Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations 2303 

deviation, call or email Jim 

Wetherington, Bridge Administration 

Branch, Coast Guard, telephone (504) 

671–2128, email james.r.wetherington@

uscg.mil. If you have questions on 

viewing the docket, call Cheryl F. 

Collins, Program Manager, Docket 

Operations, telephone 202–366–9826. 

SUPPLEMENTARY INFORMATION: The BNSF 

Railway Company requested a 

temporary deviation from the normal 

operation of the drawbridge in order to 

perform the installation of new 

generators and the removal of the old 

festoon cable. These repairs and 

scheduled maintenance are necessary 

for the continued operation of the 

bridge. This deviation allows the draw 

of the Morgan City (Berwick Bay) 

Railroad Bridge across the Atchafalaya 

River, mile 17.5 (Gulf Intracoastal 

Waterway (Morgan City-Port Allen 

Alternate Route) mile 0.3), to remain 

closed to navigation for four consecutive 

hours in the morning and three hours in 

the afternoon with an opening in the 

middle to pass vessels. The deviation is 

effective from 7 a.m. to 11 a.m. and then 

again from 1 p.m. through 4 p.m. daily 

from January 26 through January 31, 

2015. 

Broadcast Notice to Mariners will be 

used to update mariners of any changes 

in this deviation. 

The bridge has a vertical clearance of 

4 feet above high water in the closed-tonavigation position and 73 feet above 

high water in the open-to-navigation 

position. Navigation on the waterway 

consists of tugs with tows, oil industry 

related work boats and crew boats, 

commercial fishing vessels and some 

recreational craft. In accordance with 33 

CFR 117.5, the draw of the bridge shall 

open on signal. The Morgan City-Port 

Allen Landside route through Amelia, 

LA is the alternate route. 

BNSF and the Coast Guard have 

coordinated the closure with waterway 

users, industry, and other Coast Guard 

units. This date and this schedule were 

chosen to minimize the significant 

effects on vessel traffic. 

In accordance with 33 CFR 117.35(e), 

the drawbridge must return to its regular 

operating schedule immediately at the 

end of the effective period of this 

temporary deviation. This deviation 

from the operating regulations is 

authorized under 33 CFR 117.35. 

Dated: January 9, 2015. 

David M. Frank, 

Bridge Administrator, Eighth Coast Guard 

District. 

[FR Doc. 2015–00592 Filed 1–15–15; 8:45 am] 

BILLING CODE 9110–04–P 

DEPARTMENT OF HOMELAND 

SECURITY 

Coast Guard 

33 CFR Part 117 

[Docket No. USCG–2014–1073] 

Drawbridge Operation Regulation; Gulf 

Intracoastal Waterway, Galveston, TX 

AGENCY: Coast Guard, DHS. 

ACTION: Notice of temporary deviation 

from drawbridge regulations. 

SUMMARY: The Coast Guard has issued a 

temporary deviation from the operating 

schedule that governs the operation of 

the Galveston Causeway Railroad 

Vertical Lift Bridge across the Gulf 

Intracoastal Waterway, mile 357.2 west 

of Harvey Locks, at Galveston, 

Galveston County, Texas. The deviation 

is necessary in order to conduct 

maintenance on the bridge. This 

deviation allows the bridge to remain 

temporarily closed to navigation for 5 

hours on two consecutive days during 

day light hours and will operate 

normally at all other times. 

DATES: This deviation is effective from 

7 a.m. through noon, daily, on February 

2 and February 3, 2015. 

ADDRESSES: The docket for this 

deviation, [USCG–2014–1073] is 

available at http://www.regulations.gov. 

Type the docket number in the 

‘‘SEARCH’’ box and click ‘‘SEARCH.’’ 

Click on Open Docket Folder on the line 

associated with this deviation. You may 

also visit the Docket Management 

Facility in Room W12–140 on the 

ground floor of the Department of 

Transportation West Building, 1200 

New Jersey Avenue SE., Washington, 

DC 20590, between 9 a.m. and 5 p.m., 

Monday through Friday, except Federal 

holidays. 

FOR FURTHER INFORMATION CONTACT: If 

you have questions on this temporary 

deviation, call or email Jim 

Wetherington, Bridge Administration 

Branch, Coast Guard; telephone 504– 

671–2128, email james.r.wetherington@

uscg.mil. If you have questions on 

viewing the docket, call Cheryl F. 

Collins, Program Manager, Docket 

Operations, telephone 202–366–9826. 

SUPPLEMENTARY INFORMATION: The BNSF 

Railway Company requested a 

temporary deviation from the operating 

schedule of the Galveston Causeway 

Railroad Vertical Lift Bridge across the 

Gulf Intracoastal Waterway, mile 357.2 

west of Harvey Locks, at Galveston, 

Galveston County, Texas. 

The bridge has a vertical clearance of 

8.0 feet above mean high water, 

elevation 3.0 feet NAVD88, in the 

closed-to-navigation position and 73 

feet above mean high water in the opento-navigation position. In accordance 

with 33 CFR 117.5, the draw shall open 

on signal for the passage of vessels. 

This temporary deviation allows the 

vertical lift bridge to remain closed to 

navigation from 7 a.m. through noon, 

daily, February 2 and February 3, 2015. 

During this time, the bridge owner will 

complete tie replacement, surfacing, and 

signal work. If the vessel can safely pass 

without an opening, the vessel may pass 

at the slowest safe speed. The bridge can 

open in case of emergency. 

Navigation at the site of the bridge 

consists mainly of tows with barges and 

some recreational pleasure craft. Based 

on known waterway users, as well as 

coordination with those waterway users, 

it has been determined that this closure 

will not have a significant effect on 

these vessels. No alternate routes are 

available. 

In accordance with 33 CFR 117.35, 

the draw bridge must return to its 

regular operating schedule immediately 

at the end of the effective period of this 

temporary deviation. 

This deviation from the operating 

regulations is authorized under 33 CFR 

117.35 

Dated: January 9, 2015. 

David M. Frank, 

Bridge Administrator, Eighth Coast Guard 

District. 

[FR Doc. 2015–00593 Filed 1–15–15; 8:45 am] 

BILLING CODE 9110–04–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

37 CFR Parts 2, 6, and 7 

[Docket No. PTO–T–2013–0026] 

RIN 0651–AC88 

Miscellaneous Changes to Trademark 

Rules of Practice and the Rules of 

Practice in Filings Pursuant to the 

Protocol Relating to the Madrid 

Agreement Concerning the 

International Registration of Marks 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Final rule. 

SUMMARY: The United States Patent and 

Trademark Office (‘‘Office’’) is revising 

the Trademark Rules of Practice and the 

Rules of Practice in Filings Pursuant to 

the Protocol Relating to the Madrid 

Agreement Concerning the International 

Registration of Marks to benefit the 


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2304 Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations 

public by providing greater clarity as to 

certain requirements relating to 

representation before the Office, 

applications for registration, 

examination procedures, amendment of 

applications, publication and post 

publication procedures, appeals, 

petitions, post registration practice, 

correspondence in trademark cases, 

classification of goods and services, and 

procedures under the Madrid Protocol. 

For the most part, the rule changes are 

intended to codify existing practice. 

DATES: This rule is effective February 

17, 2015. 

