Rule2021-24926
Changes To Implement Provisions of the Trademark Modernization Act of 2020
Primary source
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Published
November 17, 2021
Effective
December 18, 2021
Issuing agencies
Commerce DepartmentPatent and Trademark Office
Abstract
The United States Patent and Trademark Office (USPTO or Office) amends the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020 (TMA). This rule establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made; provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board (TTAB or Board); establishes flexible Office action response periods; and amends the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable. The rule also sets fees for petitions requesting institution of ex parte expungement and reexamination proceedings, and for requests to extend Office action response deadlines. The rules governing the suspension of USPTO proceedings and attorney recognition in trademark matters are also amended. Finally, a new rule is added to address procedures regarding court orders cancelling or affecting registrations.
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[Federal Register Volume 86, Number 219 (Wednesday, November 17, 2021)]
[Rules and Regulations]
[Pages 64300-64334]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2021-24926]
[[Page 64299]]
Vol. 86
Wednesday,
No. 219
November 17, 2021
Part II
Department of Commerce
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Patent and Trademark Office
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37 CFR Parts 2 and 7
Changes To Implement Provisions of the Trademark Modernization Act of
2020; Final Rule
Federal Register / Vol. 86 , No. 219 / Wednesday, November 17, 2021 /
Rules and Regulations
[[Page 64300]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. PTO-T-2021-0008]
RIN 0651-AD55
Changes To Implement Provisions of the Trademark Modernization
Act of 2020
AGENCY: United States 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 to implement
provisions of the Trademark Modernization Act of 2020 (TMA). This rule
establishes ex parte expungement and reexamination proceedings for
cancellation of a registration when the required use in commerce of the
registered mark has not been made; provides for a new nonuse ground for
cancellation before the Trademark Trial and Appeal Board (TTAB or
Board); establishes flexible Office action response periods; and amends
the existing letter-of-protest rule to indicate that letter-of-protest
determinations are final and non-reviewable. The rule also sets fees
for petitions requesting institution of ex parte expungement and
reexamination proceedings, and for requests to extend Office action
response deadlines. The rules governing the suspension of USPTO
proceedings and attorney recognition in trademark matters are also
amended. Finally, a new rule is added to address procedures regarding
court orders cancelling or affecting registrations.
DATES: This rule is effective on December 18, 2021, except for
Sec. Sec. 2.6(a)(28); 2.62(a) and (c); 2.63(b) introductory text,
(b)(1) and (2), (c), and (d); 2.65(a); 2.66(b); 2.163(b) through (e);
2.165; 2.176; 2.184(b); 2.186(b) through (d); 7.6(a)(9); 7.39; and
7.40, which are effective on December 1, 2022.
FOR FURTHER INFORMATION CONTACT: Robert Lavache, Office of the Deputy
Commissioner for Trademark Examination Policy, USPTO, at 571-272-5881,
or by email at <a href="/cdn-cgi/l/email-protection#247069744b484d475d64515754504b0a434b52"><span class="__cf_email__" data-cfemail="9bcfd6cbf4f7f2f8e2dbeee8ebeff4b5fcf4ed">[email protected]</span></a>.
SUPPLEMENTARY INFORMATION: The TMA was enacted on December 27, 2020.
See Public Law 116-260, Div. Q, Tit. II, Subtit. B, sections 221-228
(Dec. 27, 2020). The TMA amends the Trademark Act of 1946 (the Act) to
establish new ex parte expungement and reexamination proceedings to
cancel, either in whole or in part, registered marks for which the
required use in commerce was not made. Id. at section 225(a), (c).
Furthermore, the TMA amends section 14 of the Act to allow a party to
allege that a mark has never been used in commerce as a basis for
cancellation before the TTAB. Id. at section 225(b). The TMA also
authorizes the USPTO to promulgate regulations to set flexible Office
action response periods between 60 days and 6 months, with an option
for applicants to extend the deadline up to a maximum of 6 months from
the Office action issue date. Id. at section 224. In addition, the TMA
includes statutory authority for the USPTO's letter-of-protest
procedures, which allow third parties to submit evidence to the USPTO
relevant to the registrability of a trademark during the initial
examination of the application, and provides that the decision of
whether to include such evidence in the application record is final and
non-reviewable. Id. at section 223. The TMA requires the USPTO to
promulgate regulations to implement the provisions relating to the new
ex parte expungement and reexamination proceedings, and the letter-of-
protest procedures, within one year of the TMA's enactment. Id. at
sections 223(b), 225(f).
Accordingly, the USPTO revises the rules in 37 CFR part 2 to
implement the TMA's provisions and set fees for the new ex parte
expungement and reexamination proceedings and for response deadline
extensions. The rule also clarifies that the new ex parte expungement
and reexamination proceedings are subject to suspension in appropriate
cases and reflects existing practice regarding suspension of
proceedings before the USPTO and the TTAB. The USPTO also amends the
rules regarding attorney recognition and correspondence to clarify that
the USPTO will not recognize an attorney who has been ``mistakenly,
falsely, or fraudulently designated'' and that an attorney need not
formally withdraw under such circumstances. Finally, a new rule is
added, formalizing the USPTO's longstanding procedures concerning
action on court orders canceling or affecting a registration under
section 37 of the Act, 15 U.S.C. 1119. In formulating this final rule,
the USPTO considered the public comments submitted pursuant to the
notice of proposed rulemaking (NPRM) published in the Federal Register
on May 18, 2021, at 86 FR 26862, and made adjustments to the substance
of this rule based on these considerations. Comments the USPTO received
about specific requirements or procedures are summarized, and the
USPTO's responses are provided, in section VIII below.
I. Ex Parte Expungement and Reexamination Proceedings
As the House Report for the TMA explained, ``Trademarks are at the
foundation of a successful commercial marketplace. Trademarks allow
companies to identify their goods and services, and they ensure that
consumers know whose product they are buying. . . . By guarding against
deception in the marketplace, trademarks also serve an important
consumer protection role.'' H.R. Rep. No. 116-645, at 8-9 (2020)
(citation omitted).
In order to have a well-functioning trademark system, the trademark
register should accurately reflect trademarks that are currently in
use. Id. at 9. When the register includes marks that are not currently
in use, it is more difficult for legitimate businesses to clear and
register their own marks. Id. It has become apparent in recent years
that registrations are being obtained and maintained for marks that are
not properly in use in commerce. Id. at 9-10. Moreover, this
``cluttering'' has real-world consequences when the availability of
marks is depleted. Id. at 9.
The House Report also noted that ``[a] recent rise in fraudulent
trademark applications has put further strain on the accuracy of the
federal register. Although trademark applications go through an
examination process, some of these forms of fraud are difficult to
detect in individual applications (even if patterns of fraud can be
seen across multiple applications), leading to illegitimate
registrations. Although the USPTO can try to develop better systems to
detect fraud during the examination process, its authority to
reconsider applications after registration is currently limited.'' Id.
at 10-11 (citation omitted).
To address these problems, the TMA created two new ex parte
processes that will allow a third party, or the Director, to challenge
whether a registrant made use of its registered trademark in commerce.
If the registered mark was not properly used, the Office will be able
to cancel the registration. Id. at 11. The TMA also provides for
improvements to make the trademark examination process more efficient
and more effective at clearing applications that may block later-filed
applications from proceeding to registration. Id.
[[Page 64301]]
The two new ex parte proceedings created by the TMA--one for
expungement and one for reexamination--provide new mechanisms for
removing a registered mark from the trademark register, or cancelling
the registration as to certain goods and/or services, when the
registrant has not used the mark in commerce as of the relevant date
required by the Act. In an expungement proceeding, the USPTO must
determine whether the evidence of record supports a finding that the
registered mark has never been used in commerce on or in connection
with some or all of the goods and/or services recited in the
registration. In a reexamination proceeding, the USPTO must determine
whether the evidence of record supports a finding that the mark
registered under section 1 of the Act was not in use in commerce on or
in connection with some or all of the goods and/or services as of the
filing date of the application or amendment to allege use, or before
the deadline for filing a statement of use, as applicable. If the USPTO
determines that the required use was not made for the goods or services
at issue in the proceeding, and that determination is not overturned on
review, the registration will be cancelled in whole or in part, as
appropriate.
These new proceedings are intended to provide a more efficient and
less expensive alternative to a contested inter partes cancellation
proceeding before the TTAB. While the authority for the expungement and
reexamination proceedings is set forth in separate subsections of the
Act, the procedures for instituting the proceedings, the nature of the
evidence required, and the process for evaluating evidence and
corresponding with the registrant, as set forth in this rule, are
essentially the same. Thus, for administrative efficiency, proceedings
involving the same registration may be consolidated by the USPTO for
review.
To implement these new proceedings and related procedures, the
USPTO amends its rules to add the following new rules:
<bullet> Section 2.91, setting forth the requirements for a
petition requesting the institution of expungement or reexamination
proceedings;
<bullet> Section 2.92, regarding the institution of ex parte
expungement and reexamination proceedings; and
<bullet> Sections 2.93 and 2.94, setting forth the procedures for
expungement and reexamination proceedings, and for action after those
proceedings.
In addition, conforming amendments are made to the following
existing rules:
<bullet> Section 2.6, which sets the fees for petitions for
expungement and/or reexamination and for requests for extensions of
time to respond to an Office action;
<bullet> Section 2.11, which requires U.S. counsel for foreign-
domiciled petitioners and registrants;
<bullet> Section 2.23, which addresses the duty to monitor the
status of a registration;
<bullet> Section 2.67, which addresses suspension of action by the
USPTO;
<bullet> Section 2.117, which addresses suspension of proceedings
before the TTAB;
<bullet> Section 2.142, which addresses the time and manner of ex
parte appeals;
<bullet> Section 2.145, which addresses appeals to the U.S. Court
of Appeals for the Federal Circuit;
<bullet> Section 2.146, which addresses petitions to the Director;
and
<bullet> Section 2.193, which addresses signature requirements.
A. Timing for Requests for Proceedings
The TMA specifies the time periods during which a petitioner can
request institution of expungement and reexamination proceedings, and
during which the Director may institute such proceedings based on a
petition or on the Director's own initiative. Accordingly, under Sec.
2.91(b)(1), a petitioner may request, and the Director may institute,
an ex parte expungement proceeding between 3 and 10 years following the
date of registration. However, the TMA provides that, until December
27, 2023 (3 years from the TMA's enactment date), a petitioner may
request, and the Director may institute, an expungement proceeding for
a registration that is at least 3 years old, regardless of the 10-year
limit. Under Sec. 2.91(b)(2), a petitioner may request, and the
Director may institute, a reexamination proceeding during the first
five years following the date of registration.
The TMA gives discretion to the Director to establish by rule a
limit on the number of petitions for expungement or reexamination that
can be filed against a registration. However, after consideration of
the comments received regarding establishing such a limitation, which
are discussed below, and to foster clearing of the register of unused
marks, the USPTO has determined that it will not impose a limitation on
the number of petitions at this time. This will allow the USPTO time to
determine whether existing safeguards in the statute and the
regulations implemented herein suffice to protect registrants from
potential misuse of the proceedings. These safeguards include the fact
that the registrant does not participate until after the Director
institutes a proceeding based on a prima facie case of nonuse of the
mark, and the registrant cannot be subject to another proceeding for
the same goods and/or services for which use of the mark was
established in a prior proceeding. If the existing safeguards in the
statute and the regulations do not suffice to protect registrants from
misuse of the proceedings, the USPTO may establish a limit on the
number of petitions for expungement or reexamination that can be filed
against a registration in a future rule.
B. Petition Requirements
Under the TMA, and Sec. 2.91, any person may file a petition with
the USPTO requesting institution of an expungement or reexamination
proceeding. In the NPRM, the USPTO sought comments on whether and when
the Director should require a petitioner to identify the name of the
real party in interest on whose behalf the petition is filed. As
discussed below, this rule does not require a petitioner to identify
the name of the real party in interest on whose behalf the petition is
filed, but retains the Director's authority to require that information
in particular cases.
Reexamination and expungement petitions are intended to allow third
parties to bring unused registered marks to the attention of the USPTO.
To the extent a registrant believes its own mark was not used in
commerce, or is no longer used in commerce, on or in connection with
some or all of the goods and/or services listed in the registration,
the registrant should utilize the existing mechanisms for voluntarily
amending the registration to delete the goods and/or services or
surrendering the registration in its entirety, pursuant to section 7 of
the Act, 15 U.S.C. 1057. To incentivize registrants to keep their
registrations accurate and up-to-date as to the goods and/or services
on which the mark is actually used in commerce, the USPTO previously
established a $0 fee for voluntary deletions of goods and/or services
made outside of a maintenance examination. See Trademark Fee Adjustment
rule (85 FR 73197, November 17, 2020).
A petition for expungement must allege that the relevant registered
trademark has never been used in commerce on or in connection with some
or all of the goods and/or services listed in the registration.
A petition for reexamination must allege that the trademark was not
in use in commerce on or in connection with
[[Page 64302]]
some or all of the goods and/or services listed in the registration on
or before the relevant date, which, for any particular goods and/or
services, is determined as follows:
<bullet> In a use-based application for registration of a mark with
an initial filing basis of section 1(a) of the Act for the goods and/or
services listed in the petition, and not amended at any point to be
filed pursuant to section 1(b) of the Act, 15 U.S.C. 1051(b), the
relevant date is the filing date of the application; or
<bullet> In an intent-to-use application for registration of a mark
with an initial filing basis or amended basis of section 1(b) of the
Act for the goods and/or services listed in the petition, the relevant
date is the later of the filing date of an amendment to allege use
identifying the goods and/or services listed in the petition, pursuant
to section 1(c) of the Act, or the expiration of the deadline for
filing a statement of use for the goods and/or services listed in the
petition, pursuant to section 1(d), including all approved extensions
thereof.
Under Sec. 2.91(c), the Director will consider only complete
petitions for expungement or reexamination. To be considered complete,
the petition must be made in writing and filed through the USPTO's
Trademark Electronic Application System (TEAS), and must include:
<bullet> The fee required by Sec. 2.6(a)(26);
<bullet> The U.S. trademark registration number of the registration
subject to the petition;
<bullet> The basis for petition under Sec. 2.91(a);
<bullet> The name, domicile address, and email address of the
petitioner;
<bullet> If the domicile of the petitioner is not located within
the United States or its territories, a designation of an attorney, as
defined in Sec. 11.1, who is qualified to practice under Sec. 11.14;
<bullet> If the petitioner is, or must be, represented by an
attorney, as defined in Sec. 11.1, who is qualified to practice under
Sec. 11.14, the attorney's name, postal address, email address, and
bar information under Sec. 2.17(b)(3);
<bullet> Identification of each good and/or service recited in the
registration for which the petitioner requests that the proceeding be
instituted on the basis identified in the petition;
<bullet> A verified statement signed by someone with firsthand
knowledge of the facts to be proved that sets forth in numbered
paragraphs:
a. The elements of the reasonable investigation of nonuse
conducted, as defined under Sec. 2.91(d), where for each source of
information relied upon, the statement includes a description of how
and when the searches were conducted and what the searches disclosed;
and
b. A concise factual statement of the relevant basis for the
petition, including any additional facts that support the allegation of
nonuse of the mark in commerce on or in connection with the goods and
services as specified in Sec. 2.91(a);
<bullet> A clear and legible copy of all documentary evidence
supporting a prima facie case of nonuse of the mark in commerce and an
itemized index of such evidence.
If a petition does not satisfy the requirements for a complete
petition, the USPTO will issue a letter providing the petitioner 30
days to perfect the petition by complying with the outstanding
requirements, if otherwise appropriate.
C. Petition Fee
After consideration of the comments discussed below regarding the
proposed fee of $600 per class, this final rule sets a fee of $400 per
class for a petition for expungement or reexamination. In setting this
fee, the USPTO intends to strike a balance between recovering the costs
associated with conducting these proceedings (including Director-
initiated proceedings) and providing a less expensive alternative to a
contested inter partes cancellation proceeding before the TTAB.
D. Reasonable Investigation Requirement
Under Sec. 2.91(c)(8), a petition requesting institution of an
expungement or reexamination proceeding must include a verified
statement that sets forth the elements of the reasonable investigation
the petitioner conducted to determine that the mark was never used in
commerce (for expungement petitions) or not in use in commerce as of
the relevant date (for reexamination petitions) on or in connection
with the goods and/or services identified in the petition.
A reasonable investigation is an appropriately comprehensive search
likely to reveal use of the mark in commerce on or in connection with
the relevant goods and/or services, if such use was, in fact, made.
Thus, what constitutes a reasonable investigation is a case-by-case
determination, but any investigation should focus on the mark disclosed
in the registration and the identified goods and/or services, keeping
in mind their scope and applicable trade channels.
The elements of a petitioner's investigation should demonstrate
that a search for use in relevant channels of trade and advertising for
the identified goods and/or services did not reveal any relevant use.
In addition, the petitioner's statement regarding the elements of the
reasonable investigation should specifically describe the sources
searched, how and when the searches were conducted, and what
information and evidence, if any, the searches produced.
Sources of information and evidence should include reasonably
accessible sources that can be publicly disclosed, because petitions
requesting institution of expungement and reexamination proceedings
will be entered in the registration record and thus be publicly
viewable through the USPTO's Trademark Status & Document Retrieval
(TSDR) database. The number and nature of the sources a petitioner must
check in order for its investigation to be considered reasonable, and
the corresponding evidence that would support a prima facie case, will
vary depending on the goods and/or services involved, their normal
trade channels, and whether the petition is for expungement or
reexamination. Because nonuse for purposes of expungement and
reexamination is necessarily determined in reference to a time period
that includes past activities (not just current activities), a
petitioner's investigation normally would include research into past
usage of the mark for the goods and/or services at issue in the
petition and thus may include archival evidence.
As a general matter, a single search using an internet search
engine likely would not be considered a reasonable investigation. See
H.R. Rep. No. 116-645, at 15 (2020). On the other hand, a reasonable
investigation does not require a showing that all of the potentially
available sources of evidence were searched. Generally, an
investigation that produces reliable and credible evidence of nonuse at
the relevant time should be sufficient.
As set forth in Sec. 2.91(d)(2), appropriate sources of evidence
and information for a reasonable investigation may include, but are not
limited to:
<bullet> State and Federal trademark records;
<bullet> internet websites and other media likely to or believed to
be owned or controlled by the registrant;
<bullet> internet websites, other online media, and publications
where the relevant goods and/or services likely would be advertised or
offered for sale;
<bullet> Print sources and web pages likely to contain reviews or
discussions of the relevant goods and/or services;
<bullet> Records of filings made with or of actions taken by any
State or Federal
[[Page 64303]]
business registration or regulatory agency;
<bullet> The registrant's marketplace activities, including, for
example, any attempts to contact the registrant or purchase the
relevant goods and/or services;
<bullet> Records of litigation or administrative proceedings
reasonably likely to contain evidence bearing on the registrant's use
or nonuse of the registered mark; and
<bullet> Any other reasonably accessible source with information
establishing that the mark was never in use in commerce (expungement),
or was not in use in commerce as of the relevant date (reexamination),
on or in connection with the relevant goods and/or services.
