WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO 
IP/N/1/USA/T/5 
27 February 2012 
 (12-1093) 
Council for Trade-Related Aspects  
of Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
  
NOTIFICATION OF LAWS AND REGULATIONS  
UNDER ARTICLE 63.2 OF THE AGREEMENT 
 
UNITED STATES 
  The present text
1 reproduces the text of the U.S. Trademark Technical and Conforming 
Amendments, as notified by the Delegation of  the United States on 15 February 2012 under 
Article 63.2 of the Agreement (see document IP/N/1/USA/4). 
 
Conseil des aspects des droits de propriété 
intellectuelle qui touchent au commerce  
 
 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À LA 
PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
ÉTATS-UNIS 
  Le présent document contient le texte
1 des Modifications techniques et d'harmonisation de la 
Loi sur les marques, notifié par l es États-Unis le 15 février 2012 au titre de l'article 63:2 de l'Accord 
(voir le document IP/N/1/USA/4). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio  
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA PROPIEDAD 
INTELECTUAL NOTIFICADOS EN VIRTUD DEL PÁRRAFO 2 
DEL ARTÍCULO 63 DEL ACUERDO 
 
ESTADOS UNIDOS 
 
 En el presente documento se reproduce el texto
1 de las Modificaciones técnicas y de 
armonización en materia de marcas de fábrica o de comercio de los Estados Unidos, notificado por la 
delegación de los Estados Unidos el 15 de febrero de 2012 en virtud del párrafo 2 del artículo 63 del 
Acuerdo (véase el documento IP/N/1/USA/4). 
 
 
                                                      
1 In English only./En anglais seulement./En inglés solamente.   
   IP/N/1/USA/T/5 
 Page 3 
 
 
  DEPARTMENT OF COMMERCE 
 Patent and Trademark Office  37 CFR Parts 2 and 7 
 
[Docket No. PTO–T–2010–0014]  RIN 0651–AC39 
 
Trademark Technical and Conforming Amendments 
 
AGENCY : United States Patent and Trademark Office, Commerce. 
 ACTION : Final rule. 
__________________________________________________________________________________ 
 SUMMARY : The United States Patent and Trademark Office ("USPTO") is adopting as a final rule, 
with minor changes, an interim final rule amendi ng the Rules of Practice in Trademark Cases and the 
Rules of Practice in Filings Pursuant to the Prot ocol Relating to the Madrid Agreement Concerning 
the International Registration of Marks ("Madrid Rules") to implement the Trademark Technical and 
Conforming Amendment Act of 2010. The in terim final rule was published in the Federal Register  
on June 24, 2010. This final rule makes minor cha nges to the interim final rule to incorporate 
additional statutory language being implemented.   DATES : This rule is effective on November 8, 2011. 
 
FOR FURTHER INFORMATION CONTACT: 
 
Cynthia C. Lynch, Office of the Deputy Commissioner for Trademark Examination Policy, by telephone at (571) 272–8742.  SUPPLEMENTARY INFORMATION:  Background 
 
On June 24, 2010, the USPTO published an inte rim final rule at 75 FR 35973 amending the 
Rules of Practice in Trademark Cases and the Madr id Rules to implement the Trademark Technical 
and Conforming Amendment Act of 2010 ("TTCAA") , Public Law 111–146, 124 Stat. 66 (2010). 
This legislation and the implementing rule ha rmonized the framework for submitting trademark 
registration maintenance filings to the USPTO by permitting holders of inte rnational registrations 
with an extension of protection to the United St ates under the Madrid Protocol ("Madrid Protocol 
registrants") to file Affidavits or Declarations of  Use or Excusable Nonuse at intervals identical to 
those for nationally issued registrations. In addition,  all trademark owners may now cure deficiencies 
in their maintenance filings outside of the stat utory filing period upon payment of a deficiency 
surcharge, specifically including when the affidavit or declaration was not filed in the name of the 
owner of the registration.  
 
The interim final rule provided a 60-day co mment period that ended August 23, 2010. No 
comments were received. For the reasons given in the interim final rule, the USPTO is adopting the 
interim final rule amending 37 CFR parts 2 a nd 7 as a final rule, with minor changes. IP/N/1/USA/T/5 
Page 4  
 
  The rule is changed slightly for purposes of clarification. Specifically, 37 CFR 2.163(a), 
2.164(a), and 7.39(c) are amended to reflect that deficiencies may be corrected after notification from the USPTO. These revisions reflect the amendments to Sections 8 and 71 of the Lanham Act, 
15 U.S.C. 1058 and 1141k, providing that deficiencies may be corrected after notification of the deficiency. 
 
Rule Making Considerations 
 
This document adopts as a final rule, with minor procedural changes, the interim final rule 
that is already in effect. The changes from the inte rim rule contained in this final rule constitute 
interpretative rules or rules of agency practice a nd procedure and accordingly, are not subject to the 
requirements for prior notice and comment. See 5 U.S.C. 553(b)(3)(A). The rule changes relate solely 
to the procedures for maintaining a Federal trad emark registration, and merely implement the 
TTCAA, so that the Rules of Practice in Trademark Cases and the Madrid Rules are consistent with 
the statutory revisions. Thus, prior notice and an opportunity for public comment are not required 
pursuant to 5 U.S.C. 553(b)(A) (or any other law). See Cooper Techs. Co. v. Dudas , 536 F.3d 1330, 
1336–37, 87 USPQ2d 1705, 1710 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and co mment rule making for " 'interpretative rules, 
general statements of policy, or rules of agency  organization, procedure, or practice.' " (quoting 
5 U.S.C. 553(b)(A)), Bachow Communications Inc. v. FCC , 237 F.3d 683, 690 (DC Cir. 2001) (rules 
governing an application process are "rules of agency  organization, procedure, or practice" and are 
exempt from the Administrative Procedure Act's notice and comment requirement); see also Merck & 
Co., Inc. v. Kessler , 80 F.3d 1543, 1549–50, 38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (the rules of 
practice promulgated under the authority of former 35  U.S.C. 6(a) (now in 35 U.S.C. 2(b)(2)) are not 
substantive rules (to which the notice and comment requirements of the APA apply)), and Fressola v. 
Manbeck , 36 USPQ2d 1211, 1215 (D.D.C. 1995) ("[i]t is extremely doubtful whether any of the rules 
formulated to govern patent or trademark practice are other than 'interpretive rules, general statements 
of policy, * * * procedure, or practice.' ") (quo ting C.W. Ooms, The United States Patent Office and 
the Administrative Procedure Act, 38 Trademark Rep. 149, 153 (1948)).  
Rule Making Requirements 
 
