Withdrawal of Changes to Post Registration Response Deadlines

AGENCY:

United States Patent and Trademark Office, U.S. Department of Commerce.

ACTION:

Notice of proposed rulemaking.

SUMMARY:

On November 17, 2021, the United States Patent and Trademark Office (USPTO) published in the Federal Register a final rule amending its regulations to implement provisions of the Trademark Modernization Act of 2020 (TMA) concerning new response periods and extensions in the examination of post-registration filings. After publication of that rule, the USPTO delayed the effective date of a portion of the rule including through another final rule published on September 12, 2023. This proposed rule would withdraw these provisions that are currently delayed.

DATES:

The USPTO solicits comments from the public on this proposed rule. Written comments must be received on or before August 19, 2024, to ensure consideration.

ADDRESSES:

Written comments on the proposed withdrawal of changes to the post registration response deadlines must be submitted through the Federal eRulemaking Portal at https://www.regulations.gov.

To submit comments via the portal, commenters should go to https://www.regulations.gov/docket/PTO-T-2024-0016 or enter docket number PTO-T-2024-0016 on the https://www.regulations.gov homepage and select the “Search” button. The site will provide search results listing all documents associated with this docket. Commenters can find a reference to this document and select the “Comment” button, complete the required fields, and enter or attach their comments. Attachments to electronic comments will be accepted in Adobe portable document format (PDF) or Microsoft Word format. Because comments will be made available for public inspection, information that the submitter does not desire to make public, such as an address or phone number, should not be included in the comments.

Visit the Federal eRulemaking Portal for additional instructions on providing comments via the portal. If electronic submission of comments is not possible, please contact the USPTO using the contact information below in the FOR FURTHER INFORMATION CONTACT section of this document for special instructions.

FOR FURTHER INFORMATION CONTACT:

Catherine Cain, Office of the Deputy Commissioner for Trademark Examination Policy, at 571-272-8946 or TMFRNotices@uspto.gov.

SUPPLEMENTARY INFORMATION:

On November 17, 2021, the USPTO published in the Federal Register a final rule amending the Rules of Practice in Trademark Cases to implement provisions of the TMA. See Changes To Implement Provisions of the Trademark Modernization Act of 2020 (86 FR 64300). That final rule was published under Regulatory Identification Number (RIN) 0651-AD55. One of the provisions implemented in that final rule was an amendment to section 12(b) of the Trademark Act, 15 U.S.C. 1062(b), that allowed the USPTO to set response periods by regulation for a time period between 60 days and six months, with the option for extensions to a full six-month period, with the goal of shortening the overall time it takes to obtain a registration. The USPTO set a period of three months to respond to pre-registration office actions, instead of the current six-month period, and provided the option to request a single three-month extension of the deadline, subject to the payment of a fee. Although post-registration actions are not subject to the response provisions in section 12 of the Act, for convenience and predictability, the USPTO applied the same three-month response period and single three-month extension to office actions issued in connection with post-registration maintenance and renewal filings. The final rule stated that these changes would go into effect on December 1, 2022.

On October 13, 2022, the USPTO published in the Federal Register a final rule under the same RIN delaying the effective date for the three-month response period and extensions in the examination of post-registration filings from December 1, 2022, until October 7, 2023. See Changes To Implement Provisions of the Trademark Modernization Act of 2020; Delay of Effective Date and Correction (87 FR 62032).

On September 12, 2023, the USPTO published in the Federal Register a final rule further delaying the provisions that address post-registration responses and extensions until the spring or early summer of 2024. See Changes To Implement Provisions of the Trademark Modernization Act of 2020; Delay of Effective Date (88 FR 62463). That final rule was published under RIN 0651-AD71.

In both cases, implementation of the changes to the response deadlines for post-registration office actions was postponed to allow the USPTO additional time to update its IT systems for changes and to provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the new provisions before they became effective.

