Changes in the Requirements for Amendment and Correction of Trademark Registrations

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (“Office”) is amending its rules to eliminate the requirement that a request for amendment or correction of a registration be accompanied by the original certificate of registration or a certified copy thereof, and the requirement that an application to surrender a registration for cancellation be accompanied by the original certificate or a certified copy.

DATES:

Effective September 20, 2004.

FOR FURTHER INFORMATION CONTACT:

Cheryl Black, Office of the Commissioner for Trademarks, by telephone at (703) 308-8910, ext. 153; or by e-mail to cheryl.black@uspto.gov.

SUPPLEMENTARY INFORMATION:

A Notice of Proposed Rule Making was published in the Federal Register (68 FR 70482) on December 18, 2003. No public hearing was held. Two organizations, two law firms and two attorneys submitted written comments.

The Office is amending its rules to eliminate the requirement that the original certificate of registration or a certified copy thereof accompany a request for amendment of a registration, a request for correction of a registration, or an application to surrender a registration for cancellation.

References below to “the Act,” “the Trademark Act,” or “the statute” refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as amended.

Requirement for Submission of Original Certificate of Registration or Certified Copy

The Office is eliminating the requirement under §§ 2.173, 2.174, and 2.175(b) that a request for amendment or correction of a registration under section 7 of the Trademark Act be accompanied by the original certificate of registration or a certified copy thereof. Under the current rules, the Office attaches an updated registration certificate showing the amendment or correction to the original certificate and returns it to the registrant. However, the Office believes that requiring the registrant to submit the original certificate or a certified copy for the purpose of physically attaching an updated registration certificate, only to return the original certificate (or certified copy thereof) to the owner of record is unnecessary and inefficient. Instead, the Office will send the updated registration certificate showing the amendment or correction to the registrant, and instruct the registrant to attach it to the certificate of registration. The Office will update its own records to show the amendment or correction and attach an updated registration certificate to the printed copy of the registration on file in the Office.

The Office is also eliminating the requirement under § 2.172, that an application for surrender of a registration for cancellation under section 7 of the Trademark Act be accompanied by the original certificate, if not lost or destroyed. The requirement is unnecessary and inefficient. The Office will process a request for cancellation regardless of whether the original registration certificate accompanies the request. If the original certificate is submitted, the Office will destroy the certificate once the registration is cancelled.

One-Year Time Limit for Requests for Correction of Registrations

The proposed amendment to §§ 2.174 and 2.175 required registrants to file all requests for correction of a registration within one year after the date of registration, even where a mistake in a registration resulted from an Office error. This change in practice was proposed because granting requests to correct errors in registrations years after the date of registration caused confusion to examining attorneys and third parties who might have previously searched Office records and relied on information about existing registrations.

Four comments stated that many of the mistakes go unnoticed for years after issuance and are not discovered until it is time to file an affidavit of use or excusable nonuse under Section 8 of the Trademark Act. In an example provided by one commenter, a registrant received an error-free registration certificate and years later after preparing an affidavit of use discovered an error on the registration in the Office's Trademark electronic database. Two comments stated that denying requests to correct errors in registrations after the one-year limit could result in the loss of substantive trademark rights and that maintaining a registration with inaccurate information could cause problems for registrants in establishing a complete chain of title, seeking foreign and international trademark rights, and protecting against trademark infringement. Accordingly, the Office has reconsidered this proposed change and at this time is not imposing a time limit for requests for corrections to registrations under §§ 2.174 and 2.175. The benefits of providing accurate information about registrations in the records of the Office, protecting the rights of owners to seek correction of errors in registrations and avoiding possible loss of substantive trademark rights due to mistakes in the registration outweigh the concerns that would warrant a time limit on filing requests for corrections.

Discussion of Specific Rules

The Office is amending §§ 2.172, 2.173, 2.174, 2.175, and 2.176.

