[Federal Register Volume 79, Number 241 (Tuesday, December 16, 2014)]
[Rules and Regulations]
[Pages 74633-74639]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-29413]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2014-0011]
RIN 0651-AC94


Reduction of Fees for Trademark Applications and Renewals

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``Office'' or 
``USPTO'') is amending its regulations to reduce certain trademark 
fees, as authorized by the Leahy-Smith America Invents Act (``AIA''). 
The reductions will reduce total trademark fee collections and promote 
efficiency for the USPTO and customers. The reductions also will 
further USPTO strategic objectives to increase the end-to-end 
electronic processing of trademark applications by offering additional 
electronic application processing.

DATES: The changes in this final rule are effective on January 17, 
2015.

FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy 
Commissioner for Trademark Examination Policy, by email at 
<a href="/cdn-cgi/l/email-protection#72263f221d1e1b110b32070102061d5c151d04"><span class="__cf_email__" data-cfemail="792d34291615101a00390c0a090d16571e160f">[email protected]</span></a>, or by telephone at (571) 272-8742.

SUPPLEMENTARY INFORMATION: Executive Summary: Purpose: Section 10 of 
the AIA authorizes the Director of the USPTO (``Director'') to set or 
adjust by rule any fee established, authorized, or charged under the 
Trademark Act of 1946 (15 U.S.C. 1051 et seq.) for any services 
performed by, or materials furnished by, the Office. See Section 10 of 
the AIA, Pub. L. 112-29, 125 Stat. at 316-17.
    Section 10(c) of the AIA authorizes the Director to consult with 
the Trademark Public Advisory Committee (``TPAC'') on the advisability 
of reducing trademark fees and, following the required consultation, to 
reduce such fees. See Section 10(c) of the AIA, Pub. L. 112-29, 125 
Stat. at 317. The Director consulted with the TPAC and thereafter 
determined that, in order to both improve the alignment of Office costs 
with revenues and incentivize electronic communications, it was 
advisable to propose reductions in the filing fees for: (1) Trademark, 
certification mark, collective membership mark, and collective 
trademark applications for registration on the Principal or 
Supplemental Register that are filed using the Trademark Electronic 
Application System (``TEAS''), if applicants authorize email 
communication and file specified documents electronically throughout 
the application process; (2) TEAS Plus applications for registration; 
and (3) TEAS applications for renewal of a registration. In addition, 
the reduction would also apply to TEAS requests for transformation of 
an extension of protection to the United States into a U.S. 
application, filed pursuant to 37 CFR 7.31.
    Thereafter, a proposed rule was published in the Federal Register 
on May 9, 2014, at 79 FR 26664, and in the Official Gazette on June 3, 
2014. The USPTO received comments from three intellectual property 
organizations and three attorneys and/or law firms. These comments are 
posted on the USPTO's Web site at http://www.uspto.gov/trademarks/notices/TEAS_RF_comments.jsp and are addressed below.
    Prior to consulting with the TPAC, the USPTO also published a 
notice of inquiry to provide the public, including user groups, with an 
opportunity to comment on possible adjustments to trademark application 
fees (77 FR 49426 (Aug. 16, 2012)). The public comments overwhelmingly 
favored a fee reduction, and many expressed a desire for a lower-cost 
electronic filing option without any restrictions on the nature of the 
identification of goods and services, as is required under TEAS Plus.
    The reduced fees will help to: (1) Continue with an appropriate and 
sustainable funding model; (2) support strategic objectives relating to 
online filing, electronic file management, and workflow; and (3) 
improve efficiency for USPTO operations and customers. The reductions 
will benefit the public by lowering the costs of seeking and renewing 
federal registration, including advantages to individual and pro se 
filers, who make greater use of lower-cost filing options. In addition, 
the rule includes an additional filing option for meeting applicants' 
needs and preferences.

