[Federal Register Volume 88, Number 153 (Thursday, August 10, 2023)]
[Notices]
[Pages 54305-54308]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2023-17144]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-T-2023-0028]
Changes to Duration of Attorney Recognition; Notice of Public
Listening Session and Request for Comments
AGENCY: United States Patent and Trademark Office, U.S. Department of
Commerce.
ACTION: Notice of public listening session; request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) seeks public comments on changes to the trademark rule
regarding the duration of attorney recognition. In addition, the USPTO
is announcing a public listening session on September 26, 2023, titled
``Changes to Duration of Attorney Recognition,'' to offer further
opportunity for the public to provide input on this topic.
DATES: The public listening session will take place on September 26,
2023, from 2-3:30 p.m. ET. Anyone wishing to present oral testimony at
the hearing, either in person or virtually, must submit a written
request for an opportunity to do so no later than September 15, 2023.
Persons seeking to attend, either in person or virtually, but not to
speak at the event must register by September 18, 2023. Seating is
limited for in-person attendance. The USPTO will accept written
comments until October 6, 2023.
ADDRESSES:
Public Listening Session
The public listening session will take place in person in the Clara
Barton Auditorium at the USPTO, 600 Dulany Street, Alexandria, VA
22314. The session will also be available via live feed for those
wishing to attend remotely. Registration is required for both in-person
and virtual attendance. Information on registration is available on the
USPTO's website at www.uspto.gov/about-us/events/trademark-public-listening-session-changes-duration-attorney-recognition.
Request for Comments
For reasons of Government efficiency, commenters must submit their
comments through the Federal eRulemaking Portal at www.regulations.gov.
To submit comments via the portal, enter docket number PTO-T-2023-0028
on the homepage and click ``search.'' The site will provide a search
results page listing all documents associated with this docket. Find a
reference to this request
[[Page 54306]]
for comments and click on the ``Comment'' icon, complete the required
fields, and enter or attach your comments. Attachments to electronic
comments will be accepted in ADOBE[supreg] portable document format
(PDF) or MICROSOFT WORD[supreg] format. Because comments will be made
available for public inspection, information that the submitter does
not desire to make public, such as an address or phone number, should
not be included in the comments.
Visit the Federal eRulemaking Portal for additional instructions on
providing comments via the portal. If electronic submission of comments
is not feasible due to a lack of access to a computer and/or the
internet, please contact the USPTO using the contact information below
for special instructions regarding how to submit comments by mail or by
hand delivery.
FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy
Commissioner for Trademark Examination Policy, at 571-272-8946 or
[email protected].
SUPPLEMENTARY INFORMATION:
I. Background
Under the Trademark Rules of Practice, the USPTO will recognize an
attorney qualified under 37 CFR 11.14 as an applicant's or registrant's
representative if that attorney files a power of attorney, signs a
document on behalf of an applicant or registrant who is not already
represented, or is otherwise identified in a document submitted on
behalf of an applicant or registrant who is not already represented. 37
CFR 2.17(b). Once an attorney is recognized, the USPTO will correspond
only with that attorney until recognition ends. 37 CFR 2.18(a)(2).
Recognition as to a pending application ends when the mark registers,
when ownership changes, or when the application is abandoned. 37 CFR
2.17(g)(1). Recognition as to a registration ends when the registration
is canceled or expired, when ownership changes, or upon acceptance or
final rejection of a post registration maintenance filing. 37 CFR
2.17(g)(2). The USPTO does not inquire into any engagement agreement
between the attorney and the applicant or registrant to determine
whether representation continues after the events that trigger the end
of recognition under Sec. 2.17(g). Therefore, following such an event,
the trademark rules dictate that the USPTO correspond only with the
applicant or registrant. 37 CFR 2.18(a). However, past customer
feedback indicated that, in most cases, even after the occurrence of an
event listed in the current Sec. 2.17(g), representation continued,
and the attorney should be the only recipient of the trademark
registration certificate, maintenance and renewal reminders, and any
other correspondence. For this reason, the USPTO currently sends, as a
courtesy, correspondence to the attorney of record, except in
connection with petitions to cancel filed with the Trademark Trial and
Appeal Board, which are served on the registrant.
For several years, some outside practitioners have expressed
concern that the current recognition rule, when read in conjunction
with the correspondence rule, is problematic for practitioners whose
recognition before the Office ends even though their representation of
the applicant or registrant continues based on engagement agreements.
These practitioners are concerned about missing response deadlines when
representation continues, if they are removed from the record when
recognition ends and will no longer receive correspondence from the
USPTO regarding their clients' matters following abandonment or
registration. Many of these practitioners have instructed their clients
to disregard anything sent directly to them about their trademark
application or registration to avoid having the clients subjected to a
misleading solicitation, which is a growing problem for the USPTO and
its customers. If their clients disregard all communications, including
USPTO correspondence sent to them pursuant to Sec. 2.18(a), and the
practitioner is no longer receiving correspondence from the USPTO,
deadlines for taking action would likely be missed. This group would
like the USPTO to presume that representation, and therefore
recognition, continues until the attorney withdraws or is revoked so
that they, and not their clients, will continue to receive
correspondence from the USPTO.
