[Federal Register: December 30, 2002 (Volume 67, Number 250)]
[Rules and Regulations]
[Page 79520-79523]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr30de02-4]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 1, 2 and 3
[Docket No. 2003-T-005]
RIN 0651-AB58
Correspondence With the United States Patent and Trademark Office
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule; Technical Corrections Act of 2002 Rules Change.
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SUMMARY: The United States Patent and Trademark Office (``USPTO'') is
revising its rules of practice to simplify the requirements for: (1)
Filing an application for registration based on a foreign registration
under 15 U.S.C. 1126(e); and (2) designation of a domestic
representative by a party who is not domiciled in the United States.
These changes implement the changes to the Trademark Act of 1946, 15
U.S.C. 1051 et seq., made by the Technical Corrections in Trademark Law
Act, title III, subtitle B, sec. 13207 of Pub. L. 107-273, 116 Stat.
1758. The USPTO is also making some minor technical corrections to the
rules of practice.
EFFECTIVE DATE: December 30, 2002.
FOR FURTHER INFORMATION CONTACT: Mary E. Hannon, Office of the
Commissioner for Trademarks, by telephone at (703) 308-8910, extension
137, by e-mail at mary.hannon@uspto.gov, or by facsimile at (703) 872-
9280.
SUPPLEMENTARY INFORMATION: The Technical Corrections in Trademark Law
Act of 2002, Pub. L. 107-273, 116 Stat. 1758 (``Technical Corrections
Act''), amended section 44(e) of the Trademark Act, 15 U.S.C. 1126(e),
to eliminate the requirement that a foreign applicant who seeks
registration in the United States based on a registration in the
applicant's home country (country of origin) submit a certification or
certified copy of the foreign registration. As amended, section 44(e)
requires that the applicant submit ``a true copy, a photocopy, a
certification, or a certified copy of the registration in the country
of origin of the applicant.''
The Technical Corrections Act also amended sections 1(e), 8(f),
9(c), and 10 of the Trademark Act, 15 U.S.C. 1051(e), 1058(f), 1059(c)
and 1060, to eliminate the requirement that an applicant or registrant
who is not domiciled in the United States designate the name and
address of a person resident in the United States on whom may be served
notices or process in proceedings affecting the mark (``domestic
representative''). As amended, these sections provide that the
applicant or registrant ``may'' designate a domestic representative,
and that if the applicant or registrant does not designate a domestic
representative (or if the person designated cannot be found at the
address in the designation), then notices or process in proceedings
affecting the mark may be served on the Director of the USPTO
(``Director''). In other words, the designation of a domestic
representative in trademark proceedings is now optional, not mandatory.
The Technical Corrections Act is effective November 2, 2002.
Discussion of Specific Rules
The USPTO is amending rules 1.4(d)(1)(iii)(A), 2.6(b)(8), 2.18,
2.24, 2.33(b)(2), 2.34, 2.119(d), 2.161(h), 2.183, 3.31(a), and 3.61.
Section 1.4(d)(1)(iii)(A) is amended to delete the requirement that
a party who signs a trademark document electronically print, sign, date
and maintain a paper copy of the electronic submission. It is
burdensome and inefficient for parties who file electronically to
maintain both paper and electronic records of the filings. Paper
records are unnecessary because electronic records would be sufficient
proof of filing if a document filed electronically were to become lost
within the USPTO.
Section 2.6(b)(8) is amended to delete ``T-Search'' in both places
in which it appears, and substitute ``X-Search.'' This merely updates
the references to the USPTO's electronic search system.
Section 2.18 is amended to provide that if an applicant, registrant
or party to a proceeding who does not reside in the United States has
not appointed a domestic representative and the application or
proceeding is not being prosecuted by an attorney, the USPTO will send
correspondence directly to the applicant, registrant or party, unless
the applicant, registrant or party has designated a different address
to which correspondence should be sent. The rule previously stated that
the USPTO would send correspondence to the domestic representative
unless the application was being prosecuted by an attorney, in which
case the USPTO would send correspondence to the attorney. The amendment
is necessary because designation of a domestic representative is no
longer mandatory.