General Comments

    Comment: All commenters expressed support of the USPTO's efforts to 
increase the volume of end-to-end electronic processing of trademark 
applications and agreed that the proposed fee reductions will make 
filing for individuals and smaller entities more accessible and promote 
greater efficiency through electronic filing and communication.
    Response: The USPTO appreciates the commenters' support of the 
general objectives of the rule changes.
    Comment: One commenter suggested that the USPTO take additional 
steps to both further the USPTO's strategic objective and reduce 
burdens on small businesses. In particular, the commenter recommended 
that the USPTO collect and track the filing and renewal information 
related to small businesses and provide reduced filing fees to small 
entities and applicants that are part of business incubators and other 
such organizations. In addition, the commenter opined that providing 
small entities with reduced fees for renewals and maintenance would 
help incentivize registrants to maintain and renew their marks.
    Response: The USPTO appreciates the commenter's suggestions and 
will consider them in the future, but notes that they are outside the 
scope of the current rulemaking. Moreover, the USPTO has considered 
whether and how it is appropriate to reduce any burden on small 
businesses through increased flexibility. The final rules provide 
streamlined and simplified procedures for all small entities (and 
others), given the ease of filing electronically through TEAS and 
communicating by email. In addition, the fee reductions promote greater 
efficiency from electronic filing and communication, as the procedures 
are simpler and not burdensome.
    Comment: One commenter noted that although the data that becomes 
the equivalent of an application under Section 66(a) of the Trademark 
Act is not submitted by applicants directly, the Office's goals of 
increasing efficiency through electronic correspondence can be achieved 
with such applications by requiring that the applicant use TEAS to 
respond to provisional refusals and for subsequent prosecution.
    Response: The USPTO notes that the reduced-fee option of filing 
using TEAS Plus is not currently available for requests for an 
extension of protection to the United States, i.e., a Section 66(a) 
application, 15 U.S.C. 1141f(a), nor will the TEAS RF option be 
available for these applications. The USPTO has not

[[Page 74634]]

required electronic communication by any filers who have not 
voluntarily agreed to do so, and therefore the USPTO would not be 
inclined to impose such a requirement on Section 66(a) applicants.
    Summary of Major Provisions: After reviewing the comments received 
in response to the notice of proposed rulemaking, the USPTO reduces by 
$50 the fee for an application filed using the regular TEAS application 
form, and a TEAS request for transformation of an extension of 
protection to the United States into a U.S. application pursuant to 
Sec.  7.31, from $325 to $275 per class if the applicant authorizes 
email communication and agrees to file all responses and other 
specified documents electronically during the prosecution of the 
application. This option will be known as a TEAS Reduced Fee (``TEAS 
RF'') application. The USPTO also reduces by $50 the fee for a TEAS 
Plus application from $275 to $225 per class and reduces by $100 the 
fee for a TEAS application for renewal of a registration from $400 to 
$300 per class. As has been the case since the inception of TEAS Plus, 
TEAS Plus applicants who fail to fulfill the filing and examination 
requirements set out in the rules will be subject to a processing fee 
of $50 per class, and similarly, TEAS RF applicants who fail to fulfill 
the requirements under the rules will be subject to the existing 
processing fee of $50 per class.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    References below to ``the Act,'' ``the Trademark Act,'' or ``the 
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., 
as amended. References to ``TMEP'' or ``Trademark Manual of Examining 
Procedure'' refer to the October 2014 edition.

