

toward prosecution of a foreign national

for a violation of 18 U.S.C. 1001,

exerting jurisdiction over such a party is

not always possible. Furthermore, many

foreign unauthorized parties acting on

behalf of foreign applicants and

registrants who have been excluded by

a Commissioner’s order typically

continue to engage in UPL before the

USPTO, often increasing the scale of

their efforts and employing tactics

intended to circumvent the USPTO’s

rules.

Under the proposed rule, submissions

would be made by practitioners subject

to the disciplinary jurisdiction of OED,

making it less likely that they would be

signed by an unauthorized party or

contain statements that are inaccurate,

particularly as to any averment of use of

the mark in U.S. commerce or intention

to use the mark. Further, because it

would result in a more accurate and

reliable trademark register, fewer U.S.

applicants, registrants, and parties

would incur the costs associated with

investigating the actual use of a mark to

assess any conflict, initiating

proceedings to cancel a registration or

oppose an application, engaging in civil

litigation to resolve a dispute over a

mark, or changing business plans to

avoid use of a chosen mark.

Surge in Foreign Filings

Contributing to concerns regarding

UPL, in recent years the USPTO has

experienced a significant surge in

foreign filings, with the number of

applications from foreign applicants

increasing as a percentage of total

filings, as shown in the following table.

The numbers in parentheses indicate

the number of applications represented

by each percentage:

Filings from foreign or U.S. applicants as a percentage of total filings * FY15 FY16 FY17

Foreign ....................................................................................................................... 19% (70,853) 22% (87,706) 26% (115,402)

U.S ............................................................................................................................. 81% (301,098) 78% (306,281) 74% (320,885)

* Data as of 12/10/2018.

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The USPTO predicts that the number

of foreign filings will continue to rise

based on a variety of economic factors,

including the strength of the U.S.

economy. This growth is coupled with

a significant growth in the number of

filings by foreign pro se applicants in

FY15 through FY17, especially as

compared with filings by U.S. pro se

applicants. The information shown

below reflects the representation status

at the time the USPTO electronic record

was searched to obtain the data.

Representation status may change over

the course of prosecution. However,

system limitations only permit the

USPTO to retrieve representation status

at the time a search is done.

Filings from foreign or U.S. applicants—Representation Status * FY15 FY16 FY17

U.S.—Pro Se ............................................................................................................. 25.3% (76,140) 27.2% (83,161) 28.5% (91,593)

U.S.—Represented .................................................................................................... 74.7% (224,958) 72.8% (223,120) 71.5% (229,292)

Foreign—Pro Se ........................................................................................................ 25.4% (17,967) 35.9% (31,475) 44.0% (50,742)

Foreign—Represented ............................................................................................... 74.6% (52,886) 64.1% (56,231) 56.0% (64,660)

* Data as of 12/10/2018.

Currently, the USPTO is in the

process of addressing numerous

instances of UPL by foreign parties who

engage in tactics designed to circumvent

USPTO rules. When the USPTO has

identified UPL by foreign parties in an

application, the USPTO has sent

information to the applicant’s address of

record informing the applicant that its

appointed representative has been

‘‘excluded’’ from practice before the

USPTO and cannot represent the

applicant in the matter. In addition, the

USPTO has published the orders

excluding foreign unauthorized

individuals and entities on its website

and suggested that applicants review all

application submissions previously

submitted on their behalf. However, in

many applications, the address

information for the applicant is not

legitimate (i.e., the address is for the

unauthorized individual or entity

representing the applicant) or is

incomplete or inaccurate, and the

USPTO cannot be sure that the affected

applicants receive this information. This

fact raises concerns that the applications

are potentially invalid because they

were signed by an unauthorized party or

contain statements that are inaccurate,

particularly as to any averment of use of

the mark in U.S. commerce or intention

to use the mark, which forms the

underlying statutory basis for federal

registration.

Efforts to educate foreign applicants

about UPL or to impose effective

sanctions against the foreign

unauthorized individuals or entities

have proved ineffective. The problem of

foreign applicants who violate U.S. legal

and regulatory requirements in

trademark matters and do so largely on

the advice of foreign unauthorized

individuals or entities grows each

month. Within the last few years, the

scale of the problem has become

massive, with the estimated number of

total tainted applications now in the

tens of thousands. It also is becoming

increasingly difficult for the USPTO,

with its limited resources, to identify

and prove misconduct and UPL,

particularly as tactics and technology to

mask the misconduct evolve.

III. Proposed Rule Changes

(1) Requirement for Representation.

Under this proposed rule, § 2.11 would

be amended to require applicants,

registrants, or parties to a proceeding

whose domicile or principal place of

business is not located within the U.S.

or its territories to be represented by an

attorney who is an active member in

good standing of the bar of the highest

court of any of the 50 states of the U.S.,

the District of Columbia, and any

Commonwealth or territory of the U.S.

To ensure clarity regarding who is

subject to the requirement, § 2.2 would

be amended to define ‘‘domicile’’ and

‘‘principal place of business.’’ The

proposed requirement is similar to the

requirement that currently exists in

many other countries, such as Brazil,

Chile, the People’s Republic of China,

Israel, Japan, Jordan, Republic of Korea,

Morocco, and South Africa, as well as

the European Union’s Intellectual

Property Office. The majority of

countries with a similar requirement

condition the requirement on domicile.

The USPTO intends to follow this

practice. Moreover, requiring a qualified

attorney to represent applicants,

registrants, and parties whose domicile

or principal place of business is not

located within the U.S. or its territories

is an effective tool for combatting the

growing problem of foreign individuals,

entities, and applicants failing to

comply with U.S. law.