The Office is amending § 2.172 to eliminate the requirement that an application to surrender a trademark registration for cancellation be accompanied by the original certificate of registration.

The Office is amending § 2.173 to eliminate the requirement that the original certificate of registration or a certified copy thereof accompany a request for amendment of a trademark registration.

The Office is amending § 2.174 to eliminate the requirement that the original certificate of registration or a certified copy thereof accompany a request for correction of a mistake by the Office in a trademark registration pursuant to section 7(g) of the Trademark Act.

The Office is amending § 2.175 to eliminate the requirement that the original certificate of registration or a certified copy thereof accompany a request for correction of a mistake by a registrant in a trademark registration pursuant to section 7(g) of the Trademark Act.

The Office is amending § 2.176 to change “Examiner of Trademarks” to “Post Registration Examiners.”

Rule Making Requirements

Regulatory Flexibility Act

The changes in this final rule relate solely to the procedure to be followed in requesting an amendment or correction of a registration. Therefore, these rule changes involve interpretive rules, or rules of agency practice and procedure under 5 U.S.C. 553(b)(A), and prior notice and an opportunity for public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any other law). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (rules governing an application process are “rules of agency organization, procedure, or practice” and exempt from the Administrative Procedure Act's notice and comment requirement); Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of practice promulgated under the authority of former 35 U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not substantive rules (to which the notice and comment requirements of the Administrative Procedure Act apply)); Fressola v. Manbeck, 36 USPQ2d 1211, 1215 (D.D.C. 1995) (“it is doubtful whether any of the rules formulated to govern patent and trade-mark practice are other than ‘interpretative rules, general statements of policy, * * * procedure, or practice” ’ (quoting C.W. Ooms, The United States Patent Office and the Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)).

Nevertheless, the Office published a notice of proposed rule making in the Federal Register, 68 FR 70482 (Dec. 18, 2003), and in the Official Gazette of the United States Patent Office on January 13, 2004, in order to solicit public participation with regard to this rule package. Pursuant to the notice of proposed rule making, the Deputy General Counsel for General Law of the United States Patent and Trademark Office certified to the Chief Counsel for Advocacy of the Small Business Administration under the provisions of section 605(b) of the Regulatory Flexibility Act that the proposed rule would not have a significant economic impact on a substantial number of small entities. No comments were received which referenced any impact the proposed rules would have on small entities.

This final rule package does not impose any new fees on members of the public. In fact, because this final rule eliminates the requirement that registrants must submit the original certificate of registration or a certified copy thereof with a request for amendment, correction, or surrender of a registration, this final rule will lessen the financial burden on many registrants. In situations where a registrant does not have a certified copy of his or her own registration, the registrant, whether a large or small entity, will no longer be required to pay fees to the USPTO to obtain a certified copy of his or her own registration.

Accordingly, the Deputy General Counsel for General Law of the United States Patent and Trademark Office has certified to the Chief Counsel for Advocacy of the Small Business Administration that the rule changes will not have a significant impact on a substantial number of small entities (Regulatory Flexibility Act, 5 U.S.C. 605(b)).

Executive Order 13132

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

Executive Order 12866

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

Paperwork Reduction Act

This rule contains no new information collection or recordkeeping requirements under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). Existing collections of information and recordkeeping requirements have been reviewed and approved by OMB under OMB Control Number 0651-0009, Trademark Processing. Notwithstanding any other provision of law, no person is required to respond to nor shall a person be subject to a penalty for failure to comply with a collection of information subject to the requirements of the Paperwork Reduction Act unless that collection of information displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 2

• Administrative practice and procedure
• Trademarks

For the reasons given in the preamble and under the authority contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office amends part 2 of title 37 as follows:

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

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

2. Revise § 2.172 to read as follows:

3. Amend § 2.173 by revising paragraph (a) to read as follows:

4. Revise § 2.174 to read as follows:

5. Amend § 2.175 by revising paragraphs (a) and (b) to read as follows:

6. Revise § 2.176 to read as follows: