[Federal Register Volume 79, Number 15 (Thursday, January 23, 2014)]
[Proposed Rules]
[Pages 3750-3757]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2014-01126]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 2, 6, and 7

[Docket No. PTO-T-2013-0026]
RIN 0651-AC88


Miscellaneous Changes to Trademark Rules of Practice and the 
Rules of Practice in Filings Pursuant to the Protocol Relating to the 
Madrid Agreement Concerning the International Registration of Marks

AGENCY: United States Patent and Trademark Office, Commerce.

ACTIONS: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (``Office'') 
proposes to amend the Trademark Rules of Practice and the Rules of 
Practice in Filings Pursuant to the Protocol Relating to the Madrid 
Agreement Concerning the International Registration of Marks to benefit 
the public by providing greater clarity as to certain requirements 
relating to representation before the Office, applications for 
registration, examination procedures, amendment of applications, 
publication and post publication procedures, appeals, petitions, post 
registration practice, correspondence in trademark cases, 
classification of goods and services, and procedures under the Madrid 
Protocol. For the most part, the proposed rule changes are intended to 
codify existing practice.

DATES: Comments must be received by April 23, 2014 to ensure 
consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic 
mail message to TMFRNotices@uspto.gov. Written comments also may be 
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Cynthia C. Lynch; 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 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. Written comments will be available 
for public inspection on the Office's Web site at http://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, Virginia.

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

SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: The proposed 
rules will benefit the public by providing more comprehensive and 
specific guidance regarding certain requirements relating to 
representation before the Office, applications for registration, 
examination procedures, amendment of applications, publication and post 
publication procedures, appeals, petitions, post registration practice, 
correspondence in trademark cases, classification of goods and 
services, and procedures under the Madrid Protocol. For the most part, 
the proposed rule changes are intended to codify existing practice.
    Summary of Major Provisions: As stated above, the Office proposes 
to revise the rules in parts 2, 6, and 7 of title 37 of the Code of 
Federal Regulations to codify current Office practice and provide 
sufficient detail regarding miscellaneous requirements relating to 
representation before the Office, applications for registration, 
examination procedures, amendment of applications, publication and post 
publication procedures, appeals, petitions, post registration practice, 
correspondence in trademark cases, classification of goods and 
services, and procedures under the Madrid Protocol.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    References below to ``the Act,'' ``the Trademark Act,'' or ``the 
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., 
as amended. References to ``TMEP'' or ``Trademark Manual of Examining 
Procedure'' refer to the October 2013 edition.

Discussion of Proposed Rules Changes

Representation by Attorneys or Other Authorized Persons

    The Office proposes to revise Sec.  2.17(d)(1) to remove the 
reference to the number of powers of attorney that can be filed via the 
Trademark Electronic Application System (``TEAS'') for existing 
applications or registrations that have the identical owner and 
attorney. The TEAS Revocation of Attorney/Domestic Representative and/
or Appointment of Attorney/Domestic Representative form currently 
indicates that up to 300 applications or registrations may be amended 
per request. The proposed revision is intended to remove outdated 
information, and will allow more flexibility for future enhancements to 
TEAS.
    The Office proposes to revise Sec.  2.19(b) to require compliance 
with Sec.  11.116, rather than Sec.  10.40, as part 10 of this chapter 
has been removed and reserved (78 FR 20180 (April 3, 2013)) and Sec.  
11.116 now sets out the requirements for terminating representation.

Applications for Registration

    The Office proposes to revise Sec.  2.22(a)(19) to indicate that if 
a TEAS Plus applicant owns one or more registrations for the same mark 
shown in the application, and the last listed owner of the prior 
registration(s) differs from the owner of the application, the 
application must include a claim of ownership for the prior 
registration(s) in order to be entitled to the reduced filing fee under 
Sec.  2.6(a)(1)(iii). This limits the

[[Page 3751]]

circumstances under which a TEAS Plus applicant is required to claim 
ownership of a prior registration and is consistent with the proposed 
revision to the claim of ownership requirements in Sec.  2.36.
    The Office proposes to revise Sec.  2.36 to indicate that an 
applicant is only required to claim ownership of prior registrations 
for the same or similar marks if the owner listed in the application 
differs from the owner last listed in the Office's database for such 
prior registrations. This is consistent with existing practice.
    The Office proposes to revise Sec.  2.38(b) to remove the 
requirement that an application indicate that, if the applied-for mark 
is not being used by the applicant but is being used by one or more 
related companies whose use inures to the benefit of the applicant 
under section 5 of the Act, such fact must be indicated in the 
application.
    The Office further proposes to redesignate Sec.  2.38(c) as Sec.  
2.38(b), as the requirement in current Sec.  2.38(b) is being removed.

