[Federal Register Volume 84, Number 147 (Wednesday, July 31, 2019)]
[Rules and Regulations]
[Pages 37081-37099]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-16259]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. PTO-T-2017-0004]
RIN 0651-AD15
Changes to the Trademark Rules of Practice To Mandate Electronic
Filing
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) amends the Rules of Practice in Trademark Cases and the Rules
of Practice in Filings Pursuant to the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks to mandate
electronic filing of trademark applications and all submissions
associated with trademark applications and registrations, and to
require the designation of an email address for receiving USPTO
correspondence, with limited exceptions. This rule advances the USPTO's
IT strategy to achieve complete end-to-end electronic processing of
trademark-related submissions, thereby improving administrative
efficiency by facilitating electronic file management, optimizing
workflow processes, and reducing processing errors.
DATES: This rule is effective on October 5, 2019.
FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy
Commissioner for Trademark Examination Policy, [email protected],
(571) 272-8946.
SUPPLEMENTARY INFORMATION:
Purpose: The USPTO revises the rules in parts 2 and 7 of title 37
of the Code of Federal Regulations to require electronic filing through
the USPTO's
[[Page 37082]]
Trademark Electronic Application System (TEAS) of all trademark
applications based on section 1 and/or section 44 of the Trademark Act
(Act), 15 U.S.C. 1051, 1126, and submissions filed with the USPTO
concerning applications or registrations. These submissions include,
for example, responses to Office actions, registration maintenance
filings, international applications, subsequent designations, and
direct filings with the USPTO relating to extensions of protection
through the international registration system. In addition, this
rulemaking requires the designation of an email address for receiving
USPTO correspondence concerning these submissions.
The requirement to file an initial application through TEAS does
not apply to applications based on section 66(a) of the Act, 15 U.S.C.
1141f, because these applications are initially filed with the
International Bureau (IB) of the World Intellectual Property
Organization and subsequently transmitted electronically to the USPTO.
However, section 66(a) applicants and registrants are required to
electronically file all subsequent submissions concerning their
applications or registrations and to designate an email address for
receiving USPTO correspondence. This rulemaking does not encompass
electronic filing of submissions made to the Trademark Trial and Appeal
Board (TTAB) in ex parte or inter partes proceedings. Such submissions
are currently required to be filed through the USPTO's Electronic
System for Trademark Trials and Appeals (ESTTA).
This rule is intended to maximize end-to-end electronic processing
of applications and related submissions, as well as registration
maintenance filings. Achieving complete end-to-end electronic
processing of all trademark submissions is an IT objective of the
USPTO. End-to-end electronic processing means that an application and
all application- and registration-related submissions are filed and
processed electronically, and any related correspondence between the
USPTO and the relevant party is conducted entirely electronically.
Thus, an application that is processed electronically end to end would
be filed through TEAS, and all submissions related to the application,
such as voluntary amendments, responses to Office actions, or
allegations of use, would also be filed through TEAS. With this change,
outgoing USPTO correspondence regarding the application will be sent by
email. Likewise, all submissions related to a registration must be
filed through TEAS and outgoing USPTO correspondence regarding the
registration will be sent by email.
Although more than 99% of applications under section 1 or section
44 are now filed electronically, just under 88% are currently
prosecuted electronically from end to end. This means that
approximately 12% of these filings still involve paper processing.
Prior reductions in the filing fees for electronic submissions resulted
in almost 100% of new applications being filed electronically, but have
not achieved complete end-to-end electronic processing. By mandating
electronic filing of trademark applications and submissions concerning
applications or registrations through TEAS, the amended rules will
reduce paper processing to an absolute minimum and thus maximize end-
to-end electronic processing.
End-to-end electronic processing of all applications, related
correspondence, statutorily required registration maintenance
submissions, and other submissions will benefit trademark customers and
increase the USPTO's administrative efficiency by facilitating
electronic file management, optimizing workflow processes, and reducing
processing errors. Paper submissions hinder efficiency and accuracy and
are more costly to process than electronic submissions because they
require manual uploading of scanned copies of the documents into the
USPTO electronic records system and manual data entry of information in
the documents. Electronic submissions through TEAS, on the other hand,
generally do not require manual processing and are automatically
categorized, labeled, and uploaded directly into an electronic file in
the USPTO electronic records system for review by USPTO employees and
the public. If a TEAS submission contains amendments or other changes
to the information in the record, often those amendments and changes
are automatically entered into the electronic records system.
Furthermore, TEAS submissions are more likely to include all necessary
information because the USPTO can update its forms to specifically
tailor the requirements for a particular submission and require that
the information be validated prior to submission. Consequently,
preparing and submitting an application or related document, or a
registration maintenance filing, through TEAS is likely to result in a
more complete submission and take less time than preparing and mailing
the paper equivalent. Thus, TEAS submissions help ensure more complete
filings, expedite processing, shorten pendency, minimize manual data
entry and potential data-entry errors, and eliminate the potential for
lost or missing papers.
This rule also requires the designation of an email address for
receiving USPTO correspondence concerning these submissions, which is
either that of the applicant or registrant, if unrepresented, or an
authorized attorney, if one has been appointed. Currently, in order to
receive a filing date for a new application under section 1 or section
44, the USPTO requires, among other things, that the applicant
designate an ``address for correspondence.'' 37 CFR 2.21(a)(2).
Applicants who filed using the TEAS Plus or TEAS Reduced Fee (TEAS RF)
filing options have been required to designate an email address for
correspondence, while those who filed on paper or through the regular
TEAS application were permitted to designate a postal address. This
rule requires applicants and registrants, and parties to a proceeding
before the TTAB, to provide and maintain an email address for
correspondence. The requirement to designate an email address for
receiving USPTO correspondence benefits the USPTO and its customers by
reducing costs and increasing efficiency. Email correspondence can be
sent, received, and processed faster than paper correspondence, which
must be printed, collated, scanned, and uploaded to the electronic
records system, and mailed domestically or internationally, at greater
expense. Under this rule, applicants and registrants, and parties to a
proceeding before the TTAB, are also required to provide and maintain a
postal address. The domicile address specified for an applicant,
registrant, or party to a proceeding will be treated by the Office as
the postal address for the applicant, registrant, or party. In the rare
circumstance where mail cannot be delivered to its domicile address,
the applicant, registrant, or party may request to designate a postal
address where mail can be delivered.
A qualified practitioner representing an applicant, registrant, or
party also is required to provide and maintain a postal address. This
requirement ensures the USPTO's ability to contact the applicant,
registrant, party, or practitioner by mail in certain limited
circumstances, such as when an appointed practitioner is suspended or
excluded from practice before the USPTO and is no longer the
correspondent, or when the Office sends a physical registration
certificate.
Previous Initiatives to Increase End-to-End Electronic Processing:
The
[[Page 37083]]
USPTO previously amended its rules to encourage electronic filing
through TEAS and email communication by establishing the TEAS Plus and
TEAS RF filing options for applications based on section 1 and/or
section 44. See 37 CFR 2.6. These filing options have lower application
fees than a regular TEAS application, but, unlike a regular TEAS
application, they require the applicant to (1) provide, authorize, and
maintain an email address for receiving USPTO correspondence regarding
the application and (2) file certain application-related submissions
through TEAS. See 37 CFR 2.22, 2.23. If the applicant does not fulfill
these requirements, the applicant must pay an additional processing
fee. See 37 CFR 2.6, 2.22, 2.23.
Despite these additional requirements, and the potential additional
processing fee for noncompliance, the TEAS RF filing option is now the
most popular filing option among USPTO customers, followed by TEAS
Plus. These two filing options currently account for nearly 99% of all
new trademark applications filed under section 1 and/or section 44,
suggesting that applicants are comfortable with filing and
communicating with the USPTO electronically.
Furthermore, in January 2017, the USPTO revised its rules to
increase fees for paper filings to bring the fees nearer to the cost of
processing the filings and encourage customers to use lower-cost
electronic options. As a result of these rule changes, the USPTO is now
processing nearly 88% of applications filed under section 1 and/or
section 44 electronically end to end.
Discussion of Rule Changes
(1) New Applications. Under this rule, Sec. 2.21 is amended to
require applicants to file electronically, through TEAS, any trademark,
service mark, certification mark, collective membership mark, or
collective trademark or service mark application for registration on
the Principal or Supplemental Register under section 1 and/or section
44. As noted above, the requirement to file an application through TEAS
does not apply to applications based on section 66(a) because they are
initially processed by the IB and subsequently transmitted
electronically to the USPTO.
The TEAS RF filing option, which required applicants to maintain an
email address for receiving USPTO correspondence regarding the
application and to file the application and related submissions through
TEAS, will become the default, or ``standard,'' filing option and will
be renamed ``TEAS Standard'' on the effective date of this rule. The
filing fee for this option remains at $275 per class. The TEAS Plus
option also remains at $225 per class, while the TEAS option under 37
CFR 2.6(a)(1)(ii) at $400 per class is eliminated. However, the per-
class fee of $400 in Sec. 2.6(a)(1)(ii), which is the current filing
fee for applications under section 66(a), is retained as the filing fee
for such applications.
Under this rule, an application filed on paper under section 1 and/
or section 44 will not receive a filing date unless it falls under one
of the limited exceptions discussed below.
(2) Additional Processing Fee. Previously, the additional
processing fee under Sec. 2.6(a)(1)(v) applied to TEAS Plus and TEAS
RF applications that failed to meet the requirements under Sec.
2.22(a) or Sec. 2.23(a) at filing, and to TEAS Plus and TEAS RF
applications when certain submissions were not filed through TEAS or
when the applicant failed to maintain a valid email address for receipt
of communications from the Office. Under this rule, the processing fee
applies only to TEAS Plus applications that fail to meet the amended
filing requirements under Sec. 2.22(a). All applicants and
registrants, except those specifically exempted, are now required to
electronically file any submissions in connection with an application
or registration and to designate and maintain an email address for
correspondence. A TEAS Plus or TEAS Standard (previously TEAS RF)
applicant who meets the amended filing requirements, but thereafter
seeks acceptance of a submission filed on paper, pursuant to new Sec.
2.147, or a waiver of the requirement to file such submissions
electronically, must then pay the relevant paper filing fee and the
paper petition fee for any submission filed on paper.
(3) Submissions Required to Be Filed Through TEAS. This rule amends
Sec. 2.23 to also require that correspondence concerning a trademark
application or registration under section 1, section 44, or section
66(a) be filed through TEAS, except for correspondence required to be
submitted to the Assignment Recordation Branch or through ESTTA.
Although all correspondence is required to be filed electronically, the
USPTO recognizes that there may be certain circumstances when a paper
filing is necessary. For those instances, the Office codifies a new
regulatory section, at 37 CFR 2.147, which sets out a procedure for
requesting acceptance of paper submissions under particular
circumstances. This section is discussed below in the explanation of
the limited exceptions to the amended requirements.
Although this rule requires correspondence to be filed through
TEAS, current USPTO practice regarding informal communications is
unchanged. Thus, for example, an applicant or an applicant's attorney
may still conduct informal communications with an examining attorney
regarding a particular application by telephone or email. See Trademark
Manual of Examining Procedure (TMEP) Sec. 709.05.
(4) Email Correspondence Address. This rule amends Sec. Sec. 2.21,
2.23, and 7.4 to require that applicants and registrants provide a
valid email address for themselves and any appointed practitioner for
receipt of correspondence from the USPTO. Thus, except in the case of
nationals from exempted treaty countries, as discussed below, the
USPTO's required method of corresponding with applicants and
registrants is via Office actions and notices sent to the designated
email address. If the email transmission were to fail because, for
example, the applicant or registrant provided an incorrect email
address, the recipient's mailbox is full, or the email provider has a
service outage, the USPTO will not attempt to contact the correspondent
designated pursuant to Sec. 2.18(a) by other means. Instead, pursuant
to amended Sec. 2.23(d), the applicant or registrant is responsible
for monitoring the status of the application or registration using the
USPTO's Trademark Status and Document Retrieval (TSDR) system, which
displays any USPTO Office actions and notices that have issued, any
submissions properly filed with the USPTO, and any other actions taken
by the USPTO.