FOR FURTHER INFORMATION CONTACT: 

Cynthia C. Lynch, Office of the Deputy 

Commissioner for Trademark 

Examination Policy, by email at 

TMPolicy@uspto.gov, or by telephone at 

(571) 272–8742. 

SUPPLEMENTARY INFORMATION: 

Executive Summary: Purpose: The 

rule changes benefit the public by 

providing more comprehensive and 

specific guidance regarding certain 

requirements relating to representation 

before the Office, applications for 

registration, examination procedures, 

amendment of applications, publication 

and post publication procedures, 

appeals, petitions, post registration 

practice, correspondence in trademark 

cases, classification of goods and 

services, and procedures under the 

Madrid Protocol. For the most part, the 

rule changes codify existing practice. 

Summary of Major Provisions: As 

stated above, the Office is revising the 

rules in parts 2, 6, and 7 of title 37 of 

the Code of Federal Regulations to 

codify current Office practice and 

provide sufficient detail regarding 

miscellaneous requirements relating to 

representation before the Office, 

applications for registration, 

examination procedures, amendment of 

applications, publication and post 

publication procedures, appeals, 

petitions, post registration practice, 

correspondence in trademark cases, 

classification of goods and services, and 

procedures under the Madrid Protocol. 

Costs and Benefits: This rulemaking is 

not economically significant under 

Executive Order 12866 (Sept. 30, 1993). 

Proposed Rule and Request for 

Comments: 

A proposed rule was published in the 

Federal Register on January 23, 2014, at 

79 FR 3750, and in the Official Gazette 

on April 8, 2014. The Office received 

comments from two intellectual 

property organizations and one attorney. 

These comments are posted on the 

Office’s Web site at http://

www.uspto.gov/trademarks/law/FR_

Comments_Misc_Changes.jsp, and are 

addressed below. 

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. 

Comments and Responses 

The Office received many positive 

comments in favor of the rule changes 

and appreciates the public support. To 

streamline this Notice, such comments 

expressing support are not individually 

set forth and no specific responses to 

such comments are provided. 

Applications for Registration 

Comment: One commenter agreed 

with the proposal to remove existing 

§ 2.38(b), but expressed concern 

regarding any possible effect the rule 

may have on existing registrations 

issued pursuant to sections 66(a) and 

44(e) of the Act that were not required 

to indicate if the applied-for mark was 

being used by one or more related 

companies, rather than the applicant. 

Therefore, the commenter encouraged 

the Office to include a statement that 

registrations issued under previous 

versions of § 2.38(b) shall not be 

vulnerable to challenge due to the 

omission of information concerning use 

of the mark solely by related companies 

whose use inures to the benefit of the 

applicant under section 5 of the Act. 

Response: As noted by the 

commenter, evidence of use of the mark 

in commerce is not required for 

registrations issued pursuant to sections 

66(a) or 44(e) of the Act. Accordingly, 

the requirement under current § 2.38(b) 

that an applicant indicate when the 

applied-for mark is not being used by 

the applicant but is instead being used 

by one or more related companies 

whose use inures to the benefit of the 

applicant is not applicable to 

registrations issued pursuant to sections 

66(a) or 44(e) of the Act. Because such 

requirement did not apply to 

registrations issued pursuant to sections 

66(a) or 44(e) of the Act, the Office does 

not believe it is necessary to include a 

statement regarding the omission of 

such information in an application 

under sections 66(a) or 44(e) of the Act 

under the current rule. 

Examination of Application and Action 

by Applicants 

Comment: One commenter inquired 

as to whether the amendment to add 

new § 2.62(c) would affect the Office’s 

current practice of encouraging informal 

communication between applicants (or 

their representatives) and examining 

attorneys regarding issues that are 

capable of resolution by examiner’s 

amendment, and encouraged the Office 

to investigate potential means for 

allowing formal responses to be 

submitted via email. 

Response: The Office continues to 

encourage informal communication 

between applicants (or their 

representatives) and examining 

attorneys regarding issues that are 

capable of resolution by examiner’s 

amendment, and the revision to § 2.62 

in no way affects the Office’s position 

on such informal communications. In 

addition, the Office is continually 

investigating alternative procedures that 

may assist both examining attorneys and 

applicants (or their representatives) in 

expediting the examination process. 

Comment: Another commenter noted 

that under proposed § 2.63(a)(2), if a 

petition to the Director under § 2.146 is 

denied, the applicant is granted six 

months from the ‘‘date’’ of the Office 

action that repeated the requirement(s), 

or thirty days from the date of the 

decision on the petition, whichever is 

later, to comply with the repeated 

requirement(s). By contrast, the 

commenter noted that under proposed 

§ 2.63(c), if a petition to the Director 

under § 2.146 is denied, the applicant is 

granted six months from the ‘‘date of 

issuance’’ of the Office action that 

repeated the requirement(s), or made it 

final, or thirty days from the date of the 

decision on the petition, whichever date 

is later, to comply with the 

requirement(s). The commenter 

suggested that, in order to ensure 

clarity, the language in proposed 

§§ 2.63(a)(2) and 2.63(c) be made 

consistent. 

Response: As both the applicable 

response deadlines after a denial of a 

petition to the Director under § 2.146 

and the statement that a requirement 

that is the subject of a petition decided 

by the Director may not subsequently be 

the subject of an appeal to the 

Trademark Trial and Appeals Board 

(TTAB) are set out in new § 2.63(c), 

such information has been removed 

from § 2.63(a)(2). 

Amendment of Application 

Comment: One commenter noted that 

a process to allow an applicant to 

request an amendment not specifically 

listed in § 2.77(a) between the issuance 

of the notice of allowance and the filing 

of the statement of use should be 

available, but the denial of a petition 

because the issues require review by the 

examining attorney introduces 

uncertainty and delay into the process. 

The commenter therefore encouraged 


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the Office to consider adopting a 

process similar to the on-line process 

currently available to request an 

amendment between publication of the 

application for opposition and issuance 

of the notice of allowance. 

Response: Under amended § 2.77(b), if 

the Director determines that a proposed 

post-notice of allowance and prestatement of use amendment does not 

require review by the examining 

attorney, the petition will be granted, 

and the amendment entered into the 

record. If the Director determines that 

the proposed post-notice of allowance 

and pre-statement of use amendment 

requires review by the examining 

attorney, the petition will be denied, 

and the applicant may resubmit the 

proposed amendment with the 

statement of use. In the case of proposed 

amendments submitted after the 

issuance of the notice of allowance but 

prior to the submission of a statement of 

use, regardless of jurisdiction with the 

examining attorney, an Office action 

detailing a refusal or requirement that 

may arise from a proposed amendment 

cannot issue at that time because it 

would create a response deadline that 

differed from the statement of use filing 

deadline. The complexity of tracking 

these two different concurrent deadlines 

presents system problems for the Office 

and could create confusion for 

applicants, examining attorneys, and the 

TTAB that may lead to files being 

mistakenly abandoned for failure to file 

a timely response or statement of use 

and missed opportunities for appealing 

final requirements and refusals. 