The applicant would be required to

obtain U.S. counsel to prosecute the

application. When the USPTO receives

an application filed by a foreign

domiciliary, with a filing basis under

section 1 and/or section 44 of the Act,

15 U.S.C. 1051, 1126, that does not

comply with the requirements of

proposed § 2.11(a), the applicant would

be informed in an Office action that

appointment of a qualified U.S. attorney

is required. The applicant would have

the usual period of six months to

respond to an Office action including

the requirement, and failure to comply

would result in abandonment of the

application. See 37 CFR 2.63, 2.65(a).

For those applicants the USPTO

identifies as being subject to the rule,

the USPTO is considering whether to:

(1) Defer full examination of the

application until the applicant complies

with the requirement to appoint U.S.

counsel, thereby allowing the appointed

attorney to have the opportunity to

review the application for compliance

with U.S. law during the period to

respond to the Office action raising the

requirement; or (2) expend additional

resources to conduct a complete

examination and issue an Office action

that includes the requirement along

with other applicable refusals and

requirements. The USPTO welcomes

comments on the two approaches under

consideration.

Although applications based on

section 66(a) of the Act (Madrid

applications), 15 U.S.C. 1141f, would be

subject to the requirement to appoint a

qualified U.S. attorney, the USPTO is

assessing its procedures for a small set

of applications (2.9% of all Madrid

applications in fiscal year 2017) that are

submitted with all formalities and

statutory requirements already satisfied,

and therefore are in a condition ready

for publication upon first action. Madrid

applications are initially filed with the

International Bureau (IB) of the World

Intellectual Property Organization and

subsequently transmitted to the USPTO.

There is currently no provision for

designating a U.S. or any other local

attorney in an application submitted to

the IB, and the USPTO does not expect

that the IB will update its capabilities

prior to the anticipated implementation

of this proposed rule. Therefore, the

USPTO may consider waiving the

requirement to appoint a qualified U.S.

practitioner prior to publication in this

limited situation, until such time as the

Madrid system is updated to allow for

the designation of a U.S. attorney.

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Conforming amendments would also

be made to the following sections,

which set out the requirements noted:

§ 2.17(e), for recognition for

representation; § 2.22, for filing a TEAS

Plus application; and 2.32(a)(4), for a

complete application.

(2) Reciprocal recognition. Under this

proposed rule, § 11.14 would be

amended to clarify that only registered

and active foreign attorneys or agents

who are in good standing before the

trademark office of the country in which

the attorney or agent resides and

practices may be recognized for the

limited purpose of representing parties

located in such country, provided the

trademark office of such country and the

USPTO have reached an official

understanding to allow substantially

reciprocal privileges. The proposed rule

would also require that in any

trademark matter where an authorized

foreign attorney or agent is representing

an applicant, registrant, or party to a

proceeding, a qualified U.S. attorney

must also be appointed pursuant to

§ 2.17(b), (c) as the representative with

whom the Office will communicate and

conduct business.

Currently, only Canadian attorneys

and agents are reciprocally recognized

under § 11.14(c). The proposed rule

removes the authorization for

reciprocally recognized Canadian patent

agents to practice before the USPTO in

trademark matters, but continues to

allow reciprocal recognition of

Canadian trademark attorneys and

agents in trademark matters. Those

Canadian patent agents already

recognized to practice in U.S. trademark

matters would continue to be authorized

to practice in pending trademark

matters on behalf of Canadian parties

only (1) so long as the patent agent

remains registered and in good standing

in Canada and (2) in connection with an

application or post-registration

maintenance filing pending before the

Office on the effective date of the

proposed rule, for which the recognized

patent agent is the representative.

Recognized Canadian trademark

attorneys and agents would continue to

be authorized to represent Canadian

parties in U.S. trademark matters.

IV. Cost To Retain U.S. Counsel

The following tables estimate the

costs for complying with the proposed

rule, using FY17 filing numbers for pro

se applicants and registrants with a

domicile or principal place of business

outside the U.S. or its territories and for

Madrid applicants and registrants. The

professional rates shown below are the

median charges for legal services in

connection with filing and prosecuting

an application, or filing a post-

registration maintenance document, as

reported in the 2017 Report on the

Economic Survey, published by the

American Intellectual Property Law

Association.

As noted above, applicants subject to

the proposed rule would be required to

retain U.S. counsel to prosecute an

application and to handle post-

registration maintenance requirements

and proceedings before the Trademark

Trial and Appeal Board. The tables

below reflect two sets of aggregate

costs—those for applicants who filed

pro se in FY17 and would have retained

counsel prior to filing and those who

would have retained counsel after filing.

As discussed above, the information

shown below reflects the representation

status at the time the USPTO electronic

record was searched to obtain the data.

Representation status may change over

the course of prosecution. The USPTO

does not collect information or statistics

on applicants who file pro se but

subsequently retain counsel during the

prosecution of their application. The

USPTO recognizes that there may have

been a higher number of pro se

applicants at filing than is reflected

below, but that those applicants had

retained counsel prior to the date the

search report was generated. Therefore,

although it is possible that a higher

number of pro se applicants may incur

the cost of having counsel prepare and

file an application, those applicants

would have already incurred the

additional cost for prosecution of the

application.

The following table sets out the

estimated costs, based on filing basis, if

pro se applicants in FY17 with a

domicile or principal place of business

outside the U.S. or its territories

retained counsel prior to filing their

applications. A filing basis is the

statutory basis for filing an application

for registration of a mark in the U.S. An

applicant must specify and meet the

requirements of one or more bases in a

trademark or service mark application.