Examination of Application and Action by Applicants

    The Office proposes to add new Sec.  2.62(c) to specify that 
responses to Office actions must be filed through TEAS, transmitted by 
facsimile, mailed, or delivered by hand, and that responses sent by 
email will not be accorded a date of receipt. This is consistent with 
existing practice.
    The Office proposes to amend the title of Sec.  2.63 from 
``Reexamination'' to ``Action after response,'' as revised Sec.  2.63 
incorporates a discussion of reexamination, the filing of petitions and 
appeals, and abandonments.
    The Office proposes to revise Sec.  2.63(a) to clarify that after 
submission of a response by the applicant, the examining attorney will 
review all statutory refusal(s) and/or requirement(s) in light of the 
response. This is consistent with TMEP section 713.
    The Office proposes to add Sec.  2.63(a)(1) to clarify that the 
applicant may respond to a non-final action that maintains any 
requirement(s) or substantive refusal(s) by filing a timely response to 
the examiner's action. This is consistent with TMEP section 713.
    The Office proposes to add Sec.  2.63(a)(2) to clarify that the 
applicant may respond to a non-final action that maintains any 
requirement(s) by filing a petition to the Director under Sec.  2.146 
if the subject matter of the requirement(s) is appropriate for 
petition, that if the petition is denied, the applicant will have six 
months from the date of the Office action which repeated the 
requirement(s), or thirty days from the date of the decision on the 
petition, whichever is later, to comply with the repeated 
requirement(s), and that a requirement which is the subject of a 
petition to the Director subsequently may not be the subject of an 
appeal to the Trademark Trial and Appeal Board (``TTAB''). This is 
consistent with TMEP sections 713 and 1702.
    The Office proposes to revise Sec.  2.63(b) to clarify that the 
examining attorney may make final a refusal or a requirement upon 
review of a response or request for reconsideration. This is consistent 
with current Sec.  2.64(a) and TMEP sections 713 and 714.03.
    The Office proposes to add Sec.  2.63(b)(1) to clarify that the 
applicant may respond to a final action that maintains any substantive 
refusal(s) under sections 2, 3, 4, 5, 6, or 23 of the Act by filing an 
appeal to the TTAB under Sec. Sec.  2.141 and 2.142. This is consistent 
with TMEP section 1501.01.
    The Office proposes to add Sec.  2.63(b)(2) to clarify that the 
applicant may respond to a final action that withdraws all substantive 
refusals but maintains any requirement(s) either by filing an appeal to 
the TTAB under Sec. Sec.  2.141 and 2.142, or by filing a petition to 
the Director under Sec.  2.146, if the subject matter of the 
requirement(s) is procedural, and therefore appropriate for petition. 
This is consistent with current Sec.  2.63(b) and TMEP sections 1501.01 
and 1704.
    The Office proposes to add Sec.  2.63(b)(3) to clarify that the 
applicant may file a request for reconsideration of the final action 
prior to the expiration of the time for filing an appeal to the TTAB or 
a petition to the Director, that the request must be signed by a party 
authorized under Sec.  2.193(e)(2), and that the request does not stay 
or extend the time for filing an appeal or petition. This is consistent 
with current Sec.  2.64(b) and TMEP section 715.03.
    The Office proposes to add Sec.  2.63(b)(4) to clarify that the 
filing of a request for reconsideration that does not result in the 
withdrawal of all refusals and requirements, without the filing of a 
timely appeal or petition, will result in abandonment of the 
application for incomplete response. This is consistent with section 
12(b) of the Act and current Sec.  2.65(a).
    The Office proposes to add Sec.  2.63(c) to clarify both that if a 
petition to the Director under Sec.  2.146 is denied, the applicant 
will have until six months from the date of issuance of the Office 
action that repeated the requirement(s), or made it final, or thirty 
days from the date of the decision on the petition, whichever date is 
later, to comply with the requirement(s), and that a requirement that 
is the subject of a petition decided by the Director subsequently may 
not be the subject of an appeal to the TTAB. This is consistent with 
current Sec.  2.63(b) and TMEP section 1702.
    The Office proposes to add Sec.  2.63(d) to clarify that if an 
amendment to allege use is filed during the six-month response period 
after issuance of a final action, the examining attorney will examine 
the amendment, but the filing of the amendment does not stay or extend 
the time for filing an appeal to the TTAB or a petition to the 
Director. This is consistent with current Sec.  2.64(c)(1) and TMEP 
sections 711 and 1104.
    The Office proposes to remove and reserve Sec.  2.64 and 
incorporate updated final action procedures into proposed revised Sec.  
2.63.
    The Office proposes to revise Sec.  2.65(a) both to clarify that an 
application will be deemed abandoned if an applicant fails to respond, 
or respond completely, to an Office action within six months of the 
issuance date, but a timely petition to the Director or notice of 
appeal to the TTAB, if appropriate, is considered to be a response that 
avoids abandonment, and to revise the reference to Sec.  2.63(b) so as 
to reference Sec.  2.63(a) and (b). The clarification is consistent 
with TMEP section 718.03 and the revision to the reference accounts for 
the proposed amendment to Sec.  2.63 which sets out the conditions for 
a petition under Sec.  2.146 in Sec.  2.63(a) and (b) instead of only 
Sec.  2.63(b).
    The Office proposes to add Sec.  2.65(a)(1) to clarify that if an 
applicant fails to timely respond to an Office action, but all refusals 
or requirements are expressly limited to certain goods or services, the 
application will be abandoned only as to those goods or services. This 
is consistent with current Sec.  2.65(a) and TMEP section 718.02(a).
    The Office proposes to add Sec.  2.65(a)(2) to clarify that an 
applicant may, in certain situations, be granted thirty days, or to the 
end of the response period set forth in the action, whichever is 
longer, to provide information omitted from a response before the 
examining attorney considers the issue of abandonment. This is 
consistent with current Sec.  2.65(b) and TMEP section 718.03(b).
    The Office proposes to revise Sec.  2.65(b) to clarify that an 
application will be abandoned if an applicant expressly abandons the 
application pursuant to Sec.  2.68. This is consistent with TMEP 
section 718.01.