Section 2.24 is amended to provide that an applicant not residing
in the United States may designate a domestic representative, and that
if the applicant does not designate a domestic representative (or if
the person designated cannot be found at the address given in the
designation), then notices or process in proceedings affecting the mark
may be served on the Director of the USPTO. This incorporates the
amendment of 15 U.S.C. 1051(e), and 1060.
Section 2.33(b)(2) is amended to require that an application under
15 U.S.C. 1051(b) or 15 U.S.C. 1126 include an allegation that the
applicant believes it is entitled to use the mark ``in commerce''. This
corrects an oversight in the rule (which previously omitted the
language ``in commerce''), and makes it consistent with 15 U.S.C.
1051(b)(3)(A), which requires an allegation that the applicant believes
itself ``to be entitled to use the mark in commerce''. This amendment
does not change current practice.
Section 2.34(a)(2)(i) is amended to provide that in an application
based on the applicant's bona fide intention to use the mark in
commerce under 15 U.S.C. 1051(b), the ``applicant'' must verify that it
has a bona fide intention to use the mark in commerce on or in
connection with the goods or services listed in the application. The
rule previously required verification by the ``trademark owner'', but
this was inconsistent with 15 U.S.C. 1051(b)(3), which requires
verification by the ``applicant''. An intent-to-use applicant who has
not yet used a mark in commerce is not the ``owner'' of the mark. This
amendment does not change current practice.
Section 2.34(a)(3)(i) is amended to provide that in an application
based on registration of a mark in a foreign applicant's country of
origin under 15 U.S.C. 1126(e), the ``applicant'' must verify that it
has a bona fide intention to use the mark in commerce on or in
connection with the goods or services listed in the application. The
rule
[[Page 79521]]
previously required verification by the ``trademark owner''. This
amendment is consistent with Sec. 2.33 and does not change current
practice.
Section 2.34(a)(3)(ii) is amended to provide that an application
for registration of a mark based on a foreign registration under 15
U.S.C. 1126(e) must include a ``true copy, photocopy, certification, or
certified copy'' of a registration in the applicant's country of
origin. This incorporates the amendment of 15 U.S.C. 1126(e), which now
permits submission of a photocopy of a foreign registration.
Previously, the rule required a certification or certified copy of the
foreign registration.
Section 2.34(a)(3)(iii) is amended to provide that in an
application for registration of a mark based on a foreign registration
under 15 U.S.C. 1126(e), if the record indicates that the foreign
registration will expire before the United States registration will
issue, the applicant must submit a true copy, photocopy, certification,
or certified copy from the country of origin showing that the foreign
registration has been renewed and is still in force. This incorporates
the amendment of 15 U.S.C. 1126(e). Previously, the rule required a
certification or certified copy showing that the foreign registration
had been renewed.
Section 2.34(a)(4)(ii) is amended to provide that in an application
based on an earlier-filed foreign application under 15 U.S.C. 1126(d),
the ``applicant'' must verify that it has a bona fide intention to use
the mark in commerce on or in connection with the goods or services
listed in the application. The rule previously required verification by
the ``trademark owner.'' This amendment is consistent with Sec. 2.33
and does not change current practice.
Section 2.119(d) is amended to provide that if a party to an inter
partes proceeding who does not reside in the United States has
appointed a domestic representative, the USPTO will send correspondence
to the domestic representative unless the proceeding is being
prosecuted by an attorney at law, in which case the USPTO will send
correspondence to the attorney; and that if the party has not appointed
a domestic representative and the proceeding is not being prosecuted by
an attorney, the USPTO will send correspondence directly to the party.
The rule previously stated that the USPTO would send correspondence to
the domestic representative unless the application was being prosecuted
by an attorney, in which case the USPTO would send correspondence to
the attorney. The amendment is necessary because designation of a
domestic representative is no longer mandatory.