37 CFR 2.32(a)(5). There are five filing

bases: (1) Use of a mark in commerce

under section 1(a) of the Act; (2) bona

fide intention to use a mark in

commerce under section 1(b) of the Act;

(3) a claim of priority, based on an

earlier-filed foreign application under

section 44(d) of the Act; (4) ownership

of a registration of the mark in the

applicant’s country of origin under

section 44(e) of the Act; and (5)

extension of protection of an

international registration to the United

States, under section 66(a) of the Act. 15

U.S.C. 1051(a)–(b), 1126(d)–(e), 1141f(a).

The number of applicants shown within

each filing-basis category in the tables

below reflects the basis status at the

time the USPTO electronic record was

searched to obtain the representation

status.

Although the USPTO believes that

applicants who would be subject to the

proposed requirement should retain

U.S. counsel prior to filing an

application, the USPTO recognizes that

not all would do so. Therefore, the

USPTO expects that the total estimated

costs reflected in the table below would

be reduced by the number of applicants

within each filing-basis category who

chose to file an application without

retaining U.S. counsel.

FY17 P

RO SE

A

PPLICATIONS BY

B

ASIS

(E

XCLUDING

M

ADRID

)—C

OST IF

C

OUNSEL

R

ETAINED

B

EFORE

F

ILING

*

Activity performed by counsel Median

charge 1(a) ‡

35,506 1(b)

4,010 1(a)/1(b)

69 44

1,142 44/1(b)

137 Total cost

Filing foreign origin registration application received

ready for filing. $600 N/A N/A N/A §$603,000 N/A ........................... $603,000

Preparing and filing application .................................. 775 $27,517,150 $3,107,750 $53,475 N/A $106,175 .................. 30,784,550

Prosecution, including amendments and interviews

but not appeals. 1,000 35,506,000 4,010,000 69,000 1,142,000 Included in 44 appli-

cations. 40,727,000

Statement of use† ...................................................... 400 N/A 1,604,000 27,600 N/A $54,800 .................... 1,686,400

Total ..................................................................... .................... 63,023,150 8,721,750 150,075 1,745,000 $160,975 .................. 73,800,950

*Data as of 12/10/2018. In addition to the number of applications shown for each filing basis, an additional 62 applications did not indicate a basis on the date of fil-

ing and currently have no filing basis, either because the application has abandoned or because the applicant has not yet responded to the requirement to indicate a

basis.

†If an application is filed under section 1(b) of the Act, the applicant must file a statement of use prior to registration.

‡The numbers underneath the filing basis indicate the number of applications filed for that basis.

§The cost shown is for 1,005 section 44 applications, which is the total number of section 44 applications minus the subset that also includes a section 1(b) filing

basis.

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Alternatively, the table below sets out

the estimated costs, based on filing

basis, if pro se applicants in FY17 with

a domicile or principal place of business

outside the U.S. or its territories

retained counsel after filing their

applications. As in the situation

described above, the USPTO anticipates

that a certain number of these

applicants would retain U.S. counsel

prior to filing an application. Therefore,

the USPTO expects that the total

estimated costs reflected in the table

below would be increased by the

number of applicants within each filing-

basis category who chose to do so.

FY17 P

RO SE

A

PPLICATIONS BY

B

ASIS

(E

XCLUDING

M

ADRID

)—C

OST IF

C

OUNSEL

R

ETAINED

A

FTER

F

ILING

*

Activity performed by counsel Median

charge 1(a)

35,506‡ 1(b)

4,010 1(a)/1(b)

69 44

1,142 44/1(b) §

137 Total cost

Filing foreign origin registration application received

ready for filing. $600 N/A N/A N/A N/A N/A ........................... ....................

Preparing and filing application .................................. 775 N/A N/A N/A N/A N/A ........................... ....................

Prosecution, including amendments and interviews

but not appeals. 1,000 $35,506,000 $4,010,000 $69,000 $1,142,000 Included in prior col-

umn. $40,727,000

Statement of use† ...................................................... 400 N/A 1,604,000 27,600 N/A $54,800 .................... 1,686,400

Total ..................................................................... .................... 35,506,000 5,614,000 96,600 1,142,000 $54,800 .................... 42,413,400

*Data as of 12/10/2018. In addition to the number of applications shown for each filing basis, an additional 62 applications did not indicate a basis on the date of fil-

ing and currently have no filing basis, either because the application has abandoned or because the applicant has not yet responded to the requirement to indicate a

basis.

†If an application is filed under section 1(b) of the Act, the applicant must file a statement of use prior to registration.

‡The numbers underneath the filing basis indicate the number of applications filed for that basis.

§This column represents the subset of section 44 applications that also includes a section 1(b) filing basis.

As discussed above, Madrid

applications are initially filed with the

IB and subsequently transmitted to the

USPTO. In FY17, the USPTO received

24,418 Madrid applications in which

the applicant had an address outside the

U.S. or its territories, and thus would be

subject to the proposed requirement.

There is currently no provision for

designating a U.S. attorney in an

application submitted to the IB.

Therefore, the USPTO presumes that

none of the Madrid applicants subject to

the requirement retained U.S. counsel

prior to filing. However, USPTO records

indicate that at some point after filing,

14,602 of those FY17 Madrid applicants

were represented by counsel. Therefore,

only the remaining 9,816 Madrid

applicants would be subject to the

requirement to retain U.S. counsel to

prosecute their applications, as shown

in the following table:

FY17 M

ADRID

A

PPLICATIONS

—C

OST IF

C

OUNSEL

R

ETAINED

A

FTER

F

ILING

*

Activity performed by counsel FY17 Median charge Total charge

Prosecution, including amendments and interviews but not appeals ......................................... 9,816 $1,000 $9,816,000

Total ...................................................................................................................................... ........................ ........................ $9,816,000

* Data as of 12/10/2018.