Additionally, because an examining 

attorney cannot issue a refusal or 

requirement after the issuance of the 

notice of allowance but before the filing 

of the statement of use, if the Director 

determined that a proposed amendment 

required review by an examining 

attorney and granted the petition, an 

applicant might mistakenly believe that 

the proposed amendment has been 

granted because of the delay in issuing 

an Office action detailing the issues 

with the proposed amendment until 

after the submission of the statement of 

use. As written, proposed § 2.77(b) will 

expedite the entry of acceptable 

amendments, facilitate clarity, and 

provide the applicant with the most 

accurate and timely information 

regarding the status of a proposed 

amendment. 

Publication and Post Publication 

Comment: One commenter expressed 

its support for the proposed revision to 

§ 2.81(b) to remove the list of items that 

will be included on the notice of 

allowance to allow greater flexibility in 

the format of the notice of allowance for 

changes that may occur in conjunction 

with the Office’s ‘‘Trademarks Next 

Generation’’ information-technology 

initiative, but encouraged the Office to 

seek stakeholder input before making 

substantial changes to the current 

format of the notice of allowance. 

Response: The Office continues to 

welcome stakeholder input regarding 

the ‘‘Trademarks Next Generation’’ 

information technology initiative and 

will provide sufficient notice prior to 

revising forms. 

Madrid Protocol 

Comment: One commenter stated the 

proposed amendment to § 7.11(a)(3)(ii) 

was not consistent with the Common 

Regulations under the Madrid 

Agreement Concerning the International 

Registration of Marks and the Protocol 

Relating to that Agreement (as in force 

on January 1, 2013) (hereinafter 

‘‘Common Regulations’’), and that under 

the Common Regulations, the 

requirement for both black-and-white 

and color reproductions of the mark 

applies to all applications, whether filed 

on paper or electronically. 

Response: Based on the concern 

raised by the commenter about 

consistency with the Common 

Regulations, the Office will explore the 

matter further and is withdrawing the 

proposed amendment to § 7.11(a)(3)(ii) 

at this time. 

Comment: Another commenter stated 

that the structure of § 7.23 should be 

revisited, as the rule appears to apply 

only to assignments, while Article 9 of 

the Madrid Protocol and Rule 25 of the 

Common Regulations apply broadly to 

all possible ownership changes, 

including following the death of the 

holder, judicial decisions, and mergers. 

In those contexts, the requirement for a 

‘‘good-faith effort’’ to obtain the 

signature of the former owner should be 

revisited. 

Response: While § 7.23 refers to 

‘‘assignments,’’ both in the title and in 

the body, the Office interprets this term 

broadly to encompass not only 

assignments but also other types of 

conveyances, such as mergers and courtordered changes. This corresponds with 

the practice in the Office’s Assignment 

Recordation Branch, where the term 

‘‘assignments’’ is used in the title of the 

unit and in documentation, but is 

interpreted to include not only 

assignments but also other types of 

conveyances, such as changes of name 

and security interests. In order to ensure 

clarity, the Office has revised 

§ 7.23(a)(5) to indicate that, when the 

holder no longer exists, the assignee 

does not have to make a good-faith effort 

to obtain the assignor’s signature. 

Comment: Another commenter stated 

that the amendment to § 7.23(a)(6) does 

not cover all possible scenarios under 

which an interested party would be 

qualified to request a change of 

ownership through the Office, which 

appears contrary to Common 

Regulations Rules 25(1)(b) and 

25(2)(a)(iv). Furthermore, the 

commenter alleged that § 7.23(a)(6) is 

redundant and should be expunged 

since § 7.23(a)(4) mentions entitlement 

requirements, and the Common 

Regulations do not impose the 

limitations set forth in § 7.23(a)(6) on an 

assignee of an international registration 

to be able to record an assignment 

through the Office. 

Response: While the International 

Bureau permits requests for changes of 

ownership to be presented through the 

office of a contacting party, the Office is 

not required to do so. The rule change 

broadens the ability of U.S. trademark 

owners, who otherwise could not obtain 

the signature of the former holder after 

a good-faith effort, to update ownership 

information with the International 

Bureau. While the revised rule could 

not be invoked by parties with no 

connection to the Office (e.g., a U.S. 

domestic application/registration or 

request for extension of protection), 

those parties have a remedy. They have 

the option to file a petition to the 

Director and, upon a showing of 

extraordinary circumstances, request a 

waiver of the requirements of 

§ 7.23(a)(6). Since there are transferees 

who do not qualify to invoke the 

amended rule, § 7.23(a)(6) is not 

redundant. 

Comment: One commenter addressed 

the proposed amendment to 

§ 7.24(b)(5)(ii) to require that a request, 

submitted through the Office, to record 

a restriction, or the release of a 

restriction, that is the result of an 

agreement between the holder of the 

international registration and the party 

restricting the holder’s right of disposal 

must include a statement indicating 

that, after making a good-faith effort, the 

signature of the holder of the 

international registration could not be 

obtained for the request to record the 

restriction, or release of the restriction, 

and such statement must be signed and 

verified or supported by declaration 

under § 2.20. The commenter noted that 

the proposed amendment appears to be 

acceptable in so far as it purports to 

implement Common Regulations Rule 

20(1)(b), but alleged that the current 

provisions of § 7.24 are not in 

compliance with the Common 

Regulations because § 7.24(a) offers the 


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opportunity to record a restriction 

through the Office only if the party who 

obtained the restriction is a national of, 

is domiciled in, or has a real and 

effective industrial or commercial 

establishment in the U.S. The 

commenter believes that Common 

Regulations Rule 20(1)(a) dictates that 

whether or not the holder is a U.S. 

subject should control. 

Response: While Common 

Regulations Rule 20(1)(a) permits the 

office of any contracting party of the 

holder to inform the International 

Bureau that the holder’s right to dispose 

of an international registration has been 

restricted, it does not require the office 

of the contracting party to do so. 

Accordingly, the Office is not required 

to inform the International Bureau that 

the holder’s right to dispose of an 

international registration has been 

restricted. 

Comment: One commenter stated that 

the rationale for the amendment to 

§ 7.24(b)(7), to indicate that a request to 

record a restriction, or the release of a 

restriction, must include an indication 

that the restriction, or the release of the 

restriction, of the holder’s right of 

disposal of the international registration 

applies to the designation to the U.S. or 

an international registration that was 

originally based on a U.S. application or 

registration was unclear. The 

commenter asked if there was a need for 

equal treatment in two very distinct 

situations, such as restriction on the 

right to dispose of an international 

registration having effect in the U.S. and 

an international registration having no 

such effect, which would not be a 

remedy. The commenter suggested 

amending § 7.24(a)(2) to refer to the 

holder of the international registration 

instead of the party who obtained the 

restriction, or deleting or amending 

§ 7.24(b)(4). 

Response: While the International 

Bureau permits requests to record the 

holder’s right to dispose of an 

international registration to be 

presented through an office of a 

contracting party, the Office is not 

required to do so. The proposed rule 

change broadens the ability of U.S. 

trademark owners, who otherwise could 

not obtain the signature of the holder 

after a good-faith effort, to record the 

restriction of the right to dispose with 

the International Bureau. While the 

proposed rule could not be invoked by 

a party with no connection to the Office 

(e.g., U.S. domestic application/

registration or request for extension of 

protection), such a party has a remedy. 

The party has the option to file a 

petition to the Director and, upon a 

showing of extraordinary circumstances, 

request a waiver of the requirements of 

§ 7.24(b)(7). 