Section 2.161 is amended by deleting paragraph (h), which required
that an affidavit of continued use or excusable nonuse under 15 U.S.C.
1058 include a designation of domestic representative if the registrant
is not domiciled in the United States. This incorporates the amendment
of 15 U.S.C. 1058(f), which makes the designation of domestic
representative optional.
Section 2.183 is amended by deleting paragraph (d), which required
that a renewal application under 15 U.S.C. 1059 include a designation
of domestic representative if the registrant is not domiciled in the
United States, and by redesignating paragraphs (e) and (f) as
paragraphs (d) and (e). This incorporates the amendment of 15 U.S.C.
1059(c), which makes the designation of domestic representative
optional.
Section 3.31 is amended by deleting paragraph (a)(7), which
required that a trademark cover sheet under Sec. 3.28 include an
indication that an assignee who is not domiciled in the United States
had designated a domestic representative, and by redesignating
paragraph (a)(8) as paragraph (a)(7). This incorporates the amendment
of 15 U.S.C. 1060, which makes the designation of domestic
representative optional.
Section 3.61 is amended to provide that the assignee of a trademark
application or registration who does not reside in the United States
``may'' designate a domestic representative. This incorporates the
amendment of 15 U.S.C. 1060. The rule previously provided that an
assignee who does not reside in the United States ``must'' designate a
domestic representative.
Administrative Procedure Act
This final rule merely involves rules of agency practice and
procedure within the meaning of 5 U.S.C. 553(b)(A), as the amendments
merely incorporate changes to the statute enacted by the Technical
Corrections Act, Public Law 107-273, 116 Stat. 1758, which simplify or
eliminate existing procedural requirements. Therefore, this final rule
may be adopted without prior notice and opportunity for public comment
under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under
5 U.S.C. 553(d).
Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), a regulatory
flexibility analysis under the Regulatory Flexibility Act (5 U.S.C. 601
et seq.) is not required. See 5 U.S.C. 603 and 604.
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 making does not create any information collection
requirements under the Paperwork Reduction Act (PRA) of 1995 (44 U.S.C.
3501 et seq.); however, this rule making does contain information
collection requirements subject to the PRA. This final rule eliminates
the requirement to maintain a paper copy of an application that has
been filed electronically. This rule also eliminates the requirement
that applicants or registrants who are not domiciled in the United
States must designate the name and address of a person resident in the
United States on whom may be served notice or process in proceedings
affecting the mark (``domestic representative''). The designation of a
domestic representative is now an optional requirement. These
requirements have been previously submitted to OMB for review and
approval under OMB Control Number 0651-0009. The USPTO will update
0651-0009 to reflect the change in the record keeping requirements
associated with the amendment of section 1.4(d)(1)(iii)(A) and any
possible burden changes associated with the optional designation of a
domestic representative. The public reporting burden for these
requirements averages three minutes, including the time for reviewing
instructions and gathering the information. Send comments regarding
this burden estimate to Mary E. Hannon, Office of the Commissioner for
Trademarks, by telephone at (703) 308-8910, extension 137, by e-mail at
mary.hannon@uspto.gov, or by facsimile at (703) 872-9280 or to the OMB
Office of Information and Regulatory Affairs, New Executive Office
Bldg., 725 17th Street, NW., Washington, DC 20230 (Attn: USPTO Desk
Officer).
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 79522]]
information displays a currently valid OMB control number.
List of Subjects
37 CFR Part 1
Administrative practice and procedure, Trademarks.
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Trademarks, Assignments.
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 USPTO is
amending parts 1, 2 and 3 of title 37 as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
2. Amend Sec. 1.4 by revising paragraph (d)(1)(iii)(A) to read as
follows:
Sec. 1.4 Nature of correspondence and signature requirements.
