Partial Replacement of an Earlier National Registration or Registrations by an International Registration

<RULE> DEPARTMENT OF COMMERCE <SUBAGY>Patent and Trademark Office</SUBAGY> <CFR>37 CFR Part 7</CFR> <DEPDOC>[Docket No. PTO-T-2025-0002]</DEPDOC> <RIN>RIN 0651-AD82</RIN> <SUBJECT>Partial Replacement of an Earlier National Registration or Registrations by an International Registration</SUBJECT> <HD SOURCE="HED">AGENCY:</HD> United States Patent and Trademark Office, Department of Commerce. <HD SOURCE="HED">ACTION:</HD> Final rule. <SUM> <HD SOURCE="HED">SUMMARY:</HD> The United States Patent and Trademark Office (USPTO) issues this final rule to implement an amendment to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) adopted by the Madrid Union Assembly that went into effect on February 1, 2021, with a delayed implementation date of February 1, 2025. This final rule modifies U.S. trademark regulations addressing the replacement of a national registration or registrations by an international registration to allow for submission of partial replacement requests, in alignment with the Madrid Protocol, and to require a listing of the goods and/or services for which replacement is requested. </SUM> <EFFDATE> <HD SOURCE="HED">DATES:</HD> This rule is effective on July 2, 2025. </EFFDATE> <FURINF> <HD SOURCE="HED">FOR FURTHER INFORMATION CONTACT:</HD> Cristiana Schwab, Office of the Deputy Commissioner for Trademark Examination Policy, at 571-272-3514 or <E T="03">TMFRNotices@uspto.gov.</E> </FURINF> <SUPLINF> <HD SOURCE="HED">SUPPLEMENTARY INFORMATION:</HD> The USPTO is revising 37 CFR 7.28 to incorporate an amendment to the Madrid Protocol for international trademark registration. The Madrid Protocol is an international treaty that allows a trademark owner to seek registration of its trademark in any of the member countries by filing a single international application. The International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, administers the international registration system. The Madrid Protocol Implementation Act of 2002 amended the U.S. Trademark Act to provide that: (1) the owner of a U.S. application or registration may seek protection of its mark in any of the member countries of the Madrid Protocol by submitting a single international application through the USPTO and (2) the holder of an international registration may request an extension of protection of the international registration to the United States. The Madrid Protocol came into effect in the United States on November 2, 2003, and is implemented under 15 U.S.C. 1141 <E T="03">et seq.</E> and 37 CFR parts 2 and 7. Each member country to the Madrid Protocol, including the United States, is represented at the Madrid Union Assembly, which meets annually at WIPO to vote on proposed changes to the Regulations under the Madrid Protocol. Each member country is obligated to implement any changes to the Regulations once adopted. At its fifty-third (23rd ordinary) session, the Madrid Union Assembly adopted an amendment to Rule 21(3)(d) of the Regulations under the Madrid Protocol that requires member countries to provide for partial replacement of an earlier national registration(s) in addition to requests for full replacement. This amendment went into effect on February 1, 2021. However, at its fifty-fifth (24th ordinary) session, the Madrid Union Assembly adopted a new provision to the Regulations, paragraph (7) of Rule 40, that amended the compliance date for members to February 1, 2025. This final rule incorporates the amendment adopted under the Madrid Protocol to provide partial replacement of earlier national registrations. To implement this amendment, this final rule revises the procedures at 37 CFR 7.28 to require the submission of additional information in requests to note replacement of a U.S. registration with an extension of protection, which will enable the USPTO to process requests for partial replacement of earlier national registrations. Specifically, a request to note replacement must specify the goods and/or services for which replacement is sought. The requirement to specify the goods and/or services for which replacement is requested applies to all requests to note replacement, both full and partial requests. Finally, the USPTO revises § 7.28 to clarify that for a pending request for extension of protection that, once registered, will meet the requirements of paragraph (a), the holder may file a request to note replacement of the U.S. registration with the extension of protection. However, requests to note replacement filed in reference to a pending request for extension of protection will not be processed until the extension