As noted above, applications under section 66(a) are processed and
transmitted electronically to the USPTO from the IB. These applications
do not include an email address for receiving USPTO correspondence, and
the USPTO does not anticipate the IB will update its systems to include
email addresses prior to implementation of this rule. In addition, only
2.9% of Madrid applications were approved for publication upon first
action in fiscal year 2017. Therefore, the USPTO believes it is
appropriate to waive the requirement for an email address prior to
publication in this limited situation and until such time as the IB's
systems are updated. However, Madrid applicants are subject to the
requirements under Sec. Sec. 2.23(b) and 2.32(a)(2), (4) to file all
submissions electronically and to provide an email
[[Page 37084]]
address on such submissions for receipt of correspondence from the
USPTO.
Under Sec. 2.18(c), an applicant, registrant, or party to a
proceeding must maintain a current and accurate correspondence address
for itself and its qualified practitioner, if one is designated.
(5) Changes from the Proposed Rule. The USPTO further amends Sec.
2.22(a) by revising amended paragraph (a)(3) to limit the requirement
for the names and citizenship of general partners to domestic
partnerships and to add a requirement for the names and citizenship of
active members of domestic joint ventures. These changes are added for
consistency with current Sec. Sec. 2.32(a)(3)(iii) and (iv). The USPTO
also revises Sec. 2.22(a)(4) to set out the requirements for sole
proprietorships in order to further clarify the requirements for TEAS
Plus applicants at filing.
The USPTO amends Sec. 2.32(a)(3)(i) to require the applicant's
legal entity type in addition to its citizenship and adds Sec.
2.32(a)(1)(v) to require the state of organization of a sole
proprietorship and the name and citizenship of the sole proprietor.
These requirements are added for consistency with current Sec.
2.22(a)(2) and new Sec. 2.22(a)(4).
The USPTO further amends Sec. 2.56(a) to include cross references
to Sec. 2.160 and Sec. 7.36 and also amends Sec. 2.56(b) and (c) to
update these paragraphs with criteria for electronic submissions and
better conform them to existing requirements in the Trademark Act and
precedential case law for specimens of use, including that web pages
must show the URL and access or print date. The amendments also more
clearly conform the rule language to the statutory requirements for use
in commerce by requiring that the specimen show use of the mark placed
on the goods, on containers or packaging for the goods, or on labels or
tags affixed to the goods.
The USPTO further amends Sec. 2.147(b)(2) to require a copy of the
previously mailed paper submission since the USPTO will not process the
original submission and will destroy it after 90 days. This requirement
is analogous to the requirements in Sec. Sec. 2.64(a)(2)(i),
2.197(b)(2), and 2.198(e)(2) for a copy of previously submitted
correspondence in order to establish timeliness.
The USPTO further amends Sec. 7.25 to delete the proposed cross
reference to Sec. 2.198 and to delete the cross reference to Sec.
2.197 since these sections could be applicable to extensions of
protection in some circumstances.
Limited Exceptions for Paper Submissions: As discussed below, the
USPTO will permit paper submissions of applications and correspondence
in limited situations. This rule establishes a process for filing paper
submissions in such situations.
(1) International Agreements: The United States (U.S.) is a member
of both the Trademark Law Treaty (TLT) and the subsequent Singapore
Treaty on the Law of Trademarks (STLT), which treaties constitute two
separate international instruments that may be ratified or acceded to
independently by member countries. One provision of TLT mandates that
its members accept paper trademark applications from nationals of other
TLT members. STLT, on the other hand, allows its members to choose the
means of transmittal of communications, whether on paper, in electronic
form, or in any other form. This incongruity between the treaties was
addressed in Article 27(2) of STLT, which provides that any Contracting
Party to both STLT and TLT shall continue to apply TLT in its relations
with Contracting Parties to TLT that are not parties to STLT.
Accordingly, nationals of TLT members that are not also members of STLT
at the time of submission of the relevant document to the USPTO are not
required to file applications electronically or receive communications
from the USPTO via email, nor are they required to submit a petition
with a paper filing, until such time as their country joins STLT.
Currently, the USPTO must accept paper trademark applications from
nationals of the following countries: Bahrain, Bosnia and Herzegovina,
Burkina Faso, Chile, Colombia, Costa Rica, Cyprus, Czech Republic,
Dominican Republic, Egypt, El Salvador, Guatemala, Guinea, Honduras,
Hungary, Indonesia, Monaco, Montenegro, Morocco, Nicaragua, Oman,
Panama, Slovenia, Sri Lanka, Trinidad and Tobago, Turkey, and
Uzbekistan.
(2) Specimens for Scent, Flavor, or Other Non-Traditional Marks:
This rule allows for the separate submission of physical specimens when
it is not possible to submit the specimens using TEAS because of the
nature of the mark. For example, if the application or registration is
for a scent or flavor mark, because the required specimen must show
use, or continued use, of the flavor or scent, it cannot be uploaded
electronically. In that situation, the applicant may submit the
application through TEAS and indicate that it is mailing the specimen
to the USPTO. In these circumstances, all other requirements of this
rulemaking apply. However, the applicant or registrant is not required
to submit a petition requesting acceptance of a specimen filed on paper
or waiver of the requirement to file the specimen electronically. This
exception does not apply to specimens for sound marks, which can be
attached to the TEAS form as an electronic file.
(3) Petition to Accept a Paper Submission: This rule includes a new
regulatory section titled ``Petition to the Director to accept a paper
submission,'' which is codified at Sec. 2.147. Under this section, an
applicant or registrant may file a petition to the Director requesting
acceptance of a submission filed on paper in three situations.
Under new Sec. 2.147(a), the petition may be submitted if TEAS is
unavailable on the date of the deadline for the submission specified in
a regulation in parts 2 or 7 of this chapter or in a section of the
Act. Under this provision, the applicant or registrant is required to
submit proof that TEAS was unavailable because a technical problem, on
either the USPTO's part or the user's part, prevented the user from
submitting the document electronically. Generally, if users receive an
error message the first time they attempt to submit a filing
electronically, the USPTO expects that they will try to resolve any
failures due to user error. In situations where the inability to submit
the filing was not due to user error, the USPTO encourages users to try
to submit the document again electronically before resorting to the
paper petition process.
The second scenario applies to the specific documents with
statutory deadlines identified in new Sec. 2.147(b) when such a
document was timely submitted on paper, but not examined by the Office
because it was not submitted electronically in accordance with Sec.
2.21(a) or Sec. 2.23(a). The Office will issue a notice informing the
applicant, registrant, or petitioner for cancellation that the paper
submission will not be processed or examined because it was not
submitted electronically. The applicant, registrant, or party may file
a petition to request that the timely filed paper submission be
accepted only if the applicant, registrant, or party is unable to
timely resubmit the document electronically by the statutory deadline.
Finally, under new Sec. 2.147(c), when an applicant or registrant
does not meet the requirements under Sec. 2.147(a) or (b) for
requesting acceptance of the paper submission, the applicant or
registrant may petition the Director under Sec. 2.146(a)(5),
requesting a waiver of Sec. 2.21(a) or Sec. 2.23(a) and documenting
the nature of the extraordinary situation that prevented the party from
[[Page 37085]]
submitting the correspondence electronically. The Office addresses
petitions under Sec. 2.146(a)(5) on a case-by-case basis because the
assessment of what would qualify as an extraordinary situation depends
on the specific facts and evidence presented.
With respect to USPTO technical problems that render TEAS
unavailable, the USPTO intends to continue to follow its current
approach. For example, when verifiable issues with USPTO systems
prevent electronic filing for extended periods, the Office has waived
non-statutory deadlines on petition, such as the deadline for response
to a post-registration Office action, as well as petition fees. Such
measures help avoid negatively impacting applicants and registrants in
the event of USPTO technical problems. Because the impact of technical
problems varies depending on the specific facts, the USPTO cannot
provide advance guidance about all possibilities or specific measures
the USPTO may take in the future. Moreover, applicants and registrants
must be mindful of the fact that statutory deadlines, such as those for
submission of a statement of use or an affidavit or declaration of use
under section 8 or section 71, cannot be waived. The USPTO strongly
encourages applicants and registrants to ensure that they are able to
timely submit the relevant document by mail using the certificate of
mailing or Priority Mail procedures in Sec. 2.197 and Sec. 2.198 in
the event of an unexpected technical problem to avoid missing a
statutory deadline.
Furthermore, the inability to submit an application or submission
electronically due to USPTO regularly scheduled system maintenance
generally does not qualify for relief under new Sec. 2.147 or as an
extraordinary situation under Sec. 2.146. The USPTO routinely performs
system maintenance between midnight and 5:30 a.m. Eastern Time on
weeknights and at all hours on Saturdays, Sundays, and holidays.
Advance notice of the maintenance is generally posted on the USPTO
Systems Status and Availability page on the USPTO website.
(4) Postal-service Interruptions or Emergencies. The Office intends
to continue the approach it has employed when there has been a postal-
service interruption or emergency related to a natural disaster. In
such events, the Office has generally waived certain requirements of
the rules for those in the affected area, such as non-statutory
deadlines and petition fees. The Office also issues notices regarding
the specific procedures to be followed in such circumstances and posts
the notices on the ``Operating Status'' page of the USPTO website.
(5) Applications and Post-Registration Maintenance Documents Filed
Prior to the Effective Date of this Rule. Paper, TEAS Regular, and
Madrid applications filed prior to the effective date of this rule are
not subject to the requirements to provide an email address for the
applicant and its attorney, if represented, or to communicate with the
USPTO electronically. Such applications are ``grandfathered'' under the
prior rules until the application registers or is abandoned and cannot
be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146.
Similarly, post-registration maintenance documents submitted prior to
the effective date of the rule are not subject to the requirements and
are grandfathered under the prior rules until the document has been
accepted or the registration has been cancelled or expired and cannot
be revived or reinstated pursuant to 37 CFR 2.64, 2.66, or 2.146.
However, on the effective date of this rule, because all new
applications and post-registration maintenance documents are required
to be filed electronically through TEAS, all TEAS forms will be updated
to require the applicant's or registrant's email address and the email
address of applicant's or registrant's attorney, if represented.
Therefore, if a grandfathered applicant or registrant files a TEAS
document after the effective date of this rule, the TEAS form will not
validate for submission without the email address(es) being provided.
Furthermore, if such an applicant, registrant, or attorney chooses to
correspond electronically with the Office using one of the TEAS forms,
the USPTO will presume that email communication is authorized and will
send all future correspondence to the email address of the applicant,
registrant, or attorney, as appropriate.
Applicants who filed an application prior to the effective date of
the rule using the TEAS RF or TEAS Plus option are currently subject to
the requirement to correspond electronically with the USPTO, as well as
all the other requirements in current Sec. 2.22(a)-(b) and Sec.
2.23(a)-(b). After the effective date of this rule, if a TEAS Plus or
TEAS RF applicant submits a response to an Office action or other
document on paper, the applicant will no longer be charged the
additional processing fee under prior Sec. 2.22(c) or Sec. 2.23(c),
but must submit a petition requesting acceptance of the paper filing
under Sec. 2.146 or Sec. 2.147, as appropriate.
Requirements for Paper Submissions: Because paper submissions are
permitted in the limited circumstances described above, the current
rules addressing the requirements for paper submissions are retained
and modified, as necessary, for consistency with the other revisions in
this rulemaking. In addition, the rules governing the certificate-of-
mailing and Priority Mail Express[supreg] procedures, 37 CFR 2.197 and
2.198, are amended to make filing with a certificate of mailing or via
Priority Mail Express[supreg] available for all submissions, including
new applications, on the rare occasions when filing on paper is
permitted. This rule also simplifies how the filing date of a
submission utilizing these procedures is determined. Streamlining the
requirements for filing with a certificate of mailing or via Priority
Mail Express[supreg] provides greater clarity to parties who seek to
use these procedures and make the rules easier to administer for the
Office. Although the certificate-of-mailing and Priority Mail
Express[supreg] procedures are retained, facsimile transmissions, which
are currently permitted for certain types of trademark correspondence,
are not permitted under this rule for any applications or submissions.
Continuing to accept fax transmissions would be counterproductive to
maximizing end-to-end electronic processing because such submissions
require manual processing similar to paper submissions.
Proposed Rule: Comments and Responses
The USPTO published a proposed rule on May 30, 2018, at 83 FR
24701, soliciting comments on the proposed amendments. In response, the
USPTO received comments from four groups and ten individual commenters,
representing law firms, organizations, individuals, and other
interested parties. Some commenters expressed general support for the
amendments, while raising concerns or providing suggestions about
particular provisions. Other commenters objected to the amendments
mandating electronic filing because of concerns about the stability and
usability of the USPTO's current electronic filing systems or the
possibility that some parties may not have adequate access to the
internet. In addition, some commenters objected to the requirement that
an email address be provided for correspondence, because of concerns
that this would be burdensome to applicants or that the public
availability of email addresses will be misused by third parties
engaging in scams or unwanted solicitations. Similar or related
[[Page 37086]]
comments have been grouped together and summarized below, followed by
the USPTO's responses. All comments are posted on the USPTO's website
at https://www.uspto.gov/trademark/trademark-updates-and-announcements/comments-proposed-rulemaking-related-changes-trademark.
Comment: Several commenters objected to the requirement to file
submissions electronically because they believe it will adversely
affect parties who do not have adequate internet access or are
otherwise unable to file electronically.
Response: The USPTO appreciates the concerns raised in these
comments and has given them careful consideration. As noted above, more
than 99% of all initial applications based on section 1 and/or section
44 of the Act are now filed electronically. For example, in fiscal year
2018, a total of 468,926 applications were filed, with only 144
applications filed on paper. Accordingly, the USPTO has determined
that, as a general matter, the requirement to file all submissions
electronically would not be impracticable or burdensome for the USPTO's
customers, most of whom already file electronically.
Customers who do not have personal access to the internet have the
option to use the internet at one of the 85 Patent and Trademark
Resource Centers (PTRC) around the U.S. to electronically file
submissions with the USPTO. A PTRC is part of a nationwide network of
public, state, and academic libraries designated by the USPTO to
support the public with federal trademark- and patent-filing
assistance. Although PTRC representatives are not attorneys and cannot
provide legal advice, they can provide access to USPTO resources and
explain the application process and fee schedule. Public libraries
provide another resource for parties without internet access. According
to the American Library Association Fact Sheet 26, ``Internet Access
and Digital Holdings in Libraries,'' 98% of libraries offer free public
internet access and 76% of libraries assist patrons in using online
government programs and services (http://www.ala.org/tools/libfactsheets/alalibraryfactsheet26; accessed Sept. 24, 2018).
Applicants, registrants, or parties also have the option to hire an
attorney to file electronically on their behalf. Finally, if an
extraordinary situation requires a particular applicant, registrant, or
party to file on paper, the rule allows such submissions to be
considered on petition by the USPTO on a case-by-case basis.
Comment: A commenter suggested that the USPTO has already
sufficiently advanced its objective of electronic filing by increasing
the fees associated with paper filing.
Response: As noted above, the USPTO previously revised its rules to
increase fees for paper filings to bring the fees nearer to the cost of
processing the filings and to encourage customers to use lower-cost
electronic options. Despite these fee increases, approximately 12% of
applications and registrations under section 1 and/or section 44 of the
Act still involve some paper processing. Fee increases have not been
effective in eliminating the volume of non-application paper
submissions. Therefore, the USPTO has determined that mandatory
electronic filing is necessary to attain, as closely as possible, its
goal of end-to-end electronic processing.
Comment: The USPTO received several comments regarding its
electronic systems. Some commenters expressed concerns that the USPTO's
current electronic systems, including the payment system, are not
sufficiently reliable to support a mandate of electronic filing, noting
that removing the paper filing option eliminates a failsafe way to file
if the internet or the electronic filing system is unavailable. Other
commenters suggested that the usability of TEAS forms should be
improved and stated that TEAS currently lacks forms to address all
filing situations. Some commenters noted that TEAS sometimes will not
allow submissions due to erroneous status information in the USPTO's
electronic record. Relatedly, a commenter urged that any rulemaking
that would remove the paper filing option should be accompanied by the
provision of a ``none of the above'' TEAS form to address the
circumstances when the internet or TEAS is unavailable, and that every
TEAS form should include a ``miscellaneous'' section in which free-text
comments and evidence can be provided. One commenter asked whether fax
transmission will remain as an alternative method for filing if the
electronic system is not available and suggested that the USPTO either
provide an alternative method that is electronic but not tied to the
TEAS system or allow for a deadline extension when the TEAS system is
not operational at the time of deadline. Finally, a commenter suggested
that the USPTO implement contingency servers and systems that would
serve as a backup to the USPTO's primary electronic systems and reduce
the need for paper filings if the primary systems experience an outage.
Response: The USPTO recognizes that the successful implementation
of mandatory electronic filing requires reliable, well-functioning
electronic filing and payment systems. To that end, the USPTO is
actively engaged in enhancing the Office's systems to significantly
improve reliability and stability with the result of reducing
unscheduled outages and instabilities and mitigating any that do occur.
For example, the USPTO recently upgraded the main server that houses
the TEAS and payment systems, which will significantly enhance
reliability and responsiveness.
The USPTO also acknowledges the comments concerning the general
usability of TEAS forms and is enhancing its electronic systems to
accommodate the requirements of mandatory electronic filing, and also
plans to improve the overall functionality of the TEAS forms. In
addition, remedies are already available to customers who are unable to
file a TEAS submission because of incorrect status information in the
USPTO electronic record. To request assistance, such as correction of
the status information so that TEAS will allow submission of the
appropriate form, customers may call or email the USPTO. Furthermore,
when a party is unable to file electronically because of an
extraordinary situation, Sec. 2.147(c) allows the party to petition
the Director under Sec. 2.146(a)(5), requesting that the Director
waive Sec. 2.23(a) and accept a paper submission.
Regarding the commenter's request to retain fax transmission, the
rule removes this submission option. As noted above, continuing to
accept fax transmissions would be counterproductive to maximizing end-
to-end electronic processing because such submissions require manual
processing similar to paper submissions. If a significant outage or
other emergency occurs, the USPTO may consider waiving the relevant
rules to accept certain submissions by fax or another means for
specific purposes.
Regarding the comment requesting the rule allow for a deadline
extension when the TEAS system is not operational at the time of
deadline, the USPTO has previously waived non-statutory deadlines on
petition when verifiable issues with USPTO systems prevented electronic
filing for extended periods. The USPTO may make this option available,
if appropriate. However, the USPTO has no authority to extend deadlines
set by statute.
[[Page 37087]]
Comment: One commenter who assists ``low-wealth entrepreneurs''
with trademark matters noted that, while most of these entrepreneurs
have computer access and an email address, some have little
understanding of the application and prosecution process and the rules
governing this process. This commenter expressed concern that these
entrepreneurs would be required to handle email communications from the
USPTO that may significantly impact their ability to conduct their
business. The commenter urged that USPTO communications be written in a
way that ensures understanding by a lay person. Other commenters
expressed concerns that the current TEAS forms are too complicated for
the lay person, with one commenter suggesting that the USPTO permit
applicants to file already completed applications in .pdf form.
Response: The USPTO is dedicated to making its communications
comprehensible for all customers, but recognizes that the trademark
application process is legal in nature and can be complex and difficult
to understand for some applicants, regardless of whether submissions
are filed on paper or electronically. Filing a trademark application
with the USPTO starts a legal proceeding that is governed by U.S. law.
Therefore, it may be advisable for an applicant to hire a qualified
trademark attorney licensed to practice law in the United States who
can give legal advice, help avoid pitfalls with the filing and
prosecution of an application, and help enforce trademark rights.
Applicants may also seek to avail themselves of free or reduced-fee
legal services through such resources as the USPTO's Law School Clinic
Certification Program, the list of Pro Bono IPL Resources provided by
the American Bar Association, and the International Trademark
Association trademark pro bono clearinghouse pilot program.
Further, the USPTO believes that the requirement to file
electronically benefits those applicants who are unable to hire an
attorney and must represent themselves. Specifically, electronic filing
costs less than paper filing, especially if the lower-fee TEAS Plus
application filing option is utilized. In addition, electronic filing
simplifies and increases the efficiency of the application process for
applicants. Those who file electronically are more likely to provide
the necessary information in their submissions because the USPTO can
update its electronic forms to specifically tailor the requirements for
a particular submission and require that the information be validated
prior to submission. Consequently, preparing and submitting an
application or related document through TEAS is likely to result in a
more complete submission and take less time than preparing and mailing
the paper equivalent. In addition, the USPTO is dedicated to providing
future enhancements to its online filing systems to further simplify
the process for applicants by, for example, providing more informative,
interactive, and user-friendly forms.
Regarding the comment suggesting that applicants be permitted to
file completed applications in .pdf form, this approach would be
counterproductive to maximizing end-to-end electronic processing
because submissions in .pdf form require manual processing similar to
paper submissions.
Comment: A commenter noted that the electronic filing requirement
may lead to librarians being asked legal questions by those filing
electronic submissions with the USPTO using a library computer and that
referring these patrons to a PTRC might not be an effective solution to
this problem.
Response: The USPTO acknowledges the possibility that library
patrons may ask librarians legal questions about the trademark process,
but does not believe this is an impediment to implementing mandatory
electronic filing. The USPTO presumes that if a librarian is asked for
legal information regarding trademark law, or any other area of law, he
or she would direct the patron to a local bar association or other
appropriate resource. As noted above, filing a trademark application
with the USPTO starts a legal proceeding that is governed by U.S. law.
It is therefore advisable for their patrons to seek legal guidance from
a qualified private trademark attorney.
If a patron has questions regarding the trademark application
process, a librarian can direct the patron to the USPTO website for
information, including the email address and toll-free phone number for
the Trademark Assistance Center. In addition, although PTRC library
representatives cannot provide legal advice, they can: (1) Provide
access to USPTO resources such as search systems and demonstrate how to
use search tools to conduct a trademark search; (2) direct patrons to
website information and explain the application process/timeline and
fees; and (3) offer classes on intellectual property in some locations.
Comment: One commenter recommended that the proposed rule include
information on the economic impact on entities who still choose the
paper filing option and also provide means to reduce the economic
burden for that group rather than impose additional costs.
Response: The USPTO believes that the overall economic impact on
affected parties will be minimal. As noted above, in fiscal year 2018,
more than 99% of all initial applications based on section 1 and/or
section 44 of the Act were filed electronically--only 144 out of
468,926 applications were filed on paper. Thus, as a practical matter,
almost all USPTO customers who may use the USPTO's electronic systems
to file their trademark applications have already done so. Moreover,
under the current system TEAS filers are subsidizing those who file on
paper because current fees for paper filers do not cover the full cost
of processing paper filings. The change to mandatory electronic filing
also will improve the quality of Trademark applications and
registrations because paper filings require manual uploading of scanned
copies into USPTO electronic systems and manual data entry of
information in the documents, which results in data-entry errors.
Thus, given the additional costs associated with filing
applications and related submissions by paper, including higher fees, a
requirement to file electronically will likely result in reduced costs
overall for most customers who previously filed on paper.
Comment: Some commenters objected to the changes to Sec. Sec.
2.21, 2.23, and 7.4, requiring the provision of an email address for
applicants and registrants. One commenter noted that, when an applicant
or registrant is represented by counsel, and counsel has provided a
correspondence email address, the rule changes impose additional
burdens on both the trademark owner and its counsel. Another commenter
stated that the TEAS system appears to be open to abuse and fraud, and
some commenters were concerned that the requirement to provide the
applicant's email address for correspondence would lead to an increase
in scams and misleading solicitations by third parties. One commenter
had similar concerns about applicants' telephone numbers.
Response: The amended rules include a requirement for the
applicant's email address, even when the applicant is represented by an
attorney. This requirement ensures that the USPTO has an electronic
means of contacting the applicant if the attorney's email address
cannot be used, such as when the attorney is suspended or excluded from
practice before the USPTO or when representation otherwise ceases. The
USPTO does not undertake double correspondence with both the applicant
or registrant and the attorney of record.
[[Page 37088]]
Accordingly, if an applicant or registrant is represented by an
attorney, the USPTO corresponds and conducts business only with the
attorney. Once representation ceases, under this rule, the USPTO will
correspond only with the applicant or registrant. Therefore, the
applicant or registrant must provide an email address belonging to the
applicant or registrant itself for receipt of correspondence from the
USPTO in such a circumstance.
The USPTO appreciates the commenters' concerns that scams and
misleading solicitations may increase if the email addresses required
under these rules are publicly available in the USPTO's systems.
Currently, all owner email addresses that appear in the ``status'' view
of USPTO records are masked from public view. In addition, the USPTO
plans to similarly mask from public view in application and
registration files the correspondence email addresses of applicants and
registrants who are not represented by counsel to reduce the likelihood
that they will be subjected to scams and other unwanted solicitations.
The contact information of attorneys appearing in USPTO records,
including email addresses and telephone numbers, will remain publicly
available and viewable, as this information is publicly available from
other sources already and could be used for legitimate purposes by
third parties.
Comment: One commenter stated that, to the extent that the USPTO
does not already comply with the European Union's General Data
Protection Regulation (GDPR), mandating the provision of email
addresses of individuals associated with applicants and registrants,
will subject the USPTO to this regulation, as well as to the penalties
and obligations associated with any data breach.
Response: The USPTO is aware of the GDPR and has taken into account
any implications it might have for the implementation of these amended
rules.
Comment: Regarding the proposed amendment of Sec. 2.151 to state
that the USPTO will issue ``to the owner'' a certificate of
registration, one commenter asked how the Office will know who ``the
owner'' is, noting that, at most, the Office will know only who the
owner of record is. This commenter also noted that, to avoid the need
for future rulemaking, the USPTO should consider broadening the
requirement for an email address, so that the requirement also
encompasses an ``alphanumeric identifier that is capable of receiving
electronic communications.'' The commenter then suggested that the
ability of users to input an email address into a TEAS form should be
restricted to forms for which doing so actually updates the
information.
Response: Under amended Sec. 2.151, a certificate of registration
will be issued to the owner of record, as indicated in the USPTO
electronic record at the time the certificate is issued.
The USPTO appreciates the suggestion to use broader terminology
than ``email address,'' but has determined that ``email address'' is
sufficiently accurate and will serve the intended purpose under the
rule. The USPTO also appreciates the suggestion regarding the ability
to input and update email addresses in TEAS forms, and will take that
feedback into account when considering enhancements to TEAS.
Comment: One commenter stated the USPTO should provide another
filing mechanism to ensure that customers have access to protect their
trademark rights without having to incur the uncertainty or additional
fees and time associated with filing a separate petition, if having to
file on paper. This commenter suggested that a more predictable and
desirable remedy in this situation may include submitting with the
relevant filing a declaration or other statement attesting to the
outage, lack of access, or other reason for not filing electronically,
and that the filer may also include evidence of the problem, such as a
screen shot. The commenter noted that, to ease the administrative
burden on the USPTO and add certainty for applicants and counsel as to
permissible exceptions, any USPTO form could acknowledge clear
exceptions through use of a box to be checked, but for unusual or
unique circumstances, a free-form text box could be provided in the
relevant form. Relatedly, one commenter recommended that the rules be
modified to provide specific examples of documentation the user can
provide to satisfy the USPTO's requirement for proof that TEAS was
unavailable for electronic filing because of a ``technical problem.''
This commenter suggested that such documentation might include
screenshots showing the time and date and the error statement
encountered by the user, or a signed declaration under 37 CFR 2.20
indicating the circumstances of the unsuccessful electronic filing.
Response: The USPTO believes that a petition describing the reasons
for a paper submission is the most efficient and effective mechanism
for providing the information necessary to enable the USPTO to
determine whether the submission should be accepted. However, the USPTO
also agrees with the commenters that the petition process may be
simplified by the use of a standard preformatted petition form, listing
the most common reasons for requesting acceptance of a paper
submission. The user could complete the form by selecting the
appropriate reason and include the completed form with the paper
submission. The USPTO is working to make such a form available before
this rule takes effect.
The USPTO appreciates the suggestion that the rules should be
modified to provide specific examples of documentation a user can
provide to satisfy the USPTO's requirement for proof that TEAS was
unavailable for electronic filing because of a ``technical problem.''
However, considering the type and nature of evidence that may suffice
will differ depending on the circumstances, the USPTO believes it is
preferable to enact a rule that provides flexibility as to the type of
evidence the USPTO may accept as proof. However, the Office will
consider adding such examples in other USPTO materials, such as web
pages or the TMEP, to provide guidance.
Comment: One commenter urged the USPTO to continue its practice of
attempting to contact the correspondent by other means if a
transmission to the email address of record fails, including physical
correspondence by mail. This commenter noted that email addresses
frequently change due to companies adopting new domain names and
staffing changes, and that technical issues due to hardware
malfunction, software bugs, or malicious cyberattacks increase the
chances of electronic communication being disrupted.
Response: Although the USPTO previously attempted to contact the
correspondent by other means if an email transmission failed and, in
some cases, sent a paper copy of the correspondence to the physical
address of record, it no longer does so. As the commenter indicated,
email transmissions may fail for a variety of reasons outside of the
USPTO's control. Even if the number of failed transmissions are
relatively low, attempting to contact the applicant or registrant in
every instance is administratively burdensome to the USPTO. In
addition, continuing to send paper correspondence after implementing
mandatory electronic filing would be counterproductive to the goal of
maximizing end-to-end electronic processing.
Moreover, under Sec. 2.18(c), applicants and registrants are
required to maintain a current and accurate correspondence email
address, and to monitor the status
[[Page 37089]]
of their applications or registrations for any notices issued or action
taken by the USPTO, in accordance with Sec. 2.23(d).
Comment: One commenter stated that, for a paper filed during a time
when TEAS is unavailable, a petition requirement is unneeded and
burdensome because the USPTO will usually already be aware of instances
when its filing system is broken. This commenter suggested that, when
the USPTO is unaware of an outage, the USPTO could respond to a paper
filing with a request for a showing by the filer as to the nature and
time of the outage. Some commenters objected to any requirement that
the filer postpone a filing until such time as a TEAS outage is
repaired and another commenter stated that an applicant or registrant
should not be required to wait until the day of the deadline to be
eligible for an exception to the electronic filing requirement when
TEAS is unavailable.
Response: When a paper submission is necessary because of an
unscheduled TEAS outage or some other technical problem, the USPTO
believes that the mechanism of a petition, which permits inclusion of a
description of the reasons for the paper submission, is the only
appropriate mechanism for providing the information necessary to enable
the USPTO to determine whether the particular submission should be
accepted.
Regarding known TEAS outages, the USPTO intends to continue to
follow the approach employed in the past. For example, when verifiable
issues with USPTO systems prevent electronic filing for extended
periods, the USPTO has waived non-statutory deadlines on petition, such
as the deadline for response to a post-registration Office action, as
well as petition fees. Even when the USPTO is aware of an outage, a
petition would typically still be required, because the party
requesting relief would need to establish that the outage prevented
electronic filing of the particular submission. However, because the
impact of technical problems varies depending on the specific facts,
the Office cannot provide advance guidance about all possibilities or
specific measures the USPTO may take in the future.
The USPTO acknowledges the commenters' concerns about waiting until
the date of the deadline to be eligible for an exception to the
requirement to file electronically. However, this requirement applies
only if the party is relying on Sec. 2.147(a), which provides that the
petition may be submitted if TEAS is unavailable on the date of the
deadline for the submission specified in a regulation in parts 2 or 7
of this chapter or in a section of the Act.
If an extraordinary situation prevents an applicant or registrant
from waiting until the deadline for a submission to be eligible for an
exception to the requirement to file electronically, or otherwise
postponing a TEAS submission, Sec. 2.147(c) provides that the
applicant or registrant may petition the Director under Sec.
2.146(a)(5), requesting a waiver of Sec. 2.21(a) or Sec. 2.23(a) and
documenting the nature of the extraordinary situation that prevented
the party from submitting the correspondence electronically at the
relevant time. Because petitions for extraordinary situations are not
automatically granted, and the assessment of what would qualify as an
extraordinary situation depends on the specific facts, the Office will
address particular situations on a case-by-case basis.
Discussion of Regulatory Changes
The USPTO amends Sec. 2.2 to revise paragraph (e) to include the
abbreviation ``USPTO'' and paragraphs (f) and (g) to indicate that the
definitions of ``TEAS'' and ``ESTTA'' include all related electronic
systems required to complete an electronic submission through each and
to delete the URLs. The USPTO also adds: Sec. 2.2(q), defining
``ETAS;'' Sec. 2.2(r), defining ``Eastern Time;'' Sec. 2.2(s),
defining ``electronic submission;'' and Sec. 2.2(t) defining ``USPS.''
The paragraph designations (q) through (t) do not correspond to the
proposed changes published at 83 FR 24701. The revisions to these
designations reflect additional changes published in an intervening
rule published at 84 FR 31498.
The USPTO amends Sec. 2.6 to clarify that Sec. 2.6(a)(1)(ii)
applies to applications filed under section 66(a) of the Act. The USPTO
also changes the wording ``Reduced Fee (RF)'' to ``Standard'' and
deletes the reference to Sec. 2.23 in Sec. 2.6(a)(1)(iii), rewords
Sec. 2.6(a)(1)(iv) for clarity, and deletes the reference to Sec.
2.23(c) in Sec. 2.6(a)(1)(iv).
The USPTO deletes the wording ``and attorney'' and the reference to
TEAS in current Sec. 2.17(d)(1), because it is unnecessary in view of
amended Sec. 2.23(a), redesignates Sec. 2.17(d)(1) as Sec. 2.17(d),
and deletes Sec. 2.17(d)(2) as unnecessary as a result of updates to
the electronic form for filing a power of attorney.
The USPTO amends the title to Sec. 2.18(a) to ``Establishing the
correspondent'' and adds introductory text indicating that the
following paragraphs set out the procedures by which the Office will
determine the address to which correspondence will be sent. The USPTO
revises Sec. 2.18(a)(1) to define when the Office will send
correspondence to the applicant, registrant, or party to a proceeding
and Sec. 2.18(a)(2) to define when the Office will send correspondence
to an attorney. The USPTO also deletes current paragraphs (a)(3)-
(a)(5), redesignates current Sec. 2.18(a)(6) as Sec. 2.18(b), adds
the title ``Ex parte matters,'' and rewords the text for clarity, and
deletes current paragraph (a)(7). The USPTO redesignates current Sec.
2.18(b) as Sec. 2.18(c), changes the title to ``Maintaining and
changing the correspondence addresses,'' and deletes current Sec.
2.18(b)(1)-(4). The USPTO redesignates current Sec. 2.18(c)(1) as
Sec. 2.18(d), deletes the word ``Trademark'' in the first sentence,
deletes the second and third sentences in current Sec. 2.18(c)(1),
clarifies that the Office will change the address if a new address is
provided, adds a cross reference to Sec. 2.18(a), and deletes current
Sec. 2.18(c)(2).
The USPTO amends Sec. 2.21(a) to require that applications under
section 1 or section 44 be filed through TEAS, to require the domicile
and email addresses for each applicant, and if the applicant is
represented by a qualified practitioner, to require the postal and
email addresses for the practitioner. The USPTO rewords Sec.
2.21(a)(5) for clarity, rewords Sec. 2.21(b) and includes a reference
to Sec. 2.21(c), and adds Sec. 2.21(c), which sets out an exemption
for certain countries.
The USPTO amends Sec. 2.22(a) to specify that TEAS Plus
applications must satisfy the requirements of Sec. 2.21, to delete
current paragraphs (a)(1), (a)(5), and (a)(6) and renumber the
remaining paragraphs, to change ``an individual'' and ``a juristic'' to
``each individual'' and ``each juristic'' in redesignated paragraph
(a)(2), to clarify that the requirement in redesignated paragraph
(a)(3) applies to domestic partnerships and to add a requirement for
the names and citizenship of the active members of a domestic joint
venture, to add a requirement for the citizenship of a sole
proprietorship and for the name and citizenship of the sole proprietor
to redesignated paragraph (a)(4), to correct the cross reference in
redesignated paragraph (a)(8) to Sec. 2.6(a)(1)(iv), to delete the
first sentence and the reference to a particular format in redesignated
paragraph (a)(10), and to delete the URL in redesignated paragraph
(a)(11). The USPTO revises Sec. 2.22(b) to indicate that the applicant
must comply with amended Sec. 2.23(a) and (b), to delete Sec.
2.22(b)(1) and (2),
[[Page 37090]]
and to delete the second sentence in Sec. 2.22(c).
The USPTO amends the title of Sec. 2.23 to ``Requirement to
correspond electronically with the Office and duty to monitor status''
and deletes the current text of the section. The USPTO revises Sec.
2.23(a) to require that, unless stated otherwise, all trademark
correspondence must be submitted through TEAS; revises Sec. 2.23(b) to
require that applicants, registrants, and parties to a proceeding
provide and maintain a valid email correspondence address; revises
current Sec. 2.23(c) to set out an exemption for nationals of a
country that has acceded to the Trademark Law Treaty, but not to the
Singapore Treaty on the Law of Trademarks; and adds Sec. 2.23(d) to
indicate that applicants and registrants are responsible for monitoring
the status of their applications and registrations.
The USPTO amends Sec. 2.24(a) to clarify that only an applicant or
registrant that is not domiciled in the U.S. may designate a domestic
representative. The USPTO deletes Sec. 2.24(a)(1)(i), redesignates
Sec. 2.24(a)(1)(ii) as Sec. 2.24(b) and revises it to require an
email and postal address for a designated domestic representative, and
deletes Sec. 2.24(a)(2). The USPTO redesignates Sec. 2.24(a)(3) as
Sec. 2.24(c) and rewords it for clarity, and deletes current Sec.
2.24(b).
The USPTO amends Sec. 2.32(a)(2) to add a statement that if the
applicant is a national of a country that has acceded to the Trademark
Law Treaty, but not to the Singapore Treaty on the Law of Trademarks,
the requirement to provide an email address does not apply. The USPTO
amends Sec. 2.32(a)(3)(i) to require the legal entity as well as the
citizenship of the applicant(s), deletes ``or'' from Sec.
2.32(a)(3)(iii), adds ``or'' to Sec. 2.32(a)(3)(iv), and adds Sec.
2.32(a)(3)(v) to require the state of organization of a sole
proprietorship and the name and citizenship of a sole proprietor. The
USPTO amends Sec. 2.32(d) to add the word ``the'' before ``fee.''
The USPTO amends Sec. 2.56(a) to indicate that the specimen must
show the mark as actually used in commerce for the identified goods or
services and to add cross references to Sec. Sec. 2.160 and 7.36. The
USPTO amends Sec. 2.56(b) and (c) to codify existing requirements for
specimens. The USPTO amends Sec. 2.56(d) to set out the requirements
for submitting a specimen through TEAS, revises current Sec.
2.56(d)(1) and (2) to set out the exceptions to the requirements, and
deletes Sec. 2.56(d)(3) and (4).
The USPTO amends the title of Sec. 2.62 to ``Procedure for
submitting response,'' revises Sec. 2.62(a) slightly for clarity, and
revises Sec. 2.62(c) for consistency with amended Sec. 2.23 and to
add that responses filed via facsimile will not be accorded a date of
receipt.
The USPTO amends Sec. 2.111(c)(2) for consistency with Sec.
2.147(b).
The USPTO amends Sec. 2.146(a) to add the words ``in a trademark
case'' and revises Sec. 2.146(a)(2) and (4) to specify that the
regulation applies to ``parts 2, 3, 6, and 7'' of Title 37.
The USPTO adds Sec. 2.147 to set out the requirements for
submitting a petition requesting acceptance of a paper submission.
The USPTO amends Sec. 2.148 to clarify that it applies to ``parts
2, 3, 6, and 7 of this chapter.''
The USPTO amends Sec. 2.151 to indicate that the certificate of
registration will issue to the owner, to reword the second and third
sentences for clarity, and to change the wording ``accompany'' in the
last sentence to ``issue with.''
The USPTO amends Sec. 2.162 to change the word ``includes'' to
``issues with the certificate'' and to add the wording ``or section
71'' after ``section 8'' for consistency with Sec. 2.151.
The USPTO amends Sec. 2.190(a) to clarify that the paragraph
refers to paper documents, and to clarify that the stated mailing
address is for documents to be sent by mail and that the address for
hand delivery is the address for delivery by private courier or another
delivery service. The USPTO amends Sec. 2.190(b) to state that
trademark documents filed electronically must be submitted through TEAS
and that documents related to TTAB proceedings must be filed through
ESTTA, and to delete the URLs. The USPTO rewords Sec. 2.190(c) for
clarity and to delete the mailing address and URL. The USPTO amends
Sec. 2.190(d) to add ``certified'' to the title and to delete the
first sentence and the wording ``or uncertified'' in the second
sentence and to change ``should'' to ``must.'' The USPTO corrects the
mailing address in Sec. 2.190(e).
The USPTO amends the title of Sec. 2.191 to ``Action of the Office
based on the written record'' and revises the section to state that all
business must be recorded in writing, to reword for clarity, and to
delete the last sentence.
The USPTO amends Sec. 2.193(a)(2) and (b) to delete wording
regarding submission of a photocopy or facsimile or by facsimile
transmission. The USPTO amends Sec. 2.193(c)(1) to change the wording
``he or she'' to ``the signer,'' and revises Sec. 2.193(d) to require
submission of the first and last name and the title or position of the
signatory and to delete the wording ``in printed or typed form'' and
the wording after ``the signature.'' The USPTO amends the introductory
text of Sec. 2.193(e) to clarify that documents must be signed as
specified in paragraphs (e)(1) through (9). The USPTO amends the title
and introductory text of Sec. 2.193(e)(5) to add ``or Sec. 2.147''
after the wording ``Sec. 2.146.'' The USPTO also deletes Sec.
2.193(e)(10), rewords Sec. 2.193(g)(1) for clarity, and revises Sec.
2.193(g)(2) to change ``correspondence'' to ``documents'' and to delete
the last sentence.
The USPTO amends the title of Sec. 2.195 to ``Filing date of
trademark correspondence.'' The USPTO deletes current Sec. 2.195(a)-
(d) and sets out the procedures for determining the filing date of
electronic and paper submissions in Sec. 2.195(a) and (b)(1) through
(b)(2), indicates when the Office is closed in Sec. 2.195(b)(3),
indicates that email and facsimile submissions are not permitted in
Sec. 2.195(c), redesignates current Sec. 2.195(e)(1) through
(e)(2)(iii) as Sec. 2.195(d)(1) through (3) and changes U.S Postal
Service and United States Postal Service to USPS. The USPTO deletes
current Sec. 2.195(e)(3).
The USPTO amends the title of Sec. 2.197 to ``Certificate of
mailing.'' The USPTO deletes current Sec. 2.197(a) through (c) and
sets out the requirements for obtaining a filing date based on a
certificate of mailing in Sec. 2.197(a), the procedure when
correspondence is mailed in accordance with paragraph (a) of this
section but not received by the Office in Sec. 2.197(b), and the
filing date when the certificate of mailing does not meet the
requirements in Sec. 2.197(c).
The USPTO deletes current Sec. 2.198(a) through (f) and clarifies
the filing date of correspondence submitted under this section in
amended Sec. 2.198(a) and (b) and the procedures when there is a
discrepancy, error, or non-receipt in amended Sec. 2.198(c)-(e).
The USPTO amends Sec. 7.1(c) to indicate that the definition of
TEAS includes all related electronic systems required to complete an
electronic submission through TEAS and to delete a URL. The USPTO
amends Sec. 7.1(d) to add ``or the abbreviation USPTO.''
The USPTO amends the title of Sec. 7.4 to ``International
applications and registrations originating from the USPTO--Requirements
to electronically file and communicate with the Office.'' The USPTO
amends Sec. 7.4(a) to specify that all correspondence relating to
international applications and registrations originating from the USPTO
must be submitted through TEAS and include a valid email correspondence
address. The USPTO amends Sec. 7.4(b) to require that applicants and
registrants provide and
[[Page 37091]]
maintain a valid email correspondence address and to delete current
paragraphs (b)(1) and (b)(2). The USPTO amends Sec. 7.4(c) to set out
an exemption for nationals of a country that has acceded to the
Trademark Law Treaty, but not to the Singapore Treaty on the Law of
Trademarks and Sec. 7.4(d) to set out the procedure if TEAS is
unavailable or when there is an extraordinary situation, and to delete
paragraphs (d)(1)-(d)(6). The USPTO also deletes Sec. 7.4(e).
The USPTO amends Sec. 7.11(a) to delete the word ``either,'' to
add a cross reference to Sec. 7.4(a), and to specify that the Office
will grant a date of receipt to an international application typed on
the official paper form issued by the IB if a paper submission is
permitted under Sec. 7.4(c) or accepted on petition pursuant to Sec.
7.4(d). The USPTO also adds the word ``and'' to Sec. 7.11(a)(10),
deletes the word ``and'' from Sec. 7.11(a)(11), and deletes Sec.
7.11(a)(12).
The USPTO amends Sec. 7.21(b) to delete the word ``either,'' to
add a cross reference to Sec. 7.4(a), and to specify that the Office
will grant a date of receipt to a subsequent designation typed on the
official paper form issued by the IB if a paper submission is permitted
under Sec. 7.4(c) or accepted on petition pursuant to Sec. 7.4(d).
The USPTO also adds the word ``and'' to Sec. 7.21(b)(7), deletes the
word ``and'' from Sec. 7.21(b)(8), and deletes Sec. 7.21(b)(9).
The USPTO revises Sec. 7.25 to delete the reference to Sec. 2.23
and replace it with a reference to Sec. 2.22 and to delete the
reference to Sec. 2.197.
This rule revises sections of 37 CFR parts 2 and 7 that were
revised in the final rule entitled Requirement of U.S. Licensed
Attorney for Foreign Trademark Applicants and Registrants, published at
84 FR 31498 (July 2, 2019). The revisions published here supplement the
changes implemented in that earlier rule and do not change the
requirements for obtaining U.S. counsel. However, this rule has
resulted in a few changes to the revisions that were made in the
earlier rule. In this regard, USPTO in the earlier rule had revised
Sec. 2.32(a)(2); under that revision, an application would be required
to include the ``name and domicile address of each applicant.'' In this
rule, USPTO is amending Sec. 2.32(a)(2) to require an application to
also include the ``email address of each applicant'' (as discussed
above, the requirement to provide an email address does not apply if
the applicant is a national of a country that has acceded to the
Trademark Law Treaty, but not to the Singapore Treaty on the Law of
Trademarks). In addition, this rule includes a reorganization of Sec.
2.22 (``Requirements for a TEAS Plus Application''), which was revised
by the earlier rule, to streamline the regulations and improve clarity.
As a result of this reorganization, paragraphs (a)(19), (20), and (21)
of Sec. 2.22 of the earlier rule are being redesignated--without
change--as paragraphs (a)(17), (18), and (19). Also, the requirement
for the applicant's name and domicile address, which was in Sec.
2.22(a)(1) of the earlier rule, is now a requirement of Sec.
2.21(a)(1) of this rule, and applies to all applicants. Finally, we
note that the regulatory revisions that were made in that earlier rule
are going into effect on August 3, 2019, whereas the regulatory
revisions in this rule are going into effect on October 5, 2019.
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. Regulatory Flexibility Act: For the reasons set forth herein,
the Senior Counsel for Regulatory and Legislative Affairs, Office of
General Law, of the USPTO has certified to the Chief Counsel for
Advocacy of the Small Business Administration that this rule will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
This rule amends the regulations to require that applications filed
under section 1 or section 44 of the Act, and all submissions regarding
an application or registration under section 1, section 44, and section
66(a), be filed electronically. The rule also requires that applicants,
registrants, and parties to a proceeding maintain a valid email
correspondence address and continue to receive communications from the
Office by email. The rule applies to all applicants and registrants
unless acceptance of a submission filed on paper or a waiver of the
proposed requirements is granted on petition, the applicant/registrant
is a national of a country to which the requirements will not apply, or
the requirement to file electronically is otherwise excepted, as for
certain types of specimens. Applicants for a trademark are not industry
specific and may consist of individuals, small businesses, non-profit
organizations, and large corporations. The USPTO does not collect or
maintain statistics 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 burdens to all entities, including small entities, imposed by
these rule changes will be minor procedural requirements on parties
submitting applications or documents and communications in connection
with an application or registration. The vast majority of users already
file and prosecute applications electronically in response to previous
initiatives to increase end-to-end electronic processing. For example,
the USPTO amended its rules to encourage electronic filing through TEAS
and email communication by establishing the TEAS Plus and TEAS RF
filing options for applications that are based on section 1 and/or
section 44. See 37 CFR 2.6. The TEAS RF filing option is now the most
popular filing option among USPTO customers, followed by TEAS Plus.