* * * * *
(d) * * *
(1) * * *
(iii) * * *
(A) Place a symbol comprised of numbers and/or letters between two
forward slash marks in the signature block on the electronic
submission; or
* * * * *
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
3. 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.
4. Amend Sec. 2.6 by revising paragraph (b)(8) to read as follows:
Sec. 2.6 Trademark fees.
* * * * *
(b) * * *
(8) Marginal cost, paid in advance, for each hour of terminal
session time, including print time, using X-Search capabilities,
prorated for the actual time used. The Director may waive the payment
by an individual for access to X-Search upon a showing of need or
hardship, and if such waiver is in the public interest $40.00
* * * * *
5. Revise Sec. 2.18 to read as follows:
Sec. 2.18 Correspondence, with whom held.
If papers are transmitted by an attorney at law, or a written power
of attorney is filed, the United States Patent and Trademark Office
will send correspondence to the attorney at law transmitting the
papers, or to the attorney at law designated in the power of attorney.
If an application or proceeding is not being prosecuted by an attorney
at law, and the applicant, registrant or party to a proceeding before
the Office has appointed a domestic representative, the Office will
send correspondence to the domestic representative, unless the
applicant, registrant or party designates in writing another address to
which correspondence is to be sent. If the application or proceeding is
not being prosecuted by an attorney and the applicant, registrant or
party has not designated a domestic representative, the Office will
send correspondence directly to the applicant, registrant or party,
unless the applicant, registrant or party designates in writing another
address to which correspondence is to be sent. Correspondence will
continue to be sent to such address until the applicant, registrant or
party, or the attorney or other authorized representative of the
applicant, registrant or party, indicates in writing that
correspondence is to be sent to another address. The Office will not
undertake double correspondence, and if more than one attorney at law
or other authorized representative appears or signs a paper, the
Office's reply will be sent to the address already established in the
record until another correspondence address is specified by the
applicant, registrant or party or by the attorney or other authorized
representative of the applicant, registrant or party.
6. Revise Sec. 2.24 and its heading to read as follows:
Sec. 2.24 Designation of domestic representative by foreign
applicant.
If an applicant is not domiciled in the United States, the
applicant may designate by a document filed in the United States Patent
and Trademark Office the name and address of some person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark. If the applicant does not file a
document designating the name and address of a person resident in the
United States on whom may be served notices or process in proceedings
affecting the mark, or if the last person designated cannot be found at
the address given in the designation, then notices or process in
proceedings affecting the mark may be served on the Director. The mere
designation of a domestic representative does not authorize the person
designated to prosecute the application unless qualified under
paragraph (a), (b) or (c) of Sec. 10.14 of this subchapter and
authorized under Sec. 2.17(b).
7. Amend Sec. 2.33 by revising paragraph (b)(2) to read as
follows:
Sec. 2.33 Verified statement.
* * * * *
(b) * * *
(2) In an application under section 1(b) or section 44 of the Act,
the verified statement must allege:
That the applicant has a bona fide intention to use the mark shown
in the accompanying drawing in commerce on or in connection with the
specified goods or services; that the applicant believes it is entitled
to use the mark in commerce; that to the best of the declarant's
knowledge and belief, no other person has the right to use the mark in
commerce, either in the identical form or in such near resemblance as
to be likely, when applied to the goods or services of the other
person, to cause confusion or mistake, or to deceive; and that the
facts set forth in the application are true.
* * * * *
8. Amend Sec. 2.34 by revising paragraphs (a)(2)(i), (a)(3)(i),
(a)(3)(ii), (a)(3)(iii), and (a)(4)(ii) to read as follows:
Sec. 2.34 Bases for filing.
(a) * * *
(2) * * *
(i) In an application under section 1(b) of the Act, the applicant
must verify that it has a bona fide intention to use the mark in
commerce on or in connection with the goods or services listed in the
application. If the verification is not filed with the initial
application, the verified statement must allege that the applicant had
a bona fide intention to use the mark in commerce as of the filing date
of the application.