A petitioner is not required or expected to commission a private
investigation but may choose to generally reference the results of any
report from such an investigation without disclosing specific
information that would waive any applicable privileges.
Finally, any party practicing before the USPTO, including those
filing petitions to request institution of these ex parte proceedings,
is bound by all ethical rules involving candor toward the USPTO as the
adjudicating tribunal. Of particular relevance in ex parte expungement
and reexamination proceedings is 37 CFR 11.303(d), which states: ``In
an ex parte proceeding, a practitioner shall inform the tribunal of all
material facts known to the practitioner that will enable the tribunal
to make an informed decision, whether or not the facts are adverse.''
Also relevant is the USPTO rule concerning submissions in trademark
matters, which provides that by presenting any trademark submission to
the USPTO, a party, whether a practitioner or non-practitioner, is
certifying that ``[t]o the best of the party's knowledge, information
and belief, formed after an inquiry reasonable under the circumstances,
. . . the paper is not being presented for any improper purpose, such
as to harass someone or cause unnecessary delay'' and ``[t]he
allegations and other factual contentions have evidentiary support.''
37 CFR 11.18(b)(2). See also 37 CFR 11.18(c) (providing that violations
of any subparagraphs of Sec. 11.18(b)(2) are ``subject to such
sanctions or actions as deemed appropriate by the USPTO Director'').
E. Director-Initiated Proceedings
As authorized by the TMA, Sec. 2.92(b) provides that the Director
may, within the time periods set forth in Sec. 2.91(b), institute an
expungement or reexamination proceeding on the Director's own
initiative, if the information and evidence available to the USPTO
supports a prima facie case of nonuse.
Section 2.92(e)(1) provides that, for efficiency and consistency,
the Director may consolidate proceedings (including a Director-
initiated proceeding with a petition-initiated proceeding).
Consolidated proceedings are related parallel proceedings that may
include both expungement and reexamination grounds.
In addition, under Sec. 2.92(e)(2), if two or more petitions under
Sec. 2.91 are directed to the same registration and are pending
concurrently (i.e., expungement or reexamination proceedings based on
these petitions are not yet instituted), or the Director wishes to
institute an ex parte expungement or reexamination proceeding on the
Director's own initiative under Sec. 2.92(b) concerning a registration
for which one or more petitions under Sec. 2.91 are pending, the
Director may elect to institute a single proceeding.
F. Establishing a Prima Facie Case
Under Sec. 2.92, as provided for explicitly in the TMA, an
expungement or reexamination proceeding will be instituted only in
connection with the goods and/or services for which a prima facie case
of relevant nonuse has been established. See Public Law 116-260, Div.
Q, Tit. II, Subtit. B, section 225(a), (c). For the purpose of this
rule, a prima facie case requires only that a reasonable predicate
concerning nonuse be established. See H.R. Rep. No. 116-645, at 8
(2020) (citing In re Pacer Tech., 338 F.3d 1348, 1351 (Fed. Cir. 2003)
and In re Loew's Theatres, Inc., 769 F.2d 764, 768 (Fed. Cir. 1985)).
Thus, with respect to these proceedings, a prima facie case includes
sufficient notice of the claimed nonuse to allow the registrant to
respond to and potentially rebut the claim with competent evidence,
which the USPTO must then consider before making a determination as to
whether the registration should be cancelled in whole or in part, as
appropriate.
For expungement and reexamination proceedings instituted on the
basis of a petition under Sec. 2.91, the determination of whether a
prima facie case has been made is based on the evidence and information
that is collected as a result of the petitioner's reasonable
investigation and set forth in the petition, along with the USPTO's
electronic record of the involved registration. Appropriate sources of
such evidence and information include those listed in Sec. 2.91(d)(2).
For Director-initiated expungement and reexamination proceedings,
the evidence and information that may be relied upon to establish a
prima facie case may be from essentially the same sources as those in
the petition-initiated proceeding.
G. Notice of Petition and Proceedings
When a petitioner files a petition requesting institution of
expungement or reexamination proceedings, the petition will be uploaded
into the registration record and be viewable through TSDR. The USPTO
plans to send a courtesy email notification of the filing to the
registrant and/or the registrant's attorney, as appropriate, if an
email address is of record. The registrant may not respond to this
courtesy notice. No response from the registrant will be accepted
unless and until the Director institutes a proceeding under Sec. 2.92.
Once the Director has determined whether to institute a proceeding
based on the petition, notice of that determination will be sent to the
petitioner and the registrant, along with the means to access the
petition and supporting documents and evidence.
If a proceeding is instituted, the petitioner will not have any
further involvement. In the case of Director-initiated proceedings,
there is no petitioner, and thus all relevant notices will be provided
only to the registrant. In both types of proceedings, documents
associated with the proceeding will be uploaded into the registration
record and will be publicly viewable through TSDR.
Under the TMA and Sec. 2.92(c)(1), any determination by the
Director whether to institute an expungement or reexamination
proceeding, based either on a petition or on the Director's own
initiative, is final and non-reviewable. See Public Law 116-260, Div.
Q, Tit. II, Subtit. B, section 225(a), (c).
Finally, for purposes of correspondence relating to these
proceedings, the ``registrant'' is the owner/holder currently listed in
USPTO records.
H. Procedures for Expungement and Reexamination Proceedings
Under Sec. 2.92(f)(2), the Director's determination to institute a
proceeding is set forth in an Office action, which, in accordance with
Sec. 2.93(a), will require the registrant to provide such evidence of
use, information, exhibits, affidavits, or declarations as may be
reasonably necessary to rebut the prima facie case by establishing that
the
[[Page 64304]]
required use in commerce has been made on or in connection with the
goods and/or services at issue, as required by the Act. While
institution necessitates a response from the registrant that includes
evidence rebutting the prima facie case, the ultimate burden of proving
nonuse by a preponderance of the evidence remains with the Office.
Although the Office action will be substantively limited in scope
to the question of use in commerce, the registrant will also be subject
to the requirements of Sec. 2.11 (requirement for representation),
Sec. 2.23 (requirement to correspond electronically), and Sec. 2.189
(requirement to provide a domicile address). Thus, the USPTO will
require the registrant to furnish domicile information as necessary to
determine if the registrant must be represented by a U.S.-licensed
attorney. In addition, all registrants will be required to provide a
valid email address for correspondence, if one is not already in the
record, and to update the email address as necessary to facilitate
communication with the USPTO.
The TMA provides that any documentary evidence of use provided by
the registrant need not be the same as that required under the USPTO's
rules of practice for specimens of use under section 1(a) of the Act,
15 U.S.C. 1051(a), but must be consistent with the definition of ``use
in commerce'' set forth in section 45 of the Act, 15 U.S.C. 1127, and
in relevant case law. Although testimonial evidence may be submitted,
it should be supported by corroborating documentary evidence.
The USPTO anticipates that the documentary evidence of use in most
cases will take the form of specimens of use, but the TMA contemplates
situations where, for example, specimens for particular goods and/or
services are no longer available, even if they may have been available
at the time the registrant filed an allegation of use. In these cases,
the registrant may be permitted to provide additional evidence and
explanations supported by declaration to demonstrate how the mark was
used in commerce at the relevant time. As a general matter, because the
registration file, including any specimens, has already been considered
in instituting the proceeding based on a prima facie case of nonuse,
merely resubmitting the same specimen of use previously submitted in
support of registration or maintenance thereof, or a verified statement
alone, without additional supporting evidence, will likely be
insufficient to rebut a prima facie case of nonuse.
For expungement proceedings, the registrant's evidence of use must
show that the use occurred before the filing date of the petition to
expunge under Sec. 2.91(a), or before the date the proceeding was
instituted by the Director under Sec. 2.92(b), as appropriate. For
reexamination proceedings, the registrant's evidence of use must
demonstrate use of the mark in commerce on or in connection with the
goods and/or services at issue on or before the relevant date
established pursuant to the TMA under the relevant section of the Act.
Under Sec. 2.93(b)(5)(ii), a registrant in an expungement
proceeding may provide verified statements and evidence to establish
that any nonuse as to particular goods and/or services with a sole
registration basis under section 44(e) of the Act, 15 U.S.C. 1126(e),
or section 66(a) of the Act, 15 U.S.C. 1141f(a), is due to special
circumstances that excuse such nonuse, as set forth in Sec.
2.161(a)(6)(ii). However, excusable nonuse will not be considered for
any goods and/or services registered under section 1 of the Act, 15
U.S.C. 1051.
Section 2.93(d) provides that a registrant in an expungement or
reexamination proceeding may also respond to an Office action by
deleting some or all of the goods and/or services at issue in the
proceeding and that an acceptable deletion will be immediately
effective, that is, upon deletion the registration is considered
cancelled as to the deleted goods and/or services, and the deleted
goods and/or services cannot be reinserted. The rule further specifies
that no other amendment to the identification of goods and/or services
in a registration will be permitted as part of the proceeding. If goods
and/or services that are subject to an expungement or reexamination
proceeding are deleted after the filing, and before the acceptance, of
an affidavit or declaration under section 8 or 71 of the Act, the
deletion will be subject to the fee under Sec. 2.161(c) or Sec.
7.37(c).
In addition, a registrant may submit a request to surrender the
subject registration for cancellation under Sec. 2.172 or a request to
amend the registration under Sec. 2.173, but the mere filing of these
requests will not constitute a sufficient response to an Office action
requiring the registrant to provide evidence of use of the mark in the
expungement or reexamination proceeding. The registrant must
affirmatively notify the Office of the separate request in a timely
response to the Office action.
Any deletion of goods and/or services at issue in a pending
proceeding requested in a response, a surrender for cancellation under
Sec. 2.172, or an amendment of the registration under Sec. 2.173
shall render the proceeding moot as to those goods and/or services, and
the Office will not make any further determination regarding the
registrant's use of the mark in commerce as to those goods and/or
services.
Under Sec. 2.93(b)(1), the registrant must respond to the initial
Office action via TEAS within three months of the issue date, but has
the option to request a one-month extension of time to respond for a
fee of $125, as set forth in Sec. 2.6(a)(27). As discussed below, the
USPTO made this change after consideration of the comments received in
response to the proposed response period in the NPRM of two months for
an Office action issued in connection with an expungement or
reexamination proceeding. If the registrant fails to timely respond,
the rule provides that the USPTO will terminate the proceedings and the
registration will be cancelled, in whole or in part, as appropriate.
However, a registrant may request reinstatement of the registration and
resumption of the proceeding if the registrant failed to respond to the
Office action because of an extraordinary situation. Under Sec.
2.146(d)(2)(iv), such a petition must be filed no later than two months
after the date of actual knowledge of the cancellation of goods and/or
services in a registration and not later than six months after the date
of cancellation as indicated in TSDR. Section 2.146(c)(2) requires the
registrant to include a response to the Office action with the
petition.
Relatedly, Sec. 2.23(d)(3) provides that registrants are
responsible for monitoring the status of their registrations in the
USPTO's electronic systems at least every three months after notice of
the institution of an expungement or reexamination proceeding until a
notice of termination issues under Sec. 2.94.
The USPTO also sought comments regarding whether Sec. 2.93 should
provide that, when a timely response by the registrant is a bona fide
attempt to advance the proceeding and is a substantially complete
response to the Office action, but consideration of some matter or
compliance with a requirement has been omitted, the registrant may be
granted 30 days, or to the end of the time period for response in the
Office action to which the substantially complete response was
submitted, whichever is longer, to resolve the issue. As discussed
below, after consideration of the comments received, Sec. 2.93
includes the option for the USPTO to issue a 30-day letter in
[[Page 64305]]
such circumstances. However, granting the registrant additional time in
such circumstances does not extend the time for filing an appeal to the
TTAB or a petition to the Director. In addition, the USPTO sought
comments on whether it should take additional action when a
registrant's failure to respond in an expungement or reexamination
proceeding leads to cancellation of some of the goods and/or services
in the registration. Specifically, the USPTO considered whether, in
these cases, the registration should also be selected for audit under
37 CFR 2.161(b) or 7.37(b) if a registration maintenance filing is
pending or, if one is not pending, when the next maintenance filing is
submitted. As under current practice, if selected for audit, the
registrant would be required to substantiate use for some or all of the
remaining goods and/or services recited in the registration. As
discussed below, after consideration of the comments received, the
USPTO will not automatically select for audit a registration when the
registrant fails to respond to an expungement or reexamination Office
action and its registration is cancelled in part.
If the registrant timely responds to the initial Office action in
the expungement or reexamination proceeding, the USPTO will review the
response to determine if use of the mark in commerce at the relevant
time has been established for each of the goods and/or services at
issue. If the USPTO finds, during the course of the proceeding, that
the registrant has demonstrated relevant use of the mark in commerce on
or in connection with the goods and/or services at issue sufficient to
rebut the prima facie case, demonstrated excusable nonuse in
appropriate expungement cases, or deleted goods and/or services, such
that no goods and/or services remain at issue, the proceeding will be
terminated upon the USPTO issuing a notice of termination under Sec.
2.94.
If, however, the response fails to establish use of the mark in
commerce at the relevant time (or to sufficiently establish excusable
nonuse, if applicable) for all of the goods and/or services at issue,
or otherwise fails to comply with all outstanding requirements, the
USPTO will issue a final action. In an expungement proceeding, the
final action will include the examiner's decision that the registration
should be cancelled for each good or service for which the mark was
determined to have never been used in commerce or for which no
excusable nonuse was established. In a reexamination proceeding, the
final action will include the examiner's decision that the registration
should be cancelled for each good and/or service for which it was
determined the mark was not in use in commerce on or before the
relevant date. As appropriate, in either an expungement or
reexamination proceeding, the final action will include the examiner's
decision that the registration should be cancelled in whole for
noncompliance with any requirement under Sec. Sec. 2.11, 2.23, and
2.189.
If a final action is issued, the registrant will have three months
to file a request for reconsideration or an appeal to the TTAB, if
appropriate. These deadlines are not extendable. In accordance with
Sec. 2.93(c)(3)(ii), if the registrant fails to timely appeal or file
a request for reconsideration that establishes use of the mark in
commerce at the relevant time for all goods and/or services that remain
at issue in a final action (or that deletes the remaining goods and/or
services at issue), the USPTO will issue a notice of termination of the
proceeding under Sec. 2.94, clearly setting forth the goods and/or
services for which relevant use was, or was not, established, as well
as any other outstanding requirements. The notice of termination is a
statement intended to provide notice to the registrant and the public
of the ultimate outcome of the proceedings and is not itself
reviewable. The USPTO will also issue, as appropriate, an order
canceling the registration in whole or in part, in accordance with the
examiner's decision in the final action. Section 2.93(b)(1) provides
that, if the registrant fails to timely respond, the USPTO will
terminate the proceedings, and the registration will be cancelled, in
whole or in part, as appropriate. However, a registrant may request
reinstatement of the registration and resumption of the proceeding if
the registrant failed to respond to the Office action because of an
extraordinary situation. Under Sec. 2.146(d)(2)(iv), such a petition
must be filed no later than two months after the date of actual
knowledge of the cancellation of goods and/or services in a
registration and may not be filed later than six months after the date
of cancellation in TSDR. Under Sec. 2.146(c)(2), the registrant must
include a response to the Office action with the petition.
Under Sec. 2.94, if the required use in commerce (or excusable
nonuse, in appropriate cases) is not established, the notice of
termination will indicate a cancellation of either some of the goods
and/or services or the entire registration, depending on the
circumstances. If the goods and/or services for which use (or excusable
nonuse) was not demonstrated are the only goods and/or services in the
registration, or there remain any additional outstanding requirements,
the entire registration will be cancelled. However, if the notice of
termination relates only to a portion of the goods and/or services in
the registration, and there are no other outstanding requirements, the
registration will be cancelled in part, as appropriate. A notice of
termination will not issue until all outstanding issues are
satisfactorily resolved (and thus no cancellation is necessary) or the
time for appeal has expired or any appeal proceeding has terminated.
Petitioners and other interested parties may monitor the progress of a
proceeding by reviewing the status and associated documents through
TSDR.
In setting the deadlines for expungement and reexamination
proceedings, the USPTO considered the amount of time a registrant might
need to research and collect relevant evidence of use, the fact that
some proceedings may involve more goods and/or services than others,
and the comments it received regarding the proposed deadlines. The
USPTO also weighed these considerations against the goal that these
proceedings be faster and more efficient than other available options
for cancellation of registrations for marks not used with goods and/or
services listed therein, as well as the probability that most
registrants are likely to have evidence of use that is contemporaneous
with the relevant date at issue.
I. Estoppel and Co-Pending Proceedings
Section 2.92(d) of this rule includes provisions for estoppel and
bars co-pending proceedings involving the same registration and the
same goods and/or services.
Specifically, Sec. 2.92(d)(1) provides that, upon termination of
an expungement proceeding where it was established that the registered
mark was used in commerce on or in connection with any of the goods
and/or services at issue in the proceedings prior to the date a
petition to expunge was filed under Sec. 2.91 or the Director-
initiated proceedings were instituted under Sec. 2.92, no further
expungement proceedings may be instituted as to those particular goods
and/or services. Subsequent reexamination proceedings for marks
registered under section 1 of the Act are not barred under these
circumstances because reexamination proceedings involve a question of
whether the mark was in use in commerce as of a particular relevant
date, whereas earlier expungement proceedings would only have involved
[[Page 64306]]
a determination of whether the mark was never used. Proof of use
sufficient to rebut a prima facie case of nonuse in an expungement
proceeding might not establish use in commerce as of a particular
relevant date, as required in a reexamination proceeding.
Section 2.92(d)(2) provides that, upon termination of a
reexamination proceeding where it was established that the registered
mark was used in commerce on or in connection with any of the goods
and/or services at issue, on or before the relevant date at issue in
the proceedings, no further expungement or reexamination proceedings
may be instituted as to those particular goods and/or services. The TMA
does not explicitly bar a subsequent expungement proceeding following a
determination in a reexamination proceeding. However, the rule takes
into account that it would be unnecessary for the registrant to be
subjected to a later-instituted proceeding alleging the mark was never
used in commerce when the USPTO has already determined that the mark
was used in commerce on or before a relevant date.
In addition, Sec. 2.92(d)(3) provides that, with respect to a
particular registration, while an expungement proceeding is pending, no
later expungement proceeding may be instituted with respect to the same
goods and/or services at issue in the pending proceeding. Section
2.92(d)(4) establishes that, with respect to a particular registration,
while a reexamination proceeding is pending, no later expungement or
reexamination proceeding may be instituted with respect to the same
goods and/or services at issue in the pending proceeding.