Discussion of Rules Changes

    The USPTO amends Sec. Sec.  2.6, 2.22, and 2.23.
    First, the USPTO amends Sec.  2.6(a)(1) to enumerate the revised 
application filing fee options. Section 2.6(a)(1)(iii) sets out the 
new, reduced fee of $275 for filing a TEAS Reduced Fee (i.e., TEAS RF) 
application under revised Sec.  2.23. Revised Sec.  2.6(a)(i)(iv) for 
TEAS Plus is the same as the currently existing Sec.  2.6(a)(1)(iii) 
except that the TEAS Plus fee is reduced from $275 to $225 per class 
and there is minor rewording for consistency with existing Sec.  
2.6(a)(1)(ii) and revised Sec.  2.6(a)(1)(iii). The Sec.  2.6(a)(1)(v) 
processing fee is the same as the currently existing Sec.  
2.6(a)(1)(iv) except for amended citations to revised Sec. Sec.  
2.22(c) and 2.23(c). The USPTO revises Sec.  2.6(a)(5) to enumerate the 
revised fees for renewal of a registration. The new Sec.  2.6(a)(5)(i) 
maintains the current fee of $400 as the fee for an application for 
renewal of a registration filed on paper and the new Sec.  
2.6(a)(5)(ii) sets out the reduced fee of $300 per class for a TEAS 
renewal of a registration.
    Comment: Two commenters stated that they support efforts to reduce 
fees where appropriate and consistent with a sustainable funding model 
and as long as the current and future efficacy and efficiency of the 
USPTO will not be compromised.
    Response: The USPTO appreciates the commenters' concerns. As one 
commenter noted, the Office has assured stakeholders that the reduction 
is possible due to efficiencies that have allowed the USPTO to create 
an operating reserve and that the revised fee structure maintains a 
reserve sufficient to manage operations and address long-term 
investments. Also, the Office regularly reviews fees, and may make 
adjustments in the future as needed.
    Comment: All commenters were in favor of the fee reductions. One 
noted that in addition to reducing trademark application fees, which 
should lead to more applications being filed, result in a more accurate 
Federal Register, and thereby increase efficiency and value for 
everyone, the USPTO should provide filing-fee discounts when an 
applicant files companion applications together that feature 
overlapping information, so as to incentivize businesses to file 
trademark applications that they may otherwise not invest in and that 
would otherwise never become part of the pending application database 
or the Register. Similarly, the commenter suggested that when there are 
multiple classes in the same application, the filing fees for 
subsequent classes be reduced by $100, to encourage applicants to be 
comprehensive in listing the goods and services with which they use or 
intend to use their marks, making for a more accurate and complete 
Register. The commenter opined further that a discounted filing fee for 
new businesses might increase the percentage of trademarks that are 
filed with the USPTO. Lastly, the commenter noted that the 10-year 
renewal fee, even at a TEAS reduced rate, appears out of line with the 
initial application filing fees and the 6-year Section 8 filing fees, 
since the processing of the renewal by the USPTO is not nearly as 
substantial or complex as the handling of initial applications.
    Response: The USPTO appreciates the commenter's suggestions for 
possible mechanisms by which to increase application filings and 
further reduce fees. To the extent that the Office finds additional 
opportunities for fee reductions in the future, these suggestions will 
be considered. They would require further exploration and review by the 
Office.
    Comment: Two commenters provided comments regarding the filing fee 
for paper applications. One commenter suggested that increasing the 
filing fee for paper applications may provide a more direct incentive 
for paper filers to switch to filing electronically. A second commenter 
agreed with the USPTO's decision to retain the existing filing fee for 
paper applications and encouraged the USPTO to continue outreach 
efforts to identify and address the reasons why applicants continue to 
file paper applications and to develop an electronic solution to 
address those circumstances.
    Response: At this time, the USPTO has no plan to increase any 
filing fee, and prefers to rely on other mechanisms to encourage 
electronic communication. It is anticipated that the TEAS RF reduced-
fee option is a mechanism that will encourage such applicants to switch 
from paper to electronic filing.
    Comment: One commenter sought to confirm that there was no intent 
to decrease the fees for filing an application under Section 66 of the 
Trademark Act and encouraged the Office to consider how the fee 
reduction could alter the incentives of foreign applicants to seek U.S. 
registration via national applications versus through the Madrid 
System.
    Response: The USPTO confirms that no change is being made to the 
fee for a request for an extension of protection under Section 66(a), 
15 U.S.C. 1141f(a). The USPTO notes that if the only country in which a 
foreign applicant sought extension of protection of a foreign 
registration was the United States, it might make it more cost 
effective to file directly with the U.S. using TEAS RF. However, as the 
vast majority of Madrid users designate more than one country, they may 
determine that the benefits of the Madrid System outweigh the $50 per-
class savings available through the TEAS RF option.
    Second, the USPTO makes the following format revisions to Sec.  
2.22 concerning TEAS Plus applications: revise the rule title; in Sec.  
2.22(a), cite to Sec.  2.6(a)(1)(iv) instead of Sec.  2.6(a)(1)(iii); 
in Sec.  2.22(b), set forth the additional examination requirements for 
a TEAS Plus application that are currently set forth in existing Sec.  
2.23(a); in Sec.  2.22(c), set forth the current text in existing 
Sec. Sec.  2.22(b) and 2.23(b), and cite to

[[Page 74635]]