The following table sets out the

estimated costs to FY17 pro se

registrants who would be subject to

proposed § 2.11(a) when filing a post-

registration maintenance document.

FY17 P

RO SE

P

OST

-R

EGISTRATION

F

ILINGS

—C

OST IF

C

OUNSEL

R

ETAINED

B

EFORE

F

ILING

*

Activity performed by counsel FY17 Median charge Total charge

Section 8 and 15 † ....................................................................................................................... 976 $500 $488,000

Renewal ‡..................................................................................................................................... 405 500 202,500

Section 71 § ................................................................................................................................. 522 500 261,000

Madrid Renewal √√ ...................................................................................................................... 134 500 67,000

Total ...................................................................................................................................... ........................ ........................ 1,018,500

* Data as of 12/10/2018.

† Under section 8 of the Act, 15 U.S.C. 1058, an affidavit or declaration of continued use is required during the sixth year after the date of reg-

istration for registrations issued under section 1 or section 44 of the Act. Section 15 of the Act, 15 U.S.C. 1065, provides a procedure by which

the exclusive right to use a registered mark in commerce on or in connection with the goods or services covered by the registration can become

‘‘incontestable,’’ if the owner of the registration files an affidavit or declaration stating, among other criteria, that the mark has been in continuous

use in commerce for a period of five years after the date of registration.

‡Section 9 of the Act, 15 U.S.C. 1059, requires that registrations resulting from applications based on section 1 or section 44 be renewed at

the end of each successive 10-year period following the date of registration.

§ Under section 71 of the Act, 15 U.S.C. 1141k, an affidavit or declaration of use is required during the sixth year after the date of registration

for registered extensions of protection of international registrations to the U.S.

√√ The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1)

and 7(1) of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating

to That Agreement.

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For applicants, registrants, and parties

not subject to the proposed requirement,

the USPTO anticipates that

implementation of the proposed rule

would result in a more accurate and

reliable trademark register, which

would have the benefit of generally

reducing costs to applicants, registrants,

and parties and providing greater value

to consumers who rely on registered

marks. Under the proposed rule,

submissions would be made by

practitioners subject to the disciplinary

jurisdiction of OED, making it less likely

that they would be signed by an

unauthorized party or contain

statements that are inaccurate,

particularly as to any averment of use of

the mark in U.S. commerce or intention

to use the mark. Because it would result

in a more accurate and reliable

trademark register, fewer U.S.

applicants, registrants, and parties

would incur the costs associated with

investigating the actual use of a mark to

assess any conflict, initiating

proceedings to cancel a registration or

oppose an application, engaging in civil

litigation to resolve a dispute over a

mark, or changing business plans to

avoid use of a chosen mark.

Discussion of Proposed Regulatory

Changes

The USPTO proposes to amend § 2.2

to add § 2.2(o), defining ‘‘domicile’’ and

§ 2.2(p), defining ‘‘principal place of

business.’’

The USPTO proposes to amend § 2.11

to change the title to ‘‘Requirement for

representation,’’ to delete the first

sentence, to include the remaining

sentence in new § 2.11(a) and to add

§ 2.11(b)–(e), which set out the

requirements regarding representation

of applicants, registrants, or parties to a

proceeding whose domicile or principal

place of business is not located within

the U.S. or its territories.

The USPTO proposes to amend

§ 2.17(e) to change the word ‘‘Canadian’’

in the title to ‘‘Foreign,’’ to state that

recognition of foreign attorneys and

agents is governed by § 11.14(c) of this

chapter, and to delete current

§ 2.17(e)(1) and (2).

The USPTO proposes to amend § 2.22

to add § 2.22(a)(21), which would

require representation by a U.S. attorney

for applicants, registrants, or parties to

a proceeding whose domicile or

principal place of business is not

located within the U.S. or its territories.

The USPTO proposes to amend

§ 2.32(a)(4) to indicate that when the

applicant is, or must be, represented by

a practitioner, the practitioner’s name,

postal address, email address, and bar

information are required.

The USPTO proposes to redesignate

current § 11.14(c) as §11.14(c)(1) and to

clarify the requirements for reciprocal

recognition in revised paragraph (c)(1).

The USPTO also proposes to add

§ 11.14(c)(2) to require that in any

trademark matter where an authorized

foreign attorney or agent is representing

an applicant, registrant, or party to a

proceeding, a qualified U.S. attorney

must also be appointed pursuant to

§ 2.17(b), (c) as the representative with

whom the Office will communicate and

conduct business and to amend

§ 11.14(e) to add the prefatory phrase

‘‘Except as specified in § 2.11(a) of this

chapter’’ and the wording ‘‘or on behalf

of’’ to the second sentence and to delete

the third sentence. The USPTO also

proposes to delete the wording ‘‘if such

firm, partnership, corporation, or

association is a party to a trademark

proceeding pending before the Office’’

from § 11.14(e)(3).

Rulemaking Requirements

A. Administrative Procedure Act: The

changes in this rulemaking involve rules

of agency practice and procedure, and/

or interpretive rules. See Perez v. Mortg.

Bankers Ass’n, 135 S. Ct. 1199, 1204

(2015) (Interpretive rules ‘‘advise the

public of the agency’s construction of

the statutes and rules which it

administers.’’ (citation and internal

quotation marks omitted)); 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.); 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 were

procedural where they did not change

the substantive standard for reviewing

claims.).

Accordingly, prior notice and

opportunity for public comment for the

changes in this rulemaking are not

required pursuant to 5 U.S.C. 553(b) or

(c), or any other law. See Perez, 135

S. Ct. at 1206 (Notice-and-comment

procedures are required neither when

an agency ‘‘issue[s] an initial

interpretive rule’’ nor ‘‘when it amends

or repeals that interpretive rule.’’);

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))). However, the Office has

chosen to seek public comment before

implementing the rule to benefit from

the public’s input.