In this NPRM, the USPTO is proposing to withdraw implementation of the post-registration provisions that are currently delayed. After further consideration in light of data collected by the USPTO and current USPTO post-registration practice, the USPTO believes that it is not necessary to implement the provisions. The actual deadline to respond to an office action can be later than the current six-month response period if the statutory deadline has not passed and the USPTO waits until the end of the grace period to cancel a registration where the owner failed to timely respond or provided an unacceptable response. Therefore, there would be no appreciable reduction in the time it takes to gain approval to maintain a registration were the USPTO to implement the shortened response period. However, there would be an appreciable increase in the potential burden to stakeholders of adding new deadlines to track what in many cases may not be the applicable deadline.

When considering implementation of the delayed rule, the USPTO evaluated data from 2019 through 2022, which showed that two thirds of owners file their responses within three months of issuance of an office action. The data also shows that most filers will not be subject to the three-month response period. Specifically, nearly half of the owners who file maintenance documents in the one-year statutory period for filing, and about three quarters of those who file in the grace period, will not be subject to the three-month response period if pendency targets for the USPTO to review the maintenance documents are met. That is, owners will have more than three months to reply to an office action because the end of the one-year period for filing, or the grace period, will be later than the three-month response period. About one third of those filers will have more than six months to file a response. The same data shows that two thirds of owners file their responses within three months of issuance of an office action. More importantly, any registration where the owner failed to timely respond or provided an unacceptable response to a post-registration office action is not canceled until the end of the grace period. The USPTO would only see the impact of a shortened response period for those filing towards the end of the grace period, which based on the data collected by the USPTO is not a large number of filings.

Since implementation of the Trademark Law Treaty Implementation Act, Public Law 105-330, 112 Stat. 3064 (15 U.S.C. 1051), in 1999, the response period for post-registration office actions has been the later of six months or the end of the one-year period for filing the relevant maintenance document. If the maintenance document is filed in the six-month grace period, the response period is six months. If no response is received within that time, the registration will be canceled, unless time remains in the six-month grace period under Trademark Act (Act) section 8(a)(3), 15 U.S.C. 1058(a)(3).

Under the delayed provisions, the response period becomes the later of: (1) three months, or (2) the end of the one-year period, if filed in the one-year period for filing a maintenance document, or (3) the later of three months or the end of the grace period if filed in the grace period. The three-month period may be extended by three months for a total of six months. If the shortened post-registration response periods are implemented, trademark owners will have to keep track of both the three-month office-action response period and the end of the statutory period in which they file, which may create an additional burden on them. They will have to decide whether filing an extension of time to respond to an outstanding office action is necessary or makes sense. This may result in the unintentional cancellation of their registration if they do not calculate the deadline correctly. Therefore, any potential benefits from the shortened response periods are minimal given the small number of filings for which the three-month response period would be effective and compared to the potential burden of creating new deadlines to track that in many cases may not be the applicable deadline.

The USPTO proposes to withdraw the amendments to 37 CFR 2.163, 2.165, 2.176, 2.184, 2.186, 7.6, 7.39, and 7.40 (amendatory instructions 29, 30, 31, 33, 34, 37, 38, and 39, respectively), which published at 86 FR 64300 on November 17, 2021, were delayed at 87 FR 62032 on October 13, 2022, and further delayed at 88 FR 62463 on September 12, 2023; and to withdraw the amendment to 37 CFR 2.6 (amendatory instruction 2), which published at 87 FR 62032 on October 13, 2022, and was indefinitely delayed at 88 FR 62463 on September 12, 2023.

Rulemaking Requirements

A. Administrative Procedure Act: The changes proposed by this rulemaking involve rules of agency practice and procedure, and/or interpretive rules, and do not require notice-and-comment rulemaking. See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) (explaining that interpretive rules “advise the public of the agency's construction of the statutes and rules which it administers” and do not require notice and comment when issued or amended); 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”); and JEM Broadcasting Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (explaining that rules are not legislative because they do not “foreclose effective opportunity to make one's case on the merits”).