For the purposes of these rules, the wording ``same goods and/or
services'' refers to identical goods and/or services that are the
subject of the pending proceeding or the prior determination. Thus, for
example, if a subsequent petition for reexamination identifies goods
that are already the subject of a pending reexamination proceeding and
goods that are not, only the latter goods could potentially be the
subject of a new proceeding. The fact that there is some overlap
between the goods and/or services in the pending proceeding and those
identified in a petition would not preclude the goods and/or services
that are not the same from being the subject of a new proceeding, if
otherwise appropriate. This situation is addressed in Sec. 2.92(c)(2),
which permits the Director to institute a proceeding on petition for
fewer than all of the goods and/or services identified in the petition.
The comments received in connection with the estoppel and co-pending
provisions are discussed below.
II. New Nonuse Ground for Cancellation Before the TTAB
The TMA created a new nonuse ground for cancellation under section
14 of the Act, allowing a petitioner to allege that a mark has never
been used in commerce as a basis for cancellation before the TTAB. This
ground is available at any time after the first three years from the
registration date. Therefore, the USPTO amends Sec. 2.111(b) to
indicate when a petition on this ground may be filed and to distinguish
it from the timing of other nonuse claims.
III. Flexible Response Periods
The TMA amended section 12(b) of the Act, 15 U.S.C. 1062(b), to
allow the USPTO to set response periods by regulation for a time period
between 60 days and 6 months, with the option for extensions to a full
6-month period. Under current Sec. 2.62(a), applicants have six months
to respond to Office actions issued during the examination of a
trademark application. Many examination issues, particularly formal
requirements like amendments to identifications or mark descriptions,
can be resolved well before the current six-month deadline. However,
the USPTO also recognizes that Office actions containing statutory
refusals may present complex issues that require more time to address,
and thus applicants and their attorneys may need the full response
period to prepare and submit a response.
USPTO data analytics indicate that, in fiscal year (FY) 2020, 42%
of represented applicants and 66% of unrepresented applicants responded
to an Office action with a single substantive ground of refusal within
three months from the issuance of a non-final Office action. Where the
Office action covered multiple refusals, 31% of represented applicants
and 56% of unrepresented applicants responded within three months.
Accordingly, the USPTO amends Sec. 2.62 to set a response period
of three months for responses to Office actions in applications under
sections 1 and/or 44 of the Act. Under Sec. 2.62(a)(2), applicants may
request a single three-month extension of this three-month deadline,
subject to payment of the fee in Sec. 2.6(a)(28), namely, $125 for an
extension request filed through TEAS and $225 for a permitted paper-
filed request. To be considered timely, the request for an extension
must be received by the USPTO on or before the deadline for response,
which, consistent with current examination practice, will be set forth
in the Office action. If an applicant fails to respond or request an
extension within the specified time period, the application will be
abandoned. This extension will not affect the existing practice under
Sec. 2.65(a)(2) that permits an examiner to grant an applicant 30
days, or to the end of the time period for response to the action to
which a substantially complete and timely response was submitted,
whichever period is longer, to explain or supply an omission. The
amendments to Sec. 2.66 address the requirement for the extension fee
in situations where an applicant files a petition to revive past a
three-month deadline.
Although post-registration actions are not subject to the response
provisions in section 12 of the Act, for convenience and
predictability, the same three-month response period and single three-
month extension apply to Office actions issued in connection with post-
registration review of registration maintenance and renewal filings.
However, applications under section 66(a) of the Act will not be
subject to the three-month deadline for Office action responses; the
deadline will instead remain at six months. USPTO data analytics
indicate that in FY 2020, only 11% of Madrid applicants filed a
response to a non-final Office action with multiple grounds within
three months, while 62% of Madrid applicants took six months to file a
response. The additional processing required for these applications,
both at the USPTO and the World Intellectual Property Organization's
International Bureau (IB), per article 5(2) of the Madrid Protocol,
introduces time constraints that justify maintaining the current
deadlines.
These flexible response periods are intended to promote efficiency
in examination by shortening the prosecution timeline for applications
with issues that are relatively simple to address, while providing
sufficient time, through an optional extension, for responses to Office
actions with more complex issues. In addition, shorter response periods
may result in faster disposal of applications and thus reduce the
potential delay in examination of later-filed applications for similar
marks.
The rule includes conforming revisions to Sec. Sec. 2.63, 2.65,
2.66, 2.141, 2.142, 2.163, 2.165, 2.176, 2.184, 2.186, 7.6, 7.39, and
7.40 to account for the deadlines and extensions. The USPTO
inadvertently failed to list Sec. 2.176 in the NPRM but has included
it here.
[[Page 64307]]
Although the rules regarding expungement and reexamination
proceedings must be implemented within one year of the TMA's enactment,
there is no required date of implementation for the flexible response
and extension provisions. Therefore, because these flexible response
periods and extensions will involve significant changes to examination
processes and the USPTO's information technology (IT) systems, the
Office will delay implementation of them until December 1, 2022. This
will also allow customers to update their practices and IT systems for
these changes.
The USPTO also sought comments on two alternatives to the
procedures discussed above. The comments received regarding the
flexible response period implemented herein, as well as the proposed
alternatives, are discussed below.
IV. Letters of Protest
The TMA amends section 1 of the Act, 15 U.S.C. 1051, to add a new
paragraph (f), providing express statutory authority for the USPTO's
existing letter-of-protest procedure, which allows third parties to
submit to the USPTO for consideration and entry into the record
evidence bearing on the registrability of a mark. This procedure is
intended to aid in examination without causing undue delay or
compromising the integrity and objectivity of the ex parte examination
process. The TMA also provides that the Director shall determine
whether evidence should be included in the record of the relevant
application within two months of the date on which a letter of protest
is filed.
The USPTO promulgated letter-of-protest procedures at 37 CFR 2.149
in a final rule published in the Federal Register on November 17, 2020
(85 FR 73197). The requirements set out in Sec. 2.149 are consistent
with those in the TMA. However, the TMA further provides that any
determination by the Director of the USPTO whether to include letter-
of-protest evidence in the record of an application shall be final and
non-reviewable, and that such a determination shall not prejudice any
party's right to raise any issue and rely on any evidence in any other
proceeding. See Public Law 116-260, Div. Q, Tit. II, Subtit. B, section
223(a). Therefore, the USPTO revises Sec. 2.149 to include these
additional provisions.
The TMA also authorizes the USPTO to charge a fee for letters of
protest. Public Law 116-260, Div. Q, Tit. II, Subtit. B, section
223(a). Under existing Sec. 2.6(a)(25), the USPTO currently charges
$50 per letter-of-protest submission. That fee is not changed in this
rulemaking. Comments received in connection with the procedures for
letters of protest are discussed below.
V. Suspension of Proceedings
The USPTO revises Sec. Sec. 2.67 and 2.117 to clarify that
expungement and reexamination proceedings are included among the types
of proceedings for which suspension of action by the Office or the TTAB
is authorized. In addition, the USPTO revises these rules to align them
with the existing practice regarding suspension of proceedings before
the USPTO or the TTAB. Generally, the USPTO will suspend prosecution of
a trademark application or a matter before the TTAB during the pendency
of a court or TTAB proceeding that is relevant to the issue of
registrability of the involved mark; therefore, this rule eliminates
the limitation in Sec. 2.117 to other proceedings in which a party or
parties are engaged.
Suspension will normally be maintained until the outcome of the
proceeding has been finally determined. As set forth in the current
version of section 510.02(b) of the Trademark Trial and Appeal Board
Manual of Procedure, the USPTO considers a proceeding to have been
finally determined when an order or ruling that ends litigation has
been rendered and noticed, and no appeal has been filed, or all appeals
filed have been decided and the time for any further review has expired
without further review being sought. The expiration of time for any
further review includes the time for petitioning for rehearing or U.S.
Supreme Court review. Thus, the Office will not normally lift a
suspension until after the time for seeking such review has expired, a
decision denying or granting such review has been rendered, and any
further review has been completed. Comments received regarding
suspension procedures are discussed below.
VI. Attorney Recognition
The USPTO proposed revising Sec. 2.17(g) to indicate that, for the
purposes of an application or registration, recognition of a qualified
attorney as the applicant's or registrant's representative will
continue until the owner revokes the appointment or the attorney
withdraws from representation. Accordingly, to end attorney recognition
by the USPTO under the proposal, owners and attorneys would be required
to proactively file an appropriate revocation or withdrawal document
under Sec. 2.19, rather than the current situation, where recognition
automatically ends when one of the events listed in current Sec.
2.17(g) occurs.
Furthermore, under the proposed revision to Sec. 2.17(g), if the
applicant or registrant wished to retain a new attorney for submissions
to the USPTO following abandonment or registration, the applicant or
registrant would be required to revoke the original power of attorney,
or the attorney would need to request to withdraw from representation,
before a new attorney could be recognized.
In addition, under the proposed rule, recognition of the attorney
of record would continue, even when there is a change of ownership,
until the attorney affirmatively withdraws or representation is
revoked.
After consideration of the comments received in connection with the
proposed changes, as discussed below, the USPTO has decided not to
implement these proposed changes to the rules governing attorney
recognition and withdrawal at this time.
However, as proposed, this rule adds Sec. 2.17(b)(4) to specify
that when a practitioner has been mistakenly, falsely, or fraudulently
designated as an attorney for an applicant, registrant, or party to a
proceeding without the practitioner's prior authorization or knowledge,
recognition of that practitioner shall be ineffective.
In addition, the USPTO revises Sec. 2.18(a)(1) to refer to
``recognition'' instead of ``representation,'' consistent with the
wording in Sec. 2.18(a)(2). The term ``recognition'' reflects the fact
that the USPTO does not control representation agreements between
practitioners and clients but merely recognizes an attorney for
purposes of representation before the USPTO. In addition, revised Sec.
2.18(a)(2) indicates that, as with service of a cancellation petition,
the USPTO may correspond directly with a registrant in connection with
notices of institution of expungement or reexamination proceedings.
Accordingly, the USPTO plans to send notices of institution of
expungement and reexamination proceedings to the owner currently
identified in the registration record and to the attorney of record, if
any, or any previous attorney of record whose contact information is
still in the record.
VII. Court Orders Concerning Registrations
This rule also adds new Sec. 2.177 to codify the USPTO's
longstanding procedures concerning action on court orders cancelling or
affecting a registration under section 37, 15 U.S.C. 1119, which are
currently set forth in section 1610 of the Trademark Manual
[[Page 64308]]
of Examining Procedure (TMEP). The USPTO requires submission of a
certified copy of the order and normally does not act on such orders
until the case is finally determined.
VIII. Comments and Responses
A. Number of Petitions
Comment 1: Several commenters submitted comments about whether the
USPTO should limit the number of petitions for expungement or
reexamination that can be filed against a registration. Two commenters
agreed with the approach, stated in the NPRM, that the USPTO would not
initially limit the number of petitions. These commenters suggested
that the Report on Decluttering Initiatives would inform the USPTO on
whether additional safeguards might be needed after some experience
with these proceedings and encouraged the USPTO to address patterns of
abusive filings by denying institution of bad-faith petitioners' future
requests. One commenter was concerned about the possibility of misuse
by deferring a limit on the number of petitions that can be filed
against a registration, but was amenable to a wait-and-see approach,
while encouraging the USPTO to reserve the authority of the Director to
limit the number of petitions at his or her discretion or for the USPTO
to establish a limit in a future rule. Two commenters stated that the
USPTO should limit the number of petitions that can be filed as an
additional safeguard against abuse, one opining that allowing multiple
ex parte proceedings against a single registration disproportionately
impacts small and medium-sized enterprises.
Response: As noted above, the USPTO is not imposing a limitation on
the number of petitions at this time. The USPTO agrees with those
commenters who believe that experience with these proceedings will
inform the USPTO as to whether there are patterns of abuse in the
filing of petitions for expungement or reexamination. As referenced by
the comments, the TMA requires the USPTO to collect data for a
congressionally mandated report on the effectiveness of the expungement
and reexamination proceedings in addressing inaccurate and false claims
of use. Some of these comments suggested that this data could identify
whether or not abuses of the proceedings have occurred. In connection
with the report, the USPTO is establishing internal systems for
collecting data on, among other things, the number of petitions for
expungement or reexamination filed, the number of proceedings
instituted, and the final outcome of those proceedings. However, this
data is primarily for the purpose of measuring the effectiveness of the
proceedings and likely will not inform the USPTO as to the potential
for abuse. Thus, the USPTO's Special Task Force for Improper Activities
(STF) will be separately analyzing other data elements to evaluate
abuse of the proceedings. The USPTO does not intend to make this
investigative data collection public because of the potential for bad
actors to use that information to evade detection. If it appears that
abuse of the petition process or of the nonuse proceedings is
occurring, the USPTO may take steps to prevent such abuse from
continuing to occur, the USPTO may take steps to prevent it from
continuing by establishing a limit on the number of petitions for
expungement or reexamination in a future rulemaking or by imposing
appropriate sanctions under 37 CFR 11.18, which may include striking
submissions and precluding parties from making submissions. Regarding
the concern that multiple ex parte proceedings against a single
registration would disproportionately impact small and medium-sized
enterprises, the USPTO notes that the absence of a limit on petitions
to cancel at the TTAB does not appear to have disproportionately
impacted these enterprises and there is no evidence to suggest a
different result with respect to petitions for reexamination or
expungement. It should be noted, however, that, based on information
already collected, many of the applications and registrations in which
nonuse may be an issue are owned by individuals or small-volume filers.
Therefore, the USPTO anticipates that a significant portion of the
expungement and reexamination proceedings instituted will be brought
against registrants who are considered small enterprises. If so, this
fact alone would not indicate that the process was unfairly impacting
this group. However, the USPTO will carefully review the data to be
collected for the above-referenced report, along with the data to be
collected by the STF, which should provide additional insight to allow
the USPTO to assess the impact of these proceedings on registrants, as
well as potential abuse, and make adjustments if necessary. For now,
given the per-class filing fee for submitting a petition for
expungement and/or reexamination, the time and resources required to
demonstrate the petitioner's search for use in relevant channels of
trade and advertising, and the potential ramifications under Sec.
11.18 of submitting a petition for an improper purpose, the USPTO
expects that petitioners will take care to submit petitions that
appropriately challenge all goods and/or services for which they allege
nonuse.
B. Real Party in Interest
Comment 2: The USPTO received six comments agreeing that it should
not require a petitioner to identify the name of the real party in
interest on whose behalf a petition is filed. These commenters stated,
among other things, that: (1) Allowing the real party in interest to
remain anonymous will encourage filers to take advantage of the system
by reducing the likelihood of retaliation, (2) requiring real-party-in-
interest information could become an obstacle to the use of the system,
(3) it is consistent with the TMA and congressional intent not to
require standing, and (4) these proceedings are only between the USPTO
and the registrant after institution. Four commenters supported a
requirement to identify the real party in interest in order to
discourage frivolous, speculative, or abusive filings and so the
registrant would know who is challenging its registration. Two
commenters suggested that the USPTO adopt a wait-and-see approach and
revisit the issue after gaining some experience with processing the
petitions, with one stating that the Director should nonetheless retain
the discretion to require a petitioner to identify the real party in
interest.
Response: The USPTO agrees with the rationale articulated by those
commenters who stated that the identity of the real party in interest
should not be required in order to file a petition for expungement or
reexamination. The TMA allows any party to file and does not require
the real party in interest to be identified and requiring such
information could discourage legitimate petitions from being filed
where the potential filers have concerns about being identified in the
petitions. However, the USPTO also agrees that there is merit in
retaining the Director's discretion to require the identity of the real
party in interest in order to discourage and prevent abusive filings.
Therefore, this rule retains such discretion in Sec. 2.91(h).
C. 30-Day Letter--Petition
Comment 3: One commenter supported providing petitioners an
opportunity to supplement a deficient petition. Another stated that
allowing petitioners 30 days to perfect a deficient petition is too
long and does not appear fairly balanced with the registrant's
[[Page 64309]]
proposed response period of two months to provide evidence of use for a
potentially large number of goods and/or services across multiple
classes. One commenter requested that the USPTO clarify whether a
petitioner's failure to establish a prima facie case will be
correctable under the 30-day letter process for perfecting a petition
or if the letter will only issue when a petition is incomplete as a
result of other formal requirements. Another commenter asked whether
the USPTO will place 30-day letters in the TSDR record of the
challenged registration, whether it will notify the registrant of the
letter, and whether it will issue the 30-day letter under the same
current processes and procedures as letters issued in relation to
petitions to the Director. That commenter also recommended that any
notification to the registrant be made to the email addresses of the
registrant, attorney of record, and any secondary email addresses
listed in the registration. Finally, one commenter suggested that a
technical defect in a petition, such as failing to adequately describe
its reasonable investigation, should not preclude the Director from
instituting a proceeding.
Response: A 30-day letter will be issued in connection with a
petition for expungement or reexamination when the petition is
incomplete because it fails to include all of the required elements
listed in Sec. 2.91(c). For example, a 30-day letter will be issued
when: (1) The petition does not include the name, domicile address, or
email address of the petitioner; (2) a U.S.-licensed attorney is not
designated when the petitioner has a foreign domicile; (3) the petition
does not include the required verified statement; or (4) the
documentary evidence is not clear and legible. As set out in Sec.
2.91(c)(8)(i), the verified statement must include the elements of the
petitioner's reasonable investigation, a description of how and when
the searches were conducted, and what the searches disclosed. For
purposes of determining whether the petition includes elements required
under Sec. 2.91(c), the verified statement will be reviewed for
whether it includes the descriptions listed in paragraph (c)(8)(i), but
not for the substantive adequacy of those descriptions. If the USPTO
determines that the petition does not include the descriptions required
in Sec. 2.91(c)(8)(i), the petitioner may be given 30 days to perfect
its petition.
The 30-day letter is intended only to give the petitioner an
opportunity to provide a required element for a complete petition,
consistent with the current procedure regarding missing required
elements for petitions to the Director under Sec. 2.146. It will not
include a determination regarding whether the petition establishes a
prima facie case, and the petitioner may not include additional
evidence in its response. If the petitioner includes additional
evidence in its response, such evidence will not be considered. If a
proceeding is not instituted because the USPTO ultimately determines
that the petition fails to establish a prima facie case based on the
evidence originally submitted, the petitioner may submit a new petition
with additional evidence.