[[Page 3752]]

    The Office proposes to revise Sec.  2.65(c) to clarify that an 
application under section 1(b) of the Act will be abandoned if the 
applicant fails to file a timely statement of use under Sec.  2.88 or a 
request for an extension of time for filing a statement of use under 
Sec.  2.89. This is consistent with section 1(d)(4) of the Act and TMEP 
sections 1108.01 and 1109.04.
    The Office proposes to revise Sec.  2.68(a) to indicate that a 
request for abandonment or withdrawal may not subsequently be 
withdrawn. This is consistent with TMEP section 718.01, and is intended 
to provide applicants, registration owners, and the public assurance of 
the accuracy of the status of applications or registrations after 
filings are received by the Office.
    The Office proposes to revise Sec.  2.68(b) for clarity by moving 
the ``in any proceeding before the Office'' clause to the end of the 
sentence.

Amendment of Application

    The Office proposes to revise Sec.  2.77(b) to indicate that 
amendments not listed in Sec.  2.77(a) may be entered in the 
application in the time period between issuance of the notice of 
allowance and submission of a statement of use only with the express 
permission of the Director, after consideration on petition under Sec.  
2.146. This is consistent with TMEP sections 1107 and 1505.01(d), which 
currently require a waiver of Sec.  2.77 on petition.

Publication and Post Publication

    The Office proposes to revise Sec.  2.81(b) to remove the list of 
items that will be included on the notice of allowance. The proposed 
change allows greater flexibility in the format of notices of 
allowance, to allow for changes that may occur in conjunction with the 
Office's ``Trademarks Next Generation'' information technology 
initiative. As a matter of practice, at this time, the Office plans to 
continue to maintain the current format of the notice of allowance.
    The Office proposes to revise Sec.  2.84(b) to clarify that an 
application that is not the subject of an inter partes proceeding 
before the TTAB may be amended after the mark has been published for 
opposition, but before the certificate of registration has been issued 
under section 1(a), 44, or 66(a) of the Act, or before the notice of 
allowance has been issued in an application under section 1(b) of the 
Act, if the amendment meets the requirements of Sec. Sec.  2.71, 2.72, 
and 2.74. This is consistent with existing practice.

Appeals

    The Office proposes to revise Sec.  2.142(f)(3) and (f)(6) to 
remove the references to Sec.  2.64, as the Office is proposing to 
remove and reserve Sec.  2.64, with the sections of Sec.  2.64 relevant 
to Sec.  2.142(f)(3) and (f)(6) incorporated into proposed revised 
Sec.  2.63.
    The Office proposes to revise Sec.  2.145(a) to add registrants who 
have filed an affidavit or declaration under section 71 of the Act and 
are dissatisfied with a decision of the Director to the list of parties 
eligible to appeal to the U.S. Court of Appeals for the Federal 
Circuit. This is consistent with TMEP section 1613.18(d).
    The Office proposes to revise Sec.  2.146(a)(1) and (g) to replace 
references to Sec.  2.63(b) with references to Sec.  2.63(a) and (b), 
as the Office is proposing to list conditions for a petition under 
Sec.  2.146 in Sec.  2.63(a) and (b) instead of only Sec.  2.63(b).

Post Registration

    The Office proposes to revise Sec.  2.172 to clarify that a 
surrender for cancellation may not subsequently be withdrawn. This is 
consistent with existing practice.
    The Office proposes to revise Sec.  2.185(a) to indicate that 
deficiencies in renewal applications may be corrected after 
notification from the Office. This is consistent with existing 
practice.

General Information and Correspondence in Trademark Cases

    The Office proposes to amend Sec.  2.198(a)(1) by adding Sec.  
2.198(a)(1)(viii) to include affidavits under section 71 of the Act in 
the list of documents excluded from the Office's Express Mail 
procedure. This is consistent with the handling of corresponding 
affidavits under section 8 of the Act. In connection with this 
addition, the Office proposes to revise Sec.  2.198(a)(1)(vi) and Sec.  
2.198(a)(1)(vii) for clarity.

Classification of Goods and Services

    The Office proposes to revise Sec.  6.1(5) to add the wording ``or 
veterinary'' to the entry ``dietetic food and substances adapted for 
medical use'' in the listing of goods for International Class 5. This 
is consistent with the current heading for the international class as 
established by the Committee of Experts of the Nice Union and set forth 
in the International Classification of Goods and Services for the 
Purposes of the Registration of Marks published annually by the World 
Intellectual Property Organization (``WIPO'') on its Web site.