B. Initial Regulatory Flexibility

Analysis: Under the Regulatory

Flexibility Act (RFA) (5 U.S.C. 601 et

seq.), 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

Initial Regulatory Flexibility Analysis

(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. The USPTO publishes

this IRFA to examine the impact on

small entities of the Office’s proposed

requirement that foreign applicants,

registrants, or parties to a proceeding be

represented by a qualified U.S. attorney

in trademark matters and to seek the

public’s views.

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 5 below

discusses alternatives to this proposal

that the Office considered.

1. Description of the reasons that

action by the USPTO is being

considered:

The USPTO proposes to require

applicants, registrants, or parties to a

proceeding whose domicile or principal

place of business is not located within

the U.S. or its territories to be

represented by an attorney who is an

active member in good standing of the

bar of the highest court of a state in the

U.S. and who is qualified to represent

others before the Office in trademark

matters.

The requirement for representation by

a qualified U.S. attorney is being

proposed in response to the increasing

problem of foreign trademark applicants

who purportedly are pro se and who are

filing what appear to be inaccurate and

even fraudulent submissions that violate

the Act and/or the USPTO’s rules. In the

past few years, the USPTO has seen

many instances of UPL where foreign

parties who are not authorized to

represent trademark applicants are

improperly representing foreign

applicants before the USPTO. As a

result, increasing numbers of foreign

applicants are likely receiving

inaccurate or no information about the

legal requirements for trademark

registration in the U.S., such as the

standards for use of a mark in

commerce, who can properly aver to

matters and sign for the mark owner, or

even who the true owner of a mark is

under U.S. law. This practice raises

legitimate concerns that affected

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applications and any resulting

registrations are potentially invalid,

particularly as to averments of use of the

mark in U.S. commerce or intention to

use the mark, and thus negatively

impacts the integrity of the national

trademark register.

The proposed requirement is also

necessary to enforce compliance by all

foreign applicants, registrants, and

parties with U.S. statutory and

regulatory requirements in trademark

matters. Thus, it will not only aid the

USPTO in its efforts to improve and

preserve the integrity of the U.S.

trademark register, but will also ensure

that foreign applicants, registrants, and

parties are assisted only by authorized

practitioners who are subject to the

USPTO’s disciplinary rules.

2. Succinct statement of the objectives

of, and legal basis for, the proposed

rule:

The policy objectives of the proposed

rule are to: (1) Instill greater confidence

in the public that U.S. registrations that

issue to foreign applicants are not

subject to invalidation for reasons such

as improper signatures and use claims

and (2) enable the USPTO to more

effectively use available mechanisms to

enforce foreign applicant compliance

with statutory and regulatory

requirements in trademark matters. As

to the legal basis for the proposed rule,

Section 41 of the Act, 15 U.S.C. 1123,

as well as 35 U.S.C. 2, provide the

authority for the Director to make rules

and regulations for the conduct of

proceedings in the Office.

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 any entity filing with

USPTO whose domicile or principal

place of business is not located within

the U.S. or its territories. The USPTO

believes that although such entities

would incur the costs associated with

retaining counsel to prosecute

applications and handle maintenance

filings for registrations, the overall

impact of the proposed rule on such

entities would be positive, because it

would (1) instill greater confidence in

the public that U.S. registrations that

issue to foreign applicants are not

subject to invalidation for reasons such

as improper signatures and use claims

and (2) enable the USPTO to more

effectively use available mechanisms to

enforce foreign applicant compliance

with statutory and regulatory

requirements in trademark matters.

Further, the USPTO anticipates that

implementation of the proposed rule

would result in a more accurate and

reliable trademark register, which

would have the benefit of generally

reducing costs to applicants, registrants,

and parties. Under the proposed rule,

submissions would be made by

practitioners subject to the disciplinary

jurisdiction of OED, making it less likely

that they would be signed by an

unauthorized party or contain

statements that are inaccurate,

particularly as to any averment of use of

the mark in U.S. commerce or intention

to use the mark. Therefore, fewer U.S.

applicants, registrants, and parties

should incur the costs associated with

investigating the actual use of a mark to

assess any conflict, initiating

proceedings to cancel a registration or

oppose an application, engaging in civil

litigation to resolve a dispute over a

mark, or changing business plans to

avoid use of a chosen mark.

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 imposes no new

reporting or recordkeeping

requirements.

To comply with the proposed rule,

foreign applicants, registrants, or parties

would be required to be represented by

an attorney who is an active member in

good standing of the bar of the highest

court of a state in the U.S. (including the

District of Columbia and any

Commonwealth or territory of the U.S.).

The USPTO does not collect or maintain

statistics in trademark cases on small-

versus large-entity applicants,

registrants, or parties, but does not

anticipate that the proposed rule would

have a disproportionate impact upon

any particular class of small or large

entities.

5. 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 USPTO considered three

alternatives before recommending that

foreign applicants, registrants, or parties

be represented by a qualified U.S.

attorney. The USPTO chose the

alternative proposed herein because it

will enable the Office to achieve its

goals effectively and efficiently. Those

goals are to (1) instill greater confidence

in the public that U.S. registrations that

issue to foreign applicants are not

subject to invalidation for reasons such

as improper signatures and use claims

and (2) enable the USPTO to more

effectively use available mechanisms to

enforce foreign applicant compliance

with statutory and regulatory

requirements in trademark matters.