Regarding the inquiry about whether the USPTO will place 30-day
letters in the TSDR record of the challenged registration and whether
it will notify the registrant of the letter, as well as the
recommendation that any notification to the registrant be made to the
email addresses of the registrant, attorney of record, and any
secondary email addresses listed in the registration, the USPTO notes
that the issue of whether a petition for expungement or reexamination
complies with the requirements set out in Sec. 2.91 involves only the
petitioner and the USPTO. Therefore, a 30-day letter giving a
petitioner an opportunity to perfect an incomplete petition will be
sent only to the petitioner. The letter will be loaded into TSDR, as
will the petitioner's response, if one is received. The registrant will
have received notice of the petition via the courtesy email
notification sent by the USPTO when the petition is filed, and will be
able to view any 30-day letter issued in connection with an incomplete
petition, and the petitioner's response, in TSDR.
Finally, the USPTO agrees with the commenter who suggested that a
technical defect in a petition should not preclude a Director-
instituted proceeding. If a petitioner fails to perfect its petition by
supplying all of the required elements, the petition will be denied,
and none of the petitioner's evidence will be reviewed. However,
nothing in Sec. 2.92(b) prohibits the Director from instituting a
proceeding on the Director's own initiative simply because a third
party filed an incomplete petition.
D. Petition Fee
Comment 4: Two commenters agreed with the proposed $600 per-class
fee for filing a petition for expungement or reexamination, with one
noting that the fee should be adequate to discourage abuse by
petitioners, while also accounting for the increased administrative
burden on the Office. Several others thought that it was too high.
Those commenters generally opined that the proposed fee was excessive
considering the limited scope and duration of the proceedings and that
it would discourage parties from using the process. Four commenters
suggested specific fees, ranging from $250 to $400 per class. Two
commenters also recommended that the USPTO extend the applicability of
the fee for deleting goods and/or services after submission and prior
to acceptance of a section 8 or section 71 affidavit to goods and/or
services deleted as a result of reexamination or expungement, and that
the Office issue these fees back to petitioners.
Response: The USPTO agrees with the commenter who noted that the
fee should be adequate to discourage abuse by petitioners, while also
accounting for the increased administrative burden on the Office. As
noted above, the USPTO must determine whether the requirements to
establish a prima facie case have been satisfied by the petitioner in
order to institute a proceeding. Thus, although the proceeding is more
limited in scope than examination prior to registration, the USPTO must
expend the time and resources to evaluate whether the petitioner has
provided sufficient notice of the claimed nonuse to allow the
registrant to respond to and potentially rebut the claim. Upon response
by the registrant, the USPTO must review and evaluate all evidence
provided by the registrant to determine whether it is sufficient to
show use in commerce for each challenged good and/or service.
Nevertheless, after consideration of the comments recommending a lower
fee, the USPTO has adjusted the per-class fee for filing a petition for
expungement or reexamination to $400 per class to ensure that it
adequately discourages abuse and accounts for the increased costs to
the Office, while also incentivizing the use of these procedures.
Regarding the suggestion to extend the fee for deleting goods and/
or services after submission and prior to acceptance of a section 8 or
section 71 affidavit to goods and/or services deleted as a result of
reexamination or expungement, the USPTO notes that the deletion fee
would be charged if goods and/or services are deleted from a
registration in response to a petition for expungement or reexamination
and a section 8 or section 71 affidavit is pending while the
expungement or reexamination proceeding is ongoing. However, extending
the applicability of the deletion fee during other periods was not
proposed in the NPRM and is outside the scope of this rule.
[[Page 64310]]
E. Reasonable Investigation Requirements
Comment 5: One commenter stated that allowing internet search
engine results, let alone a single internet search, to suffice as a
reasonable investigation biases ex parte proceedings against small and
medium-sized enterprises. That commenter suggested that: (1) The
limitations of internet search engine results should preclude such
results alone from constituting a reasonable search and that evidence
be required from at least one additional source before a prima facie
case can be established; and (2) any internet search relied upon as
part of the broader body of evidence should be conducted within the
United States and at a time reasonably contemporaneous with the filing
of the petition, e.g., within 14 calendar days. Another commenter
suggested adding a statement in Sec. 2.91(d)(3) to indicate that a
petitioner's investigation will be deemed reasonable if the sources
used sufficiently demonstrate that a search for use in the typical
relevant channels of trade and advertising for the identified goods
and/or services did not reveal any relevant use. A third commenter
suggested that ``information about domain name registrations presently
or previously in the name of the Registrant, including offers of such
domain names for sale,'' be included within the sources of information
for a reasonable investigation. Another commenter suggested that the
USPTO assign a dedicated group of examiners to review and evaluate
whether a petitioner has conducted a reasonable investigation and
established a prima facie case. That commenter and two others suggested
that such examiners receive specialized training. Another commenter
suggested that the notice regarding whether a proceeding will be
instituted should clarify what evidence is required to meet the
reasonable investigation requirement, whether such evidence is
sufficiently provided, and whether the evidence supports a prima facie
case. Several commenters also requested clarification regarding whether
the petitioner's sources and evidence will be viewable in TSDR in
addition to the petition itself.
Response: The USPTO appreciates the commenter's concerns regarding
the limitations of search-engine results. However, the commenter did
not provide evidence that such searches are biased against small and
medium-sized enterprises other than to state that they are prone to
variation based on such factors as the location of the user, the time
the search was conducted, and prior search history. Even assuming that
an internet search would not return evidence of use by small and
medium-sized enterprises, the petitioner still bears the responsibility
of demonstrating that its investigation was reasonable and producing
reliable and credible evidence of nonuse at the relevant time.
Moreover, there may be situations in which an investigation comprised
only of internet searches would be deemed reasonable, based on the
nature of the goods and/or services at issue. Therefore, the USPTO
declines to adopt a requirement that evidence be provided from at least
one additional source before a prima facie case can be established.
Regarding the commenter's suggestion that any internet search
relied upon be conducted within the United States, the USPTO
understands that search-engine algorithms may include a geographic
component that may lead to different search results for users in
different countries. Thus, users outside the United States may not see
the same search results that U.S. users see. Generally, a search should
encompass the relevant online sources that would be searched and
returned if it was conducted by someone seeking information about a
product or service that is in use in commerce in or with the United
States, as defined by the Act. However, there are means for conducting
such a search that do not require the person conducting such a search
to be located in the United States; any suggestion that the search be
conducted by someone located in the Unites States may unfairly inhibit
foreign parties from submitting legitimate petitions. Therefore, the
USPTO declines to adopt such a requirement in the final rule.
As to requiring that searches be conducted at a particular time
that is reasonably contemporaneous with the filing of the petition, the
USPTO notes that under Sec. 2.91, evidence comprising screenshots from
relevant web pages must include the URL and access or print date. This
information will allow the USPTO to weigh the value and currency of
such evidence when determining whether a prima facie case of nonuse has
been established by the petitioner.
As to the request that the regulatory text specifically list
information about domain name registrations owned or offered for sale
by the registrant as a source for a reasonable investigation, the USPTO
notes that Sec. 2.91(d)(2) clearly states that the sources for a
reasonable investigation are not limited to those listed in the
regulation. Therefore, the rule does not prohibit petitioners from
including such information.
Regarding the suggestion that Sec. 2.91(d)(3) include a statement
specifying the circumstances in which a petitioner's investigation will
be deemed reasonable, the USPTO declines to include such a statement in
the regulations. If the USPTO issues a notice instituting a proceeding
after submission of a petition for expungement or reexamination,
institution of the proceeding will demonstrate that the USPTO
determined the petitioner's investigation was reasonable and provided
sufficient evidence of nonuse for the challenged goods and/or services.
Regarding the request that the notice regarding whether a
proceeding will be instituted clarify what evidence is required to meet
the reasonable investigation requirement, the USPTO notes that examples
of the types of evidence required to meet the reasonable investigation
requirement are set out in Sec. 2.91(d)(2). Further, what constitutes
a reasonable investigation is a case-by-case determination, and the
USPTO will not provide specific guidance as to what types of evidence
would comprise a reasonable investigation in a particular situation.
As to the suggestion that a specialized group of examiners should
be assigned to review and evaluate whether a petitioner has conducted a
reasonable investigation and established a prima facie case, and that
they receive specialized training, the USPTO assures the commenters
that attorneys within the Trademarks organization who are assigned to
review petitions for expungement and reexamination will receive
appropriate training.
Finally, because the petitioner's sources and evidence are required
for a complete petition under Sec. 2.91(c), they are not separate from
the petition, but form part of the petition. As noted in the NPRM,
petitions requesting institution of expungement and reexamination
proceedings will be entered in the registration record, and thus these
materials will be publicly viewable in TSDR.
F. Professional Responsibility
Comment 6: Two commenters submitted comments regarding the USPTO's
reference to a practitioner's responsibility under 37 CFR 11.303(d) to
inform the USPTO in an ex parte proceeding of all material facts known
to the practitioner that will enable the USPTO to make an informed
decision, whether or not the facts are adverse. One commenter requested
that the
[[Page 64311]]
USPTO clarify whether reference to this rule means that after
submission of a petition, but prior to institution of a proceeding, a
registrant could provide evidence of use to the petitioner, and thereby
obligate the petitioner to submit such evidence to the USPTO or
withdraw the petition, if withdrawal is possible. The other commenter
inquired whether a petitioner is required to update its evidence to
account for adverse evidence discovered after its petition is filed and
before a proceeding is instituted.
Response: Under the TMA, any person may file a petition to expunge
or reexamine a registration of a mark on the basis that the mark has
never been used in commerce, or was not used on or before a relevant
date, on or in connection with some or all of the goods or services
recited in the registration. The petition is the mechanism by which a
third party may submit such a challenge to the USPTO. In that way, it
is similar to the letter-of-protest process whereby third parties may
submit evidence relevant to the registrability of a mark in a pending
application. The involvement of the third party in that situation ends
with the submission of the letter of protest. Here, if the USPTO
determines that the petition establishes a prima facie case of nonuse
during the relevant time period and institutes an expungement or
reexamination proceeding, such proceeding is ex parte, and, as noted in
the NPRM and reiterated above, the petitioner will have no further
involvement.
As to the first comment, under the procedures set forth in the
rules, the registrant should not engage with the petitioner regarding a
pending petition, but rather only with the USPTO after a proceeding is
instituted. The petitioner's involvement ends with the filing of the
petition. Any evidence of use should be submitted by the registrant in
a timely response to an Office action issued in connection with the
proceeding.
As to the second comment, if the petitioner discovers that its
petition included false or fraudulent information, the petitioner
should seek to correct the petition by filing a petition under Sec.
2.146(a)(3) to invoke the supervisory authority of the Director to
correct the submission and specifying the facts to be corrected. See
Sec. 11.18(b)(2) (submission constitutes certification) and Sec.
11.303(d) (duty of candor).
G. Director-Initiated Proceedings
Comment 7: One commenter requested that the USPTO explain the
meaning of ``essentially'' in the statement that ``for Director-
initiated expungement and reexamination proceedings, the evidence and
information that may be relied upon to establish a prima facie case may
be from essentially the same sources as in the petition-initiated
proceeding.'' The commenter also asked whether the Director will be
able to use evidence submitted in support of one or more failed
petitions to establish a prima facie case of non-use in a Director-
initiated proceeding against the same registration and whether the
reference to a preponderance of the evidence applies only to Director-
initiated proceedings. Another commenter asked if the USPTO
contemplated further investigating potential nonuse whenever a petition
for expungement or reexamination is filed for fewer than all the goods
and/or services in a registration and requested clarification as to
whether third parties may request consolidation of proceedings. A third
commenter suggested that the USPTO consider setting up an email address
for parties to notify the Director if there are registrations that may
be vulnerable to a Director-initiated expungement or reexamination
proceeding.
Response: Regarding the inquiry about the use of the term
``essentially'' in connection with sources of evidence and information
relied upon in a Director-instituted proceeding, the term merely
emphasized that the Director's evidence will come from the same types
of sources as those of a petitioner. In this final rule, Sec. 2.92(a)
refers to proceedings instituted upon petition and Sec. 2.92(b) refers
to proceedings instituted upon the Director's initiative. In either
case, institution of the relevant proceeding must be based on
information that supports a prima facie case for expungement or
reexamination of a registration for some or all of the goods or
services identified in the registration. Section 2.91(c)(9) provides a
non-exhaustive list of the types of evidence that may support a prima
facie case of nonuse. The USPTO anticipates that the evidence put forth
in a Director-initiated proceeding would come from the same types of
sources as those relied on in a petition submitted by a third party. As
to the commenter's second question, nothing in the rule prohibits the
Director from using evidence submitted in support of a petition that
failed to establish a prima facie case of non-use in a Director-
initiated proceeding against the same registration as part of the prima
facie case in a Director-initiated proceeding.
As to whether the USPTO contemplated further investigating
potential nonuse whenever a petition for expungement or reexamination
is filed for fewer than all the goods and/or services in a
registration, the USPTO has contemplated such a situation. As noted in
the NPRM and above, if the Director wishes to institute an ex parte
expungement or reexamination proceeding on the Director's own
initiative concerning a registration for which one or more petitions
are pending, the Director may elect to institute a proceeding for other
goods and/or services and consolidate the proceedings as related
parallel proceedings. Regarding consolidation of proceedings, the rule
provides that, for efficiency and consistency, the Director may
consolidate consideration of a new proceeding with a pending
proceeding. There is no provision for requests by third parties to
consolidate proceedings.
Regarding the suggestion that the USPTO provide an email address
for parties to notify the Director about registrations they believe may
be vulnerable to a Director-initiated expungement or reexamination
proceeding, the USPTO will not provide a separate email address for
such notifications. If a third party has information and evidence to
support a prima facie case of nonuse, the appropriate vehicle for
providing such information and evidence to the USPTO is a petition for
expungement or reexamination.
H. Establishing a Prima Facie Case
Comment 8: One commenter requested that the USPTO clarify whether
examiners should conduct independent internet searches or rely
primarily on the petitioner's evidence, and further stated that the
USPTO should conduct such independent searches to ensure the prima
facie case is met. The commenter also suggested that the USPTO conduct
a more thorough review when the goods and/or services are industrial or
business-to-business products, or other goods/services not typically
sold or advertised online. Another commenter inquired whether the USPTO
will supplement the prima facie evidence of the petitioner to meet the
preponderance-of-the-evidence standard of proof. A third commenter
suggested that the USPTO corroborate in appropriate cases whether the
reasonable predicate concerning nonuse is supported.
Response: Under Sec. 2.92, an expungement or reexamination
proceeding will be instituted only in connection with the goods and/or
services for which a prima facie case of relevant nonuse has been
established. Section 2.92(a) provides that the Director will determine
``if the petition
[[Page 64312]]
sets forth a prima facie case of nonuse to support the petition basis''
(emphasis added). It is the petitioner's burden to establish a prima
facie case. Therefore, with regard to a petition for expungement or
reexamination, the USPTO will review the evidence provided and
determine whether it establishes a prima facie case. The USPTO will not
conduct independent research to ensure that the prima facie case is
met, nor will it supplement the evidence of the petitioner. The USPTO
notes, however, that in a Director-instituted proceeding, the evidence
and information that may be relied upon to establish a prima facie case
may be from the same types of sources as in the petition-initiated
proceeding, as well as independent research conducted by the USPTO and
the electronic record of the registration. Regarding goods and/or
services not typically sold or advertised online, as noted above, a
prima facie case must include sufficient notice of the claimed nonuse
to allow the registrant to respond to and potentially rebut the claim
with competent evidence. The USPTO will not impose a higher level of
review based on the nature of the goods and/or services but will
thoroughly review the evidence in all cases to determine whether this
standard has been met.
I. Notice of Petition and Proceedings
Comment 9: Three commenters expressed concern that numerous
registrations do not have up-to-date email addresses for the registrant
and assigned attorneys or details regarding any assignments. One
commenter suggested that where a petitioner's research has disclosed
one or more email addresses of appropriate parties, the petitioner
should have an ethical duty to provide such information for proper
notification of the proceeding by the USPTO. Another commenter asked
whether the USPTO would accept a response from a new owner when the
registration was assigned, but the assignment was not recorded before
the proceeding was instituted, and whether the new owner is required to
formally record documents evidencing a change of title to be recognized
as the registrant or if it would be sufficient to supply ownership
documents with its response.
Response: The USPTO appreciates the commenters' concerns regarding
proper notification of a proceeding to the relevant registrant. Under
37 CFR 2.23(b), registrants must provide and maintain a valid email
address for correspondence. Therefore, it is the registrant's
responsibility to ensure that any changes to its email address have
been properly submitted to the USPTO. Moreover, in order to change a
registrant's correspondence address, a properly signed written request
is required. 37 CFR 2.18(c), 2.193(e)(9). Therefore, the USPTO cannot
change the registrant's email address based on information provided by
a third party.
Similarly, it is the registrant's or the new owner's responsibility
to provide information regarding changes of ownership to the USPTO. In
a registration based on section 1 or section 44 of the Act, if the
registrant has not recorded a change of ownership with the Assignment
Recordation Branch of the USPTO, and a party other than the owner of
record attempts to take an action with respect to the registration, the
party must establish ownership of the registration. To establish
ownership, the new owner must either: (1) Record the assignment (or
other document affecting title) with the Assignment Recordation Branch,
and notify the Trademarks organization that the document has been
recorded; or (2) submit other evidence of ownership, in the form of a
document transferring ownership from one party to another, or an
explanation, in the form of an affidavit or declaration under 37 CFR
2.20, that a valid transfer of legal title has occurred. 37 CFR
3.73(b)(1). The document(s) must show a clear chain of title from the
original owner to the party who is taking the action. See TMEP section
502.01. In an application under section 66(a) of the Act, or a
registered extension of protection, the new owner must record changes
in ownership or in the name or address of the holder with the World
Intellectual Property Organization's IB in order to take an action with
respect to a registration. The new owner does not have the option to
submit documentary evidence of ownership pursuant to 37 CFR 3.73(b)(1).
37 CFR 7.22. Therefore, it is in the best interests of both the prior
and new owners to provide evidence of changes of title, either by
recordation of an assignment or otherwise, in a timely manner.
J. Response Period--Expungement and Reexamination Proceedings
Comment 10: Several commenters encouraged the USPTO to allow
registrants longer than two months to respond to an Office action in an
expungement or reexamination proceeding. They noted, among other
things, that it may be difficult for foreign owners or large
corporations to collect use evidence where: (1) Communication with
multiple layers of personnel who may be in different countries and time
zones is required; (2) the registrant has recently acquired a company
with a large portfolio of marks, including the challenged registration;
or (3) the registrant is a large company, and key personnel with
knowledge have recently left the company. Two commenters suggested a
six-month response period, while another suggested that registrants be
given nine months to respond. Four commenters noted that the response
period should be consistent with what is contemplated for other Office
actions, with five commenters proposing a three-month response period.