Discussion of Rule Changes 

Representation by Attorneys or Other 

Authorized Persons 

Rule 2.17(d)(1) 

The Office is amending § 2.17(d)(1) to 

remove the reference to the number of 

powers of attorney that can be filed via 

the Trademark Electronic Application 

System (‘‘TEAS’’) for existing 

applications or registrations that have 

the identical owner and attorney. Prior 

to this amendment, the TEAS 

Revocation of Attorney/Domestic 

Representative and/or Appointment of 

Attorney/Domestic Representative form 

indicated that up to 300 applications or 

registrations could be amended per 

request. The amendment is intended to 

remove outdated information, and 

allows for greater flexibility for future 

enhancements to TEAS. 

Rule 2.19(b) 

The Office is amending § 2.19(b) to 

require compliance with § 11.116, rather 

than § 10.40, as part 10 of this chapter 

has been removed and reserved (78 FR 

20180 (April 3, 2013)) and § 11.116 now 

sets out the requirements for 

terminating representation. 

Applications for Registration 

Rule 2.22(a)(19) 

The Office is amending § 2.22(a)(19) 

to indicate that if a TEAS Plus applicant 

owns one or more registrations for the 

same mark shown in the application, 

and the last listed owner of the prior 

registration(s) differs from the owner of 

the application, the application must 

include a claim of ownership for the 

prior registration(s) in order to be 

entitled to the reduced filing fee under 

§ 2.6(a)(1)(iii). This limits the 

circumstances under which a TEAS 

Plus applicant is required to claim 

ownership of a prior registration and is 

consistent with the revision to the claim 

of ownership requirements in § 2.36. 

Rule 2.36 

The Office is amending § 2.36 to 

indicate that an applicant is only 

required to claim ownership of prior 

registrations for the same or similar 

marks if the owner listed in the 

application differs from the owner last 

listed in the Office’s database for such 

prior registrations. This is consistent 

with existing practice. 

Rule 2.38 

The Office is amending § 2.38(b) to 

remove the requirement that an 

application indicate that, if the appliedfor mark is not being used by the 

applicant but is being used by one or 

more related companies whose use 

inures to the benefit of the applicant 

under section 5 of the Act, such fact 

must be indicated in the application. 

The Office is re-designating § 2.38(c) 

as § 2.38(b), as the requirement in 

current § 2.38(b) is being removed. 

Examination of Application and Action 

by Applicants 

Rule 2.62(c) 

The Office is adding new § 2.62(c) to 

specify that responses to Office actions 

must be filed through TEAS, transmitted 

by facsimile, mailed, or delivered by 

hand, and that responses sent by email 

will not be accorded a date of receipt. 

This is consistent with existing practice. 

Rule 2.63 

The Office is amending the title of 

§ 2.63 from ‘‘Reexamination’’ to ‘‘Action 

after response,’’ as revised § 2.63 

incorporates a discussion of 

reexamination, the filing of petitions 

and appeals, and abandonments. 

The Office is amending § 2.63(a) to 

clarify that after submission of a 

response by the applicant, the 

examining attorney will review all 

statutory refusal(s) and/or 

requirement(s) in light of the response. 

This is consistent with TMEP section 

713. 

The Office is adding § 2.63(a)(1) to 

clarify that the applicant may respond 

to a non-final action that maintains any 

requirement(s) or substantive refusal(s) 

by filing a timely response to the 

examiner’s action. This is consistent 

with TMEP section 713. To ensure 

clarity, the Office is adding a crossreference to § 2.62(a). 

The Office is adding § 2.63(a)(2) to 

clarify that the applicant may respond 

to a non-final action that maintains any 

requirement(s) by filing a petition to the 

Director under § 2.146 if the subject 

matter of the requirement(s) is 

appropriate for petition. This is 

consistent with TMEP sections 713 and 

1702. In addition, as both the applicable 

response deadlines after a denial of a 

petition to the Director under § 2.146 

and the statement that a requirement 

that is the subject of a petition decided 

by the Director may not subsequently be 

the subject of an appeal to the TTAB are 

set out in new § 2.63(c), such 

information has been removed from 

§ 2.63(a)(2). 

The Office is amending § 2.63(b) to 

clarify that the examining attorney may 

make final a refusal or requirement 

upon review of a response. This is 

consistent with current § 2.64(a) and 


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TMEP sections 713 and 714.03. To 

ensure clarity, the Office is updating the 

wording to remove a reference to 

‘‘request for reconsideration’’ because 

§ 2.63(a) discusses responses to nonfinal actions, and the Office uses 

‘‘request for reconsideration’’ to refer to 

responses after final actions. 

The Office is adding § 2.63(b)(1) to 

clarify that the applicant may respond 

to a final action that maintains any 

substantive refusal(s) by filing an appeal 

to the TTAB under §§ 2.141 and 2.142. 

This is consistent with TMEP section 

1501.01. To ensure clarity, the Office is 

updating the wording to explicitly state 

that the applicant may additionally 

respond by filing a timely request for 

reconsideration under § 2.63(b)(3) that 

seeks to overcome any substantive 

refusal(s) or outstanding requirement(s) 

maintained in the final action. This is 

consistent with TMEP section 715.03. 

The Office is adding § 2.63(b)(2) to 

clarify that the applicant may respond 

to a final action that withdraws all 

substantive refusals but maintains any 

requirement(s) either by filing an appeal 

to the TTAB under §§ 2.141 and 2.142 

or by filing a petition to the Director 

under § 2.146, if the subject matter of 

the requirement(s) is procedural, and 

therefore appropriate for petition. This 

is consistent with current § 2.63(b) and 

TMEP sections 1501.01 and 1704. To 

ensure clarity, the Office is updating the 

wording to explicitly state that the 

applicant may additionally respond by 

filing a timely request for 

reconsideration under § 2.63(b)(3) that 

seeks to comply with any outstanding 

requirement(s) maintained in the final 

action. This is consistent with TMEP 

section 715.03. 

The Office is adding § 2.63(b)(3) to 

clarify that the applicant may file a 

request for reconsideration of the final 

action prior to the expiration of the time 

for filing an appeal to the TTAB or a 

petition to the Director, and that the 

request does not stay or extend the time 

for filing an appeal or petition. This is 

consistent with current § 2.64(b) and 

TMEP section 715.03. To ensure clarity, 

the Office is updating the wording to 

indicate that the request for 

reconsideration should seek to 

overcome any substantive refusal(s) 

and/or comply with any outstanding 

requirement(s), and that the Office will 

enter amendments accompanying 

requests for reconsideration if the 

amendments comply with the rules of 

practice and the Act. This is consistent 

with TMEP sections 715.02 and 715.03. 

In addition, the proposed language 

indicating that the request for 

reconsideration must be properly signed 

is being removed from § 2.63(b)(3), as 

this requirement is already specified in 

§ 2.193(e)(2). 

The Office is adding § 2.63(b)(4) to 

clarify that the filing of a request for 

reconsideration that does not result in 

the withdrawal of all refusals and 

requirements, without the filing of a 

timely appeal or petition, will result in 

abandonment of the application for 

incomplete response. This is consistent 

with section 12(b) of the Act and current 

§ 2.65(a). 