Due to the difficulty in quantifying

the intangible benefits associated with

the preferred alternative, the Office

provides below a discussion of the

qualitative benefits to trademark

applicants and registrants. One of the

primary benefits of the preferred

alternative is ensuring the accuracy of

the trademark register. The accuracy of

the trademark register as a reflection of

marks that are actually in use in

commerce in the U.S. for the goods/

services identified in the registrations

listed therein serves a critical purpose

for the public and for all registrants. By

registering trademarks, the USPTO has a

significant role in protecting consumers,

as well as providing important benefits

to American businesses, by allowing

them to strengthen and safeguard their

brands and related investments. Such

benefits would be especially valuable

for small entities for the following

reasons. The public relies on the register

to determine whether a chosen mark is

available for use or registration. When a

person’s search of the register discloses

a potentially confusingly similar mark,

that person may incur a variety of

resulting costs and burdens, such as

those associated with investigating the

actual use of the disclosed mark to

assess any conflict, initiating

proceedings to cancel the registration or

oppose the application of the disclosed

mark, engaging in civil litigation to

resolve a dispute over the mark, or

changing business plans to avoid use of

the party’s chosen mark. In addition,

such persons may incur costs and

burdens unnecessarily if a registered

mark is not actually in use in commerce

in the U.S., or is not in use in commerce

in connection with all the goods/

services identified in the registration.

An accurate and reliable trademark

register helps avoid such needless costs

and burdens. A valid claim of use made

as to a registered mark likewise benefits

the registrant. Fraudulent or inaccurate

claims of use jeopardize the validity of

any resulting registration and may

subject it to attack and render it

vulnerable to cancellation.

The chosen alternative also addresses

the increasing problem of foreign

trademark applicants who purportedly

are pro se and who are filing what

appear to be inaccurate and possibly

even fraudulent submissions that violate

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the Act and/or the USPTO’s rules.

Requiring foreign applicants, registrants,

and parties to retain U.S. counsel in all

trademark matters before the USPTO

will likely reduce the instances of UPL

and misconduct and, when misconduct

does occur, it will enable OED to more

effectively pursue those who are

engaged in the UPL and/or misconduct.

The threat of a claim of UPL has not

been effective with foreign applicants

and the unqualified foreign individuals,

attorneys, or firms advising them.

The USPTO has estimated the costs

for complying with the proposed rule

using FY17 filing numbers for pro se

applicants and registrants with a

domicile or principal place of business

outside the U.S. or its territories, and for

Madrid applicants and registrants. As

discussed in the preamble, the cost

estimates reflect the representation

status at the time the USPTO electronic

record was searched to obtain the data.

Applicants under section 1 or section

44 of the Act who are subject to the

proposed rule would be required to

retain U.S. counsel to meet the

requirements for a complete application

under proposed § 2.32(a)(4). If such

applicants did not retain counsel prior

to filing an application, the USPTO

estimates that the cost for representation

would be $42,413,400. The estimated

cost if such applicants had retained

counsel prior to filing their applications

would be $73,800,950. Madrid

applications, which are based on section

66(a) of the Act, are initially filed with

the IB and subsequently transmitted to

the USPTO. In FY17, the USPTO

received 24,418 Madrid applications in

which the applicant had an address

outside the U.S. or its territories, and

thus would be subject to the proposed

requirement. There is currently no

provision for designating a U.S. attorney

in an application submitted to the IB.

Therefore, the USPTO presumes that

none of the Madrid applicants subject to

the requirement would have retained

U.S. counsel prior to filing. However,

USPTO records indicate that at some

point after filing, 14,602 of those FY17

Madrid applicants were represented by

counsel. Therefore, only the remaining

9,816 Madrid applicants would be

subject to the requirement to retain U.S.

counsel to prosecute their applications.

Therefore, the USPTO estimates the cost

to all FY17 Madrid applicants to retain

counsel after filing their applications as

$9,816,000. The estimated costs to FY17

pro se registrants who registered under

section 1, section 44, or section 66(a)

and who would be subject to the

requirement to retain U.S. counsel when

filing a post-registration maintenance

document is $1,018,500.

The costs to comply with the

requirement proposed herein would be

borne by foreign applicants, registrants,

and parties. The proposed requirement

would not impact individuals or large or

small entities with a domicile or

principal place of business within the

U.S. Moreover, the proposed

requirement would provide qualitative

value to all applicants and registrants,

as well as to consumers, because it

would result in a more accurate and

reliable trademark register. Under the

proposed rule, submissions would be

made by practitioners subject to the

disciplinary jurisdiction of OED, making

it less likely that they would be signed

by an unauthorized party or contain

statements that are inaccurate,

particularly as to any averment of use of

the mark in U.S. commerce or intention

to use the mark. Because it would result

in a more accurate and reliable

trademark register, fewer applicants,

registrants, and parties would incur the

costs associated with investigating the

actual use of a mark to assess any

conflict, initiating proceedings to cancel

a registration or oppose an application,

engaging in civil litigation to resolve a

dispute over a mark, or changing

business plans to avoid use of a chosen

mark.

The second alternative considered

would be to take no action at this time.

This alternative was rejected because

the Office has determined that the

requirement is needed to accomplish

the stated objectives of instilling greater

confidence in the public that U.S.

registrations that issue to foreign

applicants are not subject to

invalidation for reasons such as

improper signatures and use claims and

enabling the USPTO to more effectively

use available mechanisms to enforce

foreign applicant compliance with

statutory and regulatory requirements in

trademark matters.