These two filing options currently account for approximately 97% of all
trademark applications filed under section 1 and/or section 44, and
more than 99% of trademark applications under section 1 and/or section
44 in total are now filed electronically through TEAS, suggesting
[[Page 37092]]
that most applicants are comfortable with filing and communicating with
the USPTO electronically.
Furthermore, in January 2017, the USPTO revised its rules to (1)
increase fees for paper filings to bring the fees nearer to the cost of
processing the filings and encourage customers to use lower-cost
electronic options and (2) require that all submissions to the TTAB be
filed through ESTTA. As a result of these rule changes, the USPTO is
now processing approximately 88% of applications filed under section 1
and/or section 44 electronically end to end.
The changes enacted herein do not impose any additional economic
burden unless the applicant or registrant fails to file electronically.
In such cases, the economic burden to the applicant or registrant would
be the higher paper fee for the submission (if a fee is required) and
the fee for the petition seeking acceptance of a submission filed on
paper or a waiver of the requirement to file electronically. However,
as mentioned above, since the vast majority of current users already
file and prosecute applications electronically, the economic impact of
filing on paper is expected to be small. Moreover, this rule will lead
to a greater adoption of lower filing-fee options and therefore
outweigh any cost burdens and likely save applicants and registrants
money. For these reasons, this rule is not expected to have a
significant economic impact on a substantial number of small entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not 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 rule is not an Executive Order 13771 regulatory
action because this rule is not significant under Executive Order
12866.
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 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. This rulemaking has an overall change on the
public burdens within these approved collections including a reduction
of 862 in burden hours and a reduction of $5,175 in cost burdens.
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
[[Page 37093]]
information displays a currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks.
For the reasons stated in the preamble and under the authority
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office
amends parts 2 and 7 of title 37 as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
0
1. The authority citation for part 2 continues to read as follows:
Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section
10(c) of Pub. L. 112-29, unless otherwise noted.
0
2. Amend Sec. 2.2 by revising paragraphs (e), (f), and (g) and adding
paragraphs (q) through (t) to read as follows:
Sec. 2.2 Definitions.
* * * * *
(e) The term Office or abbreviation USPTO means the United States
Patent and Trademark Office.
(f) The acronym TEAS means the Trademark Electronic Application
System and, as used in this part, includes all related electronic
systems required to complete an electronic submission through TEAS.
(g) The acronym ESTTA means the Electronic System for Trademark
Trials and Appeals and, as used in this part, includes all related
electronic systems required to complete an electronic submission
through ESTTA.
* * * * *
(q) The acronym ETAS means the Electronic Trademark Assignment
System and, as used in this part, includes all related electronic
systems required to complete an electronic submission through ETAS.
(r) Eastern Time means Eastern Standard Time or Eastern Daylight
Time, as appropriate.
(s) The term electronic submission as used in this part refers to
any submission made through an electronic filing system available on
the Office's website, but not through email or facsimile transmission.
(t) The abbreviation USPS as used in this part means the U.S.
Postal Service.
0
3. Amend Sec. 2.6 by revising paragraphs (a)(1)(ii) through (v) to
read as follows:
Sec. 2.6 Trademark fees.
(a) * * *
(1) * * *
(ii) For filing an application under section 66(a) of the Act, per
class--$400.00
(iii) For filing a TEAS Standard application, per class--$275.00
(iv) For filing a TEAS Plus application under Sec. 2.22, per
class--$225.00
(v) Additional processing fee under Sec. 2.22(c), per class--
$125.00
* * * * *
0
4. Amend Sec. 2.17 by revising paragraph (d) to read as follows:
Sec. 2.17 Recognition for representation.
* * * * *
(d) Power of attorney relating to multiple applications or
registrations. 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.
* * * * *
0
5. Revise Sec. 2.18 to read as follows:
Sec. 2.18 Correspondence, with whom held.
(a) Establishing the correspondent. The Office will send
correspondence as follows:
(1) If the applicant, registrant, or party to a proceeding is not
represented by an attorney qualified to practice before the Office
under Sec. 11.14(a) of this chapter, the Office will send
correspondence to the applicant, registrant, or party to the
proceeding.
(2) If an attorney is recognized as a representative pursuant to
Sec. 2.17(b)(1), the Office will correspond only with that attorney. A
request to change the correspondence address does not revoke a power of
attorney. Except for service of a cancellation petition, the Office
will not correspond directly with the applicant, registrant, or a party
to a proceeding, or with another attorney from a different firm,
unless:
(i) The applicant or registrant files a revocation of the power of
attorney under Sec. 2.19(a) and/or a new power of attorney that meets
the requirements of Sec. 2.17(c);
(ii) The attorney has been suspended or excluded from practicing in
trademark matters before the USPTO; or
(iii) Recognition of the attorney has ended pursuant to Sec.
2.17(g).
(b) Ex parte matters. Only one correspondence address may be
designated in an ex parte matter.
(c) Maintaining and changing the correspondence addresses. The
applicant, registrant, or party to a proceeding must maintain current
and accurate correspondence addresses, as required by Sec. 2.23, for
itself and its attorney, if one is designated. If any of these
addresses change, a request to change the address, signed in accordance
with Sec. 2.193(e)(9), must be promptly filed.
(d) Post registration filings under sections 7, 8, 9, 12(c), 15,
and 71 of the Act. Even if there is no new power of attorney or written
request to change the correspondence address, the Office will change
the correspondence address upon the examination of an affidavit under
section 8, 12(c), 15, or 71 of the Act, renewal application under
section 9 of the Act, or request for amendment or correction under
section 7 of the Act, if a new address is provided, in accordance with
paragraph (a) of this section.
0
6. Revise Sec. 2.21 to read as follows:
Sec. 2.21 Requirements for receiving a filing date.
(a) The Office will grant a filing date to an application under
section 1 or section 44 of the Act that is filed through TEAS, is
written in the English language, and contains all of the following:
(1) The name, domicile address, and email address of each
applicant;
(2) If the applicant is represented by a practitioner qualified
under Sec. 11.14 of this chapter, the practitioner's name, postal
address, and email address;
(3) A clear drawing of the mark;
(4) A listing of the goods or services; and
(5) The filing fee required under Sec. 2.6 for at least one class
of goods or services.
(b) If the applicant does not satisfy all the elements required in
paragraph (a) of this section, the Office will deny a filing date to
the application unless the applicant meets the requirements of
paragraph (c) of this section.
(c) If the applicant is a national of a country that has acceded to
the Trademark Law Treaty, but not to the Singapore Treaty on the Law of
Trademarks, the requirements of paragraph (a) of this section to file
through TEAS and provide an email address do not apply.
0
7. Revise Sec. 2.22 to read as follows:
Sec. 2.22 Requirements for a TEAS Plus application.
(a) A trademark/service mark application for registration on the
Principal Register under section 1 and/or section 44 of the Act that
meets the requirements for a filing date under Sec. 2.21 will be
entitled to a reduced filing fee under Sec. 2.6(a)(1)(iv) if it
includes:
[[Page 37094]]
(1) The applicant's legal entity;
(2) The citizenship of each individual applicant, or the state or
country of incorporation or organization of each juristic applicant;
(3) If the applicant is a domestic partnership, the names and
citizenship of the general partners, or if the applicant is a domestic
joint venture, the names and citizenship of the active members of the
joint venture;
(4) If the applicant is a sole proprietorship, the state of
organization of the sole proprietorship and the name and citizenship of
the sole proprietor;
(5) One or more bases for filing that satisfy all the requirements
of Sec. 2.34. If more than one basis is set forth, the applicant must
comply with the requirements of Sec. 2.34 for each asserted basis;
(6) Correctly classified goods and/or services, with an
identification of goods and/or services from the Office's Acceptable
Identification of Goods and Services Manual, available through the TEAS
Plus form. In an application based on section 44 of the Act, the scope
of the goods and/or services covered by the section 44 basis may not
exceed the scope of the goods and/or services in the foreign
application or registration;
(7) If the application contains goods and/or services in more than
one class, compliance with Sec. 2.86;
(8) A filing fee for each class of goods and/or services, as
required by Sec. 2.6(a)(1)(iv);
(9) A verified statement that meets the requirements of Sec. 2.33,
dated and signed by a person properly authorized to sign on behalf of
the owner pursuant to Sec. 2.193(e)(1);
(10) If the applicant does not claim standard characters, the
applicant must attach a digitized image of the mark. If the mark
includes color, the drawing must show the mark in color;
(11) If the mark is in standard characters, a mark comprised only
of characters in the Office's standard character set, typed in the
appropriate field of the TEAS Plus form;
(12) If the mark includes color, a statement naming the color(s)
and describing where the color(s) appears on the mark, and a claim that
the color(s) is a feature of the mark;
(13) If the mark is not in standard characters, a description of
the mark;
(14) If the mark includes non-English wording, an English
translation of that wording;
(15) If the mark includes non-Latin characters, a transliteration
of those characters;
(16) If the mark includes an individual's name or portrait, either
(i) a statement that identifies the living individual whose name or
likeness the mark comprises and written consent of the individual, or
(ii) a statement that the name or portrait does not identify a living
individual (see section 2(c) of the Act).
(17) 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;
(18) If the application is a concurrent use application, compliance
with Sec. 2.42; and
(19) An applicant whose domicile is not located within the United
States or its territories must designate an attorney as the applicant's
representative, pursuant to Sec. 2.11(a), and include the attorney's
name, postal address, email address, and bar information.
(b) In addition to the filing requirements under paragraph (a) of
this section, the applicant must comply with Sec. 2.23(a) and (b).
(c) If an application does not fulfill the requirements of
paragraph (a) of this section, the applicant must pay the processing
fee required by Sec. 2.6(a)(1)(v).
(d) The following types of applications cannot be filed as TEAS
Plus applications:
(1) Applications for certification marks (see Sec. 2.45);
(2) Applications for collective trademarks and service marks (see
Sec. 2.44);
(3) Applications for collective membership marks (see Sec. 2.44);
and
(4) Applications for registration on the Supplemental Register (see
Sec. 2.47).
0
8. Revise Sec. 2.23 to read as follows:
Sec. 2.23 Requirement to correspond electronically with the Office
and duty to monitor status.
(a) Unless stated otherwise in this chapter, all trademark
correspondence must be submitted through TEAS.
(b) Applicants, registrants, and parties to a proceeding must
provide and maintain a valid email address for correspondence.
(c) If the applicant or registrant is a national of a country that
has acceded to the Trademark Law Treaty, but not to the Singapore
Treaty on the Law of Trademarks, the requirements of paragraphs (a) and
(b) of this section do not apply.
(d) Notices issued or actions taken by the USPTO are displayed in
the USPTO's publicly available electronic systems. Applicants and
registrants are responsible for monitoring the status of their
applications and registrations in the USPTO's electronic systems during
the following time periods:
(1) At least every six months between the filing date of the
application and issuance of a registration; and
(2) After filing an affidavit of use or excusable nonuse under
section 8 or section 71 of the Act, or a renewal application under
section 9 of the Act, at least every six months until the registrant
receives notice that the affidavit or renewal application has been
accepted.
0
9. Revise Sec. 2.24 to read as follows:
Sec. 2.24 Designation and revocation of domestic representative by
foreign applicant.
(a) An applicant or registrant that is not domiciled in the United
States may designate a domestic representative (i.e., a person residing
in the United States on whom notices or process in proceedings
affecting the mark may be served).
(b) The designation, or a request to change or revoke a
designation, must set forth the name, email address, and postal address
of the domestic representative and be signed pursuant to Sec.
2.193(e)(8).
(c) The mere designation of a domestic representative does not
authorize the person designated to represent the applicant or
registrant.
0
10. Amend Sec. 2.32 by revising paragraphs (a)(2) and (3) and (d) to
read as follows:
Sec. 2.32 Requirements for a complete trademark or service mark
application.