The Office is adding § 2.63(c) to 

clarify both that if a petition to the 

Director under § 2.146 is denied, the 

applicant will have until six months 

from the date of issuance of the Office 

action that repeated the requirement(s), 

or made it final, or thirty days from the 

date of the decision on the petition, 

whichever date is later, to comply with 

the requirement(s), and that a 

requirement that is the subject of a 

petition decided by the Director 

subsequently may not be the subject of 

an appeal to the TTAB. This is 

consistent with current § 2.63(b) and 

TMEP sections 1501.01 and 1702. 

The Office is adding § 2.63(d) to 

clarify that if an amendment to allege 

use is filed during the six-month 

response period after issuance of a final 

action, the examining attorney will 

examine the amendment, but the filing 

of the amendment does not stay or 

extend the time for filing an appeal to 

the TTAB or a petition to the Director. 

This is consistent with current 

§ 2.64(c)(1) and TMEP sections 711 and 

1104. 

Rule 2.64 

The Office is removing and reserving 

§ 2.64 and is incorporating updated final 

action procedures into revised § 2.63. 

Rule 2.65 

The Office is amending § 2.65(a) both 

to clarify that an application will be 

deemed abandoned if an applicant fails 

to respond, or respond completely, to an 

Office action within six months of the 

issuance date, but a timely petition to 

the Director or notice of appeal to the 

TTAB, if appropriate, is considered to 

be a response that avoids abandonment, 

and to revise the reference to § 2.63(b) 

so as to reference § 2.63(a) and (b). The 

clarification is consistent with TMEP 

section 718.03, and the revision to the 

reference accounts for the amendment 

to § 2.63, which sets out the conditions 

for a petition under § 2.146 in § 2.63(a) 

and (b) instead of only § 2.63(b). To 

ensure clarity, the Office is adding a 

cross-reference to § 2.63(b)(4). 

The Office is adding § 2.65(a)(1) to 

clarify that if an applicant fails to timely 

respond to an Office action, but all 

refusals and/or requirements are 

expressly limited to certain goods and/ 

or services, the application will be 

abandoned only as to those goods and/ 

or services. This is consistent with 

current § 2.65(a) and TMEP section 

718.02(a). 

The Office is adding § 2.65(a)(2) to 

clarify that an applicant may, in certain 

situations, be granted thirty days, or to 

the end of the response period set forth 

in the action, whichever is longer, to 

provide information omitted from a 

response before the examining attorney 

considers the issue of abandonment. In 

order to ensure clarity, certain wording 

in the rule has been changed from 

passive to active voice. This is 

consistent with current § 2.65(b) and 

TMEP section 718.03(b). 

The Office is amending § 2.65(b) to 

clarify that an application will be 

abandoned if an applicant expressly 

abandons the application pursuant to 

§ 2.68. This is consistent with TMEP 

section 718.01. 

The Office is amending § 2.65(c) to 

clarify that an application under section 

1(b) of the Act will be abandoned if the 

applicant fails to file a timely statement 

of use under § 2.88 or a request for an 

extension of time for filing a statement 

of use under § 2.89. This is consistent 

with section 1(d)(4) of the Act and 

TMEP sections 1108.01 and 1109.04. 

Rule 2.68 

The Office is amending § 2.68(a) to 

indicate that, consistent with existing 

practice, a request for abandonment or 

withdrawal may not subsequently be 

withdrawn. This is intended to provide 

applicants, registration owners, and the 

public assurance of the accuracy of the 

status of applications or registrations 

after filings are received by the Office. 

The Office is amending § 2.68(b) for 

clarity by moving the ‘‘in any 

proceeding before the Office’’ clause to 

the end of the sentence. 

Amendment of Application 

Rule 2.77(b) 

The Office is amending § 2.77(b) to 

indicate that amendments not listed in 

§ 2.77(a) may be entered in the 

application in the time period between 

issuance of the notice of allowance and 

submission of a statement of use only 

with the express permission of the 

Director, after consideration on petition 

under § 2.146. This is consistent with 

TMEP sections 1107 and 1505.01(d), 

which currently require a waiver of 

§ 2.77 on petition. If the Director 

determines that the amendment requires 

review by the examining attorney, the 

petition will be denied and the 


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amendment may be resubmitted with 

the statement of use. 

Publication and Post Publication 

Rule 2.81(b) 

The Office is amending § 2.81(b) to 

remove the list of items that will be 

included on the notice of allowance. 

This change will allow greater flexibility 

in the format of the notice of allowance 

for changes that may occur in 

conjunction with the Office’s 

‘‘Trademarks Next Generation’’ 

information-technology initiative. As a 

matter of practice, at this time, the 

Office plans to continue to maintain the 

current format of the notice of 

allowance. 

Rule 2.84(b) 

The Office is amending § 2.84(b) to 

clarify that an application that is not the 

subject of an inter partes proceeding 

before the TTAB may be amended after 

the mark has been published for 

opposition, but before the certificate of 

registration has been issued under 

section 1(a), 44, or 66(a) of the Act, or 

before the notice of allowance has been 

issued in an application under section 

1(b) of the Act, if the amendment meets 

the requirements of §§ 2.71, 2.72, and 

2.74. This is consistent with existing 

practice. 

Appeals 

Rule 2.142(f) 

The Office is amending § 2.142(f)(3) 

and (f)(6) to remove the references to 

§ 2.64, as the Office is removing and 

reserving § 2.64, with the sections of 

§ 2.64 relevant to § 2.142(f)(3) and (f)(6) 

incorporated into revised § 2.63. 

Rule 2.145(a) 

The Office is amending § 2.145(a) to 

add registrants who have filed an 

affidavit or declaration under section 71 

of the Act and are dissatisfied with a 

decision of the Director to the list of 

parties eligible to appeal to the U.S. 

Court of Appeals for the Federal Circuit. 

This is consistent with TMEP section 

1613.18(d). 

Rule 2.146 

The Office is amending § 2.146(a)(1) 

and (g) to replace references to § 2.63(b) 

with references to § 2.63(a) and (b), as 

the amended rules will list conditions 

for a petition under § 2.146 in § 2.63(a) 

and (b) instead of only § 2.63(b). In 

addition, in order to ensure clarity, the 

Office is amending § 2.146(g) to replace 

a reference to § 2.65 with a reference to 

§ 2.65(a). 

Post Registration 

Rule 2.171(b)(2)(i) 

The Office is amending § 2.171(b)(2)(i) 

to clarify that when the Office receives 

notification from the International 

Bureau of the World Intellectual 

Property Organization that an 

international registration has been 

divided due to a change in ownership 

with respect to some but not all of the 

goods and/or services, the Office will 

update Office records to reflect the 

change in ownership, divide out the 

assigned goods and/or services from the 

registered extension of protection 

(parent registration), and publish notice 

of the parent registration in the Official 

Gazette. The Office does not record the 

partial change of ownership in the 

Assignment Recordation Branch 

(formerly Assignment Services Branch), 

and only issues an updated certificate 

for the parent registration to the owner 

upon payment of the fee required by 

§ 2.6. This is consistent with existing 

practice. 

Rule 2.172 

The Office is amending § 2.172 to 

clarify that a surrender for cancellation 

may not subsequently be withdrawn. 

This is consistent with existing practice. 

Rule 2.185(a) 

The Office is amending § 2.185(a) to 

indicate that deficiencies in renewal 

applications may be corrected after 

notification from the Office. This is 

consistent with existing practice. 