Other practitioners have expressed that they did not have any
concerns with the current recognition rule because they do not wish to
be subject to continuing legal and ethical obligations to the client
after a listed event occurs. The current rule works to their advantage
because they have no obligation to file a withdrawal form with the
USPTO if recognition ends automatically. However, these practitioners
have expressed concern as to whether there is an ethical obligation to
contact their former clients about correspondence sent to them as a
courtesy by the USPTO. As noted above, the USPTO continues to list all
practitioners as the attorney of record and to send correspondence to
them, even after recognition ended under the rule, because of the
concerns over missed response deadlines.
In response to practitioner requests, the USPTO sends the courtesy
email reminder that goes out in advance of the due date for a post
registration maintenance document to both the owner and the last
attorney of record (who is no longer recognized under the current rule
and should not receive correspondence). The USPTO implemented this
courtesy practice by sending the email reminders to both the applicant/
registrant and the attorney as well as the notice of registration, the
notice of abandonment, and the notice that an expungement or
reexamination petition had been filed against the registration.
However, the practice has caused confusion among practitioners and
has created some uncertainty for the USPTO in implementing its
regulations. Sending email reminders and notices to attorneys who are
no longer recognized under Sec. 2.17(g) constitutes an unofficial
waiver of Sec. 2.18(a), which governs the parties with whom the USPTO
will correspond in trademark matters. Moreover, despite the obligation
under Sec. 2.18(c) to maintain current and accurate correspondence
addresses, the USPTO cannot be certain that the correspondence
information in its records is still accurate, particularly regarding
post registration reminders and notices that are sent 5-10 years or
more after registration.
II. Trademark Modernization Act Notice of Proposed Rulemaking
In a notice of proposed rulemaking (NPRM) to implement provisions
of the Trademark Modernization Act (TMA), published in the Federal
Register on May 18, 2021, the USPTO proposed to revise 37 CFR 2.17(g)
(86 FR 26862). The suggested revisions indicated that, for purposes of
an application or registration, recognition of a qualified attorney as
the applicant's or registrant's representative would continue until the
owner revoked the appointment or the attorney withdrew from
representation, even when there was a change of ownership. Therefore,
owners and/or attorneys would be required to proactively file an
appropriate revocation or withdrawal document under 37 CFR 2.19 before
a new attorney could be recognized. The amendment was proposed to
address the issues discussed above.
As noted in the final rule published on November 17, 2021, the
USPTO received mixed comments regarding the
[[Page 54307]]
proposed revisions to Sec. 2.17(g) (86 FR 64300). While several
commenters were generally in favor of ongoing attorney recognition,
others preferred the current practice, citing burdens associated with
the new rules.
The USPTO also proposed to remove the name of any attorney whose
recognition had ended under existing Sec. 2.17(g) from the current
attorney-of-record field in the USPTO's database, along with the
attorney's bar information and any docketing information. However, the
attorney's correspondence information, including any correspondence
email address, would be retained so the USPTO could continue to send
relevant correspondence and notices to both the formerly recognized
attorney and the owner. Most commenters were opposed to removing the
attorney information during the transition period, stating that this
would cause unnecessary burdens to reappear in records.
Based on the public comments to the TMA NPRM, the USPTO determined
that additional time was needed to address the concerns expressed.
Therefore, the changes proposed in the TMA NPRM were not included in
the TMA final rule. The USPTO now seeks additional input on whether
Sec. 2.17(g): (1) should be amended as discussed below, or (2) should
not be amended, and all attorney information be removed when
recognition ends following a listed event in Sec. 2.17(g).
III. Changes to Duration of Recognition for Representation
The USPTO now seeks additional feedback regarding possible changes
to the provisions addressing the duration of recognition for
representation in Sec. 2.17(g). The changes under consideration would
allow recognition as to a pending application or registration to
continue until the applicant, registrant, or party to a proceeding
revokes the power of attorney or the representative withdraws from
representation.
As noted above, such a rule change would require an attorney who no
longer represents an applicant to affirmatively withdraw or be revoked
for recognition to end. Shifting the burden to the attorney to
withdraw, or to the owner to file a revocation, would give the USPTO
greater assurance that it is communicating with the correct party. If
stakeholders support the rule change, there are at least two challenges
to address:
(1) How to make withdrawal easier.
(2) How to implement the transition in the USPTO database.
Although withdrawal is relatively easy, it is worth exploring
whether the USPTO can make it even easier. In addition, the USPTO must
ensure that if an attorney is deceased, it can efficiently remove that
practitioner from its records. Moreover, the process must be consistent
with the Rules of Professional Conduct, which dictate the terms of
withdrawal.