Nevertheless, the USPTO is publishing this proposed rule for comment to seek the benefit of the public's views on the office's proposed regulatory changes.

B. Regulatory Flexibility Act: For the reasons set forth herein, the Senior Counsel for Regulatory and Legislative Affairs, Office of General Law, of the USPTO has certified to the Chief Counsel for Advocacy of the Small Business Administration that changes in this proposed rule will not have a significant economic impact on a substantial number of small entities. See 5 U.S.C. 605(b).

This rulemaking would withdraw the post-registration response periods provisions published in the November 17, 2021, final rule implementing the Trademark Modernization Act. See Changes To Implement Provisions of the Trademark Modernization Act of 2020 (86 FR 64300). These regulations had a delayed effective date of December 1, 2022. That effective date was subsequently further delayed, and ultimately delayed indefinitely, and thus the post-registration response periods provisions have never come into effect, and the USPTO has never implemented them.

The USPTO does not collect or maintain statistics on small versus large-entity registrants, and this information would be required in order to determine the number of small entities that would be affected by the proposed rule. However, the USPTO expects that there will be no impact to all entities, including small entities, affected by this rulemaking.

In this rulemaking, the USPTO is proposing to withdraw implementation of the post-registration provisions that are currently delayed. After further consideration in light of data collected by the USPTO and current USPTO post-registration practice, the USPTO believes that it is not necessary to implement the provisions. The actual deadline to respond to an office action can be later than the current six-month response period if the statutory deadline has not passed and the USPTO waits until the end of the grace period to cancel a registration where the owner failed to timely respond or provided an unacceptable response. Therefore, there would be no appreciable reduction in the time it takes to gain approval to maintain a registration were the USPTO to implement the shortened response period. However, there would be an appreciable increase in the potential burden to stakeholders of adding new deadlines to track what in many cases may not be the applicable deadline.

When considering implementation of the delayed rule, the USPTO evaluated data from 2019 through 2022, which showed that two thirds of owners file their responses within three months of issuance of an office action. The data also shows that most filers will not be subject to the three-month response period. Specifically, nearly half of the owners who file maintenance documents in the one-year statutory period for filing, and about three quarters of those who file in the grace period, will not be subject to the three-month response period if pendency targets for the USPTO to review the maintenance documents are met. That is, owners will have more than three months to reply to an office action because the end of the one-year period for filing, or the grace period, will be later than the three-month response period. About one third of those filers will have more than six months to file a response. The same data shows that two thirds of owners file their responses within three months of issuance of an office action. More importantly, any registration where the owner failed to timely respond or provided an unacceptable response to a post-registration office action is not canceled until the end of the grace period. The USPTO would only see the impact of a shortened response period for those filing towards the end of the grace period, which based on the data collected by the USPTO is not a large number of filings. Because the post-registration response periods were never implemented, the withdrawal of these regulations would have no impact on owners.

For the foregoing reasons, the changes in this proposed rule will not have a significant economic impact on a substantial number of small entities.

C. Executive Order 12866 (Regulatory Planning and Review): This rule has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993), as amended by Executive Order 14094 (Apr. 6, 2023).

D. Executive Order 13563 (Improving Regulation and Regulatory Review): The USPTO has complied with Executive Order 13563 (Jan. 18, 2011). Specifically, and as discussed above, 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 pertains strictly to Federal agency procedures and 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.), prior to issuing any final rule, the USPTO will submit a report containing the final rule and other required information to the United States Senate, the United States House of Representatives, and the Comptroller General of the Government Accountability Office. The changes in this proposed 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 proposed 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: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.) requires that the USPTO consider the impact of paperwork and other information collection burdens imposed on the public. This proposed rule involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). The collection of information involved in this proposed rule has been reviewed and previously approved by OMB under OMB Control Numbers 0651-0050 (Response to Office Action and Voluntary Amendment Forms) and 0651-0055 (Post Registration (Trademark Processing).

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 displays a currently 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.