Madrid Protocol

    The Office proposes to revise Sec.  7.11(a)(3)(ii) to clarify that 
if the mark in the basic application or registration is depicted in 
black-and-white and includes a color claim, an international 
application filed on paper must include both black-and-white and color 
reproductions of the mark, and an international application filed 
electronically must include a color reproduction of the mark. This is 
consistent with existing practice as the WIPO paper application form 
requires the applicant to submit both black-and-white and color 
reproductions of the mark, while the Office's electronic application 
form requires only that the applicant submit a color reproduction of 
the mark.
    The Office proposes to revise Sec.  7.23(a)(5) to require that a 
request to record an assignment of an international registration 
submitted through the Office include a statement that, after making a 
good faith effort, the assignee could not obtain the assignor's 
signature for the request to record the assignment and be signed and 
verified or supported by declaration under Sec.  2.20. This revision is 
intended to ensure that assignees make a good-faith effort to obtain 
the assignor's signature before invoking this rule and requesting the 
Office to forward the assignment document to the International Bureau 
(``IB'') of WIPO.
    The Office proposes to revise Sec.  7.23(a)(6) to indicate that a 
request to record an assignment of an international registration 
submitted through the Office must include an indication that the 
assignment applies to the designation to the United States or an 
international registration that was originally based on a United States 
application or registration. This revision is intended to ensure that 
an assignee of an international registration based on a U.S. 
registration or application is treated the same as an assignee of a 
designation to the U.S. Current practice is that the owner of the 
international registration based on a U.S. registration or application 
must file a petition to waive this subsection of the rule.
    The Office proposes to revise Sec.  7.24(b)(5)(ii) to require that 
a request, submitted through the Office, to record a restriction, or 
the release of a restriction, that is the result of an agreement 
between the holder of the international registration and the party 
restricting the holder's right of disposal must include a statement 
indicating that, after making a good faith effort, the signature of the 
holder of the international registration could not be

[[Page 3753]]

obtained for the request to record the restriction, or release of the 
restriction, and be signed and verified or supported by declaration 
under Sec.  2.20. This revision is intended to ensure that assignees 
make a good faith effort to obtain the assignor's signature before 
invoking this rule and requesting the Office to forward the document to 
the IB.
    The Office proposes to revise Sec.  7.24(b)(7) to indicate that a 
request to record a restriction, or the release of a restriction, must 
include an indication that the restriction, or the release of the 
restriction, of the holder's right of disposal of the international 
registration applies to the designation to the United States or an 
international registration that was originally based on a United States 
application or registration. This revision is intended to ensure that 
an assignee of an international registration based on a U.S. 
registration or application is treated the same as an assignee of a 
designation to the U.S. Current practice is that the owner of the 
international registration based on a U.S. registration or application 
must file a petition to waive this subsection of the rule.
    The Office proposes to revise Sec.  7.25(a) to add Sec. Sec.  2.21, 
2.76, 2.88, and 2.89 to the list of sections in part 2 not applicable 
to an extension of protection. This is consistent with existing 
practice as the section relates to procedures only applicable to 
applications under sections 1 or 44 of the Act.
    The Office proposes to amend Sec.  7.31 by revising the 
introductory text and Sec.  7.31(a)(3) to require that a request to 
transform an extension of protection to the United States into a U.S. 
application specify the goods and/or services to be transformed. This 
revision is intended to ensure that the Office transforms an accurate 
listing of goods and/or services.
    The Office further proposes to redesignate current Sec.  7.31(a)(3) 
as Sec.  7.31(a)(4) and current Sec.  7.31(a)(4) as new Sec.  
7.31(a)(5) because current Sec.  7.31(a)(3) is being revised to require 
that a request to transform an extension of protection to the United 
States into a U.S. application specify the goods and/or services to be 
transformed.

Rulemaking Considerations

    Administrative Procedure Act: The changes proposed in this 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See 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 proposed rule changes 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)). However, the Office has chosen to seek public comment 
before implementing the rule.
    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 Act analysis, nor a certification 
under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), is 
required. See 5 U.S.C. 603.
    In addition, for the reasons set forth herein, the Deputy General 
Counsel for General Law of the United States Patent and Trademark 
Office has certified to the Chief Counsel for Advocacy of the Small 
Business Administration that rule changes proposed in this notice will 
not have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b). This notice proposes changes to rules of 
agency practice and procedure. The primary impact of the proposed rule 
changes is to provide greater clarity as to certain requirements 
relating to representation before the Office, applications for 
registration, examination procedures, amendment of applications, 
publication and post publication procedures, appeals, petitions, post 
registration practice, correspondence in trademark cases, 
classification of goods and services, and procedures under the Madrid 
Protocol. For the most part, the proposed rule changes are intended to 
codify existing practice. The burdens, if any, to all entities, 
including small entities, imposed by these proposed rule changes would 
be minor. Additionally, in a number of instances, the proposed rule 
changes would lessen the burdens on applicants. Therefore, the proposed 
rule changes will not have a significant economic impact on a 
substantial number of small entities.
    Executive Order 12866: The proposed rulemaking has been determined 
to be not significant for purposes of Executive Order 12866.
    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 proposed rule changes; (2) tailored the proposed rules to impose 
the least burden on society consistent with obtaining the regulatory 
objectives; (3) selected a regulatory approach that maximizes net 
benefits; (4) specified performance objectives; (5) identified and 
assessed available alternatives; (6) provided the public with a 
meaningful opportunity to participate in the regulatory process, 
including soliciting the views of those likely affected prior to 
issuing a notice of proposed rulemaking, 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, to the extent applicable.
    Executive Order 13132: The proposed rulemaking does not contain 
policies with federalism implications sufficient to warrant preparation 
of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    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 
Office will submit a report containing the final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this proposed rulemaking 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).
    Unfunded Mandate Reform Act of 1995: The Unfunded Mandates Reform 
Act (2 U.S.C. 1501 et seq.) requires that agencies prepare an 
assessment of anticipated costs and benefits before

