Withdrawal of Changes to Post Registration Response Deadlines

DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Parts 2 and 7</CFR> <DEPDOC>[Docket No. PTO-T-2024-0016]</DEPDOC> <RIN>RIN 0651-AD81</RIN> <SUBJECT>Withdrawal of Changes to Post Registration Response Deadlines</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, U.S. Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Notice of proposed rulemaking. <SUM> <HD SOURCE="HED">SUMMARY:</HD> On November 17, 2021, the United States Patent and Trademark Office (USPTO) published in the <E T="04">Federal Register</E> 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. </SUM> <DATES> <HD SOURCE="HED">DATES:</HD> 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. </DATES> <HD SOURCE="HED">ADDRESSES:</HD> Written comments on the proposed withdrawal of changes to the post registration response deadlines must be submitted through the Federal eRulemaking Portal at <E T="03">https://www.regulations.gov.</E> To submit comments via the portal, commenters should go to <E T="03">https://www.regulations.gov/docket/PTO-T-2024-0016</E> or enter docket number PTO-T-2024-0016 on the <E T="03">https://www.regulations.gov</E> 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 <E T="02">FOR FURTHER INFORMATION CONTACT</E> section of this document for special instructions. <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Catherine Cain, Office of the Deputy Commissioner for Trademark Examination Policy, at 571-272-8946 or <E T="03">TMFRNotices@uspto.gov</E> . </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> On November 17, 2021, the USPTO published in the <E T="04">Federal Register</E> 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 <E T="04">Federal Register</E> 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 <E T="04">Federal Register</E> 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 ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 23k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━