Trademark cases: Mark description in trademark applications,

[Federal Register: October 25, 2007 (Volume 72, Number 206)]

[Proposed Rules]

[Page 60609-60611]

From the Federal Register Online via GPO Access [wais.access.gpo.gov]

[DOCID:fr25oc07-29]

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2007-0035]

RIN 0651-AC17

Changes in the Requirement for a Description of the Mark in Trademark Applications

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

SUMMARY: The United States Patent and Trademark Office (``USPTO'') proposes to amend the Rules of Practice in Trademark Cases to require a description of the mark in all applications to register a mark not in standard characters.

DATES: Comments must be received by December 24, 2007 to ensure consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic mail message to TM Description Requirements@uspto.gov. Written comments may also be submitted by mail to Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, attention Cynthia C. Lynch; or by hand delivery to the Trademark Assistance Center, Concourse Level, James Madison Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention Cynthia C. Lynch; or by

[[Page 60610]]

electronic mail message via the Federal eRulemaking Portal. See the Federal eRulemaking Portal Web site (http://www.regulations.gov) for

additional instructions on providing comments via the Federal eRulemaking Portal.

The comments will be available for public inspection on the Office's Web site at http://www.uspto.gov. and will also be available

at the Office of the Commissioner for Trademarks, Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia.

FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy Commissioner for Trademark Examination Policy, by telephone at (571) 272-8742.

SUPPLEMENTARY INFORMATION: The USPTO proposes to amend 37 CFR 2.37 to require trademark applicants to include a description of the mark for all marks not in standard characters and to make conforming amendments to 37 CFR 2.32(a) and 2.52(b)(5). The requirement will facilitate greater accuracy and efficiency in design coding and in pseudo-mark data determinations. Therefore, the revised rules will promote more accurate and complete searchability of marks in the USPTO records.

The current rule regarding descriptions of marks provides that a description ``may be included in the application and must be included if required by the trademark examining attorney.'' 37 CFR 2.37. Because the USPTO has concluded that the description contributes to the accuracy of design coding and pseudo-mark determinations that are made before the application reaches the examining attorney, and ultimately to more complete searches, the USPTO proposes a rule change to facilitate initial design coding and to make available a description of the mark in all files where it is likely to be useful. Thus, any applicant whose mark is not in standard characters would be required to provide a description of the mark as an application requirement.

Trademarks may consist of words, designs, or both. Both the USPTO and the public search USPTO trademark records for purposes of assessing likelihood of confusion with proposed trademarks. Words in trademarks generally can be searched directly. In contrast, designs in trademarks must be classified based on the elements they contain (e.g., stars or trees), so that they can be searched. In its electronic systems, the USPTO applies a coding system based on the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks. Codes established under the system are assigned to trademark applications that contain designs at the time they are filed. The design classification system used is unique to the USPTO, and is applied only to marks with design elements.

Design coding of marks in new applications initially occurs before the applications are assigned to examining attorneys. When the mark in an application contains a design element, USPTO employees or contractors in the Pre-Examination section designate and apply the appropriate design codes for the mark. To improve searchability, the USPTO has also created a pseudo-mark field for some marks in the electronic database. The pseudo-mark field shows the literal equivalent of a pictorial representation in a design mark, or spellings that are similar or phonetically equivalent to wording in a word mark. The USPTO has engaged in a variety of efforts to improve the accuracy of its design code and pseudo-mark data, and continues to explore options for further improvement.

The USPTO has determined that requiring the applicant to describe any design elements proves very useful for determining the proper design codes and pseudo-mark data. For example, the applicant's description of its design elements can clarify ambiguous design elements or ``double entendres'' created by design elements, and will help to ensure that the design coding and pseudo-mark determinations have been comprehensive.

Discussion of Specific Rules

The Office proposes to revise 37 CFR 2.37 and to make conforming amendments to 37 CFR 2.32(a) and 2.52(b)(5). These rules concern descriptions of marks in trademark applications (37 CFR 2.37), the requirements for a complete application (37 CFR 2.32), and the requirements for drawings (37 CFR 2.52). Trademark Rule 2.37 currently provides that a description of the mark may be mandated by the trademark examining attorney. The proposed revisions make the inclusion of a description mandatory for all applications where the mark is not in standard characters. The remainder of Sec. 2.37 would not change, in that a description may be included for standard character mark applications, and must be included if the trademark examining attorney so requires. The conforming amendments make the inclusion of a description a requirement for a complete application and remove discretion from applicants as to whether a description is necessary for non-standard character marks.

Rulemaking Requirements

Executive Order 13132: This rule does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866: This rule has been determined not to be significant for purposes of Executive Order 12866 (Sept. 30, 1993).

Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither a regulatory flexibility analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are required. See 5 U.S.C. 603.

Paperwork Reduction Act: This notice involves information collection requirements which 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 collections of information involved in this notice have been reviewed and previously approved by OMB under OMB control numbers 0651-0009 and 0651-0050. This notice proposes to amend 37 CFR 2.37 to require a description of the mark in all applications to register a mark not in standard characters. The USPTO is not resubmitting information collection packages to OMB for its review and approval because the changes in this proposed rule do not affect the information collection requirements associated with OMB control numbers 0651-0009 and 0651-0050.

The estimated annual reporting burden for OMB control number 0651- 0009 Applications for Trademark Registration is 253,801 responses and 74,593 burden hours. The estimated time per response ranges from 15 to 23 minutes, depending on the nature of the information. The time for reviewing instructions, gathering and maintaining the data needed, and completing and reviewing the collection of information is included in the estimate. The collection is approved through September of 2008.

The estimated annual reporting burden for OMB control number 0651- 0050 Electronic Response to Office Action and Preliminary Amendment Forms is 117,400 responses and 19,958 burden hours. The estimated time per response is 10 minutes. The time for reviewing instructions, gathering and maintaining the data needed, and completing and reviewing the collection of information is included in the estimate. The collection is approved through April of 2009.

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Comments are invited on: (1) Whether the collection of information is necessary for proper performance of the functions of the agency; (2) the accuracy of the agency's estimate of the burden; (3) ways to enhance the quality, utility, and clarity of the information to be collected; and (4) ways to minimize the burden of the collection of information to respondents.

Interested persons are requested to send comments regarding these information collections, including suggestions for reducing this burden, to the Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Cynthia C. Lynch), and to the Office of Information and Regulatory Affairs, Office of Management and Budget, New Executive Office Building, Room 10202, 725 17th Street, NW., Washington, DC 20503 (Attn: Desk Officer for the Patent and Trademark Office).

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 in 37 CFR Part 2

Administrative practice and procedure, Trademarks.

For the reasons stated, 37 CFR part 2 is proposed to be amended 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, 35 U.S.C. 2, unless otherwise noted.

2. Revise Sec. 2.37 to read as follows:

   Sec. 2.37 Description of mark.

   A description of the mark must be included if the mark is not in standard characters. In an application where the mark is in standard characters, a description may be included and must be included if required by the trademark examining attorney.

3. Add Sec. 2.32(a)(8) to read as follows:

   Sec. 2.32 Requirements for a complete application.

   (a) * * *

   (8) If the mark is not in standard characters, a description of the mark. * * * * *

4. Revise Sec. 2.52(b)(5) to read as follows:

   Sec. 2.52 Types of drawings and format for drawings.

   * * * * *

   (b) * * *

   (5) Description of mark. A description of the mark must be included. * * * * *

   Dated: October 19, 2007. Jon W. Dudas, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

   [FR Doc. E7-21075 Filed 10-24-07; 8:45 am]

   BILLING CODE 3510-16-P