Sec.  2.6(a)(1)(v) instead of to Sec.  2.6(a)(1)(iv); and, in Sec.  
2.22(d), set forth the text currently in existing Sec.  2.22(c).
    Comment: Three commenters expressed concerns regarding the TEAS 
Plus requirements. Two commenters noted that the fee reduction for TEAS 
Plus applications is not likely to cause applicants to switch from TEAS 
to TEAS Plus since a majority of those who do not use TEAS Plus choose 
not to use it because of the issues surrounding the identification of 
goods and services and/or the accounting and other difficulties that 
may ensue if TEAS Plus status is lost during the application process. 
For example, applicants may need to submit identifications not found in 
the U.S. Acceptable Identification of Goods and Services Manual (ID 
Manual) to accurately identify their goods and services. Revisions to 
the ID Manual to include all classes and types of goods and services, 
update recitations of goods and services, and make it more easily 
navigable to help address these concerns were suggested. The 
requirement to search for and select all relevant goods and/or services 
and separately assign a basis to each, and where applicable, attach a 
separate specimen, was thought to make the TEAS Plus application more 
time-consuming and cumbersome than regular TEAS applications. The 
commenters encouraged the USPTO to investigate and address the 
restrictions of TEAS Plus that currently lead some applicants to file 
by TEAS and to provide other options, such as lifting the 
identification requirement or providing expedited processing.
    Response: The new TEAS RF option addresses these concerns. In 
response to public input on potential adjustments to trademark 
application fees, the comments overwhelmingly favored a fee reduction, 
and many expressed a desire for a lower-cost electronic filing option 
without any restrictions on the nature of the identification of goods 
and services, as is required under TEAS Plus. Accordingly, the USPTO 
proposed the introduction of the TEAS RF filing option. The filing fee 
for TEAS RF is the same as the current TEAS Plus fee, but the 
application does not require that applicants choose an identification 
of goods or services from the ID Manual. Nor are applicants required to 
comply with any of the other TEAS Plus requirements except the 
requirements to authorize email communication and file specified 
documents electronically throughout the application process.
    In addition, the USPTO is implementing improvements to the ID 
Manual, such as basic and advanced search options, highlighting of 
search terms in results, inclusion of Notes in results table, and 
displaying initial results according to a ``relevance'' priority rather 
than by Class number.
    The USPTO notes that the additional requirements of TEAS Plus cited 
by the commenter, i.e., to search for and select all relevant goods and 
services, assign a basis to each, and, if applicable, attach a separate 
specimen for each class, merit the lower fee of TEAS Plus because they 
lower the cost of examination and reduce pendency in large part because 
most such applications are complete when filed, and will therefore, 
typically result in the issuance of fewer Office actions.
    Third, the USPTO revises current Sec.  2.23 to establish a TEAS RF 
option in the amount of $275. Existing Sec.  2.23 lists the additional 
examination requirements for a TEAS Plus application. As noted above, 
the provisions in previous Sec.  2.23 are consolidated into revised 
Sec.  2.22. Filers using either the TEAS Plus or the new TEAS RF option 
are required to authorize email communication from the USPTO and submit 
specified documents electronically using TEAS during the prosecution of 
the application. However, filers using the new TEAS RF option are not 
required to comply with the additional TEAS Plus requirements.
    Comment: One commenter also noted that the new TEAS RF application 
addresses many concerns applicants have with the TEAS Plus application 
and presents an option that its clients, many of which are small 
businesses, will likely use and benefit from.
    Response: The USPTO appreciates the commenter's statement that the 
TEAS RF option will benefit applicants.
    Comment: One commenter recommended that the Office confirm that 
informal communications with the examining attorney, including 
telephone and email communications, would not violate the requirement 
of an ``electronic communication'' for purposes of retaining TEAS RF 
status.
    Response: The USPTO confirms that informal communications by 
telephone or email with an examining attorney would not violate the 
requirement that the applicant submit documents via TEAS during the 
prosecution of the application. Informal communications are not 
substitutes for formal responses to Office actions, but rather are 
conducted only if they serve to develop and clarify specific issues and 
lead to a mutual understanding between the examining attorney and the 
applicant regarding a particular application. See TMEP section 709.05. 
Therefore, such an informal communication need not be filed through 
TEAS to comply with the final rule. Notably, Sec.  2.23 lists all the 
specific communications that TEAS RF applicants must file through TEAS 
or be subject to the processing fee of $50 per class.

Rulemaking Considerations

    Administrative Procedure Act: This rulemaking reduces fees under 
Section 10(c) of the AIA. See also 15 U.S.C. 1113, 15 U.S.C. 1123, 35 
U.S.C. 2. The other changes in this rulemaking establish procedures for 
applicants seeking these reduced fees. The procedural changes in this 
rulemaking involve rules of agency practice and procedure, and/or 
interpretive rules. See Nat'l Org. of Veterans' Advocates v. Sec'y of 
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (stating that a 
rule that clarifies interpretation of a statute is interpretive); 
Bachow Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) 
(stating that 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) (stating that rules for 
handling appeals were procedural where they did not change the 
substantive standard for reviewing claims).
    Accordingly, prior notice and opportunity for public comment for 
the procedural changes 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), does 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)(3)(A))). The Office, however, published these changes for 
comment as it sought the benefit of the public's views. The Office has 
also undertaken a Final Regulatory Flexibility Act Analysis of the 
final rule.
    Final Regulatory Flexibility Analysis:
    1. Description of the reasons that action by the USPTO is being 
undertaken:
    The USPTO is reducing certain trademark fees as authorized by 
Section 10(c) of the AIA. The reductions will reduce total trademark 
fee collections and promote efficiency for the USPTO and customers 
through increased electronic communication. Specifically, the USPTO 
amends its rules to reduce application filing fees for certain 
applications for registration on the Principal or Supplemental Register 
under Section 1 and/or Section 44 of the Trademark Act, and for TEAS 
requests for transformation of an extension of