* * * * *
(3) * * *
(i) The applicant's verified statement that it has a bona fide
intention to use the mark in commerce on or in connection with the
goods or services listed in the application. If the verification is not
filed with the initial application, the verified statement must allege
that the applicant had a bona fide intention to use the mark in
commerce as of the filing date of the application.
(ii) A true copy, a photocopy, a certification, or a certified copy
of a registration in the applicant's country of origin showing that the
mark has been
[[Page 79523]]
registered in that country, and that the registration is in full force
and effect. The certification or copy of the foreign registration must
show the name of the owner, the mark, and the goods or services for
which the mark is registered. If the foreign registration is not in the
English language, the applicant must submit a translation.
(iii) If the record indicates that the foreign registration will
expire before the United States registration will issue, the applicant
must submit a true copy, a photocopy, a certification, or a certified
copy from the country of origin to establish that the foreign
registration has been renewed and will be in force at the time the
United States registration will issue. If the foreign registration is
not in the English language, the applicant must submit a translation.
* * * * *
(4) * * *
(ii) The applicant's verified statement that it has a bona fide
intention to use the mark in commerce on or in connection with the
goods or services listed in the application. If the verification is not
filed with the initial application, the verified statement must allege
that the applicant had a bona fide intention to use the mark in
commerce as of the filing date of the application.
* * * * *
9. Amend Sec. 2.119 by revising paragraph (d) to read as follows:
Sec. 2.119 Service and signing of papers.
* * * * *
(d) If a party to an inter partes proceeding is not domiciled in
the United States and is not represented by an attorney or other
authorized representative located in the United States, the party may
designate by document filed in the United States Patent and Trademark
Office the name and address of a person resident in the United States
on whom may be served notices or process in the proceeding. If the
party has appointed a domestic representative, official communications
of the United States Patent and Trademark Office will be addressed to
the domestic representative unless the proceeding is being prosecuted
by an attorney at law or other qualified person duly authorized under
Sec. 10.14(c) of this subchapter. If the party has not appointed a
domestic representative and the proceeding is not being prosecuted by
an attorney at law or other qualified person, the Office will send
correspondence directly to the party, unless the party designates in
writing another address to which correspondence is to be sent. The mere
designation of a domestic representative does not authorize the person
designated to prosecute the proceeding unless qualified under Sec.
10.14(a), or qualified under Sec. 10.14(b) and authorized under Sec.
2.17(b).
* * * * *
10. Amend Sec. 2.161 by removing paragraph (h), and by revising
paragraph (g)(2) to read as follows:
* * * * *
(g) * * *
(2) Be flat and no larger than 8\1/2\ inches (21.6 cm.) wide by
11.69 inches (29.7 cm.) long. If a specimen exceeds these size
requirements (a ``bulky specimen''), the Office will create a facsimile
of the specimen that meets the requirements of the rule (i.e., is flat
and no larger than 8\1/2\ inches (21.6 cm.) wide by 11.69 inches (29.7
cm.) long) and put it in the file wrapper.
11. Amend Sec. 2.183 by removing paragraph (d); and redesignating
paragraphs (e) and (f) as (d) and (e).
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
12. The authority citation for 37 CFR part 3 continues to read as
follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 2(b)(2).
13. Amend Sec. 3.31 by removing paragraph (a)(7) and redesignating
paragraph (a)(8) as paragraph (a)(7).
14. Revise Sec. 3.61 to read as follows:
Sec. 3.61 Domestic representative.
If the assignee of a patent, patent application, trademark
application or trademark registration is not domiciled in the United
States, the assignee may designate a domestic representative in a
document filed in the United States Patent and Trademark Office. The
designation should state the name and address of a person residing
within the United States on whom may be served process or notice of
proceedings affecting the application, patent or registration or rights
thereunder.
Dated: December 20, 2002.
James E. Rogan,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 02-32801 Filed 12-27-02; 8:45 am]
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