[[Page 3754]]

issuing any rule that may result in expenditure by State, local, and 
tribal governments, in the aggregate, or by the private sector, of $100 
million or more (adjusted annually for inflation) in any given year. 
This proposed rulemaking would have no such effect on State, local, and 
tribal governments or the private sector.
    Paperwork Reduction Act: This proposed rulemaking involves 
information collection requirements which are subject to review by the 
U.S. Office of Management and Budget (OMB) under the Paperwork 
Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The Office has 
determined that there would be no new information collection 
requirements or impacts to existing information collection requirements 
associated with this proposed rulemaking. The collections of 
information involved in this proposed rulemaking have 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.
    The Office is soliciting comments to: (1) Evaluate whether the 
proposed collection of information is necessary for the proper 
performance of the functions of the agency, including whether the 
information will have practical utility; (2) evaluate the accuracy of 
the agency's estimate of the burden of the proposed collection of 
information, including the validity of the methodology and assumptions 
used; (3) enhance the quality, utility, and clarity of the information 
to be collected; and (4) minimize the burden of information on those 
who are to respond, including through the use of appropriate automated, 
electronic, mechanical, or other technological collection techniques or 
other forms of information technology, e.g., permitting electronic 
submission of responses.
    Interested persons are requested to send comments regarding this 
information collection by April 23, 2014, to: (1) 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, Attention: Nicholas A. Fraser, the Desk Officer 
for the United States Patent and Trademark Office; and (2) by mail to 
Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, 
attention Cynthia C. Lynch; 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 electronic mail message via the Federal eRulemaking Portal. All 
comments submitted directly to the Office or provided on the Federal 
eRulemaking Portal should include the docket number (PTO-T-2013-0026).
    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 6

    Administrative practice and procedure, Classification, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, International registration, 
Trademarks.

    For the reasons given 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, 6, and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for 37 CFR Part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

0
2. Revise Sec.  2.17(d)(1) to read as follows:


Sec.  2.17  Recognition for representation.

* * * * *
    (d) * * *
    (1) The owner of an application or registration may appoint a 
practitioner(s) qualified to practice under Sec.  11.14 of this chapter 
to represent the owner for all existing applications or registrations 
that have the identical owner name and attorney through TEAS.
* * * * *
0
3. Revise Sec.  2.19(b) introductory text to read as follows:


Sec.  2.19  Revocation or withdrawal of attorney.

* * * * *
    (b) Withdrawal of attorney. If the requirements of Sec.  11.116 of 
this chapter are met, a practitioner authorized to represent an 
applicant, registrant, or party to a proceeding in a trademark case may 
withdraw upon application to and approval by the Director or, when 
applicable, upon motion granted by the Trademark Trial and Appeal 
Board. The practitioner should file the request to withdraw soon after 
the practitioner notifies the client of his/her intent to withdraw. The 
request must include the following:
* * * * *
0
4. Revise Sec.  2.22(a)(19) to read as follows:


Sec.  2.22  Filing requirements for a TEAS Plus application.

    (a) * * *
    (19) If the applicant owns one or more registrations for the same 
mark, and the owner(s) last listed in Office records of the prior 
registration(s) for the same mark differs from the owner(s) listed in 
the application, a claim of ownership of the registration(s) identified 
by the registration number(s), pursuant to Sec.  2.36; and
* * * * *
0
5. Revise Sec.  2.36 to read as follows:


Sec.  2.36  Identification of prior registrations.

    Prior registrations of the same or similar marks owned by the 
applicant should be identified in the application if the owner(s) last 
listed in Office records of the prior registrations differs from the 
owner(s) listed in the application.
0
6. Amend Sec.  2.38 by revising paragraph (b) to read as follows, and 
removing paragraph (c):


Sec.  2.38  Use by predecessor or by related companies.

* * * * *
    (b) The Office may require such details concerning the nature of 
the relationship and such proofs as may be necessary and appropriate 
for the purpose of showing that the use by related companies inures to 
the benefit of the applicant and does not affect the validity of the 
mark.
0
7. Amend Sec.  2.62 by adding new paragraph (c), to read as follows:


Sec.  2.62  Procedure for filing response.

* * * * *
    (c) Form. Responses must be filed through TEAS, transmitted by 
facsimile, mailed or delivered by hand, as set out in Sec.  2.190(a). 
Responses sent via email will not be accorded a date of receipt.
0
8. Revise Sec.  2.63 to read as follows:


Sec.  2.63  Action after response.