[[Page 74636]]

protection to the United States into a U.S. application filed pursuant 
to Sec.  7.31, and to reduce the fee for renewal of a trademark 
registration that is filed through TEAS.
    2. Succinct statement of the objectives of, and legal basis for, 
the final rulemaking:
    The objectives of the final rulemaking are to reduce total 
trademark filing and renewal fees and fee collections, improve the 
alignment of Office costs with revenues, and promote efficiency for the 
USPTO and customers through electronic communication. Filing through 
TEAS and authorizing email communication expedites processing, shortens 
pendency, minimizes manual processing and the potential for data entry 
errors, and is more efficient for both the filer and the USPTO. TEAS-
filed documents are automatically uploaded into the USPTO database. 
They require no manual scanning or creation of a paper file wrapper, 
and they often reduce or eliminate the need for manual data entry of 
amendments to the filings. Authorizing email communication provides 
similar benefits, by reducing the need for mailing and the creation of, 
or addition to, a file wrapper. Paper filings, on the other hand, 
necessitate: (1) Manual scanning and uploading of the documents into 
the USPTO database; (2) manual data entry of information; and (3) the 
creation of paper file wrappers in which to store the originals of the 
paper filings. Thus, the final rulemaking facilitates efficiency in 
numerous ways. As to the legal basis for the revisions, Section 10(c) 
of the AIA provides the authority for the Director to reduce trademark 
fees after consultation with the TPAC. See also Section 31 of the 
Trademark Act, 15 U.S.C. 1113. Both 15 U.S.C. 1123 and 35 U.S.C. 2 
provide the authority for the Director to establish regulations for the 
conduct of trademark proceedings at the USPTO.
    3. Description of and, where feasible, estimate of the number of 
affected small entities:
    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 final rulemaking. However, the USPTO will 
provide projected estimates of each type of filing affected by the 
final rulemaking. The overall impact of the lower fees on applicants 
and registrants will be overwhelmingly positive, as they will be 
afforded the opportunity to obtain a trademark registration for a 
reduced fee.
    The final rulemaking could apply to any entity filing a trademark 
application, except those filing under Section 66(a), 15 U.S.C. 
1141f(a). The USPTO estimates that during the first year under the 
final rulemaking, the USPTO would receive 103,633 classes of TEAS RF 
applications that, absent the rule change, likely would have been filed 
as regular TEAS applications, as well as 204,682 classes of TEAS Plus 
applications. Thus, the estimated financial impact of the reduced fees 
will be: (1) A $10,234,100 reduction in fees for TEAS Plus applicants; 
and (2) a $5,181,650 reduction in fees for TEAS RF applicants, or 
$5,065,100, when the estimated 2,331 classes of TEAS RF applicants who 
likely will be required to pay the $50 processing fee are taken into 
consideration. Turning to the renewal fee, the USPTO estimates that 
during the first year under the final rulemaking, the USPTO would 
receive 62,315 classes of renewals, 61,193 of which will be filed 
through TEAS, such that the financial impact will be a $6,119,300 
reduction in fees for trademark owners. The USPTO does not collect or 
maintain statistics in trademark cases on small- versus large-entity 
applicants to determine what subset of applicants would be small 
entities impacted by the final rule.
    4. Description of the reporting, recordkeeping, and other 
compliance requirements of the final rulemaking, including an estimate 
of the classes of small entities that will be subject to the 
requirement and the type of professional skills necessary for 
preparation of the report or record:
    The final rules impose no new reporting or recordkeeping 
requirements.
    The final rules reduce fees for applications, requests for 
transformation of an extension of protection to the United States into 
a U.S. application, and renewals of trademark registrations. The USPTO 
does not anticipate that the final rulemaking will have a 
disproportionate impact upon any particular class of small or large 
entities. Any entity that applies for or renews a registered trademark 
may choose to benefit from the final rules. The final rulemaking merely 
offers lower fees based on electronic filing of the renewal or 
application and other documents, and authorization for email 
communication from the USPTO. Because the fees for filing a paper 
application, a regular TEAS application, a paper request for 
transformation of an extension of protection to the United States into 
a U.S. application, and a paper application for renewal of a 
registration remain unchanged under the final rules, and applicants may 
continue to file on paper or via the regular TEAS application form, the 
filer may choose whether to undertake the requirements for the reduced-
fee options in the final rules. Procedures for TEAS Plus filers remain 
the same, as the final rules merely reduce fees and consolidate the 
TEAS Plus procedures within one rule, without imposing any change in 
practice. Filers using the new TEAS RF option must submit specified 
documents electronically using TEAS during the prosecution of the 
application and must authorize email communication from the USPTO.
    The USPTO estimates that filing electronically likely will take 
less time than filing the same type of document on paper and will not 
take any more time. The USPTO further estimates that communicating by 
email will not take any more time than receiving and reviewing a USPTO 
communication sent by regular mail and is likely to take less time.
    5. Description of any significant alternatives to the final 
rulemaking which accomplish the stated objectives of applicable 
statutes and which minimize any significant economic impact of the 
rules on small entities:
    The USPTO has considered whether and how it is appropriate to 
reduce any burden on small businesses through increased flexibility. 
The following options have been considered, but rejected, by the USPTO, 
since they are less protective of small businesses.
    The alternative of not offering the identified reduced fees, or not 
offering them to small entities, would retain the status quo for small 
entities and therefore produce no economic impact on them, but that 
alternative has been rejected because the economic effect of the final 
rules will be favorable to small businesses, rather than burdensome. In 
addition, the alternative of not reducing fees would fail to accomplish 
the stated objectives of reducing overall trademark fee collections and 
increasing efficiency for the USPTO and filers.
    The final rulemaking provides streamlined and simplified procedures 
for all small entities, as well as others, given the ease of filing 
electronically through TEAS and communicating by email. Thus, 
compliance will be streamlined and simplified for all affected 
entities. The fee reductions promote greater efficiency from electronic 
filing and communication, as the procedures are simpler and not 
burdensome.
    Use of performance rather than design standards is not applicable 
to the final rulemaking because the USPTO is not issuing any sort of 
standard. Rather, the