Multiple commenters also asked that the USPTO allow registrants to
request an extension of time to respond, five of whom suggested that
such extension include a statement of good cause. In addition, one
commenter suggested that the registrant should have an opportunity to
set aside a default, for good cause, when correspondence was not
received, similar to situations at the TTAB.
Response: The USPTO appreciates the concerns the commenters raised
about the proposed two-month response period for Office actions issued
in connection with expungement and reexamination proceedings, including
that registrants likely will need more time to get counsel and gather
use evidence in response, especially in proceedings involving multiple
goods and/or services. To address these concerns, the USPTO is setting
the response period at three months, which has the additional benefit
of aligning response deadlines for these proceedings with those the
USPTO intends to implement for Office actions in the examination of
applications and post-registration submissions, thus making deadline
management easier. The rule also provides for a one-month extension of
the response deadline to a non-final Office action in expungement and
reexamination proceedings, recognizing that there may be situations
where a registrant may need an additional month to locate and supply
the use evidence and information necessary to respond to the initial
Office action. This rule also sets the same fee of $125 for filing a
request for extension of time to file a response to a non-final Office
action through TEAS in an expungement or reexamination proceeding as
the Office is setting for extensions of time to respond to Office
actions in the examination of applications and post-registration
submissions. In addition, consistent with the regulation enacted herein
permitting requests to extend the time to respond to Office actions
issued prior to registration, the USPTO will not require a statement of
good cause for extension
[[Page 64313]]
requests submitted in connection with responses to expungement/
reexamination or to examination/post-registration Office actions.
Although the response and extension periods for responding to a
non-final Office action in expungement and reexamination proceedings
being set in the rule double the response timeframe from what was
originally proposed, the USPTO believes that the additional time should
result in registrants providing complete responses to the initial
Office action and should not overly lengthen resolution of the
proceedings. To balance the competing interests of providing more time
for the registrant to respond against ensuring resolution of the
proceedings is not unduly delayed by the registrant, the Office also is
setting the deadline to request reconsideration or appeal after a final
Office action at three months, but is not providing for any extension
of those deadlines. The USPTO does not believe more time to respond is
warranted because registrants are expected to file a complete response
to the initial Office action and, unlike Office actions issued in the
examination of applications that may raise multiple substantive
refusals, the scope of Office actions in expungement and reexamination
proceedings is limited to a single substantive issue--the mark's use in
commerce for particular goods and/or services. The procedural
requirements that may be made in Office actions issued in expungement
and reexamination proceedings are similarly limited to straightforward
and readily resolvable issues, such as a requirement to appoint counsel
if the registrant is foreign-domiciled. If the registrant wishes to
comply with any unsatisfied requirements or address any remaining
issues raised in the final Office action, it now will have three months
from the issuance of the final Office action to do so, one month more
than initially proposed.
Regarding the request that the USPTO set aside a default when
correspondence was not received that resulted in cancellation of the
registration, the USPTO notes that the registrant must maintain a
current and accurate correspondence address for itself and its
attorney, if one is designated. 37 CFR 2.18(c). If any of these
addresses change, a properly signed request to change the address must
be promptly filed. Id. If the registrant did not receive an Office
action and the registration was cancelled in whole or in part, the
registrant may request reinstatement of the registration pursuant to a
petition to the Director under Sec. 2.146(c)(2). Consistent with USPTO
practice in other ex parte matters, the failure to respond to an Office
action is not set aside for good cause in the way that a default or
notice of default may be cured in inter partes proceedings.
K. Burden and Standards of Proof
Comment 11: Regarding the submission of evidence to prove use, one
commenter noted that the USPTO should not rely solely on statements of
testimony but should require supporting documentary evidence to show
that the use occurred in the United States, that the use occurred on or
prior to the relevant date, and possibly that the use was more than a
mere token use. Another commenter stated that vagueness exists in what
evidence would be required to be submitted for expungement and
reexamination issues and any responses related thereto, and that the
USPTO should adopt general guidelines, with specific language and
examples of acceptable evidence that an attorney or petitioner can
follow without any legal knowledge of the process.
Response: The USPTO agrees with the commenter that testimonial
evidence typically should be supported by corroborating documentary
evidence, as stated in section I.H above. Further, Sec. 2.93(b)(7)
requires that any evidence of use of the mark in commerce be
``consistent with the definition of `use in commerce' set forth in
section 45 of the Act and is not limited in form to that of specimens
under Sec. 2.56.'' Evidence of use must be accompanied by a verified
statement setting forth factual information about the use of the mark
in commerce and the supporting evidence, including how the evidence
demonstrates use of the mark in commerce as of any relevant date for
the goods and/or services at issue. Id. Therefore, the registrant will
be required to verify, under penalty of perjury, the dates of use and
that such use was bona fide use in the ordinary course of trade and not
merely to reserve a right in the mark.
Regarding the request for general guidelines, examples of
acceptable evidence, and specific responses that a registrant could
submit in response to an Office action issued in an expungement or
reexamination proceeding, this final rule notes that expected
documentary evidence of use in most cases will take the form of
specimens of use, and that when specimens are no longer available, the
registrant may be permitted to provide additional evidence and
explanations supported by declaration to explain how the mark was used
in commerce at the relevant time. The evidence of use will differ in
each case, and the USPTO cannot provide examples of what might
demonstrate sufficient evidence of use during the relevant time period
for the vast array of goods and/or services that may be challenged in
these proceedings. In addition, under 37 CFR 11.18(b), any registrant
or attorney who presents a paper to the USPTO is certifying, among
other things, that the statements made therein of the party's own
knowledge are true, or are believed to be true; the legal contentions
are warranted by existing law; and any allegations are supported by
evidence. Therefore, it is incumbent upon the registrant or its
attorney to be knowledgeable about the requirements for registering its
mark, including the requirement to use the mark in commerce and what
constitutes such use.
Comment 12: One commenter requested that the USPTO consider adding
a provision allowing a registrant to designate certain information or
documents submitted with its response as confidential and that such
designated information or documents be excluded from the publicly
viewable file.
Response: The USPTO appreciates that, in rare circumstances, there
may be a need for confidentiality with regard to proof of use in
commerce for certain goods and/or services. If a registrant believes
that responding to an Office action issued in connection with an
expungement or reexamination proceeding would require the submission of
confidential information in order to prove use in commerce of the mark,
the registrant may submit a response to the Office action with the
confidential information redacted. However, if the redacted response is
not sufficient to establish the required use in commerce for the
challenged goods and/or services, the registrant may be required to
submit to the Office a non-redacted form of the confidential
information. In such a case, the registrant may petition the Director
under Sec. 2.146, requesting that the registrant be permitted to
submit the information outside of TEAS and that it not be made part of
the public record.
Comment 13: One commenter stated that the NPRM appeared to
contemplate that nonuse is established by a preponderance of the
evidence merely by the failure of the registrant to show sufficient
use. The commenter requested that the USPTO clarify whether the USPTO
considers the registrant's failure to show sufficient use in rebuttal
to the prima facie case that led to institution of an expungement and/
or reexamination proceeding as necessarily requiring a conclusion that
nonuse has been shown by a preponderance of
[[Page 64314]]
evidence of nonuse, and whether the reference to a preponderance of the
evidence standard applies only to Director-initiated proceedings.
Response: The registrant must rebut a prima facie case of nonuse by
providing competent evidence of use of the mark on the challenged goods
and/or services. If the USPTO determines that the registrant's evidence
is not sufficient to rebut the evidence of nonuse, i.e., that the
preponderance of evidence shows nonuse, the registration will be
cancelled, in whole or in part, as appropriate. If the registrant in
either a petition-based or Director-instituted proceeding elects to
appeal the decision to cancel the relevant goods and/or services, the
ultimate determination of whether the USPTO met its burden of
establishing nonuse by a preponderance of the evidence would be made by
the TTAB or subsequently by a court.
L. Excusable Nonuse
Comment 14: One commenter inquired whether the provision in Sec.
2.93(b)(5)(ii) regarding excusable nonuse in an expungement proceeding
as to particular goods and/or services with a sole basis under section
44(e) or section 66(a) of the Act rescind current excusable nonuse
protection for marks registered under section 1. The commenter also
stated that the difference in treatment between domestic versus foreign
registrations appears to put domestic trademark owners at a
disadvantage versus foreign counterparts.
Response: The USPTO assures the commenter that the provision
regarding excusable nonuse as to particular goods and/or services in a
registration with a sole basis under section 44(e) or section 66(a)
applies only to goods and/or services challenged in an expungement
proceeding. The provision in Sec. 2.161 regarding a claim of excusable
nonuse in connection with an affidavit or declaration of use under
section 8 of the Act remains unchanged. Regarding the comment that
domestic owners are at a disadvantage because they cannot claim
excusable nonuse in an expungement proceeding, the U.S. Congress
explicitly provided that treaty entitlement in the TMA only for foreign
owners whose marks were registered via the Paris Convention and Madrid
Protocol. Therefore, the USPTO cannot eliminate or expand that
provision to section 1 registrants through rulemaking. In addition,
unlike registrations with a sole basis under section 44(e) or section
66(a) that may register prior to use in commerce, registrations under
section 1 issue based on a sworn statement and proof that the mark is
in use in commerce on or in connection with the goods and/or services.
In the context of an expungement proceeding, requiring a showing that
the mark was never used, allowing for an allegation of excusable
nonuse, would conflict with the use requirement under section 1 for
issuance of the registration.
M. Duty To Monitor Status
Comment 15: One commenter stated that the requirement to monitor in
Sec. 2.23(d)(3) would require an ongoing responsibility to regularly
monitor the registration that is too burdensome and suggested that
regular monitoring be required not more often than once a year. Another
commenter opined that the new monitoring provisions may be costly for
all, and cost-prohibitive for individual applicants and small
businesses, and inquired whether this obligation applies retroactively
to all existing registrants.
Response: After consideration of the comments, the USPTO will not
include the requirement in Sec. 2.23(d)(3) that registrants monitor
the status of their registrations at least every six months following
the issue date of the registration. Although this requirement is not
included in the final rule, registrants are still encouraged to monitor
the status of their registrations using TSDR every six months from the
date of issuance. It is in the registrant's best interests to ensure
that it is aware of any challenges to its registration submitted to the
USPTO and that it does not miss any deadlines in connection with such
challenges.
The USPTO also notes that all registrants must maintain a valid
email address for themselves to ensure they receive correspondence from
the USPTO relating to their registrations. See 37 CFR 2.23(b). If a
registrant neglects to update its own email address, or to notify the
USPTO of an assignment of its registration to another party, the new
owner will not receive notifications from the USPTO regarding the
filing of a petition for expungement or reexamination, the institution
of one or both of those proceedings or of a Director-instituted
proceeding, or the issuance of an Office action in connection with such
a proceeding. In these situations, the owner would lose valuable time
to begin collecting evidence to support its showing of use in commerce
of the challenged goods and/or services. Further, if the owner does not
timely respond to an Office action, the registration may be cancelled
in whole or in part based upon the failure to respond. If a registrant
does not receive USPTO correspondence because it failed to maintain a
valid email address as required by the USPTO rules, and its
registration is cancelled, its failure to comply with Sec. 2.23(b)
normally will preclude the registrant from establishing an
extraordinary circumstance to waive the timing provisions for a
petition to reinstate a registration under Sec. 2.146(d)(2)(iv).
Therefore, registrants should ensure that USPTO assignment records are
updated and that email addresses are up-to-date so that USPTO
correspondence concerning the registration is sent to the proper
address, including notification of reexamination or expungement
proceedings filed in registrations.
N. 30-Day Letter--Expungement/Reexamination Proceeding
Comment 16: Several commenters responded to the USPTO's request for
comments regarding whether to grant 30 days, or to the end of the
response period, whichever is longer, when a timely response to an
expungement or reexamination Office action is substantially complete,
but consideration of some matter or compliance with a requirement has
been omitted. Four commenters agreed with the proposal to issue a 30-
day letter, with one commenter requesting that the USPTO clarify what
is meant by a ``substantially complete'' response. One commenter stated
that such a provision is not necessary, given that Sec. 2.93(c)
provides for a final action with the option to request reconsideration
if there are outstanding issues. Another commenter stated that
deficiencies in a response to an initial Office action should be
addressed through a final action, rather than an additional 30-day
response period and that the USPTO should apply the additional 30-day
response period to timely requests for reconsideration.
Response: During the examination of an application for
registration, examining attorneys have discretion to grant an applicant
30 days, or to the end of the time period for response to the Office
action, whichever is longer, to perfect a response if: (1) The response
was timely filed, (2) the response was a bona fide attempt to advance
examination, (3) the response was a substantially complete response to
the Office action, and (4) consideration of some matter or compliance
with some requirement was omitted. Generally, such 30-day letters are
issued only after submission of a response to a final action, and the
response is considered to be ``substantially complete'' because the
missing part could put the application in condition for publication or
registration. See 37 CFR 2.65(a)(2).
[[Page 64315]]
Consistent with existing examination procedures, the USPTO proposed
a similar procedure in connection with responses to initial or final
actions in expungement or reexamination proceedings, or requests for
reconsideration in such proceedings, to further its stated goal of
making these proceedings faster and more efficient than pre- or post-
registration processes. For example, if a registrant submits a response
to an initial expungement or reexamination Office action that
establishes use of the mark in commerce (or excusable nonuse, when
applicable), but fails to provide the URL and date accessed or printed
for any web pages, or submits an improperly signed response, the USPTO
may issue a 30-day letter requiring the missing information or a
response that is properly signed pursuant to Sec. 2.193. If the
registrant supplies the required information within the 30-day period
(or the time remaining in the initial response period), the USPTO can
terminate the proceeding faster and more efficiently because it will
not have to issue a final action giving the registrant another three
months to respond. In addition, registrants who are able to establish
use will benefit by having the proceeding terminated at an earlier date
than might otherwise occur. For these reasons, this final rule provides
discretion to grant a registrant 30 days, or to the end of the time
period for response to the previous Office action, whichever is longer,
to perfect a response. However, granting the registrant additional time
in such circumstances does not extend the time for filing an appeal to
the TTAB or a petition to the Director.
O. Timeline for Proceedings and Combined Proceedings
Comment 17: One commenter stated that the USPTO should require that
the Director issue a decision on an expungement or reexamination
petition within a certain amount of time and specify the consequences
to the petitioner, registrant, and subject registration if a timely
decision is not rendered. The commenter also stated that the USPTO
should provide that a petitioner may assert both expungement and
reexamination bases in a single petition under Sec. 2.92(a) for a
single filing fee.
Response: The USPTO intends to review a petition for expungement or
reexamination and to determine whether to institute a proceeding in a
timely manner after receipt of the petition. It is in the interest of
the USPTO to remove unused registrations from the trademark register as
expeditiously as possible. However, the TMA does not impose a deadline
for deciding such petitions, and the USPTO does not know how many
petitions will be submitted within, for example, the first six months
after implementation of this rule. Therefore, it is not possible to
predict the level of staffing and the amount of time that will be
required to review and make determinations regarding such petitions.
However, the USPTO assures the commenter, and all interested parties,
that the goal of these proceedings is faster and more efficient
cancellation of registrations for marks not used with goods and/or
services listed therein. As such, the USPTO's goal is to issue these
decisions promptly.
As to allowing a petitioner to assert both expungement and
reexamination grounds in a single petition, the USPTO does not believe
that doing so would be an efficient way to implement these proceedings.
The evidence required for each ground will differ based on the relevant
time period, and combining them would complicate the review of evidence
to determine what applies to which ground, and would not be the most
efficient use of USPTO resources.
P. Post Registration Audit
Comment 18: The USPTO received several responses regarding its
request for comments on whether a registration should be pre-selected
for audit during any concurrent or subsequent review of a post-
registration maintenance filing when a registrant fails to respond in
an expungement or reexamination proceeding, leading to cancellation of
some of the goods and/or services in the registration. Eleven
commenters stated that a registration should not automatically be
selected for audit in such circumstances. One of those commenters
suggested that the USPTO wait until it can evaluate how many
registrations would be impacted by such a procedure, and another
commenter proposed specific criteria for selecting a registration for
audit after failure to respond in an expungement or reexamination
procedure. Some of the commenters also noted that the audit procedure
is intended to be random; that selecting a registration for audit in
this situation appears to be punitive; and that failure to respond,
resulting in deletion of some goods and/or services, does not lead to a
presumption that the remaining goods and/or services are not in use.
Four commenters were in favor of selecting a registration for audit if
a registrant's failure to respond leads to cancellation of some goods
and/or services. One of those commenters also suggested that the
Director evaluate whether there is sufficient evidence to institute an
expanded proceeding against the entire registration.
Response: To promote the accuracy and integrity of the trademark
register and preserve the register as a reliable reflection of marks in
use in commerce, the USPTO conducts audits of section 8 and section 71
affidavits or declarations in which the mark is registered for more
than one good or service per class. TMEP sections 1604.22, 1613.22.
After careful consideration of the comments, the USPTO will not at this
time automatically select a registration for audit because a registrant
failed to respond to an expungement or reexamination Office action and
its registration is cancelled in part. However, cancellation in part as
a result of an expungement or reexamination proceeding, either for
failure to respond to an Office action or failure to rebut a prima
facie case of nonuse, does not shield a registration from being
selected for audit under the current procedures after submission of a
post-registration maintenance filing. Thus, a registration that still
includes at least one class with four or more goods or services, or at
least two classes with two or more goods or services, could be subject
to audit following submission of a section 8 or section 71 affidavit or
declaration. Regarding the suggestion of particular criteria for
selecting a registration for audit, specifically, that registrations be
selected for audit based upon the number of items in the original
registration, the number of items in the expungement proceeding, and
whether the registrant deletes items from the registration at or before
the submission of a section 8 declaration, the USPTO declines to adopt
a second set of criteria that would unnecessarily complicate the
procedures for selecting registrations for audit.
Q. Estoppel
Comment 19: One commenter requested that the rule expressly state
that the Director will have the burden of ensuring an expungement or
reexamination proceeding is not initiated if estoppel applies. Another
commenter: (1) Sought clarification as to whether the USPTO will
automatically review petitions and registration records to determine
whether estoppel should apply or whether the burden will be on the
registrant to show it should apply; (2) suggested permitting
registrants to petition the Director to prove that additional goods
and/or services may be considered the ``same'' goods and/or services
for purposes of estoppel where they are highly similar to previously
challenged goods/services, but not
[[Page 64316]]
identical; (3) proposed adding a mechanism by which a registrant
subject to an expungement proceeding can also show use as to the same
goods/services at issue on or before the relevant date for a
reexamination proceeding, so that future reexamination proceedings may
also be estopped; and (4) requested clarification concerning the extent
to which, or whether, termination of an expungement or reexamination
proceeding in favor of the registrant may bar future nonuse
cancellation actions with respect to the registration.