A third alternative considered was to

propose a revision to § 2.22 that would

require foreign applicants to retain U.S.

counsel in order to obtain a filing date

for an application under section 1 and/

or section 44 of the Act. This alternative

was rejected due to international

considerations. Thus, when the USPTO

receives an application filed by a foreign

domiciliary, with a filing basis under

section 1 and/or section 44 of the Act

that does not comply with the

requirements of proposed § 2.11(a), the

USPTO must inform the applicant that

appointment of a qualified U.S. attorney

is required. Although this places an

additional burden on the USPTO, it

minimizes the impact of the proposed

rule on small entities. Although such

entities may choose to incur the cost of

retaining counsel to prepare and file an

application, they would not be required

to do so.

6. 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.

C. Executive Order 12866 (Regulatory

Planning and Review): This rulemaking

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

Office has complied with Executive

Order 13563 (Jan. 18, 2011).

Specifically, the Office 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) involved the

public in an open exchange of

information and perspectives among

experts in relevant disciplines, affected

stakeholders in the private sector and

the public as a whole, and provided on-

line 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.

E. Executive Order 13771 (Reducing

Regulation and Controlling Regulatory

Costs): This proposed rule is not subject

to the requirements of E.O. 13771

because it is expected to result in no

more than de minimis costs to citizens

and residents of the United States.

F. 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).

G. 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

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required under Executive Order 13175

(Nov. 6, 2000).

H. 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).

I. 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).

J. 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).

K. 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).

L. 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 notice are not expected to result in

an annual effect on the economy of 100

million dollars 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 notice is

not expected to result in a ‘‘major rule’’

as defined in 5 U.S.C. 804(2).

M. Unfunded Mandates Reform Act of

1995: The changes set forth in this

notice do not involve a Federal

intergovernmental mandate that will

result in the expenditure by State, local,

and tribal governments, in the aggregate,

of 100 million dollars (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 dollars (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.

N. National Environmental Policy

Act: 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.

O. National Technology Transfer and

Advancement Act: 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.

P. Paperwork Reduction Act: This

rulemaking involves information

collection requirements that are subject

to review by the Office of Management

and Budget (OMB) under the Paperwork

Reduction Act of 1995 (44 U.S.C. 3501

et seq.). The collection of information

involved in this rule has been reviewed

and previously approved by OMB under

control numbers 0651–0009, 0651–0050,

0651–0051, 0651–0054, 0651–0055,

0651–0056, and 0651–0061. We

estimate that 41,000 applications will

have an additional burden of 5 minutes

due to this rulemaking, adding in 3,000

burden hours across all trademark

collections.

Notwithstanding any other provision

of law, no person is required to respond

to nor shall a 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 displays a currently valid

OMB control number.

List of Subjects

37 CFR Part 2

Administrative practice and

procedure, Trademarks.

37 CFR Part 11

Administrative practice and

procedure, Lawyers, 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 Office proposes to amend

parts 2 and 11 of title 37 as follows:

PART 2—RULES OF PRACTICE IN

TRADEMARK CASES

■1. The authority citation for 37 CFR

part 2 continues to read as follows:

Authority: 15 U.S.C. 1123 and 35 U.S.C.

2 unless otherwise noted. Sec. 2.99 also

issued under secs. 16, 17, 60 Stat. 434; 15

U.S.C. 1066, 1067.

■2. Amend § 2.2 by adding paragraphs

(o) and (p) to read as follows:

§ 2.2 Definitions.

* * * * *

(o) The term domicile as used in this

part means the permanent legal place of

residence of a natural person.

(p) The term principal place of

business as used in this part means the

location of a juristic entity’s

headquarters where the entity’s senior

executives or officers ordinarily direct

and control the entity’s activities and is

usually the center from where other

locations are controlled.

■3. Revise § 2.11 to read as follows:

§ 2.11 Requirement for representation.

(a) An applicant, registrant, or party to

a proceeding whose domicile or

principal place of business is not

located within the United States or its

territories must be represented by an

attorney, as defined in § 11.1 of this

chapter, who is qualified to practice

under § 11.14 of this chapter. The Office

cannot aid in the selection of an

attorney.

(b) The Office may require an

applicant, registrant, or party to a

proceeding to furnish such information

or declarations as may be reasonably

necessary to the proper determination of

whether the applicant, registrant, or

party is subject to the requirement in

paragraph (a) of this section.

(c) An applicant, registrant, or party to

a proceeding may be required to state

whether assistance within the scope of

§ 11.5(b)(2) of this chapter was received

in a trademark matter before the Office

and, if so, to disclose the name(s) of the

person(s) providing such assistance and

whether any compensation was given or

charged.

(d) Failure to respond to requirements

issued pursuant to paragraphs (a)

through (c) of this section is governed

by § 2.65.

(e) Providing false, fictitious, or

fraudulent information in connection

with the requirements of paragraphs (a)

through (c) of this section shall be

deemed submitting a paper for an

improper purpose, in violation of

§ 11.18(b) of this chapter, and subject to

the sanctions and actions provided in

§ 11.18(c).

■4. Amend § 2.17 by revising paragraph

(e) to read as follows:

§ 2.17 Recognition for representation.

* * * * *

(e) Foreign attorneys and agents.

Recognition to practice before the Office

in trademark matters is governed by

§ 11.14(c) of this chapter.

* * * * *

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■5. Amend § 2.22 by:

■a. Removing the word ‘‘and’’ at the

end of paragraph (a)(19);

■b. Removing the period at the end of

paragraph (a)(20) and adding ‘‘; and’’ in

its place; and

■c. Adding paragraph (a)(21).

The addition reads as follows:

§ 2.22 Requirements for a TEAS Plus

application.

(a) * * *

(21) An applicant whose domicile or

principal place of business is not

located within the United States or its

territories must designate an attorney as

the applicant’s representative, pursuant

to § 2.11(a).