    (a) Repeated non-final refusal or requirement. After response by 
the applicant, the examining attorney will review all statutory 
refusals and/or requirement(s) in light of the response.
    (1) If, after review of the applicant's response, the examining 
attorney issues

[[Page 3755]]

a non-final action that maintains any previously issued substantive 
refusal(s) to register or repeats any requirement(s), the applicant may 
submit a timely response to the action.
    (2) If, after review of the applicant's response, the examining 
attorney issues a non-final action that contains no substantive 
refusals to register, but maintains any requirement(s), the applicant 
may respond to such repeated requirement(s) by filing a timely petition 
to the Director for relief from the repeated requirement(s) if the 
subject matter of the repeated requirement(s) is appropriate for 
petition to the Director (see Sec.  2.146(b)). If the petition is 
denied, the applicant shall have until six months from the date of the 
Office action which repeated the requirement(s) or thirty days from the 
date of the decision on the petition, whichever date is later, to 
comply with the repeated requirement(s). A requirement which is the 
subject of a petition decided by the Director subsequently may not be 
the subject of an appeal to the Trademark Trial and Appeal Board.
    (b) Final refusal or requirement. Upon review of a response or 
request for reconsideration, the examining attorney may state that the 
refusal(s) to register, or the requirement(s), is final.
    (1) If the examining attorney issues a final action that maintains 
any substantive refusal(s) to register, the applicant may respond by 
filing a timely appeal to the Trademark Trial and Appeal Board under 
Sec. Sec.  2.141 and 2.142.
    (2) If the examining attorney issues a final action that contains 
no substantive refusals to register, but maintains any requirement(s), 
the applicant may respond by filing: (i) A timely appeal of the 
requirement(s) to the Trademark Trial and Appeal Board under Sec. Sec.  
2.141 and 2.142; or (ii) a timely petition to the Director under Sec.  
2.146 to review the requirement(s), if the subject matter of the 
requirement(s) is procedural, and therefore appropriate for petition.
    (3) Prior to the expiration of the time for filing an appeal or a 
petition, the applicant may file a request for reconsideration of the 
final action. The request must be signed by the applicant, someone with 
legal authority to bind the applicant, or a practitioner qualified to 
practice under Sec.  11.14, in accordance with the requirements of 
Sec.  2.193(e)(2). Filing a request for reconsideration does not stay 
or extend the time for filing an appeal or petition.
    (4) Filing a request for reconsideration that does not result in 
the withdrawal of all refusals and requirements, without the filing of 
a timely appeal or petition, will result in abandonment of the 
application for incomplete response, pursuant to Sec.  2.65(a).
    (c) If a petition to the Director under Sec.  2.146 is denied, the 
applicant will have until six months from the date of issuance of the 
Office action that repeated the requirement(s), or made it final, or 
thirty days from the date of the decision on the petition, whichever 
date is later, to comply with the requirement(s). A requirement that is 
the subject of a petition decided by the Director subsequently may not 
be the subject of an appeal to the Trademark Trial and Appeal Board.
    (d) If an applicant in an application under section 1(b) of the Act 
files an amendment to allege use under Sec.  2.76 during the six-month 
response period after issuance of a final action, the examining 
attorney will examine the amendment. The filing of such an amendment 
does not stay or extend the time for filing an appeal or petition.


Sec.  2.64  [Removed and Reserved]

0
9. Remove and reserve Sec.  2.64.
0
10. Revise Sec.  2.65 to read as follows:


Sec.  2.65  Abandonment.

    (a) An application will be abandoned if an applicant fails to 
respond to an Office action, or to respond completely, within six 
months from the date of issuance. A timely petition to the Director 
pursuant to Sec. Sec.  2.63(a) and (b) and 2.146 or notice of appeal to 
the Trademark Trial and Appeal Board pursuant to Sec.  2.142, if 
appropriate, is a response that avoids abandonment.
    (1) If all refusals and/or requirements are expressly limited to 
certain goods and/or services, the application will be abandoned only 
as to those goods and/or services.
    (2) When a timely response by the applicant is a bona fide attempt 
to advance the examination of the application and is a substantially 
complete response to the examining attorney's action, but consideration 
of some matter or compliance with a requirement has been omitted, the 
applicant may be granted thirty days, or to the end of the response 
period set forth in the action to which the substantially complete 
response was submitted, whichever is longer, to explain and supply the 
omission before considering the question of abandonment.
    (b) An application will be abandoned if an applicant expressly 
abandons the application pursuant to Sec.  2.68.
    (c) An application will be abandoned if an applicant in an 
application under section 1(b) of the Act fails to timely file either a 
statement of use under Sec.  2.88 or a request for an extension of time 
for filing a statement of use under Sec.  2.89.
0
11. Revise Sec.  2.68 to read as follows:


Sec.  2.68  Express abandonment (withdrawal) of application.

    (a) Written document required. An applicant may expressly abandon 
an application by filing a written request for abandonment or 
withdrawal of the application, signed by the applicant, someone with 
legal authority to bind the applicant (e.g., a corporate officer or 
general partner of a partnership), or a practitioner qualified to 
practice under Sec.  11.14 of this chapter, in accordance with the 
requirements of Sec.  2.193(e)(2). A request for abandonment or 
withdrawal may not subsequently be withdrawn.
    (b) Rights in the mark not affected. Except as provided in Sec.  
2.135, the fact that an application has been expressly abandoned shall 
not affect any rights that the applicant may have in the mark set forth 
in the abandoned application in any proceeding before the Office.
0
12. Revise Sec.  2.77(b) to read as follows:


Sec.  2.77  Amendments between notice of allowance and statement of 
use.