Response: Regarding the request that the rule expressly state that
it is the Director's burden to ensure that an expungement or
reexamination proceeding is not initiated if estoppel applies, the
USPTO believes that such an express provision is not necessary. The TMA
and Sec. 2.92(d)(1) specifically prohibit institution of a later
expungement proceeding as to goods and/or services when it has been
established that a registered mark was used in commerce on or in
connection with those goods and/or services at issue in a prior
expungement proceeding. Section 2.92(d)(2) specifically prohibits
institution of a later reexamination proceeding as to goods and/or
services when it has been established that a registered mark was used
in commerce on or in connection with any of those goods and/or services
at issue in a prior reexamination proceeding. Because of these
prohibitions, when the USPTO receives a petition to institute an
expungement or reexamination proceeding, the USPTO examiner must review
the entire record to determine whether there was a prior proceeding. If
estoppel applies, no new proceeding will be instituted. However, the
fee for the petition requesting expungement or reexamination will not
be refunded in such circumstances. Therefore, it would be prudent for
petitioners to ensure that estoppel does not apply to the goods and/or
services identified in the petition prior to submitting a petition for
expungement or reexamination.
Regarding the suggestion that registrants be permitted to petition
the Director to prove that additional goods/services may be considered
the ``same'' goods and/or services for purposes of estoppel where they
are highly similar to previously challenged goods and/or services, but
not identical, as noted above, the wording ``same goods and/or
services'' refers to identical goods and/or services that are the
subject of the pending proceeding or the prior determination. The
registrant's burden in expungement and reexamination proceedings is to
demonstrate use of its mark in commerce on the challenged goods and/or
services. Although certain goods may be related, demonstrating
acceptable use on one of the challenged goods listed in an
identification does not establish use on other listed related goods.
Further, the TMA and Sec. 2.92(d)(1) and (2) specifically provide that
no further expungement or reexamination proceedings may be instituted
only as to those ``particular'' goods and/or services that were
previously challenged and determined to be in use in commerce.
Therefore, the wording ``particular'' cannot be read to include similar
goods and/or services.
The commenter also requested that the USPTO add a mechanism by
which a registrant subjected to an expungement proceeding can also show
use as to the same goods and/or services at issue on or before the
relevant date for a reexamination proceeding, so that future
reexamination proceedings may also be estopped. A registrant in an
expungement proceeding can include specific dates of use for each
challenged good and/or service when it provides proof of use in
commerce as to each. If a petition for reexamination of the same goods
and/or services was submitted after the registrant prevailed in the
expungement proceeding, the USPTO examiner would review the entire
registration record, which would include any dates of use established
in the prior proceeding, in order to determine whether institution of a
reexamination proceeding would be appropriate.
Regarding the question about the extent to which, or whether,
termination of an expungement or reexamination proceeding in favor of
the registrant may bar future nonuse cancellation actions before the
TTAB with respect to the registration, the USPTO clarifies here that
termination of an expungement or reexamination proceeding in favor of
the registrant does not bar future nonuse cancellation actions under
Sec. 2.111 with respect to the registration.
R. Flexible Response Periods
Comment 20: The USPTO received a significant number of comments on
the proposal to implement flexible periods for responding to Office
actions in the examination of applications and post-registration
submissions. Some commenters favored the primary proposal to implement
a three-month response period with an optional three-month extension,
or some variation thereof. These commenters noted that this option
would be administratively simpler to implement compared to the proposed
alternatives and that the three-month response period would be adequate
in most cases to provide a sufficient response. Other commenters
opposed any reduction to the current six-month response deadline and
urged the USPTO to retain the current response deadline framework.
These commenters cited concerns that three months may be an
insufficient amount of time to properly respond to some Office actions,
especially if foreign applicants or substantive refusals are involved;
that the change in deadlines creates an administrative burden on
stakeholders, particularly with regard to updating and managing case
docketing systems; and that a system involving extensions could
increase costs for applicants.
Of the comments that opposed changing the current deadline
framework, most indicated that if one of the three flexible response
deadline options were to be implemented, the primary proposal of a
three-month response period with a single optional three-month
extension would be preferred.
Overall, the comments reflected little support for the two
alternative flexible response proposals, namely, the two-phase
examination option and the ``patent model'' option involving
progressively higher extension fees for each successive monthly
extension after two months. Comments about these proposals noted that
they would be more burdensome and complicated than the primary
proposal, and that they do not appear to support the USPTO's objectives
in implementing flexible response periods.
Of those comments voicing an opinion on extensions of time to
respond to an Office action, most expressed a preference for a single
three-month extension. Regarding the proposed $125 fee (if filed
through TEAS) for these extensions, some comments were in favor, while
others opposed charging a fee or suggested that the fee be reduced.
One commenter supported the USPTO's proposal to implement flexible
response periods only for applications based on section 1 or section 44
of the Act, while retaining the six-month deadline for applications
based on section 66(a) of the Act, but others were concerned that such
an implementation would disadvantage section 1 and section 44
applicants. To address this, a couple of commenters suggested that
section 66(a) applicants should not be required to proactively seek
extension requests, but should be required to pay the same fees based
on the timing of the response.
[[Page 64317]]
Another commenter noted that the NPRM suggests that only
applications with more complex issues would be permitted to obtain the
optional extension and requested clarification on this point.
Finally, a number of commenters agreed that the USPTO should delay
the implementation of flexible response periods until June 2022 or
beyond, to enable the USPTO to gather additional stakeholder feedback.
Response: The USPTO appreciates the comments regarding flexible
response periods and understands the concerns some of these expressed
about the potential effects of reducing the current six-month deadline
for responses to Office actions. However, based on a review of all the
comments, the USPTO has determined that a three-month response deadline
with a single optional three-month extension for a fee of $125 (if
filed through TEAS) is the best option to promote efficiency in
examination by shortening the overall prosecution timeline for
applications and facilitating faster disposal of applications that may
delay the disposition of later-filed applications. As some commenters
noted, three months should be sufficient time to review an Office
action and submit a response in many, if not most, cases, especially
those with issues that are relatively easy to address. The USPTO's
historical data on response times support this conclusion. For those
applicants who need more time to respond, a full six months will still
be available by requesting the three-month extension.
While the USPTO acknowledges the concerns some commenters expressed
about imposing a $125 fee (if filed through TEAS) for the extension,
and has considered them carefully, the USPTO believes that charging no
fee or a nominal fee would undercut the USPTO's objective of
encouraging applicants to respond sooner. If an extension were
available at a low cost, or at no cost, many applicants and their
attorneys would have no incentive to respond within the three-month
period. The fee for an extension under this rule is set at a level to
address this reality and is the same amount as the analogous fee for
requesting an extension of time for filing a statement of use through
TEAS.
Regarding the comments about retaining the six-month deadline for
section 66(a) applications, while implementing flexible response
deadlines for section 1 and section 44 applications, the USPTO has
determined that this difference in implementation is appropriate, based
on data showing that, in contrast with section 1 and section 44
applicants, only 11% of section 66(a) applicants filed a response to a
non-final Office action with multiple grounds within three months,
while 62% of Madrid applicants took six months to file a response. In
short, as noted in the NPRM, the additional processing required for
these applications, both at the USPTO and the IB, per article 5(2) of
the Madrid Protocol, justifies maintaining the current six-month
deadline.
As to the comment requesting clarification of the NPRM's statement
that optional extensions would provide sufficient time for responses to
Office actions with more complex issues, this statement was not
intended to suggest that only Office actions with certain refusals or
requirements would be eligible for an extension. Rather, the statement
was intended to indicate that the extension option is available if the
applicant or its attorney felt there were complex issues in an Office
action that required more time to respond. To be clear, under this
rule, an extension can be requested regardless of the type or level of
complexity of the issues raised in the Office action.
Finally, the USPTO recognizes that changes to the deadline for
responding to Office actions would require stakeholders to change their
processes for reviewing, docketing, and submitting responses. Likewise,
the USPTO must perform a significant amount of work and planning to
adjust its IT systems and processes to accommodate new deadlines.
Therefore, to allow sufficient time for this planning and work to be
carried out by both the USPTO and its stakeholders, the USPTO has
determined that the implementation of the rules regarding flexible
deadlines for Office actions issued in connection with pending
applications or post-registration maintenance documents should be
delayed beyond the initially proposed effective date of June 27, 2022,
to a new effective date of December 1, 2022.
S. Letters of Protest
Comment 21: The USPTO received a few comments on the proposed
amendment to Sec. 2.149 to add provisions from the TMA relating to the
USPTO's letter-of-protest procedures. While the comments generally
supported the proposed amendment, a couple of commenters expressed
concerns about the TMA's provision that, within two months of
submission of a letter of protest, the USPTO must determine whether the
evidence submitted in the letter of protest should be included in the
relevant application record. One commenter suggested that Sec. 2.149
should specify a shorter time period for making that determination,
because the two-month time period could lead to examining attorneys
acting on applications before receiving relevant letter-of-protest
evidence. Another commenter recommended that the USPTO should identify
the consequences for the USPTO failing to meet the two-month
requirement, specifically whether the letter-of-protest evidence will
be entered into the record if the requirement is not met.
Response: The USPTO understands the desire to ensure timely
forwarding of relevant letter-of-protest evidence to examining
attorneys, which is, in fact, the objective of the TMA's two-month
requirement. See H.R. Rep. No. 116-645, at 12 (2020). Any failure of
the USPTO to meet the two-month requirement is subject to oversight by
the U.S. Congress. The USPTO will dedicate appropriate resources to
meet the requirement, taking into account letter-of-protest filing
levels and examination pendency timelines.
The USPTO does not believe a shorter time frame for determining
whether the evidence submitted in the letter of protest should be
included in the relevant application record is necessary or
administratively feasible, given the recent increases in application
filings and the number of letters of protest the USPTO has historically
received, particularly over the last year. Section 2.149 and the
USPTO's current procedures allow for letter-of-protest evidence to be
forwarded and considered even after an application is approved for
publication, under appropriate circumstances. Thus, the fact that an
examining attorney has already acted on an application does not
necessarily preclude the examining attorney's consideration of relevant
evidence included in a timely, properly filed letter of protest.
Regarding the comment suggesting that the USPTO specify the
consequences for failing to meet the two-month requirement, the USPTO
notes that the TMA imposes the two-month deadline on the USPTO, and the
statute does not itself specify any consequences for failing to meet
the requirement. See H.R. Rep. No. 116-645, at 12 (2020). In view of
this and the USPTO's general obligation to meet the statutory mandate,
the USPTO has determined that it is not necessary for Sec. 2.149 to
specify consequences for the USPTO for failing to meet the deadline.
Nor would it be appropriate for the rule to establish any consequences
affecting letter-of-protest filers, who have no
[[Page 64318]]
control over whether the USPTO meets the deadline. If a timely and
properly filed letter of protest contains relevant evidence that should
be included in the application record of a pending application, but the
USPTO fails to make that determination within the required two months,
the USPTO may still forward the evidence to the examining attorney for
consideration, if possible under the circumstances.
T. Suspension of Proceedings
Comment 22: The USPTO received two comments regarding including
expungement and reexamination proceedings among the types of
proceedings for which suspension of action by the Office or the TTAB is
authorized. One commenter supported suspension while expungement or
reexamination proceedings are pending. The other commenter disagreed
that inter partes proceedings should be suspended during the pendency
of ex parte proceedings under any circumstances. The commenter stated
further that unless ex parte proceedings are stayed while inter partes
proceedings are pending, the ex parte proceedings will have the
unintended consequence of undermining inter partes proceedings, because
faster resolution of an ex parte proceeding resulting in cancellation
of a registration potentially moots or impacts the more robust
proceedings in inter partes forums and that the proposed rules depart
from the Office's longstanding practice of staying the more
jurisdictionally limited forum. Finally, the commenter proposed
amending Sec. 2.67 to provide for suspension when ``ownership'' was an
issue in another pending proceeding.
Response: The USPTO appreciates the comment in support of the
revision to Sec. Sec. 2.67 and 2.117. Regarding the concerns of the
other commenter, the USPTO notes that suspension of a Board proceeding
pending the final determination of another proceeding is solely within
the discretion of the Board. If a cancellation proceeding pending
before the TTAB includes nonuse as basis for cancellation, and there is
an expungement or reexamination proceeding involving some or all of the
goods and/or services in the cancellation proceeding, the outcome of
the expungement or reexamination proceeding may have a bearing on the
Board proceeding. The expungement or reexamination may result in the
cancellation of the registration at issue in the Board proceeding.
Therefore, the TTAB may exercise its discretion to suspend. As the
commenter noted, ex parte proceedings generally are less costly and
time-consuming, and thus an ex parte proceeding may resolve a nonuse
issue more efficiently. Suspending Board proceedings in favor of
expungement and reexamination proceedings is consistent with the TMA's
objective to provide a faster and more efficient alternative to address
claims of lack of proper use.
The commenter expresses concern about suspending ``more robust
proceedings'' at the TTAB in favor of ex parte proceedings. While the
commenter refers to inter partes Board proceedings having larger
evidentiary records and more thorough fact-finding, these
characteristics primarily result from the broader scope of claims and
issues addressed in inter partes Board proceedings, which range well
beyond nonuse. The ex parte reexamination and expungement proceedings
will address a more limited inquiry regarding lack of proper use of a
registered mark, and within that context the proceedings are designed
to provide the registrant a sufficiently robust, full and fair
opportunity to be heard.
While the commenter characterized suspension of Board proceedings
in favor of expungement or reexamination proceedings as a change in
practice, the USPTO disagrees. As set forth in section 510.02(b) of the
Trademark Trial and Appeal Board Manual of Procedure, the longstanding
practice of the Board has been that ``[u]nless there are unusual
circumstances, the Board will suspend proceedings in the case before it
if the final determination of the other proceeding may have a bearing
on the issues before the Board.'' Pursuant to this practice, the Board
has suspended its proceedings in favor of many types of other
proceedings, including arbitration proceedings, state court cases, and
foreign actions. Id. The USPTO considers suspending Board proceedings
in favor of expungement and reexamination proceedings under the same
conditions to be a continuation of longstanding TTAB practice rather
than a departure from it.
With regard to the addition of ``ownership'' as a reason to
suspend, the wording as proposed is broad enough to include the issue
of ownership and there is no need to list separately that specific
issue pertaining to the initial or continued registrability of a mark.
U. Attorney Recognition
Comment 23: The USPTO received a significant number of comments
regarding attorney recognition and withdrawal. The comments regarding
the proposed amendments to Sec. 2.17(g), providing for ongoing
attorney recognition, were mixed. Several commenters supported ongoing
recognition, while others preferred the USPTO continue to cease
recognition under specified circumstances. One commenter noted that the
existing rule was a ``familiar and practical approach'' to
representation, while another noted that the change ``would simplify
how an attorney can be removed from recognition.'' Some commenters
expressed concern about how the transition from the current rules to
the new rules would be implemented. Other commenters sought additional
information regarding the specifics on the implementation of the role-
based access control system intended to improve USPTO database security
and integrity, which was referenced in the NPRM. One comment suggested
that any rule change to implement such a system would be premature
until the plans for the system could be discussed in detail.
Commenters also raised questions about the obligations imposed by
the requirements for withdrawal under Sec. 2.19, citing issues
pertaining to attorney discharge and change of ownership.
Response: After carefully considering all of the comments, the
USPTO has decided not to implement any of the NPRM's proposed changes
to the rules governing attorney recognition and withdrawal at this
time, except for Sec. 2.17(b)(4), which provides that a false,
fraudulent, or mistaken attorney designation will be considered
ineffective; Sec. 2.18(a)(1), which replaces ``representation'' with
``recognition''; Sec. 2.18(a)(2), which indicates that, with respect
to notices of institution of expungement and reexamination proceedings
and ineffective attorney designations under Sec. 2.17(b)(4), the
Office may correspond directly with the applicant, registrant, or party
to a proceeding; and Sec. 2.19(d), which indicates that an attorney
need not formally withdraw when recognition is not effective under
Sec. 2.17(b)(4).
While the USPTO may make changes to the attorney recognition and
withdrawal rules in a future rulemaking, it has determined that
additional work, planning, and stakeholder communications should be
carried out before any such changes are made.
V. Court Orders Concerning Registrations
Comment 24: One commenter expressed concerns about proposed Sec.
2.177, regarding action on court orders canceling or affecting a
registration under section 37 of the Act, 15 U.S.C. 1119. Specifically,
the commenter
[[Page 64319]]
requested that proposed Sec. 2.177 be revised to remove the
requirement that a party obtain and submit the certified copy of the
court order to the USPTO, noting that the requirement adds an
unnecessary burden on litigant parties. In addition, the commenter
found the proposed rule's reference to ``a party'' to be vague because
it does not identify which party to the litigation is responsible for
submitting the court order, nor does it specify a penalty for failing
to submit the order.
Response: The intent of Sec. 2.177 is to codify the USPTO's
longstanding procedures concerning action on court orders cancelling or
affecting a registration under section 37, 15 U.S.C. 1119, that are
currently set forth in TMEP section 1610. These procedures enable
parties to litigation to properly notify the USPTO of a court order so
that the USPTO may take appropriate action. Thus, Sec. 2.177 imposes
the obligation to file a certified court order only on those parties
who wish for the USPTO to take action on the order. To address the
concerns about possible ambiguity resulting from the wording ``a
party,'' the text of Sec. 2.177 has been amended to clarify that if a
party wishes that the USPTO take action on a court order, that party
must submit a certified copy of the order.
W. Paperwork Reduction Act--Respondent Burden Hours
Comment 25: One commenter expressed concerns about the USPTO's
estimated burden hours for preparing petitions for expungement and/or
reexamination and responses to Office actions issued in connection with
such petitions. The commenter noted that accurate estimates are
necessary for realistic assessments of the regulatory burden of
complying with the rules and weighing the costs with the benefits of
the rules. The commenter opined that it may generally take, on average,
at least 12 hours or more, rather than the 1-1.5 hours posited by the
USPTO.
Response: The USPTO appreciates the feedback regarding burden
estimates. As these are new proceedings, it is difficult to predict the
average amount of time that will be required to research, collect, and
compile the evidence required for an expungement and/or reexamination
petition or response to an Office action regarding such petition.
However, upon consideration of the commenter's concerns, the USPTO
agrees that its original estimate did not sufficiently account for the
time burden to submit these petitions and responses. Therefore, the
USPTO has adjusted the time burdens to 4.5 hours for petitions for
expungement and/or reexamination and 4 hours for responses to Office
actions issued in connection with such petitions. The USPTO does not
believe more time is warranted because the scope of both the petitions
and Office actions in expungement and reexamination proceedings is
limited to a single substantive issue--the mark's use in commerce for
particular goods and/or services. However, the USPTO will continue to
consider public feedback regarding the burden estimates for these items
and will raise the burden estimates as needed.