General Information and 

Correspondence in Trademark Cases 

Rule 2.198(a)(1) 

The Office is amending § 2.198(a)(1) 

by adding § 2.198(a)(1)(viii) to include 

affidavits under section 71 of the Act in 

the list of documents excluded from the 

Office’s Priority Mail Express® (formerly 

Express Mail®) procedure. This is 

consistent with the handling of 

corresponding affidavits under section 8 

of the Act. In connection with this 

addition, the Office is revising 

§ 2.198(a)(1)(vi) and § 2.198(a)(1)(vii) for 

clarity. 

Classification of Goods and Services 

Rule 6.1(5) 

The Office is amending § 6.1(5) to add 

the wording ‘‘or veterinary’’ to the entry 

‘‘dietetic food and substances adapted 

for medical use’’ in the listing of goods 

for International Class 5. This is 

consistent with the current heading for 

the international class as established by 

the Committee of Experts of the Nice 

Union and set forth in the International 

Classification of Goods and Services for 

the Purposes of the Registration of 

Marks published annually by the World 

Intellectual Property Organization on its 

Web site. 

Madrid Protocol 

Rule 7.23(a) 

The Office had proposed to amend 

§ 7.23(a)(5) to require that a request to 

record an assignment of an international 

registration submitted through the 

Office include a statement that, after 

making a good-faith effort, the assignee 

could not obtain the assignor’s signature 

for the request to record the assignment 

and that the statement be signed and 

verified or supported by declaration 

under § 2.20. In order to ensure clarity, 

the Office is revising the amendment to 

§ 7.23(a)(5) to require that a request to 

record an assignment of an international 

registration submitted through the 

Office include a statement that either 

the assignee could not obtain the 

assignor’s signature for the request to 

record the assignment because the 

holder no longer exists, or, after a goodfaith effort, the assignee could not 

obtain the assignor’s signature for the 

request to record the assignment. This 

revision will ensure that, when possible, 

assignees make a good-faith effort to 

obtain the assignor’s signature before 

invoking this rule and requesting the 

Office to forward the assignment 

document to the International Bureau. 

The Office is amending § 7.23(a)(6) to 

indicate that a request to record an 

assignment of an international 

registration submitted through the 

Office must include an indication that 

the assignment applies to the 

designation to the United States (‘‘U.S.’’) 

or an international registration that was 

originally based on a U.S. application or 

registration. This revision is intended to 

ensure that an assignee of an 

international registration based on a 

U.S. registration or application is treated 

the same as an assignee of a designation 

to the U.S. Prior to this revision, the 

owner of an international registration 

based on a U.S. registration or 

application was required to file a 

petition to waive § 7.23(a)(6). 

Rule 7.24(b) 

The Office had proposed to amend 

§ 7.24(b)(5)(ii) to require that a request, 

submitted through the Office, to record 

a restriction, or the release of a 

restriction, that is the result of an 

agreement between the holder of the 

international registration and the party 

restricting the holder’s right of disposal 

must include a statement indicating 

that, after making a good-faith effort, the 


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signature of the holder of the 

international registration could not be 

obtained for the request to record the 

restriction, or release of the restriction, 

and such statement must be signed and 

verified or supported by declaration 

under § 2.20. In order to ensure clarity, 

the Office is revising the amendment to 

§ 7.24(b)(5)(ii) to require, for a request to 

record the restriction or release of the 

restriction, a statement either that the 

holder of the international registration 

could not obtain the signature of the 

party restricting the holder’s right of 

disposal because the party restricting 

the holder’s right of disposal no longer 

exists, or, that after a good-faith effort, 

the holder of the international 

registration could not obtain the 

signature of the party restricting the 

holder’s right of disposal. This revision 

will ensure that, when possible, holders 

of international registrations make a 

good-faith effort to obtain the signature 

of the party restricting the holder’s right 

of disposal before invoking this rule and 

requesting the Office to forward the 

document to the International Bureau. 

The Office is amending § 7.24(b)(7) to 

indicate that a request to record a 

restriction, or the release of a restriction, 

must include an indication that the 

restriction, or the release of the 

restriction, of the holder’s right of 

disposal of the international registration 

applies to the designation to the U.S. or 

an international registration that was 

originally based on a U.S. application or 

registration. This revision is intended to 

ensure that an assignee of an 

international registration based on a 

U.S. registration or application is treated 

the same as an assignee of a designation 

to the U.S. Prior to this revision, the 

owner of an international registration 

based on a U.S. registration or 

application was required to file a 

petition to waive § 7.24(b)(7). 

Rule 7.25(a) 

The Office is amending § 7.25(a) to 

add §§ 2.21, 2.76, 2.88, and 2.89 to the 

list of sections in part 2 not applicable 

to an extension of protection under 

section 66(a) of the Act. This is 

consistent with existing practice as 

these sections in part 2 only concern 

applications under sections 1 or 44 of 

the Act. 

Rule 7.31 

The Office is amending § 7.31 by 

revising the introductory text and 

§ 7.31(a)(3) to require that a request to 

transform an extension of protection to 

the U.S. into a U.S. application specify 

the goods and/or services to be 

transformed. This revision is intended 

to ensure that the Office transforms an 

accurate listing of goods and/or services. 

The Office is redesignating current 

§ 7.31(a)(3) as § 7.31(a)(4) and current 

§ 7.31(a)(4) as new § 7.31(a)(5) because 

current § 7.31(a)(3) is being revised to 

require that a request to transform an 

extension of protection to the U.S. into 

a U.S. application specify the goods 

and/or services to be transformed. 

Rulemaking Considerations 

Administrative Procedure Act: The 

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) (rule that clarifies interpretation 

of a statute is interpretive); Bachow 

Commc’ns Inc. v. FCC, 237 F.3d 683, 

690 (D.C. Cir. 2001) (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) (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 

rule 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)(A)). However, 

the Office chose to seek public comment 

before implementing the rule to benefit 

from the public’s input. 

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 Act analysis, nor 

a certification under the Regulatory 

Flexibility Act (5 U.S.C. 601 et seq.), is 

required. See 5 U.S.C. 603. 

In addition, for the reasons set forth 

herein, the Deputy General Counsel for 

General Law of the United States Patent 

and Trademark Office has certified to 

the Chief Counsel for Advocacy of the 

Small Business Administration that this 

rule will not have a significant 

economic impact on a substantial 

number of small entities. See 5 U.S.C. 

605(b). This rule involves changes to 

rules of agency practice and procedure. 

The primary impact of the rule is to 

provide greater clarity as to certain 

requirements relating to representation 

before the Office, applications for 

registration, examination procedures, 

amendment of applications, publication 

and post publication procedures, 

appeals, petitions, post registration 

practice, correspondence in trademark 

cases, classification of goods and 

services, and procedures under the 

Madrid Protocol. For the most part, the 

rule changes are intended to codify 

existing practice. The burdens, if any, to 

all entities, including small entities, 

imposed by these rule changes will be 

minor. Additionally, in a number of 

instances, the rule changes will lessen 

the burdens on applicants. Therefore, 

this rule will not have a significant 

economic impact on a substantial 

number of small entities. 

Executive Order 12866: This rule has 

been determined not to be significant for 

purposes of Executive Order 12866. 

Executive Order 13563 (Improving 

Regulation and Regulatory Review): The 

Office has complied with Executive 

Order 13563 (Jan. 18, 2011). 