The other area of concern is the transition of the USPTO's
electronic records from recognition for a set duration to continued
recognition following any rule change. Two categories of attorneys
would be immediately affected by any rule change: (1) attorneys who are
recognized at the time the rule goes into effect, and (2) attorneys
whose information remains in the record but who are not currently
recognized by virtue of the previous recognition rule. The revisions
under consideration would have limited effect on the first set of
attorneys because their existing recognition would continue. There
would be some impact on attorneys whose representation does not
continue past a certain event or date and who no longer wish to be
recognized by the Office as the attorney of record because they would
have to proactively withdraw to avoid any ambiguity.
The attorneys in the second group for whom recognition has ended
under the current rule, even though their information remains of
record, cannot be retroactively recognized by implementation of the
revisions under consideration even if they prefer recognition to
continue. See Bowen v. Georgetown Univ. Hosp., 488 U.S. 204, 208, 109
S. Ct. 468, 471-472, 102 L. Ed. 2d 493, 500 (1988). On the date the
USPTO recognized these attorneys, the current rule was in effect, and
they had no notice that recognition would continue beyond the events
listed in Sec. 2.17(g). To avoid this retroactive effect, the USPTO
proposed in the TMA NPRM that all attorney information would be removed
from the database if a recognition-ending event had already occurred.
To be recognized again, these attorneys would need to: (1) reappear by
filing a document, and (2) reenter bar and docket information. Some
public comments filed in response to this proposal demonstrated a
concern with this approach because of the burden this would place on
trademark owners and attorneys. However, removal of attorney
information comports with the current recognition rule and the
attorneys subject to it.
The USPTO is now considering deleting all attorney information,
after a listed event, from the records of all applications filed or
registrations issued prior to the date of implementation of a change to
Sec. 2.17(g) stating that recognition continues until there is a
revocation or withdrawal of the recognized attorney of record. The
USPTO has considered requests that attorneys be given the opportunity
to opt in to remaining of record in such situations. However, the USPTO
has neither the staff nor the technological resources to implement an
opt-in alternative as to the affected applications and registrations.
In addition, such a provision would not reconcile inaccuracies in older
records.
IV. Retaining the Current Provisions on Recognition for Representation
If the USPTO does not amend Sec. 2.17(g) to allow continued
recognition until there is a revocation or withdrawal of the recognized
attorney of record, the USPTO would not continue the courtesy practice
of sending notices or reminders to the listed attorney in addition to
the applicant or registrant. Pursuant to the plain language of Sec.
2.17(g) that recognition ends when a listed event occurs, all attorney
information would be removed when such an event occurs or if it has
already occurred. Thus, correspondence and relevant notices would no
longer be sent to both the formerly recognized attorney and the owner.
Following Sec. 2.18(a), correspondence and notices would be sent to
the applicant or registrant or to a newly recognized attorney. This
option would also require a transition period during which attorney
information would be removed for attorneys whose information remains in
the record but who are not currently recognized by virtue of the rule.
V. Listening Session and Questions for Comments
The USPTO is holding a listening session on September 26, 2023, and
is requesting public comments on the questions listed below. The USPTO
will use a portion of the listening session to provide an overview of
the changes under consideration. An agenda will be available
approximately five days before the listening session on the USPTO
website at www.uspto.gov/about-us/events/trademark-public-listening-session-changes-duration-attorney-recognition, which is the same link
for registration.
The USPTO poses the following questions for public comment. These
questions are not meant to be exhaustive. We encourage interested
stakeholders to address these and/or other related issues and to submit
research and data that inform and
[[Page 54308]]
support their comments on these topics. Commenters are welcome to
respond to any or all of the questions, and are encouraged to indicate
which questions their comments address.
1. Do you think the current rule should remain unchanged, or are
you in favor of the revisions under consideration?
2. Do you have suggestions for handling the transition period
during which attorney information is removed from the record whether
the current rule is retained or revised?
3. Do you have any suggestions for making withdrawal or re-
recognition easier if the rule is revised to continue recognition?
Anyone wishing to participate as a speaker, either in person or
virtually, must submit a request in writing no later than September 15,
2023. Requests to participate as a speaker must be submitted to
[email protected] and must include:
1. The name of the person desiring to participate;
2. The organization(s) that person represents, if any; and
3. The person's contact information (address, telephone number, and
email).
Speaking slots are limited; the USPTO will give preference to
speakers wishing to address one of the questions raised in this request
for comments. Speakers will be announced a few days prior to the public
listening session. The USPTO will inform each speaker in advance of
their assigned time slot. If the USPTO receives more requests to speak
than time allows and is unable to assign a time slot as requested, the
agency will invite the requestor to submit written comments. Time slots
will be at least three minutes and may be longer, depending on the
number of speakers registered. A panel of USPTO personnel may reserve
time to ask questions of particular speakers after the delivery of a
speaker's remarks.
The public listening session will be physically accessible to
people with disabilities. Individuals requiring accommodation, such as
sign language interpretation or other ancillary aids, should
communicate their needs to the individuals listed under the FOR FURTHER
INFORMATION CONTACT section of this notice at least seven business days
prior to the session.
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2023-17144 Filed 8-9-23; 8:45 am]
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