Changes From the NPRM
Based on the comments and responses above, the USPTO has made the
following changes to the proposals in the NPRM. Section 2.6(a) is
revised to include a request for extension of time for filing a
response to a non-final Office action under Sec. 2.93(b)(1) via TEAS,
with a fee of $125.00. The proposed revisions to Sec. 2.17(g) are not
implemented in this rule. Section 2.18(a)(1) is revised to refer to
``recognition'' instead of ``representation.'' The proposed revisions
regarding Sec. 2.19(b) and (c) are not implemented in this rule.
However, proposed Sec. 2.19(d) is added as Sec. 2.19(c). Section
2.93(b)(1) is revised to change the deadline for response from two
months to three months and to provide for a one-month extension of time
to respond to a non-final Office action, and Sec. 2.93(c)(1) is
revised to change the deadline for filing a response to a final Office
action to three months.
Discussion of Rule Changes
The USPTO adds Sec. 2.6(a)(26) to establish a fee of $400, per
class, for filing a petition for expungement or reexamination under
Sec. 2.91. The USPTO adds Sec. 2.6(a)(27) to establish a fee of $125
for filing through TEAS a request for an extension of time for filing a
response to a non-final Office action under Sec. 2.93(b)(1). The USPTO
adds Sec. 2.6(a)(28)(i) to establish a fee of $225 for filing on paper
a request for an extension of time for filing a response to an Office
action under Sec. 2.62(a)(2), Sec. 2.163(c), Sec. 2.165(c), Sec.
2.176, Sec. 2.184(b)(2), or Sec. 2.186(c), and Sec. 2.6(a)(28)(ii)
to establish a fee of $125 for filing through TEAS a request for an
extension of time for filing a response to an Office action under Sec.
2.62(a)(2), Sec. 2.163(c), Sec. 2.165(c), Sec. 2.176, Sec.
2.184(b)(2), or Sec. 2.186(c).
The USPTO amends Sec. 2.11(d) to add cross-references to
Sec. Sec. 2.93, 2.163, and 7.39, and amends Sec. 2.11(f) to add a
cross-reference to Sec. 2.93(c)(1).
The USPTO adds Sec. 2.17(b)(4) to specify that when a practitioner
has been falsely, fraudulently, or mistakenly designated as a
representative for an applicant, registrant, or party to a proceeding
without the practitioner's prior authorization or knowledge,
recognition of that practitioner shall be ineffective.
The USPTO amends Sec. 2.18 to revise paragraphs (a)(1) and (2) to
clarify the circumstances under which the Office will communicate
directly with an applicant, registrant, or party to a proceeding.
The USPTO amends Sec. 2.19 to add paragraph (c) to indicate that
an attorney need not formally withdraw when recognition is not
effective under Sec. 2.17(b)(4).
The USPTO amends Sec. 2.23 to revise paragraph (c) to clarify that
certain submissions are not subject to the exemption allowing paper
filing and to add paragraph (d)(3) to address the duty to monitor the
status of a registration once an expungement or reexamination
proceeding has been instituted.
The USPTO amends Sec. 2.61 to remove paragraph (c).
The USPTO amends Sec. 2.62 to revise paragraph (a) to provide for
flexible response periods and extensions of time to respond and
paragraph (c) to include a reference to requests for extensions of time
to respond.
The USPTO amends Sec. 2.63 to revise paragraph (b) to include a
request for an extension of time to respond or appeal under Sec.
2.62(a)(2) as a response option, and makes other minor stylistic
changes; revises paragraph (c) to include a reference to requests for
extensions of time to respond or appeal under Sec. 2.62(a)(2), and
makes other minor stylistic changes; and revises paragraph (d) to
remove the wording ``six-month.''
The USPTO amends Sec. 2.65 to revise paragraph (a) to replace
``six months from the date of issuance'' with ``the relevant time
period for response under Sec. 2.62(a)(1), including any granted
extension of time to respond under Sec. 2.62(a)(2).''
The USPTO amends Sec. 2.66 to revise paragraph (b)(1) to replace
the citation to Sec. 2.6 with a citation to Sec. 2.6(a)(15); revises
paragraph (b)(3) by removing a portion of the current paragraph to add
new paragraph (b)(5); and adds paragraph (b)(4) to include a provision
for Office actions with a three-month response period.
The USPTO amends Sec. 2.67 to codify the existing practice
regarding suspension of proceedings before the USPTO and the TTAB.
The USPTO revises the undesignated center heading appearing before
Sec. 2.91 from ``CONCURRENT USE PROCEEDINGS'' to ``EX PARTE
[[Page 64320]]
EXPUNGEMENT AND REEXAMINATION.''
The USPTO adds Sec. 2.91 to set forth the procedures for petitions
for expungement or reexamination.
The USPTO adds Sec. 2.92 to set forth the procedures for
instituting ex parte expungement and reexamination proceedings.
The USPTO adds Sec. 2.93 to set forth the procedures for
conducting expungement and reexamination proceedings.
The USPTO adds Sec. 2.94 to set forth the procedures for action
after expungement or reexamination.
The USPTO adds the undesignated center heading ``CONCURRENT USE
PROCEEDINGS'' before existing Sec. 2.99.
The USPTO revises the undesignated center heading appearing before
Sec. 2.111 from ``CANCELLATION'' to ``CANCELLATION PROCEEDINGS BEFORE
THE TRADEMARK TRIAL AND APPEAL BOARD'' to differentiate cancellation
proceedings before the TTAB from ex parte expungement and reexamination
proceedings.
The USPTO amends Sec. 2.111(b) to specify the time for filing a
petition for cancellation with the TTAB on the ground specified in
section 14(6) of the Act and to distinguish it from the timing of other
nonuse claims.
The USPTO amends Sec. 2.117(a) to include a reference to an
expungement or reexamination proceeding instituted under Sec. 2.92, to
eliminate the limitation to other proceedings in which a party or
parties are engaged, and to indicate that a civil action or proceeding
is not considered to have been terminated until an order or ruling that
ends litigation has been rendered and noticed and the time for any
further review has expired with no further review sought.
The USPTO amends Sec. 2.141 to revise the heading to ``Ex parte
appeals''; adds the title ``Appeal from final refusal of application''
to paragraph (a) and replaces the six-month deadline with a reference
to Sec. 2.142(a)(1); adds a new paragraph (b) regarding expungement
and reexamination appeals with the title ``Appeal from expungement or
reexamination proceeding''; and renumbers current paragraph (b) as
paragraph (c) and clarifies that (1) if the applicant or registrant
does not pay the appeal fee for at least one class of goods or services
before expiration of the time for appeal, the application will be
abandoned or the proceeding will be terminated and (2) if the applicant
or registrant does not submit the required fee or specify the class(es)
being appealed from either a final refusal of an application or from an
expungement or reexamination proceeding within the set time period, the
TTAB will apply the fee(s) to the class(es) in ascending order,
beginning with the lowest-numbered class.
The USPTO amends Sec. 2.142 to revise paragraph (a) to replace the
six-month deadline with a reference to the deadline for appeal from the
final refusal of an application in paragraph (a)(1) and the deadline
for appeal from an expungement or reexamination proceeding in paragraph
(a)(2); adds wording in current paragraph (a) to new paragraph (a)(3);
revises paragraph (b)(3) to include a reference to proceedings
involving registrations; and revises paragraph (d) for clarity and adds
paragraphs (d)(1) and (2) to address appeals from a refusal to register
and appeals from an expungement or reexamination proceeding,
respectively.
The USPTO amends Sec. 2.145 to revise paragraph (a)(1) to include
a reference to ex parte expungement or reexamination proceedings, to
delete the heading from paragraph (a)(3) and add introductory text, and
to revise paragraph (c)(1) to add an exception for ex parte expungement
or reexamination proceedings.
The USPTO amends Sec. 2.146 to include expungement and
reexamination in paragraph (b); revises paragraph (c) to indicate that
a petition requesting reinstatement of a registration cancelled in
whole or in part for failure to timely respond to an Office action
issued in an expungement and/or reexamination proceeding must include a
response to the Office action, signed in accordance with Sec. 2.193;
and adds paragraph (d)(2)(iv) to specify the filing deadline for a
petition in connection with an expungement or reexamination proceeding.
The USPTO amends Sec. 2.149 to revise paragraph (a) to replace the
word ``entry'' with ``inclusion'' and amends paragraph (i) for clarity
and to replace the words ``not petitionable'' with ``final and non-
reviewable, and a determination to include or not include evidence in
the application record shall not prejudice any party's right to raise
any issue and rely on any evidence in any other proceeding.''
The USPTO amends Sec. 2.163 to revise paragraph (b) to specify a
response deadline of three months; revise paragraph (c) to provide for
extensions of time to respond; add paragraph (d) to address
substantially complete responses; and add paragraph (e) to set forth
the wording formerly in paragraph (c) with conforming revisions.
The USPTO amends Sec. 2.165 to revise paragraph (a) to revise the
internal citation to Sec. 2.163(b)-(c); revise paragraph (b) to
include a citation to the response deadlines in Sec. 2.163(b)-(c); add
new paragraph (c) to specify that a registration will be cancelled if a
petition is not timely filed; and renumber previous paragraph (c) as
paragraph (d).
The USPTO amends Sec. 2.176 to revise the title to ``Consideration
of above matters in Sec. Sec. 2.171 through 2.175'' and to specify a
response deadline of three months and to provide for an extension of
time to respond.
The USPTO adds the undesignated center heading ``COURT ORDERS UNDER
SECTION 37'' before Sec. 2.177.
The USPTO adds Sec. 2.177 to address procedures concerning action
on court orders cancelling or affecting a registration under section 37
of the Act.
The USPTO amends Sec. 2.184 to revise paragraph (b)(1) to specify
a response deadline of three months; revise paragraph (b)(2) to provide
for extensions of time to respond; add paragraph (b)(3) to address
substantially complete responses; add paragraph (b)(4) to set forth
wording formerly in paragraph (b)(1); and add paragraph (b)(5) to set
forth wording formerly in paragraph (b)(2).
The USPTO amends Sec. 2.186 to revise paragraph (b) to include a
citation to the response deadlines in Sec. 2.184(b); add new paragraph
(c) to specify that a registration will expire if a petition is not
timely filed; and renumber previous paragraph (c) as paragraph (d).
The USPTO amends Sec. 2.193(e)(5) to include a reference to
petitions for expungement or reexamination.
The USPTO amends Sec. 7.6 to add paragraph (a)(9)(i) to establish
a fee of $225 for a request for an extension of time for filing a
response to an Office action under Sec. 7.39(b) or Sec. 7.40(c) on
paper and to add paragraph (a)(9)(ii) to establish a fee of $125 for a
request for an extension of time for filing a response to an Office
action under Sec. 7.39(b) or Sec. 7.40(c) via TEAS.
The USPTO amends Sec. 7.39 to revise paragraph (a) to specify a
response deadline of three months; revise paragraph (b) to provide for
extensions of time to respond; revise paragraph (c) to address
substantially complete responses; revise paragraph (d) to set forth
wording formerly in paragraph (b); add paragraph (e) to set forth
wording formerly in paragraph (c); and add paragraph (f) to set forth
wording formerly in paragraph (d).
The USPTO amends Sec. 7.40 to revise paragraph (a) to revise the
internal citation to Sec. 7.39(a)-(c); revise paragraph (b) to include
a citation to the response deadlines in Sec. 7.39(a)-(c); add new
paragraph (c) to specify that a registration will be cancelled if a
[[Page 64321]]
petition is not timely filed; and renumber previous paragraph (c) as
paragraph (d).
Rulemaking Requirements
A. Administrative Procedure Act: The changes in this rulemaking
involve rules of agency practice and procedure, and/or interpretive
rules. See 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 are
procedural where they do not change the substantive standard for
reviewing claims); 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).
Accordingly, prior notice and opportunity for public comment for
this rulemaking are not required pursuant to 5 U.S.C. 553(b) or (c), or
any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37
(Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C.
2(b)(2)(B), do 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 USPTO chose to seek public comment before
implementing the rule to benefit from the public's input.
B. Regulatory Flexibility Act: The USPTO publishes this Final
Regulatory Flexibility Analysis (FRFA), as required by the Regulatory
Flexibility Act (RFA) (5 U.S.C. 601 et seq.), to examine the impact of
the Office's changes to trademark fees on small entities. Under the
RFA, whenever an agency is required by 5 U.S.C. 553 (or any other law)
to publish an NPRM, the agency must prepare and make available for
public comment an Initial Regulatory Flexibility Analysis (IRFA),
unless the agency certifies under 5 U.S.C. 605(b) that the rule, if
implemented, will not have a significant economic impact on a
substantial number of small entities. 5 U.S.C. 603, 605. The USPTO
published an IRFA, along with the NPRM, on May 18, 2021 (86 FR 26862).
The USPTO received no comments from the public directly applicable to
the IRFA, as stated below in Item 2.
Items 1-6 below discuss the six criteria specified in 5 U.S.C.
604(a)(1)-(6) to be addressed in a FRFA. Item 6 discusses alternatives
considered by the Office.
1. Succinct statement of the need for, and objectives of, the rule:
The USPTO amends the rules of practice in trademark cases to
implement provisions of the (TMA), Public Law 116-260, Div. Q, Tit. II,
Subtit. B, section 228 (Dec. 27, 2020). The TMA sets a deadline of
December 27, 2021, for the USPTO to promulgate rules governing letter-
of-protest procedures and implementing ex parte expungement and
reexamination proceedings for cancellation of a registration when the
required use in commerce of the registered mark has not been made. In
addition, the TMA authorizes the USPTO to promulgate rules to provide
for flexible Office action response periods. The USPTO also sets fees
for petitions requesting the institution of ex parte expungement and
reexamination proceedings and for requests to extend Office action
response deadlines, as required or authorized by the TMA, and to amend
the rules concerning the suspension of USPTO proceedings and the rules
governing attorney recognition in trademark matters.
As required or authorized by the TMA, the objective of the rule is
to implement the provisions of the TMA by: (1) Establishing ex parte
expungement and reexamination proceedings for cancellation of a
registration when the required use in commerce of the registered mark
has not been made, to ensure an accurate trademark register that
supports and promotes commerce; (2) amending the rules governing the
USPTO's letter-of-protest procedures, which allow third parties to
submit evidence to the USPTO regarding a trademark's registrability
during the initial examination of the trademark application, to provide
that the decision whether to include such evidence in the application
record is final and non-reviewable and that such a determination shall
not prejudice any party's right to raise any issue and rely on any
evidence in any other proceeding; and (3) implementing flexible
response periods, along with optional extensions of time, to promote
efficiency in examination by shortening the prosecution timeline for
applications with issues that are relatively simple to address, while
providing sufficient time for response to Office actions with more
complex issues. In addition, this rule also formalizes existing
practice regarding the suspension of proceedings before the Office and
the TTAB; specifies when recognition of a practitioner shall be
ineffective; and adds a new rule to address procedures regarding court
orders cancelling or affecting registrations. Finally, the rule
establishes fees for the ex parte expungement and reexamination
proceedings and for extensions of time to respond to an Office action.
2. A statement of the significant issues raised by the public
comments in response to the initial regulatory flexibility analysis, a
statement of the assessment of the agency of such issues, and a
statement of any changes made in the proposed rule as a result of such
comments:
The USPTO did not receive any public comments in response to the
IRFA. However, the Office received comments about particular fees, and
their impact on small entities, that are further discussed in the
preamble.
3. The response of the agency to any comments filed by the Chief
Counsel for Advocacy of the Small Business Administration in response
to the proposed rule, and a detailed statement of any change made to
the proposed rule in the final rule as a result of the comments:
The USPTO did not receive any comments filed by the Chief Counsel
for Advocacy of the Small Business Administration in response to the
proposed rule.
4. Description of and an estimate of the number of small entities
to which the rule will apply or an explanation of why no such estimate
is available:
The USPTO does not collect or maintain statistics in trademark
cases 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 rule. The rule would apply to all persons
who are filing a response to an Office action, are represented by an
attorney, are seeking to submit a petition requesting institution of an
expungement or reexamination proceeding, or are providing a response in
such a proceeding. However, as noted above, based on information
already collected, many of the applications and registrations in which
nonuse may be an issue are owned by individuals or small-volume filers.
Therefore, the USPTO anticipates that a significant portion of the
expungement and reexamination proceedings instituted will be brought
against registrants who are considered small enterprises. If so, this
fact alone would not indicate that the process was unfairly impacting
this group. However, the USPTO will carefully review the data to be
collected for the above-referenced report, along with the data to be
collected by the STF, which should provide additional insight to allow
the USPTO to assess the impact of these
[[Page 64322]]
proceedings on registrants and make adjustments if necessary.
The rule includes provisions for flexible response periods to
respond to Office actions. Under this rule, all filers would have an
option to file a no-cost response if they do so within three months of
the Office action's issue date. The changes would benefit all trademark
owners by encouraging faster prosecution of applications and review of
post-registration maintenance documents, and the USPTO believes this
three-month response period is reasonable for all applicants and
registrants, including small entities, given the efficiencies of
current practices utilizing electronic filing and email notification of
all documents.
In addition, the provisions governing the ex parte expungement and
reexamination proceedings created under the TMA will benefit all
parties, including small entities, by helping to ensure the accuracy of
the USPTO's trademark register by cancelling registrations, in whole or
in part, for which the required use of the registered mark in commerce
has not been made. Moreover, these proceedings will provide a more
efficient and less costly alternative to contested inter partes
proceedings before the TTAB or civil litigation in the courts. This
should decrease or eliminate the potential costs that otherwise would
have been incurred to litigate in proceedings to cancel a registration
or resolve a dispute over a mark, or to change business plans to avoid
the use of a chosen mark when the required use has not been made.
5. Description of the reporting, recordkeeping, and other
compliance requirements of the final rule, including an estimate of the
classes of small entities which will be subject to the requirement and
the type of professional skills necessary for preparation of the report
or record:
The final rule will require the creation of new online forms to
submit a request to institute an expungement or reexamination
proceeding, to respond to Office actions issued during such
proceedings, and to request extensions of time to respond to Office
actions, as further described in the preamble of this proposed rule.
The USPTO does not anticipate the rule to have a disproportionate
impact upon any particular class of small or large entities. Any entity
that has a pending trademark application or a registered trademark
could potentially be impacted by this rule.
The professional skills necessary for completion of the online
forms are not more burdensome than the skills necessary for completion
of current USPTO reporting requirements and would not be
disproportionately burdensome for small entities.