[[Page 74637]]

final rulemaking offers reduced fees to applicants and registrants who 
file and communicate electronically with the USPTO.
    6. Identification, to the extent practicable, of all relevant 
Federal rules which may duplicate, overlap, or conflict with the final 
rules:
    The final rules do not duplicate, overlap, or conflict with any 
other Federal rules.
    Executive Order 12866 (Regulatory Planning and Review): This 
rulemaking 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 (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 rules; (2) tailored the rules 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 a notice of proposed 
rulemaking, 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.
    Executive Order 13132 (Federalism): This rule does not contain 
policies with federalism implications sufficient to warrant preparation 
of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    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 this final rule, the 
USPTO submitted 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 final rule are not expected 
to result in an annual effect on the economy of 100 million dollars 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 is not a ``major rule'' as defined in 5 U.S.C. 804(2).
    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 dollars (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 dollars (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.
    Paperwork Reduction Act: This 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 et seq.). An information collection request was submitted to OMB 
under control numbers 0651-0009 and 0651-0055 at the time of the Notice 
of Proposed Rulemaking, and a pre-approval was given. Since that time 
no substantive changes to the burden have been made. Additionally, the 
agency will follow up with a change worksheet submission to reconcile 
any burden estimate adjustments, especially as regards OMB Control 
Number 0651-0051.
I. Summary
    The USPTO is reducing certain trademark fees, as authorized by the 
AIA. The reductions will reduce total trademark fee collections and 
promote efficiency for the USPTO and customers through electronic 
communication and will further the USPTO's strategic objective to 
increase the end-to-end electronic processing of trademark applications 
including online filing, electronic file management, and workflow. 
Specifically, the USPTO amends its rules to permit a trademark 
applicant using the regular TEAS application form to file an 
application for registration on the Principal or Supplemental Register 
under Section 1 and/or Section 44 of the Trademark Act, and an 
applicant who files a TEAS request for transformation of an extension 
of protection to the United States into a U.S. application, to pay a 
reduced fee under certain circumstances. The reduced fee is available 
to a TEAS applicant if the applicant agrees to receive communications 
concerning the application by email and to file all responses and other 
documents through TEAS during the prosecution of the application. The 
reduced-fee option does not apply to applications filed pursuant to 
Section 66(a) of the Act because they cannot be filed through TEAS. The 
USPTO also amends its rules to reduce the filing fees for an 
application filed using the TEAS Plus form and a TEAS application for 
renewal of a registration.
II. Data
    Needs and Uses: The public uses the various applications to apply 
for the registration of trademarks/service marks, collective 
trademarks/service marks, collective membership marks, and 
certification marks that identify goods and services classified in 
single or multiple classes. The public also uses applications under 
Section 44 to apply for a priority filing date and/or for registration 
based upon foreign registration of a mark. The USPTO uses information 
from the public to receive and process applications for registration of 
trademarks/service marks, collective trademarks/service marks, 
collective membership marks, and certification marks. The USPTO uses 
information from the public in response to Section 44 applications to 
process applications for registration of a mark based upon earlier-
filed foreign applications or a foreign registration. In addition, the 
USPTO also uses the application information to determine whether the 
marks may be registered. The public uses the application for renewal to 
apply for the renewal of a registration. The USPTO uses information 
from the public to receive and process applications for renewal of a 
registration.