* * * * *

■6. Amend § 2.32 by revising paragraph

(a)(4) to read as follows:

§ 2.32 Requirements for a complete

trademark or service mark application.

(a) * * *

(4) The address of the applicant.

When the applicant is, or must be,

represented by a practitioner, as defined

in § 11.1 of this chapter, who is

qualified to practice under § 11.14 of

this chapter, the practitioner’s name,

postal address, email address, and bar

information;

* * * * *

PART 11—REPRESENTATION OF

OTHERS BEFORE THE UNITED

STATES PATENT AND TRADEMARK

OFFICE

■7. The authority citation for 37 CFR

part 11 continues to read as follows:

Authority: 5 U.S.C. 500, 15 U.S.C. 1123,

35 U.S.C. 2(b)(2), 32, 41; Sec. 1, Pub. L. 113–

227, 128 Stat. 2114.

■8. Amend § 11.14 by revising

paragraphs (c) and (e) to read as follows:

§ 11.14 Individuals who may practice

before the Office in trademark and other

non-patent matters.

* * * * *

(c) Foreigners. (1) Any foreign

attorney or agent not a resident of the

United States who shall file a written

application for reciprocal recognition

under paragraph (f) of this section and

prove to the satisfaction of the OED

Director that he or she is a registered

and active member in good standing

before the trademark office of the

country in which he or she resides and

practices and possesses good moral

character and reputation, may be

recognized for the limited purpose of

representing parties located in such

country before the Office in the

presentation and prosecution of

trademark matters, provided: The

trademark office of such country and the

USPTO have reached an official

understanding to allow substantially

reciprocal privileges to those permitted

to practice in trademark matters before

the Office. Recognition under this

paragraph (c) shall continue only during

the period that the conditions specified

in this paragraph (c) obtain.

(2) In any trademark matter where a

foreign attorney or agent authorized

under paragraph (c)(1) of this section is

representing an applicant, registrant, or

party to a proceeding, an attorney, as

defined in § 11.1 and qualified to

practice under paragraph (a) of this

section, must also be appointed

pursuant to § 2.17(b) and (c) of this

chapter as the representative with

whom the Office will communicate and

conduct business.

* * * * *

(e) Appearance. No individual other

than those specified in paragraphs (a),

(b), and (c) of this section will be

permitted to practice before the Office

in trademark matters on behalf of a

client. Except as specified in § 2.11(a) of

this chapter, an individual may appear

in a trademark or other non-patent

matter in his or her own behalf or on

behalf of:

(1) A firm of which he or she is a

member;

(2) A partnership of which he or she

is a partner; or

(3) A corporation or association of

which he or she is an officer and which

he or she is authorized to represent.

* * * * *

Dated: February 6, 2019.

Andrei Iancu,

Under Secretary of Commerce for Intellectual

Property and Director of the United States

Patent and Trademark Office.

[FR Doc. 2019–02154 Filed 2–14–19; 8:45 am]

BILLING CODE 3510–16–P

ENVIRONMENTAL PROTECTION

AGENCY

40 CFR Part 52

[EPA–R04–OAR–2018–0542; FRL–9989–59–

Region 4]

Air Plan Approval; Florida; 2008 8-Hour

Ozone Interstate Transport

AGENCY

: Environmental Protection

Agency (EPA).

ACTION

: Proposed rule.

SUMMARY

: The Environmental Protection

Agency (EPA) is proposing to approve

Florida’s October 3, 2017, State

Implementation Plan (SIP) submission

pertaining to the ‘‘good neighbor’’

provision of the Clean Air Act (CAA or

Act) for the 2008 8-hour ozone National

Ambient Air Quality Standards

(NAAQS). The good neighbor provision

requires each state’s implementation

plan to address the interstate transport

of air pollution in amounts that

contribute significantly to

nonattainment, or interfere with

maintenance of a NAAQS in any other

state. In this action, EPA is proposing to

determine that Florida’s SIP contains

adequate provisions to prohibit

emissions within the state from

contributing significantly to

nonattainment or interfering with

maintenance of the 2008 8-hour ozone

NAAQS in any other state.

DATES

: Comments must be received on

or before March 18, 2019.

ADDRESSES

: Submit your comments,

identified by Docket ID No. EPA–R04–

OAR–2018–0542 at https://

www.regulations.gov. Follow the online

instructions for submitting comments.

Once submitted, comments cannot be

edited or removed from regulations.gov.

EPA may publish any comment received

to its public docket. Do not submit

electronically any information you

consider to be Confidential Business

Information (CBI) or other information

whose disclosure is restricted by statute.

Multimedia submissions (audio, video,

etc.) must be accompanied by a written

comment. The written comment is

considered the official comment and

should include discussion of all points

you wish to make. EPA will generally

not consider comments or comment

contents located outside of the primary

submission (i.e., on the web, cloud, or

other file sharing system). For

additional submission methods, the full

EPA public comment policy,

information about CBI or multimedia

submissions, and general guidance on

making effective comments, please visit

https://www2.epa.gov/dockets/

commenting-epa-dockets.

FOR FURTHER INFORMATION CONTACT

:

Nacosta C. Ward, Air Regulatory

Management Section, Air Planning and

Implementation Branch, Air, Pesticides

and Toxics Management Division, U.S.

Environmental Protection Agency,

Region 4, 61 Forsyth Street SW, Atlanta,

Georgia 30303–8960. Ms. Ward can also

be reached via telephone at (404) 562–

9140 and via electronic mail at

ward.nacosta@epa.gov.

SUPPLEMENTARY INFORMATION

:

I. Background

On March 12, 2008, EPA promulgated

an ozone NAAQS that revised the levels

of the primary and secondary 8-hour

ozone standards from 0.08 parts per

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