6. Description of the steps the agency has taken to minimize the
significant economic impact on small entities consistent with the
stated objectives of applicable statutes, including a statement of the
factual, policy, and legal reasons for selecting the alternative
adopted in the final rule and why each one of the other significant
alternatives to the rule considered by the agency which affect the
impact on small entities was rejected:
The TMA mandates the framework for many of the procedures in this
rulemaking, particularly with respect to changes to the letter-of-
protest procedures and most of the procedures for the new ex parte
expungement and reexamination proceedings, except for those indicated
below. Thus, the USPTO has little to no discretion in the rulemaking
required to implement those procedures. Accordingly, the discussion
below addresses only those provisions for which alternatives were
possible because the TMA provided the Director discretion to implement
regulations. In those cases, the USPTO chose the option that best
balanced the need to achieve the stated objectives with the need to
create processes that are the least burdensome on all parties.
Fees: As authorized by the TMA, the rule establishes fees for
petitions requesting ex parte expungement or reexamination of a
registration and for extensions of time to respond to an Office action.
After the USPTO considered the comments received regarding the proposed
fee of $600 per class for a petition requesting ex parte expungement or
reexamination of a registration, and as discussed in the preamble, this
rule sets a fee of $400 per class for such petitions, with the intent
to balance the need for cost recovery with the objective of providing a
lower-cost alternative for third parties to seek cancellation of
registered marks for which the required use in commerce has not been
made. The USPTO considered alternative fee proposals for these newly
created ex parte proceedings. One option was to charge $250 per
petition, which is the same amount as the current fee for
electronically filed petitions to the Director under Sec. 2.146.
However, that amount was determined to be insufficient for cost
recovery because petitions for expungement or reexamination are
different proceedings than other petitions to the Director, and
reviewing these petitions and conducting any resulting proceeding will
require more time and resources. Therefore, these petitions are likely
to incur higher processing costs. In addition, the USPTO considered
setting the fee at $1,000 per class of goods or services involved in
the petition. However, this amount was deemed too high in view of the
USPTO's objective to provide an inexpensive mechanism for cancellation
of a registration when the required use in commerce of the registered
mark has not been made.
This rule sets a fee of $125 for electronically filed requests for
extensions of time to respond to an Office action issued in connection
with an application or a post-registration maintenance filing and a fee
of $225 for such extensions that are filed on paper. The rule also sets
a fee of $125 for requests for extensions of time to respond to a non-
final Office action issued in connection with an expungement or
reexamination proceeding, which are required to be filed
electronically. These fees are consistent with the current fees for
requesting an extension of time to file a statement of use and are
intended to recover associated costs while incentivizing applicants to
respond to Office actions within the initial three-month deadline. The
USPTO considered the alternative of not charging a fee for such
extensions, but that option would not aid in cost recovery and would
not provide an incentive to respond earlier, undermining the purpose of
the flexible response periods.
Limit on petitions requesting expungement or reexamination: This
rule does not limit the number of petitions for expungement or
reexamination that can be filed against a registration. However, the
Office did consider such a limit of petition-initiated proceedings
against a registration that had already been the subject of instituted
proceedings in order to provide a definite end to challenges, leaving
any further challenges to TTAB cancellation proceedings. Considering
that there are already safeguards in place to prevent abuse, the Office
was concerned that imposing artificial limitations might undermine the
utility of the proceedings to clear the register of unused marks. In
addition, the USPTO considered the alternatives of limiting the number
of petitions a particular petitioner or real party in interest may
file, but those options did not further the ultimate purpose of the
expungement or reexamination proceeding, which is to cancel a
registration in whole or in part when evidence shows that use of the
mark in commerce has not been made.
Reasonable investigation and evidence: Under the TMA and this rule,
a petition for expungement or
[[Page 64323]]
reexamination must include a verified statement that sets forth the
elements of the reasonable investigation the petitioner conducted to
determine that the mark was never used in commerce (for expungement
petitions) or not in use in commerce as of the relevant date (for
reexamination petitions) on or in connection with the goods and/or
services identified in the petition. The rule defines a ``reasonable
investigation'' as one that is based on available information and must
include searches calculated to return information about the underlying
inquiry from reasonably accessible sources where evidence concerning
use of the mark during the relevant time period on or in connection
with the relevant goods and/or services would normally be found. The
rule indicates that a sufficient, reasonable investigation will depend
on the individual circumstances, but includes a non-exhaustive list of
sources of evidence for a reasonable investigation. These include State
and Federal trademark records, internet websites, records from State
and Federal agencies, litigation records, knowledge of marketplace
activities, and any other reasonably accessible source with information
relevant to whether the mark at issue was used in commerce.
The USPTO considered an alternative approach of providing a more
exhaustive list of the types of evidence that would meet the burden for
these newly created proceedings. However, the USPTO acknowledges that
the types of evidence will vary by industry and the types of goods and/
or services being challenged. Therefore, it is not practical to create
a complete list in the rule that would apply in all situations.
Instead, the USPTO opted to identify a standard in line with the
statute and legislative history, and to include a non-exhaustive list
of efforts and evidence that may meet the standard. This alternative
provides guidance to filers while not limiting them to specific types
of evidence listed in the rule.
Director-initiated proceedings: The TMA authorizes Director-
initiated expungement and reexamination proceedings. In addition to the
requirements in the TMA, the rule provides that the Director may
institute a proceeding that includes additional goods and/or services
identified in the subject registration on the Director's own initiative
and consolidate consideration of the new proceeding with the pending
proceeding. The USPTO considered an alternative approach that involved
not allowing the consolidation of proceedings in this circumstance, but
this option would hinder proper and efficient management of multiple
related proceedings.
Response time periods in new ex parte proceedings: The rule sets a
deadline of three months for responding to a non-final Office action
and for requesting reconsideration of or appealing from a final Office
action issued in a reexamination and/or expungement proceeding, making
the periods the same as the response period the USPTO intends to
implement for Office actions in the examination of applications and
post-registration submissions. The rule also provides an option for a
one-month extension of time to respond to a non-final Office action.
The USPTO considered a number of alternatives to this response deadline
framework. These alternatives included a two-month response period with
an optional one-month extension, a three-month response period for the
initial Office action and a three-month response period for the final
Office action, and different response periods for the initial Office
action and the final Office action.
In weighing these options, the Office considered the fact that,
once an Office action has been received by a registrant, the registrant
will need time to review the content of the Office action, hire counsel
if needed, and conduct fact-finding and evidence gathering in order to
provide a response. The Office also considered the fact that a
traditional six-month response period maximizes the time for the
registrant to engage in these necessary activities but could
potentially result in prolonged review, which is contrary to the
objective to provide a faster and more efficient alternative to
addressing claims of lack of proper use.
The selected three-month response period with an option for a one-
month extension of the period for a non-final Office action balances
the Office's objectives with the registrant's need for time to engage
in the necessary activities to provide a response to the Office action.
Furthermore, the USPTO plans to provide a courtesy notification to the
registrant that a petition has been filed so as to facilitate early
notice of a possible proceeding.
Flexible response periods: The TMA authorizes the USPTO to
establish flexible response periods to respond to Office actions. The
rule sets a period of three months for responding to an Office action
in applications under sections 1 and/or 44 of the Act, but provides an
option for applicants to request a single three-month extension of this
three-month deadline, for a total response time of up to six months.
The same response deadline framework also applies to post-registration
Office actions issued in connection with the examination of
registration maintenance documents. This alternative was selected
because it is supported by the USPTO's data analytics regarding average
response times, is the option with the least burden and lowest costs
for filers, and avoids uncertainty in filing deadlines by providing
consistent deadlines for responses.
The USPTO considered three alternatives to the proposals to
implement flexible response periods. The first alternative was to
maintain six-month response periods for any Office action that contains
a substantive refusal and provide a shorter response period for any
Office action that contained only formal requirements, because
responses for these typically require less time. This alternative was
rejected because it may require some discretion by examining attorneys
to decide which response period applies if, for example, it is not
clear whether the Office action contains a substantive refusal.
Additionally, public feedback indicated that this approach results in
the length of the response period being unknown until the Office action
is received and would require the monitoring of multiple possible
deadlines.
A second alternative considered was to offer shorter response
periods for all Office actions, but to offer an initial response period
of two months, with one-month extensions with a corresponding fee, to
reach the full six months. The fee for extension would be progressively
higher, depending on when the response and extension request were
filed. For example, responses filed in the third, fourth, fifth, or
sixth month would, respectively, have an extension fee of $50, $75,
$125, and $150. An application would be abandoned when a response is
not received within the two-month period or such other extended
deadline as requested and paid for by applicant, not to exceed six
months from the Office action issue date. This alternative added more
complexity to the trademark Office action response process than the
other proposed options and was not adopted.
Finally, the USPTO considered a two-phase examination system. Under
this approach, a USPTO examiner could review application formalities
and issue a formalities Office action with a shortened response period
of two months, extendable in two-month increments to a full six months
upon request and payment of a fee. Once the formalities were addressed,
the application could enter the second phase of the examination,
whereby an
[[Page 64324]]
examiner would issue an Office action containing any substantive
refusals that identifies a response deadline of three months,
extendable for another three months to a total of six months, upon
request and payment of a fee. Due to the significant time and system
changes it would take to implement a phased examination system, the
USPTO decided against pursuing this alternative at this time.
Suspension of proceedings: The rule amends the rules concerning the
suspension of proceedings to align them with current practice and to
clarify that the new ex parte expungement and reexamination proceedings
are among the types of proceedings for which suspension of action by
the Office or the TTAB is authorized.
The alternative was to take no action in amending these rules, but
that option would result in a continued misalignment of the rules and
USPTO practice, and could hinder proper and efficient management of
multiple related proceedings.
Attorney recognition: The rule provides that when a practitioner
has been mistakenly, falsely, or fraudulently designated as a
representative for an applicant, registrant, or party to a proceeding
without the practitioner's prior authorization or knowledge,
recognition of that practitioner shall be ineffective.
The USPTO considered not updating the current rules on attorney
recognition. However, leaving the regulations as they are currently
written would potentially hinder the USPTO's ability to combat
misleading solicitations sent to trademark applicants and registrants
as well as other improper activities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rule has been determined to be Significant for purposes of Executive
Order 12866 (Sept. 30, 1993).
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The USPTO has complied with Executive Order 13563 (Jan. 18,
2011). Specifically, the USPTO 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) provided the public with a meaningful opportunity to
participate in the regulatory process, including soliciting the views
of those likely affected prior to issuing an NPRM, and provided online
access to the rulemaking docket; (7) attempted to promote coordination,
simplification, and harmonization across government agencies and
identified goals designed to promote innovation; (8) considered
approaches that reduce burdens and maintain flexibility and freedom of
choice for the public; and (9) ensured the objectivity of scientific
and technological information and processes, to the extent applicable.
E. 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).
F. 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).
G. 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).
H. 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).
I. 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).
J. 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).
K. 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.), 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
rule are not expected to result in an annual effect on the economy of
$100 million 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 rule is not expected to result in a
``major rule'' as defined in 5 U.S.C. 804(2).
L. Unfunded Mandates Reform Act of 1995: The changes set forth in
this rulemaking 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 (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 (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.
M. National Environmental Policy Act of 1969: 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.
N. National Technology Transfer and Advancement Act of 1995: 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.
O. Paperwork Reduction Act of 1995: In accordance with section
3507(d) of the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.), some of the paperwork and other information collection burdens
discussed in this rulemaking have been approved under Office of
Management and Budget (OMB) Control Numbers 0651-0040 (Trademark Trial
and Appeal Board (TTAB) Actions), 0651-0050 (Response to Office Action
and Voluntary Amendment Forms), and 0651-0055 (Trademark Post
Registration). This rulemaking does not impose additional costs or
revisions to the burden estimates for the previously mentioned existing
information collections.
The new reporting requirements and fees associated with this
rulemaking, which were filed under OMB Control Number 0651-0086
(Changes To Implement Provisions of the Trademark Modernization Act of
2020), have been
[[Page 64325]]
submitted to OMB for approval. For reference, the following is a
summary of that information collection's data:
Estimated Annual Number of Respondents: 14,931.
Estimated Time per Response: The USPTO estimates that it takes the
public approximately between .25 hours (15 minutes) and 4.5 hours, to
complete the information in this information collection. This includes
the time to gather the necessary information, prepare the appropriate
documents, and submit the completed responses to the USPTO.
Estimated Total Annual Burden Hours: 36,908.
Estimated Total Annual Non-Hour Cost Burden: $2,421,403.
Affected Public: Private sector; individuals or households.
Frequency: On occasion.
Respondent's Obligation: Required to obtain or retain benefits.
Approved information collection requests may be viewed at
<a href="http://www.reginfo.gov/public/do/PRAMain">www.reginfo.gov/public/do/PRAMain</a>. If approval is denied, the USPTO
will publish a document in the Federal Register providing notice of
what action(s) the USPTO plans to take.
Notwithstanding any other provision of law, no person is required
to respond to, nor shall any 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 has a valid OMB control number.
P. E-Government Act Compliance: The USPTO is committed to
compliance with the E-Government Act to promote the use of the internet
and other information technologies to provide increased opportunities
for citizen access to Government information and services, and for
other purposes. For information pertinent to E-Government Act
compliance related to this rule, please contact Kimberly Hardy, USPTO
Information Collection Officer, via email at
<a href="/cdn-cgi/l/email-protection#2c65424a435e414d58454342026f434040494f584543426c595f5c5843024b435a"><span class="__cf_email__" data-cfemail="eba2858d8499868a9f828485c5a88487878e889f828485ab9e989b9f84c58c849d">[email protected]</span></a> or via telephone at 571-270-0968.
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 USPTO
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 is revised to read as follows:
Authority: 15 U.S.C. 1113, 1123; 35 U.S.C. 2; sec. 10, Pub. L.
112-29, 125 Stat. 284; Pub. L. 116-260, 134 Stat. 1182, unless
otherwise noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat.
434; 15 U.S.C. 1066, 1067.
0
2. Amend Sec. 2.6 by adding paragraphs (a)(26) and (27) to read as
follows:
Sec. 2.6 Trademark fees.
(a) * * *
(26) Petition for expungement or reexamination. For filing a
petition for expungement or reexamination under Sec. 2.91, per class--
$400.00.
(27) Extension of time for filing a response to a non-final Office
action under Sec. 2.93(b)(1). For filing a request for extension of
time for filing a response to a non-final Office action under Sec.
2.93(b)(1) via TEAS--$125.00.
* * * * *
0
3. Effective December 1, 2022, amend Sec. 2.6 by adding paragraph
(a)(28) to read as follows:
(a) * * *
(28) Extension of time for filing a response to an Office action
under Sec. 2.62(a)(2), Sec. 2.163(c), Sec. 2.165(c), Sec. 2.176,
Sec. 2.184(b)(2), or Sec. 2.186(c). (i) For filing a request for
extension of time for filing a response to an Office action under Sec.
2.62(a)(2), Sec. 2.163(c), Sec. 2.165(c), Sec. 2.176, Sec.
2.184(b)(2), or Sec. 2.186(c) on paper--$225.00.
(ii) For filing a request for extension of time for filing a
response to an Office action under Sec. 2.62(a)(2), Sec. 2.163(c),
Sec. 2.165(c), Sec. 2.176, Sec. 2.184(b)(2), or Sec. 2.186(c) via
TEAS--$125.00.
* * * * *
0
4. Amend Sec. 2.11 by revising paragraphs (d) and (f) to read as
follows:
Sec. 2.11 Requirement for representation.
* * * * *
(d) Failure to respond to requirements issued pursuant to
paragraphs (a) through (c) of this section is governed by Sec. Sec.
2.65, 2.93, and 2.163 and Sec. 7.39 of this chapter, as appropriate.
* * * * *
(f) Notwithstanding Sec. Sec. 2.63(b)(2)(ii) and 2.93(c)(1), if an
Office action maintains only requirements under paragraphs (a), (b),
and/or (c) of this section, or only requirements under paragraphs (a),
(b), and/or (c) of this section and the requirement for a processing
fee under Sec. 2.22(c), the requirements may be reviewed only by
filing a petition to the Director under Sec. 2.146.
0
5. Amend Sec. 2.17 by adding paragraph (b)(4) to read as follows:
Sec. 2.17 Recognition for representation.
* * * * *
(b) * * *
(4) False, fraudulent, or mistaken designation. Regardless of
paragraph (b)(1) of this section, where a practitioner has been
falsely, fraudulently, or mistakenly designated as a representative for
an applicant, registrant, or party to a proceeding without the
practitioner's prior authorization or knowledge, such a designation
shall have no effect, and the practitioner is not recognized.
* * * * *
0
6. Amend Sec. 2.18 by revising paragraphs (a)(1) and (2) to read as
follows:
Sec. 2.18 Correspondence, with whom held.
(a) * * *
(1) If an attorney is not recognized as a representative pursuant
to Sec. 2.17(b)(1), 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,
except as set forth in paragraphs (a)(2)(i) through (iv) of this
section. A request to change the correspondence address does not revoke
a power of attorney. The Office will not correspond with another
attorney from a different firm and, except for service of a
cancellation petition and notices of institution of expungement or
reexamination proceedings, will not correspond directly with the
applicant, registrant, or a party to a proceeding, 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;
(iii) Recognition of the attorney has ended pursuant to Sec.
2.17(g); or
(iv) The attorney has been falsely, fraudulently, or mistakenly
designated under Sec. 2.17(b)(4).
* * * * *
0
7. Amend Sec. 2.19 by adding paragraph (c) to read as follows:
Sec. 2.19 Revocation or withdrawal of attorney.
* * * * *
(c) Recognition ineffective. If recognition is not effective under
Sec. 2.17(b)(4), then revocation under paragraph (a) of this section
or
[[Page 64326]]
withdrawal under paragraph (b) of this section is not required.
0
8. Amend Sec. 2.23 by revising paragraphs (c) and (d) to read as
follows:
Sec. 2.23 Requirement to correspond electronically with the Office
and duty to monitor status.
* * * * *
(c) Except for submissions under Sec. Sec. 2.91, 2.93, and 2.149,
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;
(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; and
(3) After notice of the institution of an expungement or
reexamination proceeding under Sec. 2.92, at least every three months
until the registrant receives a notice of termination under Sec. 2.94.
Sec. 2.61 [Amended]
0
9. Amend Sec. 2.61 by removing paragraph (c).
0
10. Effective December 1, 2022, amend Sec. 2.62 by revising paragraphs
(a) and (c) to read as follows:
Sec. 2.62 Procedure for submitting response.
(a) Deadline. Each Office action shall set forth the deadline for
response.
(1) Response periods. Unless the applicant is notified otherwise in
an Office action, the response periods for an Office action are as
follows:
(i) Three months from the issue date, for an Office action in an
application under section 1 and/o
[…truncated; see source link]Indexed from Federal Register on November 17, 2021.
This is legal information, not legal advice. Laws vary by jurisdiction and change frequently. Always verify current law with official sources and consult a licensed attorney in your jurisdiction for advice on your specific situation.