of protection is registered. This action ensures that the USPTO is in compliance with the Madrid Protocol. It also ensures that all replacements of earlier national registrations, not just partial replacements, clearly identify those goods and/or services that are being replaced, which will promote transparency in the trademark system. <HD SOURCE="HD1">Discussion of Regulatory Changes</HD> The USPTO amends § 7.28 to revise paragraph (a)(2) to replace the wording “are also listed in” with “that are identified for replacement are covered by.” The USPTO revises paragraph (b) to include language clarifying addressing pending requests for extension of protection. The USPTO also redesignates paragraph (c) as paragraph (d) and adds a new paragraph (c) to provide a stand-alone paragraph that sets forth the requirements for requests to note replacement. This paragraph includes the new requirement that requesters must specify the goods and/or services for which replacement is requested, which is set forth in paragraph (c)(3). <HD SOURCE="HD1">Rulemaking Requirements</HD> <E T="03">A. Administrative Procedure Act:</E> The changes in this rulemaking involve rules of agency practice and procedure and/or interpretive rules and do not require notice-and-comment rulemaking. See <E T="03">Perez</E> v. <E T="03">Mortg. Bankers Ass'n,</E> 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); <E T="03">In re Chestek PLLC,</E> 92 F.4th 1105, 1110 (Fed. Cir. 2024) (noting that rule changes that “do[ ] not alter the substantive standards by which the USPTO evaluates trademark applications” are procedural in nature and thus “exempted from notice-and-comment rulemaking.”); <E T="03">Cooper Techs. Co.</E> v. <E T="03">Dudas,</E> 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (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 <E T="03">JEM Broadcasting Co.</E> v. <E T="03">F.C.C.,</E> 22 F.3d 320, 326 (D.C. Cir. 1994) (“[T]he `critical feature' of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that it covers agency actions that do not themselves alter the rights or interests of parties, although [they] may alter the manner in which the parties present themselves or their viewpoints to the agency.' ” (quoting <E T="03">Batterton</E> v. <E T="03">Marshall,</E> 648 F.2d 694, 707 (D.C. Cir. 1980))). In addition, the Office finds good cause pursuant to the authority at 5 U.S.C. 553(b)(B) to adopt the changes in this final rule without prior notice and an opportunity for public comment, as such procedures would be unnecessary, impracticable, and contrary to the public interest. As discussed above, the changes in this rulemaking involve implementation of provisions that were adopted by the United States as a member of the Madrid Protocol. The revisions made in this final rule provide the procedures for requests for partial replacement of earlier national registrations, which were adopted by member states to the Madrid Protocol. As a member of the Madrid Protocol, the United States is obligated to implement these changes. In addition, this final rule expands the new requirement to specify the goods and/or services for which replacement is requested to all requests to note replacement, both full and partial. This final rule will assist the United States in complying with the Madrid Protocol and avoiding any confusion that could result if these provisions are not implemented as close to the effective date as possible. Furthermore, the expansion of the requirement to specify the goods and/or services for which replacement is requested to all requests to note replacement will ensure that all replacements of earlier national registrations are clearly identified. This change promotes transparency in the trademark system. For the reasons above, the agency finds good cause to conclude that notice and an opportunity for public comment are impracticable, unnecessary, and contrary to the public interest. <E T="03">B. Regulatory Flexibility Act:</E> As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 or any other law, neither a Regulatory Flexibility Act analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 <E T="03">et seq.</E> ) is required. See 5 U.S.C. 603. <E T="03">C. Executive Order 12866 (Regulatory Planning and Review):</E> This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993). <E T="03">D. Executive Order 13563 (Improving Regulation and Regulatory Review):</E> 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 ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━ Preview showing 10k of 19k characters. Full document text is stored and available for version comparison. ━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━━