Specifically, the Office has, to the extent 

feasible and applicable: (1) Made a 

reasoned determination that the benefits 

justify the costs of the rule changes; (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 a notice of proposed 

rulemaking, and provided on-line 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: 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 any 

final rule, the Office will submit a report 

containing the final rule and other 

required information to the U.S. Senate, 

the U.S. House of Representatives, and 

the Comptroller General of the 


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2310 Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations 

Government Accountability Office. The 

changes in this 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 rule change is not 

expected to result in a ‘‘major rule’’ as 

defined in 5 U.S.C. 804(2). 

Unfunded Mandate Reform Act of 

1995: The Unfunded Mandates Reform 

Act (2 U.S.C. 1501 et seq.) 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 

governments, in the aggregate, or by the 

private sector, of $100 million or more 

(adjusted annually for inflation) in any 

given year. This rule will have no such 

effect on State, local, and tribal 

governments or the private sector. 

Paperwork Reduction Act: This rule 

involves information collection 

requirements which are subject to 

review by the U.S. Office of 

Management and Budget (OMB) under 

the Paperwork Reduction Act of 1995 

(44 U.S.C. 3501 et seq.). The Office has 

determined that there will be no new 

information collection requirements or 

impacts to existing information 

collection requirements associated with 

this rule. The collections of information 

involved in this rule have been 

reviewed and previously approved by 

OMB under control numbers 0651– 

0009, 0651–0050, 0651–0051, 0651– 

0054, 0651–0055, 0651–0056, and 0651– 

0061. 

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 

37 CFR Part 2 

Administrative practice and 

procedure, Trademarks. 

37 CFR Part 6 

Administrative practice and 

procedure, Classification, Trademarks. 

37 CFR Part 7 

Administrative practice and 

procedure, International registration, 

Trademarks. 

For the reasons given in the preamble 

and under the authority contained in 15 

U.S.C. 1123 and 35 U.S.C. 2, as 

amended, the Office amends parts 2, 6, 

and 7 of title 37 as follows: 

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. 

■ 2. Amend § 2.17 by revising paragraph 

(d)(1) to read as follows: 

§ 2.17 Recognition for representation. 

* * * * * 

(d) * * * 

(1) The owner of an application or 

registration may appoint a 

practitioner(s) qualified to practice 

under § 11.14 of this chapter to 

represent the owner for all existing 

applications or registrations that have 

the identical owner name and attorney 

through TEAS. 

* * * * * 

■ 3. Amend § 2.19 by revising paragraph 

(b) introductory text to read as follows: 

§ 2.19 Revocation or withdrawal of 

attorney. 

* * * * * 

(b) Withdrawal of attorney. If the 

requirements of § 11.116 of this chapter 

are met, a practitioner authorized to 

represent an applicant, registrant, or 

party to a proceeding in a trademark 

case may withdraw upon application to 

and approval by the Director or, when 

applicable, upon motion granted by the 

Trademark Trial and Appeal Board. The 

practitioner should file the request to 

withdraw soon after the practitioner 

notifies the client of his/her intent to 

withdraw. The request must include the 

following: 

* * * * * 

■ 4. Amend § 2.22 by revising paragraph 

(a)(19) to read as follows: 

§ 2.22 Filing requirements for a TEAS Plus 

application 

(a) * * * 

(19) If the applicant owns one or more 

registrations for the same mark, and the 

owner(s) last listed in Office records of 

the prior registration(s) for the same 

mark differs from the owner(s) listed in 

the application, a claim of ownership of 

the registration(s) identified by the 

registration number(s), pursuant to 

§ 2.36; and 

* * * * * 

■ 5. Revise § 2.36 to read as follows: 

§ 2.36 Identification of prior registrations. 

Prior registrations of the same or 

similar marks owned by the applicant 

should be identified in the application 

if the owner(s) last listed in Office 

records of the prior registrations differs 

from the owner(s) listed in the 

application. 

■ 6. Amend § 2.38 by revising paragraph 

(b) and removing paragraph (c) to read 

as follows: 

§ 2.38 Use by predecessor or by related 

companies. 

* * * * * 

(b) The Office may require such 

details concerning the nature of the 

relationship and such proofs as may be 

necessary and appropriate for the 

purpose of showing that the use by 

related companies inures to the benefit 

of the applicant and does not affect the 

validity of the mark. 

■ 7. Amend § 2.62 by adding paragraph 

(c) to read as follows: 

§ 2.62 Procedure for filing response. 

* * * * * 

(c) Form. Responses must be filed 

through TEAS, transmitted by facsimile, 

mailed, or delivered by hand, as set out 

in § 2.190(a). Responses sent via email 

will not be accorded a date of receipt. 

■ 8. Revise § 2.63 to read as follows: 

§ 2.63 Action after response. 

(a) Repeated non-final refusal or 

requirement. After response by the 

applicant, the examining attorney will 

review all statutory refusals and/or 

requirement(s) in light of the response. 

(1) If, after review of the applicant’s 

response, the examining attorney issues 

a non-final action that maintains any 

previously issued substantive refusal(s) 

to register or repeats any requirement(s), 

the applicant may submit a timely 

response to the action under § 2.62(a). 

(2) If, after review of the applicant’s 

response, the examining attorney issues 

a non-final action that contains no 

substantive refusals to register, but 

maintains any requirement(s), the 

applicant may respond to such repeated 

requirement(s) by filing a timely 

petition to the Director for relief from 

the repeated requirement(s) if the 

subject matter of the repeated 

requirement(s) is appropriate for 

petition to the Director (see § 2.146(b)). 

(b) Final refusal or requirement. Upon 

review of a response, the examining 

attorney may state that the refusal(s) to 

register, or the requirement(s), is final. 

(1) If the examining attorney issues a 

final action that maintains any 

substantive refusal(s) to register, the 

applicant may respond by timely filing: 


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(i) A request for reconsideration under 

paragraph (b)(3) of this section that 

seeks to overcome any substantive 

refusal(s) to register, and comply with 

any outstanding requirement(s), 

maintained in the final action; or 

(ii) An appeal to the Trademark Trial 

and Appeal Board under §§ 2.141 and 

2.142. 

(2) If the examining attorney issues a 

final action that contains no substantive 

refusals to register, but maintains any 

requirement(s), the applicant may 

respond by timely filing: 

(i) A request for reconsideration under 

paragraph (b)(3) of this section that 

seeks to comply with any outstanding 

requirement(s) maintained in the final 

action; 

(ii) An appeal of the requirement(s) to 

the Trademark Trial and Appeal Board 

under §§ 2.141 and 2.142; or 

(iii) A petition to the Director under 

§ 2.146 to review the requirement(s), if 

the subject matter of the requirement(s) 

is procedural, and therefore appropriate 

for petition. 

(3) Prior to the expiration of the time 

for filing an appeal or a petition, the 

applicant may file a request for 

reconsideration of the final action that 

seeks to overcome any substantive 

refusal(s) and/or comply with any 

outstanding requirement(s). Filing a 

request for reconsideration does not stay 

or extend the time for filing an appeal 

or petition. The Office will enter 

amendments accompanying requests for 

reconsideration after final action if the 

amendments comply with the rules of 

practice in trademark cases and the Act. 