Executive Order 13132 : This rule making does not contain policies with federalism 
implications sufficient to warrant preparati on of a Federalism Assessment under Executive 
Order 13132 (Aug. 4, 1999).  
 
Executive Order 12866 : This rule making has been determined to be not significant for 
purposes of Executive Order 12866 (Sept. 30, 1993). 
 
Executive Order 13563  (Improving Regulation and Regulatory Review): The USPTO has 
complied with Executive Order 13563. Specifically, the USPTO has, to the extent feasible and 
applicable: (1) Made a reasoned de termination that the benefits justify the costs of the rule; (2) 
tailored the rule to impose the least burden on so ciety consistent with obtaining the regulatory 
objectives; (3) selected a regulatory approach that maximizes net benefits; (4) specified performance 
objectives; (5) identified and assessed available a lternatives; (6) involved the public in an open 
exchange of information and persp ectives among experts in relevant di sciplines, affected stakeholders 
in the private sector and the public as a whole, and provided online access to the rule making docket; 
(7) attempted to promote coordination, simplifi cation 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 fo r the public; and (9) ensured the objectivity of 
scientific and technological information and processes. 
  IP/N/1/USA/T/5 
 Page 5 
 
 
  Regulatory Flexibility Act : As prior notice and an opportunity for public comment are not 
required pursuant to 5 U.S.C. 553 (or any other law), neither a regulatory flexibility analysis nor a 
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq .) is required for this final rule. 
See 5 U.S.C. 603. 
 
Paperwork Reduction Act:  This rule involves information collection requirements which are 
subject to review by the Office of Manageme nt and Budget (OMB) under the Paperwork Reduction 
Act of 1995 (44 U.S.C. 3501 et seq .). The collection of information involved in this rule has been 
reviewed and previously approved by OMB under control number 0651–0051. Changes in this rule 
would not affect the information collection require ments associated with the information collection 
under OMB control number 0651–0051. 
 Notwithstanding any other provision of law, no person is required to respond to nor shall a 
person be subject to a penalty for failure to comply  with a collection of information subject to the 
requirements of the Paperwork Reduction Act unl ess that collection of information displays a 
currently valid OMB control number.  
 
Unfunded Mandates : The Unfunded Mandates Reform Act, at 2 U.S.C. 1532, requires that 
agencies prepare an assessment of anticipated costs and benefits before issuing any rule that may 
result in expenditure by State, local, and tribal govern ments, in the aggregate, or by the private sector, 
of $100 million or more (adjusted a nnually for inflation) in any give n year. This rule would have no 
such effect on State, local, and trib al governments or the private sector.  
 
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. However, th is action is not a major rule as defined by 
5 U.S.C. 804(2). 
 
List of Subjects 
 
37 CFR Part 2  
Administrative practice and procedure, Trademarks. 
 
37 CFR Part 7 
 
Administrative practice and procedure, Trademarks, International registration.  Accordingly, the interim final rule amending 37 CFR parts 2 and 7, which was published at 
75 FR 35973 on June 24, 2010, is adopted as a final rule with the following changes: 
 
PART 2—RULES OF PRACTICE IN TRADEMARK CASES 
 
■ 1. The authority citation for 37 CFR Part 2 continues to read as follows:  
 
Authority : 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted. 
 IP/N/1/USA/T/5 
Page 6  
 
  ■ 2. Revise § 2.163(a) to read as follows: 
 
§ 2.163 Acknowledgment of receipt of affidavit or declaration. 
 
* * * * *  
(a) If the affidavit or declaration is filed within  the time periods set forth in section 8 of the 
Act, deficiencies may be corrected after notification from the Office if the requirements of § 2.164 are 
met. 
 
* * * * * 
 ■ 3. Revise § 2.164(a) introductory text to read as follows:  
 
§ 2.164 Correcting deficiencies in affidavit or declaration. 
 
(a) If the affidavit or declaration is filed within  the time periods set forth in section 8 of the 
Act, deficiencies may be corrected after notification from the Office, as follows: 
 
* * * * *  PART 7—RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEM ENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS 
 
■ 4. The authority citation for 37 CFR Part 7 continues to read as follows: 
 
Authority:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted. 
 
■ 5. Revise § 7.39(c) introductory text to read as follows: 
 
§ 7.39 Acknowledgment of receipt of and correctin g deficiencies in affidavit or declaration of 
use in commerce or excusable nonuse.  
* * * * *  
(c) If the affidavit or declaration is filed within the time periods set forth in section 71 of the 
Act, deficiencies may be corrected after notification from the Office, as follows: 
 
* * * * *  
Dated: November 1, 2011.  
David J. Kappos, 
 
Under Secretary of Commerce for Inte llectual Property and Director of the United States Patent and 
Trademark Office. 
 [FR Doc. 2011–28890 Filed 11–7–11; 8:45 am] 
 
BILLING CODE 3510–16–P 
 
__________