* * * * *
    (b) Other amendments may be entered during this period only with 
the express permission of the Director, after consideration on petition 
under Sec.  2.146. If the Director determines that the amendment 
requires review by the examining attorney, the petition will be denied 
and the amendment may be resubmitted with the statement of use in order 
for the applicant to preserve its right for review.
0
13. Revise Sec.  2.81(b) to read as follows:


Sec.  2.81  Post publication.

* * * * *
    (b) In an application under section 1(b) of the Act for which no 
amendment to allege use under Sec.  2.76 has been submitted and 
accepted, if no opposition is filed within the time permitted or all 
oppositions filed are dismissed, and if no interference is declared, a 
notice of allowance will issue. Thereafter, the applicant must submit a 
statement of use as provided in Sec.  2.88.
0
14. Revise Sec.  2.84(b) to read as follows:


Sec.  2.84  Jurisdiction over published applications.

* * * * *
    (b) After publication, but before the certificate of registration 
is issued in an application under section 1(a), 44, or 66(a) of the 
Act, or before the notice of allowance is issued in an application 
under section 1(b) of the Act, an application that is not the subject 
of an inter partes proceeding before the

[[Page 3756]]

Trademark Trial and Appeal Board may be amended if the amendment meets 
the requirements of Sec. Sec.  2.71, 2.72 and 2.74. Otherwise, an 
amendment to such an application may be submitted only upon petition to 
the Director to restore jurisdiction over the application to the 
examining attorney for consideration of the amendment and further 
examination. The amendment of an application that is the subject of an 
inter partes proceeding before the Trademark Trial and Appeal Board is 
governed by Sec.  2.133.
0
15. Revise Sec.  2.142(f)(3) and (6) to read as follows:


Sec.  2.142  Time and manner of ex parte appeals.

* * * * *
    (f) * * *
    (3) If the further examination does result in an additional ground 
for refusal of registration, the examiner and appellant shall proceed 
as provided by Sec. Sec.  2.61, 2.62, and 2.63. If the ground for 
refusal is made final, the examiner shall return the application to the 
Board, which shall thereupon issue an order allowing the appellant 
sixty days from the date of the order to file a supplemental brief 
limited to the additional ground for the refusal of registration. If 
the supplemental brief is not filed by the appellant within the time 
allowed, the appeal may be dismissed.
* * * * *
    (6) If, during an appeal from a refusal of registration, it appears 
to the examiner that an issue not involved in the appeal may render the 
mark of the appellant unregistrable, the examiner may, by written 
request, ask the Board to suspend the appeal and to remand the 
application to the examiner for further examination. If the request is 
granted, the examiner and appellant shall proceed as provided by 
Sec. Sec.  2.61, 2.62, and 2.63. After the additional ground for 
refusal of registration has been withdrawn or made final, the examiner 
shall return the application to the Board, which shall resume 
proceedings in the appeal and take further appropriate action with 
respect thereto.
* * * * *
0
16. Revise Sec.  2.145(a) to read as follows:


Sec.  2.145  Appeal to court and civil action.

    (a) Appeal to U.S. Court of Appeals for the Federal Circuit. An 
applicant for registration, or any party to an interference, 
opposition, or cancellation proceeding, or any party to an application 
to register as a concurrent user, hereinafter referred to as inter 
partes proceedings, who is dissatisfied with the decision of the 
Trademark Trial and Appeal Board, and any registrant who has filed an 
affidavit or declaration under section 8 or section 71 of the Act or 
who has filed an application for renewal and is dissatisfied with the 
decision of the Director (Sec. Sec.  2.165, 2.184), may appeal to the 
U.S. Court of Appeals for the Federal Circuit. The appellant must take 
the following steps in such an appeal:
* * * * *
0
17. Revise Sec.  2.146(a)(1) and (g) to read as follows:


Sec.  2.146  Petitions to the Director.

    (a) * * *
    (1) From any repeated or final formal requirement of the examiner 
in the ex parte prosecution of an application if permitted by Sec.  
2.63(a) and (b);
* * * * *
    (g) The mere filing of a petition to the Director will not act as a 
stay in any appeal or inter partes proceeding that is pending before 
the Trademark Trial and Appeal Board nor stay the period for replying 
to an Office action in an application except when a stay is 
specifically requested and is granted or when Sec. Sec.  2.63(a) and 
(b) and 2.65 are applicable to an ex parte application.
* * * * *
0
18. Revise Sec.  2.172 to read as follows:


Sec.  2.172  Surrender for cancellation.