    Title of Collection: Applications for Trademark Registration.
    OMB Control Number: 0651-0009.
    Form Number(s): PTO Forms 1478, 1480, 1481, 1482.
    Type of Review: Revised Collection.
    Method of Collection: By mail, facsimile, hand delivery, or 
electronically to the Office.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Responses: 359,560.
    Estimated Time per Response: The Office estimates that the 
responses in this collection will take the public

[[Page 74638]]

approximately 18 to 30 minutes (0.3 to 0.5 hours).
    Estimated Total Annual Respondent Burden Hours: 125,373 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $48,770,097 per 
year.
    Estimated Total Annual Non-hour Respondent Cost Burden: $97,548,226 
per year.

    Title of Collection: Post Registration (Trademark Processing).
    OMB Control Number: 0651-0055.
    Form Number(s): PTO Form 1963.
    Type of Review: Revised Collection.
    Method of Collection: By mail, facsimile, hand delivery, or 
electronically to the Office.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Responses: 51,929.
    Estimated Time per Response: The Office estimates that the 
responses in this collection will take the public approximately 12 to 
14 minutes (0.20 to 0.23 hours).
    Estimated Total Annual Respondent Burden Hours: 10,414 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $4,050,988 per year.
    Estimated Total Annual Non-Hour Respondent Cost Burden: $20,865,550 
per year.

    Title of Collection: Madrid Protocol.
    OMB Control Number: 0651-0051.
    Form Number(s): PTO Global Form.
    Type of Review: Revised Collection.
    Method of Collection: By mail, facsimile, hand delivery, or 
electronically to the Office.
    Affected Public: Individuals or households; businesses or other 
for-profits; and not-for-profit institutions.
    Estimated Number of Responses: 6,623.
    Estimated Time per Response: The Office estimates that the 
responses in this collection will take the public approximately 15 
minutes to one hour and 15 minutes (0.25 to 1.25 hours).
    Estimated Total Annual Respondent Burden Hours: 1,711 hours per 
year.
    Estimated Total Annual Respondent Cost Burden: $634,781 per year.
    Estimated Total Annual Non-Hour Respondent Cost Burden: $743,875 
per year.
III. Solicitation
    Comments were solicited to: (1) Evaluate whether the information 
requirement is necessary for the proper performance of the functions of 
the agency, including whether the information will have practical 
utility; (2) evaluate the accuracy of the agency's estimate of the 
burden; (3) enhance the quality, utility, and clarity of the 
information to be collected; and (4) minimize the burden of collecting 
the information on those who are to respond, including by using 
appropriate automated, electronic, mechanical, or other technological 
collection techniques or other forms of information technology.
    Regarding whether the collection of information enhances the 
quality, utility, and clarity of the information to be collected, the 
USPTO received two comments.
    Comment: The commenters noted that the proposed changes will result 
in more accurate and carefully tailored trademark applications by 
allowing applicants to submit the most accurate and comprehensive 
designation of goods and services since they will not have to choose 
designations from the ID Manual, which the commenter contends results 
in inefficiencies not only for the companies seeking to register a 
mark, but also for the USPTO and other companies conducting trademark 
searches. The commenter also asserts that the proposed changes would 
help applicants receive the maximum benefits of the USPTO system. One 
commenter noted that requests for extensions of protection encounter a 
number of inefficiencies arising from the data transfer from WIPO to 
the Office and recommended that these inefficiencies be addressed by 
the Office as part of the rule or in a separate request for comment.
    Response: The USPTO agrees with the commenters regarding the 
benefits of providing a reduced-fee option while permitting applicants 
to submit their own identifications of goods and services.
    The USPTO appreciates the suggestions regarding requests for 
extension of protection but notes that the Office is unaware of the 
alleged inefficiencies of using an entry from the ID Manual and notes 
that these requests are not part of the information collection impacted 
by this final rulemaking. Any more detailed comments about this subject 
outside the scope of this final rulemaking may be submitted to the 
USPTO through <a href="/cdn-cgi/l/email-protection#eabea7ac8f8f8e888b8981aabfb9babea5c48d859c"><span class="__cf_email__" data-cfemail="47130a012222232526242c07121417130869202831">[email protected]</span></a>.
    As to whether changes minimize the burden of collecting the 
information on those who are to respond, including by using appropriate 
automated, electronic, mechanical, or other technological collection 
techniques or other forms of information technology, the USPTO received 
no comments.
    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 unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

    For the reasons stated in the preamble and under the authority 
contained in Section 10(c) of the AIA, 15 U.S.C. 1113, 15 U.S.C. 1123, 
and 35 U.S.C. 2, as amended, the USPTO amends part 2 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, 15 U.S.C. 1123, 35 U.S.C. 2, Section 
10(c) of Pub. L. 112-29, unless otherwise noted.