(a) * * *
(2) The name, domicile address, and email address of each
applicant. If the applicant is a national of a country that has acceded
to the Trademark Law Treaty, but not to the Singapore Treaty on the Law
of Trademarks, the requirement to provide an email address does not
apply;
(3)(i) The legal entity type and citizenship of the applicant(s);
and
(ii) If the applicant is a corporation, association, partnership or
other juristic person, the jurisdiction (usually state or nation) under
the laws of which the applicant is organized;
(iii) If the applicant is a domestic partnership, the names and
citizenship of the general partners;
(iv) If the applicant is a domestic joint venture, the names and
citizenship of the active members of the joint venture; or
(v) If the applicant is a sole proprietorship, the state of
organization
[[Page 37095]]
of the sole proprietorship and the name and citizenship of the sole
proprietor.
* * * * *
(d) The application must include the fee required by Sec. 2.6 for
each class of goods or services.
* * * * *
0
11. Revise Sec. 2.56 to read as follows:
2.56 Specimens.
(a) An application under section 1(a) of the Act, an amendment to
allege use under Sec. 2.76, a statement of use under Sec. 2.88, an
affidavit or declaration of continued use or excusable nonuse under
Sec. 2.160, or an affidavit or declaration of use or excusable nonuse
under Sec. 7.36 must include one specimen per class showing the mark
as actually used in commerce on or in connection with the goods or
services identified. When requested by the Office as reasonably
necessary to proper examination, additional specimens must be provided.
(b)(1) A trademark specimen must show use of the mark on the goods,
on containers or packaging for the goods, on labels or tags affixed to
the goods, or on a display associated with the goods. To constitute a
display associated with the goods, a specimen must show use of the mark
directly associated with the goods and such use must be of a point-of-
sale nature. The Office may accept another document related to the
goods or the sale of the goods when it is impracticable to place the
mark on the goods, packaging for the goods, or displays associated with
the goods.
(2) A service mark specimen must show the mark as used in the sale
of the services, including use in the performance or rendering of the
services, or in the advertising of the services. The specimen must show
a direct association between the mark and the services.
(3) A collective trademark or collective service mark specimen must
show how a member uses the mark on the member's goods or in the sale of
the services, including use in the performance or rendering of the
services, or advertising of the member's services.
(4) A collective membership mark specimen must show use by members
to indicate membership in the collective organization.
(5) A certification mark specimen must show how a person other than
the owner uses the mark to reflect certification of regional or other
origin, material, mode of manufacture, quality, accuracy, or other
characteristics of that person's goods or services; or that members of
a union or other organization performed the work or labor on the goods
or services.
(c) A clear and legible photocopy, photograph, web page printout,
or other similar type of reproduction of an actual specimen that meets
the requirements of paragraphs (a) and (b) of this section is
acceptable. The reproduction must show the entire specimen or enough of
the specimen that the nature of the specimen, the mark, and the good or
service with which the mark is used are identifiable. A web page must
include the URL and access or print date. An artist's rendering, a
printer's proof, a computer illustration, digital image, or similar
mockup of how the mark may be displayed, or a photocopy of the drawing
required by Sec. 2.51, are not proper specimens.
(d) The specimen must be submitted through TEAS in a file format
designated as acceptable by the Office, unless:
(1) The mark consists of a scent, flavor, or similar non-
traditional mark type, in which case the specimen may be mailed to the
Office, pursuant to Sec. 2.190(a), without resort to the procedures
set forth in Sec. 2.147; or
(2) Submission on paper is permitted under Sec. 2.23(c) or is
accepted on petition pursuant to Sec. 2.147.
0
12. Revise Sec. 2.62 to read as follows:
Sec. 2.62 Procedure for submitting response.
(a) Deadline. The applicant's response to an Office action must be
received by the USPTO within six months from the issue date.
(b) Signature. The response must be 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).
(c) Form. Responses must be submitted through TEAS pursuant to
Sec. 2.23(a). Responses sent via email or facsimile will not be
accorded a date of receipt.
0
13. Amend Sec. 2.111 by revising paragraph (c)(2) to read as follows:
Sec. 2.111 Filing petition for cancellation.
* * * * *
(c) * * *
(2)(i) In the event that ESTTA is unavailable due to technical
problems, or when extraordinary circumstances are present, a petition
to cancel may be filed in paper form. A paper petition to cancel a
registration must be accompanied by a Petition to the Director under
Sec. 2.146, with the fees therefor and the showing required under this
paragraph (c). Timeliness of the paper submission, if relevant to a
ground asserted in the petition to cancel, will be determined in
accordance with Sec. Sec. 2.195 through 2.198.
(ii) For a petition to cancel a registration on the fifth year
anniversary of the date of registration of the mark, a petitioner for
cancellation who meets the requirements of Sec. 2.147(b) may submit a
petition to the Director to accept a timely filed paper petition to
cancel.
* * * * *
0
14. Amend Sec. 2.146 by revising paragraph (a) to read as follows:
Sec. 2.146 Petitions to the Director.
(a) Petition may be taken to the Director in a trademark case:
(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);
(2) In any case for which the Act of 1946, Title 35 of the United
States Code, or parts 2, 3, 6, and 7 of Title 37 of the Code of Federal
Regulations specifies that the matter is to be determined directly or
reviewed by the Director;
(3) To invoke the supervisory authority of the Director in
appropriate circumstances;
(4) In any case not specifically defined and provided for by parts
2, 3, 6, and 7 of Title 37 of the Code of Federal Regulations; or
(5) In an extraordinary situation, when justice requires and no
other party is injured thereby, to request a suspension or waiver of
any requirement of the rules not being a requirement of the Act of
1946.
* * * * *
0
15. Add Sec. 2.147 to read as follows:
Sec. 2.147 Petition to the Director to accept a paper submission.
(a) Paper submission when TEAS is unavailable on the date of a
filing deadline. (1) An applicant or registrant may file a petition to
the Director under this section requesting acceptance of a submission
filed on paper if:
(i) TEAS is unavailable on the date of the deadline for the
submission specified in a regulation in part 2 or 7 of this chapter or
in a section of the Act; and
(ii) The petition is timely filed, pursuant to Sec. 2.197 or Sec.
2.198, on the date of the deadline.
(2) The petition must include:
(i) The paper submission;
(ii) Proof that TEAS was unavailable on the date of the deadline;
(iii) A statement of the facts relevant to the petition, supported
by a declaration under Sec. 2.20 or 28 U.S.C.
[[Page 37096]]
1746 that is signed by the petitioner, someone with legal authority to
bind the petitioner (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec. 11.14
of this chapter;
(iv) The fee for a petition filed on paper under Sec.
2.6(a)(15)(i); and
(v) Any other required fee(s) under Sec. 2.6 for the paper
submission.
(b) Certain paper submissions timely filed before the date of a
filing deadline. (1) An applicant, registrant, or petitioner for
cancellation may file a petition to the Director under this section,
requesting acceptance of any of the following submissions that was
timely submitted on paper and otherwise met the minimum filing
requirements, but not processed or examined by the Office because it
was not submitted electronically pursuant to Sec. 2.21(a), Sec.
2.23(a), or Sec. 2.111(c)(1), and the applicant, registrant, or
petitioner for cancellation is unable to timely resubmit the document
electronically by the deadline:
(i) An application seeking a priority filing date with a deadline
under section 44(d)(1) of the Act;
(ii) A statement of use filed within the last six months of the
period specified in section 1(d)(2) of the Act;
(iii) An affidavit or declaration of continued use or excusable
nonuse with a deadline under section 8(a)(3) or section 71(a)(3) of the
Act;
(iv) A request for renewal of a registration with a deadline under
section 9(a) of the Act;
(v) An application for transformation of an extension of protection
into a United States application with a deadline under section 70(c) of
the Act; or
(vi) A petition to cancel a registration under section 14 of the
Act on the fifth year anniversary of the date of the registration of
the mark.
(2) The petition must be filed by not later than two months after
the issue date of the notice denying acceptance of the paper filing and
must include:
(i) A statement of the facts relevant to the petition, supported by
a declaration under Sec. 2.20 or 28 U.S.C. 1746 that is signed by the
petitioner, someone with legal authority to bind the petitioner (e.g.,
a corporate officer or general partner of a partnership), or a
practitioner qualified to practice under Sec. 11.14 of this chapter;
(ii) A copy of the relevant paper submission and proof that it was
timely filed;
(iii) Proof that a sufficient fee accompanied the original paper
submission;
(iv) The required fee(s) under Sec. 2.6 for the paper submission;
and
(v) The relevant petition fee under Sec. 2.6(a)(15).
(c) Petition under Sec. 2.146. If the applicant or registrant is
unable to meet the requirements under paragraphs (a) or (b) of this
section for filing the petition, the applicant or registrant may submit
a petition to the Director under Sec. 2.146(a)(5) to request a waiver
of Sec. 2.21(a) or Sec. 2.23(a).
(d) This section does not apply to requirements for paper
submissions to the Trademark Trial and Appeal Board except as specified
in paragraph (b)(vi).
0
16. Revise Sec. 2.148 to read as follows:
Sec. 2.148 Director may suspend certain rules.
In an extraordinary situation, when justice requires and no other
party is injured thereby, any requirement of the rules in parts 2, 3,
6, and 7 of this chapter that is not a requirement of the Act may be
suspended or waived by the Director.
0
17. Revise Sec. 2.151 to read as follows:
Sec. 2.151 Certificate.
When the Office determines that a mark is registrable, the Office
will issue to the owner a certificate of registration on the Principal
Register or the Supplemental Register. The certificate will state the
application filing date, the act under which the mark is registered,
the date of issue, and the number of the registration and will include
a reproduction of the mark and pertinent data from the application. A
notice of the requirements of sections 8 and 71 of the Act will issue
with the certificate.
0
18. Revise Sec. 2.162 to read as follows:
Sec. 2.162 Notice to registrant.
When a certificate of registration is originally issued, the Office
issues with the certificate a notice of the requirement for filing the
affidavit or declaration of use or excusable nonuse under section 8 or
section 71 of the Act. However, the affidavit or declaration must be
filed within the time period required by section 8 or section 71 of the
Act even if this notice is not received.
0
19. Revise Sec. 2.190 to read as follows:
Sec. 2.190 Addresses for trademark correspondence with the United
States Patent and Trademark Office.
(a) Paper trademark documents. In general, trademark documents to
be delivered by the USPS must be addressed to: Commissioner for
Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. Trademark-related
documents to be delivered by hand, private courier, or other delivery
service may be delivered during the hours the Office is open to receive
correspondence to the Trademark Assistance Center, James Madison
Building--East Wing, Concourse Level, 600 Dulany Street, Alexandria,
Virginia 22314.
(b) Electronic trademark documents. Trademark documents filed
electronically must be submitted through TEAS. Documents that relate to
proceedings before the Trademark Trial and Appeal Board must be filed
electronically with the Board through ESTTA.
(c) Trademark assignment documents. Requests to record documents in
the Assignment Recordation Branch may be filed electronically through
ETAS. Paper documents and cover sheets to be recorded in the Assignment
Recordation Branch should be addressed as designated in Sec. 3.27 of
this chapter.
(d) Requests for certified copies of trademark documents. Paper
requests for certified copies of trademark documents must be addressed
to: Mail Stop Document Services, Director of the United States Patent
and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(e) Certain documents relating to international applications and
registrations. International applications under Sec. 7.11, subsequent
designations under Sec. 7.21, responses to notices of irregularity
under Sec. 7.14, requests to record changes in the International
Register under Sec. 7.23 and Sec. 7.24, requests to note replacements
under Sec. 7.28, requests for transformation under Sec. 7.31 of this
chapter, and petitions to the Director to review an action of the
Office's Madrid Processing Unit must be addressed to: Madrid Processing
Unit, 600 Dulany Street, Alexandria, VA 22314-5796.
0
20. Revise Sec. 2.191 to read as follows:
Sec. 2.191 Action of the Office based on the written record.
All business with the Office must be transacted in writing. The
action of the Office will be based exclusively on the written record.
No consideration will be given to any alleged oral promise,
stipulation, or understanding when there is disagreement or doubt.
0
21. Amend Sec. 2.193 by:
0
a. Revising paragraphs (a)(2), (b), (c)(1), (d), (e) introductory text,
(e)(5) introductory text, and (e)(9);
0
b. Removing paragraph (e)(10); and
0
c. Revising paragraphs (f) and (g).
The revisions read as follows:
Sec. 2.193 Trademark correspondence and signature requirements.