    Upon application by the owner, the Director may permit any 
registration to be surrendered for cancellation. The application for 
surrender must be signed by the owner of the registration, someone with 
legal authority to bind the owner (e.g., a corporate officer or general 
partner of a partnership), or a practitioner qualified to practice 
under Sec.  11.14 of this chapter. When a registration has more than 
one class, one or more entire class(es) but fewer than the total number 
of classes may be surrendered. Deletion of fewer than all the goods or 
services in a single class constitutes amendment of the registration as 
to that class (see Sec.  2.173), rather than surrender. A surrender for 
cancellation may not subsequently be withdrawn.
0
19. Revise Sec.  2.185(a) to read as follows:


Sec.  2.185  Correcting deficiencies in renewal application.

    (a) If the renewal application is filed within the time periods set 
forth in section 9(a) of the Act, deficiencies may be corrected after 
notification from the Office, as follows:
* * * * *
0
20. Amend Sec.  2.198(a)(1) by revising paragraphs (a)(1)(vi) and 
(a)(1)(vii), and adding new paragraph (a)(1)(viii), to read as follows:


Sec.  2.198  Filing of correspondence by ``Express Mail.''

    (a)(1) * * *
    (vi) Renewal requests under section 9 of the Act;
    (vii) Requests to change or correct addresses; and
    (viii) Affidavits of use under section 71 of the Act.
* * * * *

PART 6--CLASSIFICATION OF GOODS AND SERVICES UNDER THE TRADEMARK 
ACT

0
21. The authority citation for 37 CFR Part 6 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

0
22. Revise Sec.  6.1, paragraph 5., to read as follows:


Sec.  6.1  International schedule of classes of goods and services.

* * * * *
    5. Pharmaceutical and veterinary preparations; sanitary 
preparations for medical purposes; dietetic food and substances adapted 
for medical or veterinary use, food for babies; dietary supplements for 
humans and animals; plasters, materials for dressings; material for 
stopping teeth, dental wax; disinfectants; preparations for destroying 
vermin; fungicides, herbicides.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
23. The authority citation for 37 CFR Part 7 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
0
24. Revise Sec.  7.11(a)(3)(ii) to read as follows:


Sec.  7.11  Requirements for international application originating from 
the United States.

    (a) * * *
    (3) * * *
    (ii) If the mark in the basic application or registration is 
depicted in black-and-white and includes a color claim, an 
international application filed on paper must include both a black-and-
white reproduction of the mark and a color reproduction of the mark, 
and an international application filed

[[Page 3757]]

electronically must include a color reproduction of the mark.
* * * * *
0
25. Revise Sec.  7.23(a)(5) and (6) to read as follows:


Sec.  7.23  Requests for recording assignments at the International 
Bureau.

* * * * *
    (a) * * *
    (5) A statement that, after a good faith effort, the assignee could 
not obtain the assignor's signature for the request to record the 
assignment, signed and verified (sworn to) or supported by a 
declaration under Sec.  2.20 of this chapter;
    (6) An indication that the assignment applies to the designation to 
the United States or an international registration that is based on a 
U.S. application or registration;
* * * * *
0
26. Revise Sec.  7.24(b)(5)(ii) and (b)(7) to read as follows:


Sec.  7.24  Requests to record security interest or other restriction 
of holder's rights of disposal or release of such restriction submitted 
through the Office.

* * * * *
    (b) * * *
    (5) * * *
    (ii) Where the restriction is the result of an agreement between 
the holder of the international registration and the party restricting 
the holder's right of disposal, a statement that after a good faith 
effort, the signature of the holder of the international registration 
could not be obtained for the request to record the restriction, or 
release of the restriction, signed and verified (sworn to) or supported 
by a declaration under Sec.  2.20 of this chapter;
* * * * *
    (7) An indication that the restriction, or the release of the 
restriction, of the holder's right of disposal of the international 
registration applies to the designation to the United States or an 
international registration that is based on a U.S. application or 
registration; and
* * * * *
0
27. Revise Sec.  7.25(a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.21-2.23, 2.76, 2.88, 2.89, 2.130-2.131, 
2.160-2.166, 2.168, 2.173, 2.175, 2.181-2.186 and 2.197, all sections 
in part 2 and all sections in part 11 of this chapter shall apply to an 
extension of protection of an international registration to the United 
States, including sections related to proceedings before the Trademark 
Trial and Appeal Board, unless otherwise stated.
* * * * *
0
28. Amend Sec.  7.31 by revising the introductory text and paragraphs 
(a)(3) and (a)(4), and adding new paragraph (a)(5) to read as follows:


Sec.  7.31  Requirements for transformation of an extension of 
protection to the United States into a U.S. application.

    If the International Bureau cancels an international registration 
in whole or in part, under Article 6(4) of the Madrid Protocol, the 
holder of that international registration may file a request to 
transform the goods and/or services to which the cancellation applies 
in the corresponding pending or registered extension of protection to 
the United States into an application under section 1 or 44 of the Act.
    (a) * * *
    (3) Identify the goods and/or services to be transformed, if other 
than all the goods and/or services that have been cancelled;
    (4) The application filing fee for at least one class of goods or 
services required by Sec.  2.6(a)(1) of this chapter; and
    (5) An email address for receipt of correspondence from the Office.
* * * * *

    Dated: January 15, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director, United States Patent and Trademark Office.
[FR Doc. 2014-01126 Filed 1-22-14; 8:45 am]
BILLING CODE 3510-16-P