0
2. Amend Sec.  2.6 by revising paragraphs (a)(1)(iii) and (iv), adding 
paragraph (a)(1)(v), and revising paragraph (a)(5) to read as follows:


Sec.  2.6  Trademark fees.

* * * * *
    (a) * * *
    (1) * * *
    (iii) For filing a TEAS Reduced Fee (RF) application through TEAS 
under Sec.  2.23, per class--$275
    (iv) For filing a TEAS Plus application through TEAS under Sec.  
2.22, per class--$225.00
    (v) Additional processing fee under Sec. Sec.  2.22(c) or 2.23(c), 
per class--$50.00
* * * * *
    (5) Application for renewal of a registration fees.
    (i) For filing an application for renewal of a registration on 
paper, per class--$400.00
    (ii) For filing an application for renewal of a registration 
through TEAS, per class--$300.00
* * * * *

0
3. Amend Sec.  2.22 by revising the section heading, paragraph (a) 
introductory text, and paragraphs (b) and (c) and adding paragraph (d) 
to read as follows:


Sec.  2.22  Requirements for a TEAS Plus application.

    (a) A trademark/service mark application for registration on the 
Principal Register under section 1 and/or section 44 of the Act will be 
entitled to a reduced filing fee under Sec.  2.6(a)(1)(iv) if it is 
filed through TEAS and includes:
* * * * *

[[Page 74639]]

    (b) In addition to the filing requirements under paragraph (a) of 
this section, the applicant must:
    (1) File the following communications through TEAS:
    (i) Responses to Office actions (except notices of appeal under 
section 20 of the Trademark Act);
    (ii) Requests to change the correspondence address and owner's 
address;
    (iii) Appointments and/or revocations of power of attorney;
    (iv) Appointments and/or revocations of domestic representative;
    (v) Voluntary amendments;
    (vi) Amendments to allege use under section 1(c) of the Act or 
statements of use under section 1(d) of the Act;
    (vii) Requests for extensions of time to file a statement of use 
under section 1(d) of the Act; and
    (viii) Requests to delete a section 1(b) basis.
    (2) Maintain a valid email correspondence address and continue to 
receive communications from the Office by email.
    (c) If an application does not fulfill the requirements of 
paragraphs (a) and (b) of this section, the applicant must pay the 
processing fee required by Sec.  2.6(a)(1)(v). The application will 
retain its original filing date, provided that when filed, the 
application met the filing date requirements of Sec.  2.21.
    (d) The following types of applications cannot be filed as TEAS 
Plus applications:
    (1) Applications for certification marks (see Sec.  2.45);
    (2) Applications for collective trademarks and service marks (see 
Sec.  2.44);
    (3) Applications for collective membership marks (see Sec.  2.44); 
and
    (4) Applications for registration on the Supplemental Register (see 
Sec.  2.47).

0
4. Revise Sec.  2.23 to read as follows:


Sec.  2.23  Requirements for a TEAS RF application.

    (a) A trademark, service mark, certification mark, collective 
membership mark, or collective trademark application for registration 
on the Principal or Supplemental Register under section 1 and/or 
section 44 of the Act will be entitled to a reduced filing fee under 
Sec.  2.6(a)(1)(iii) if it is filed through TEAS and includes:
    (1) An email address for correspondence; and
    (2) An authorization for the Office to send correspondence 
concerning the application to the applicant or applicant's attorney by 
email.
    (b) In addition to the filing requirements under paragraph (a) of 
this section, the applicant must:
    (1) File the following communications through TEAS:
    (i) Responses to Office actions (except notices of appeal under 
section 20 of the Trademark Act);
    (ii) Requests to change the correspondence address and owner's 
address;
    (iii) Appointments and/or revocations of power of attorney;
    (iv) Appointments and/or revocations of domestic representative;
    (v) Voluntary amendments;
    (vi) Amendments to allege use under section 1(c) of the Act or 
statements of use under section 1(d) of the Act;
    (vii) Requests for extensions of time to file a statement of use 
under section 1(d) of the Act; and
    (viii) Requests to delete a section 1(b) basis.
    (2) Maintain a valid email correspondence address, and continue to 
receive communications from the Office by email.
    (c) If an application does not meet the requirements of paragraphs 
(a) and (b) of this section, the applicant must pay the processing fee 
required by Sec.  2.6(a)(1)(v). The application will retain its 
original filing date, provided that when filed, the application met the 
filing date requirements of Sec.  2.21.

    Dated: December 10, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy 
Director, United States Patent and Trademark Office.
[FR Doc. 2014-29413 Filed 12-15-14; 8:45 am]
BILLING CODE 3510-16-P


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