(a) * * *
[[Page 37097]]
(2) An electronic signature that meets the requirements of
paragraph (c) of this section, personally entered by the person named
as the signatory. The Office will accept an electronic signature that
meets the requirements of paragraph (c) of this section on
correspondence filed on paper or through TEAS or ESTTA.
(b) Copy of original signature. If a copy of an original signature
is filed, the filer should retain the original as evidence of
authenticity. If a question of authenticity arises, the Office may
require submission of the original.
(c) * * *
(1) Personally enter any combination of letters, numbers, spaces
and/or punctuation marks that the signer has adopted as a signature,
placed between two forward slash (``/'') symbols in the signature block
on the electronic submission; or
* * * * *
(d) Signatory must be identified. The first and last name, and the
title or position, of the person who signs a document in connection
with a trademark application, registration, or proceeding before the
Trademark Trial and Appeal Board must be set forth immediately below or
adjacent to the signature.
(e) Proper person to sign. Documents filed in connection with a
trademark application or registration must be signed as specified in
paragraphs (e)(1) through (9) of this section:
* * * * *
(5) Petitions to Director under Sec. 2.146 or Sec. 2.147. A
petition to the Director under Sec. 2.146 or Sec. 2.147 must be
signed by the petitioner, someone with legal authority to bind the
petitioner (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec. 11.14
of this chapter, in accordance with the following guidelines:
* * * * *
(9) Requests to change correspondence address in an application or
registration. A notice of change of correspondence address in an
application or registration must be signed by the applicant or
registrant, someone with legal authority to bind the applicant or
registrant (e.g., a corporate officer or general partner of a
partnership), or a practitioner qualified to practice under Sec. 11.14
of this chapter, in accordance with the following guidelines:
(i) If the applicant or registrant is represented by a practitioner
qualified to practice before the Office under Sec. 11.14 of this
chapter, the practitioner must sign; or
(ii) If the applicant or registrant is not represented by a
practitioner qualified to practice before the Office under Sec. 11.14,
the individual applicant or registrant or someone with legal authority
to bind the applicant or registrant (e.g., a corporate officer or
general partner of a partnership) must sign. In the case of joint
applicants or joint registrants, all must sign.
(f) Signature as certification. The presentation to the Office
(whether by signing, filing, submitting, or later advocating) of any
document by any person, whether a practitioner or non-practitioner,
constitutes a certification under Sec. 11.18(b) of this chapter.
Violations of Sec. 11.18(b) of this chapter may jeopardize the
validity of the application or registration, and may result in the
imposition of sanctions under Sec. 11.18(c) of this chapter. Any
practitioner violating Sec. 11.18(b) of this chapter may also be
subject to disciplinary action. See Sec. 11.18(d) and Sec. 11.804 of
this chapter.
(g) Separate copies for separate files. (1) Since each file must be
complete in itself, a separate copy of every document filed in
connection with a trademark application, registration, or inter partes
proceeding must be furnished for each file to which the document
pertains, even though the documents filed in multiple files may be
identical.
(2) Parties should not file duplicate copies of documents in a
single application, registration, or proceeding file, unless the Office
requires the filing of duplicate copies.
* * * * *
0
22. Revise Sec. 2.195 to read as follows:
Sec. 2.195 Filing date of trademark correspondence.
The filing date of trademark correspondence is determined as
follows:
(a) Electronic submissions. The filing date of an electronic
submission is the date the Office receives the submission, based on
Eastern Time, regardless of whether that date is a Saturday, Sunday, or
Federal holiday within the District of Columbia.
(b) Paper correspondence. The filing date of a submission submitted
on paper is the date the Office receives the submission, except as
follows:
(1) Priority Mail Express[supreg]. The filing date of the
submission is the date of deposit with the USPS, if filed pursuant to
the requirements of Sec. 2.198.
(2) Certificate of mailing. The filing date of the submission is
the date of deposit with the USPS, if filed pursuant to the
requirements of Sec. 2.197.
(3) Office closed. The Office is not open to receive paper
correspondence on any day that is a Saturday, Sunday, or Federal
holiday within the District of Columbia.
(c) Email and facsimile submissions. Email and facsimile
submissions are not permitted and, if submitted, will not be accorded a
date of receipt.
(d) Interruptions in USPS. If the Director designates a postal
service interruption or emergency within the meaning of 35 U.S.C.
21(a), any person attempting to file correspondence by Priority Mail
Express[supreg] Post Office to Addressee service who was unable to
deposit the correspondence with the USPS due to the interruption or
emergency may petition the Director to consider such correspondence as
filed on a particular date in the Office. The petition must:
(1) Be filed promptly after the ending of the designated
interruption or emergency;
(2) Include the original correspondence or a copy of the original
correspondence; and
(3) Include a statement that the correspondence would have been
deposited with the USPS on the requested filing date but for the
designated interruption or emergency in Priority Mail Express[supreg]
service; and that the correspondence attached to the petition is the
original correspondence or a true copy of the correspondence originally
attempted to be deposited as Priority Mail Express[supreg] on the
requested filing date.
0
23. Revise Sec. 2.197 to read as follows:
Sec. 2.197 Certificate of mailing.
(a) The filing date of correspondence submitted under this section
is the date of deposit with the USPS if the correspondence:
(1) Is addressed as set out in Sec. 2.190 and deposited with the
USPS with sufficient postage as first-class mail; and
(2) Includes a certificate of mailing for each piece of
correspondence that:
(i) Attests to the mailing and the address used;
(ii) Includes the name of the document and the application serial
number or USPTO reference number, if assigned, or registration number
to which the document pertains;
(iii) Is signed separately from any signature for the
correspondence by a person who has a reasonable basis to expect that
the correspondence would be mailed on the date indicated; and
(iv) Sets forth the date of deposit with the USPS.
(b) If correspondence is mailed in accordance with paragraph (a) of
this section, but not received by the Office,
[[Page 37098]]
the party who mailed such correspondence may file a petition to the
Director under Sec. 2.146(a)(2) to consider such correspondence filed
in the Office on the date of deposit with the USPS. The petition must:
(1) Be filed within two months after the date of mailing;
(2) Include a copy of the previously mailed correspondence and
certificate; and
(3) Include a verified statement attesting to the facts of the
original mailing.
(c) If the certificate of mailing does not meet the requirements of
paragraph (a)(2) of this section, the filing date is the date the
Office receives the submission.
0
24. Revise Sec. 2.198 to read as follows:
Sec. 2.198 Filing of correspondence by Priority Mail Express[supreg].
(a) The filing date of correspondence submitted under this section
is the date of deposit with the USPS, as shown by the ``date accepted''
on the Priority Mail Express[supreg] label or other official USPS
notation.
(b) If the USPS deposit date cannot be determined, the filing date
is the date the Office receives the submission.
(c) If there is a discrepancy between the filing date accorded by
the Office to the correspondence and the ``date accepted,'' the party
who submitted the correspondence may file a petition to the Director
under Sec. 2.146(a)(2) to accord the correspondence a filing date as
of the ``date accepted.'' The petition must:
(1) Be filed within two months after the date of deposit;
(2) Include a true copy of the Priority Mail Express[supreg]
mailing label showing the ``date accepted,'' and any other official
notation by the USPS relied upon to show the date of deposit; and
(3) Include a verified statement attesting to the facts of the
original mailing.
(d) If the party who submitted the correspondence can show that the
``date accepted'' was incorrectly entered or omitted by the USPS, the
party may file a petition to the Director under Sec. 2.146(a)(2) to
accord the correspondence a filing date as of the date the
correspondence is shown to have been deposited with the USPS. The
petition must:
(1) Be filed within two months after the date of deposit;
(2) Include proof that the correspondence was deposited in the
Priority Mail Express[supreg] Post Office to Addressee service prior to
the last scheduled pickup on the requested filing date. Such proof must
be corroborated by evidence from the USPS or evidence that came into
being within one business day after the date of deposit; and
(3) Include a verified statement attesting to the facts of the
original mailing.
(e) If correspondence is properly addressed to the Office pursuant
to Sec. 2.190 and deposited with sufficient postage in the Priority
Mail Express[supreg] Post Office to Addressee service of the USPS, but
not received by the Office, the party who submitted the correspondence
may file a petition to the Director under Sec. 2.146(a)(2) to consider
such correspondence filed in the Office on the USPS deposit date. The
petition must:
(1) Be filed within two months after the date of deposit;
(2) Include a copy of the previously mailed correspondence showing
the number of the Priority Mail Express[supreg] mailing label thereon;
and
(3) Include a verified statement attesting to the facts of the
original mailing.
PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARKS
0
25. The authority citation for part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
0
26. Amend Sec. 7.1 by revising paragraphs (c) and (d) to read as
follows:
Sec. 7.1 Definitions of terms as used in this part.
* * * * *
(c) The acronym TEAS means the Trademark Electronic Application
System, and, as used in this part, includes all related electronic
systems required to complete an electronic submission through TEAS.
(d) The term Office or the abbreviation USPTO means the United
States Patent and Trademark Office.
* * * * *
0
27. Revise Sec. 7.4 to read as follows:
Sec. 7.4 International applications and registrations originating
from the USPTO--Requirements to electronically file and communicate
with the Office.
(a) Unless stated otherwise in this chapter, all correspondence
filed with the USPTO relating to international applications and
registrations originating from the USPTO must be submitted through TEAS
and include a valid email address for correspondence.
(b) Applicants and registrants under this section must provide and
maintain a valid email address for correspondence with the Office.
(c) If an applicant or registrant under this section is a national
of a country that has acceded to the Trademark Law Treaty, but not to
the Singapore Treaty on the Law of Trademarks, the requirements of
paragraphs (a) and (b) of this section do not apply.
(d) If TEAS is unavailable, or in an extraordinary situation, an
applicant or registrant under this section who is required to file a
submission through TEAS may submit a petition to the Director under
Sec. 2.146(a)(5) and (c) of this chapter to accept the submission
filed on paper.
0
28. Amend Sec. 7.11 by:
0
a. Revising paragraphs (a) introductory text and (a)(10) and (11);
0
b. Removing paragraph (a)(12); and
0
c. Revising paragraph (b).
The revisions read as follows:
Sec. 7.11 Requirements for international application originating from
the United States.
(a) The Office will grant a date of receipt to an international
application that is filed through TEAS in accordance with Sec. 7.4(a),
or typed on the official paper form issued by the International Bureau,
if permitted under Sec. 7.4(c) or accepted on petition pursuant to
Sec. 7.4(d). The international application must include all of the
following:
* * * * *
(10) If the application is filed through TEAS, the international
application fees for all classes, and the fees for all designated
Contracting Parties identified in the international application (see
Sec. 7.7); and
(11) A statement that the applicant is entitled to file an
international application in the Office, specifying that applicant: Is
a national of the United States; has a domicile in the United States;
or has a real and effective industrial or commercial establishment in
the United States. Where an applicant's address is not in the United
States, the applicant must provide the address of its U.S. domicile or
establishment.
(b) For requirements for certification, see Sec. 7.13.
0
29. Amend Sec. 7.21 by:
0
a. Revising paragraphs (b) introductory text and (b)(7) and (8);
0
b. Removing paragraph (b)(9); and
0
c. Revising paragraph (c).
The revisions read as follows:
Sec. 7.21 Subsequent designation.
* * * * *
(b) The Office will grant a date of receipt to a subsequent
designation that
[[Page 37099]]
is filed through TEAS in accordance with Sec. 7.4(a), or typed on the
official paper form issued by the International Bureau, if permitted
under Sec. 7.4(c) or accepted on petition pursuant to Sec. 7.4(d).
The subsequent designation must contain all of the following:
* * * * *
(7) The U.S. transmittal fee required by Sec. 7.6; and
(8) If the subsequent designation is filed through TEAS, the
subsequent designation fees (see Sec. 7.7).
(c) If the subsequent designation is accorded a date of receipt,
the Office will then forward the subsequent designation to the
International Bureau.
* * * * *
0
30. Amend Sec. 7.25 by revising paragraph (a) to read as follows:
Sec. 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for Sec. Sec. 2.21, 2.22, 2.76, 2.88, 2.89, 2.130,
2.131, 2.160 through 2.166, 2.168, 2.173, 2.175, and 2.181 through
2.186, all sections in parts 2 and 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.
* * * * *
Dated: July 25, 2019.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2019-16259 Filed 7-30-19; 8:45 am]
BILLING CODE 3510-16-P