(4) Filing a request for reconsideration 

that does not result in the withdrawal of 

all refusals and requirements, without 

the filing of a timely appeal or petition, 

will result in abandonment of the 

application for incomplete response, 

pursuant to § 2.65(a). 

(c) If a petition to the Director under 

§ 2.146 is denied, the applicant will 

have six months from the date of 

issuance of the Office action that 

repeated the requirement(s), or made it 

final, or thirty days from the date of the 

decision on the petition, whichever date 

is later, to comply with the 

requirement(s). A requirement that is 

the subject of a petition decided by the 

Director subsequently may not be the 

subject of an appeal to the Trademark 

Trial and Appeal Board. 

(d) If an applicant in an application 

under section 1(b) of the Act files an 

amendment to allege use under § 2.76 

during the six-month response period 

after issuance of a final action, the 

examining attorney will examine the 

amendment. The filing of such an 

amendment does not stay or extend the 

time for filing an appeal or petition. 

§ 2.64 [Removed and Reserved] 

■ 9. Remove and reserve § 2.64. 

■ 10. Revise § 2.65 to read as follows: 

§ 2.65 Abandonment. 

(a) An application will be abandoned 

if an applicant fails to respond to an 

Office action, or to respond completely, 

within six months from the date of 

issuance. A timely petition to the 

Director pursuant to §§ 2.63(a) and (b) 

and 2.146 or notice of appeal to the 

Trademark Trial and Appeal Board 

pursuant to § 2.142, if appropriate, is a 

response that avoids abandonment (see 

§ 2.63(b)(4)). 

(1) If all refusals and/or requirements 

are expressly limited to certain goods 

and/or services, the application will be 

abandoned only as to those goods and/ 

or services. 

(2) When a timely response by the 

applicant is a bona fide attempt to 

advance the examination of the 

application and is a substantially 

complete response to the examining 

attorney’s action, but consideration of 

some matter or compliance with a 

requirement has been omitted, the 

examining attorney may grant the 

applicant thirty days, or to the end of 

the response period set forth in the 

action to which the substantially 

complete response was submitted, 

whichever is longer, to explain and 

supply the omission before the 

examining attorney considers the 

question of abandonment. 

(b) An application will be abandoned 

if an applicant expressly abandons the 

application pursuant to § 2.68. 

(c) An application will be abandoned 

if an applicant in an application under 

section 1(b) of the Act fails to timely file 

either a statement of use under § 2.88 or 

a request for an extension of time for 

filing a statement of use under § 2.89. 

■ 11. Revise § 2.68 to read as follows: 

§ 2.68 Express abandonment (withdrawal) 

of application. 

(a) Written document required. An 

applicant may expressly abandon an 

application by filing a written request 

for abandonment or withdrawal of the 

application, signed by the applicant, 

someone with legal authority to bind the 

applicant (e.g., a corporate officer or 

general partner of a partnership), or a 

practitioner qualified to practice under 

§ 11.14 of this chapter, in accordance 

with the requirements of § 2.193(e)(2). A 

request for abandonment or withdrawal 

may not subsequently be withdrawn. 

(b) Rights in the mark not affected. 

Except as provided in § 2.135, the fact 

that an application has been expressly 

abandoned shall not affect any rights 

that the applicant may have in the mark 

set forth in the abandoned application 

in any proceeding before the Office. 

■ 12. Amend § 2.77 by revising 

paragraph (b) to read as follows: 

§ 2.77 Amendments between notice of 

allowance and statement of use. 

* * * * * 

(b) Other amendments may be entered 

during this period only with the express 

permission of the Director, after 

consideration on petition under § 2.146. 

If the Director determines that the 

amendment requires review by the 

examining attorney, the petition will be 

denied and the amendment may be 

resubmitted with the statement of use in 

order for the applicant to preserve its 

right to review. 

■ 13. Amend § 2.81 by revising 

paragraph (b) to read as follows: 

§ 2.81 Post publication. 

* * * * * 

(b) In an application under section 

1(b) of the Act for which no amendment 

to allege use under § 2.76 has been 

submitted and accepted, if no 

opposition is filed within the time 

permitted or all oppositions filed are 

dismissed, and if no interference is 

declared, a notice of allowance will 

issue. Thereafter, the applicant must 

submit a statement of use as provided in 

§ 2.88. 

■ 14. Amend § 2.84 by revising 

paragraph (b) to read as follows: 

§ 2.84 Jurisdiction over published 

applications. 

* * * * * 

(b) After publication, but before the 

certificate of registration is issued in an 

application under section 1(a), 44, or 

66(a) of the Act, or before the notice of 

allowance is issued in an application 

under section 1(b) of the Act, an 

application that is not the subject of an 

inter partes proceeding before the 

Trademark Trial and Appeal Board may 

be amended if the amendment meets the 

requirements of §§ 2.71, 2.72, and 2.74. 

Otherwise, an amendment to such an 

application may be submitted only upon 

petition to the Director to restore 

jurisdiction over the application to the 

examining attorney for consideration of 

the amendment and further 

examination. The amendment of an 

application that is the subject of an inter 

partes proceeding before the Trademark 

Trial and Appeal Board is governed by 

§ 2.133. 


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2312 Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations 

■ 15. Amend § 2.142 by revising 

paragraphs (f)(3) and (6) to read as 

follows: 

§ 2.142 Time and manner of ex parte 

appeals. 

* * * * * 

(f) * * * 

(3) If the further examination does 

result in an additional ground for 

refusal of registration, the examiner and 

appellant shall proceed as provided by 

§§ 2.61, 2.62, and 2.63. If the ground for 

refusal is made final, the examiner shall 

return the application to the Board, 

which shall thereupon issue an order 

allowing the appellant sixty days from 

the date of the order to file a 

supplemental brief limited to the 

additional ground for the refusal of 

registration. If the supplemental brief is 

not filed by the appellant within the 

time allowed, the appeal may be 

dismissed. 

* * * * * 

(6) If, during an appeal from a refusal 

of registration, it appears to the 

examiner that an issue not involved in 

the appeal may render the mark of the 

appellant unregistrable, the examiner 

may, by written request, ask the Board 

to suspend the appeal and to remand 

the application to the examiner for 

further examination. If the request is 

granted, the examiner and appellant 

shall proceed as provided by §§ 2.61, 

2.62, and 2.63. After the additional 

ground for refusal of registration has 

been withdrawn or made final, the 

examiner shall return the application to 

the Board, which shall resume 

proceedings in the appeal and take 

further appropriate action with respect 

thereto. 

* * * * * 

■ 16. Amend § 2.145 by revising 

paragraph (a) introductory text to read 

as follows: 

§ 2.145 Appeal to court and civil action. 

(a) Appeal to U.S. Court of Appeals 

for the Federal Circuit. An applicant for 

registration, or any party to an 

interference, opposition, or cancellation 

proceeding, or any party to an 

application to register as a concurrent 

user, hereinafter referred to as inter 

partes proceedings, who is dissatisfied 

with the decision of the Trademark Trial 

and Appeal Board, and any registrant 

who has filed an affidavit or declaration 

under section 8 or section 71 of the Act 

or who has filed an application for 

renewal and is dissatisfied with the 

decision of the Director (§§ 2.165 and 

2.184), may appeal to the U.S. Court of 

Appeals for the Federal Circuit. The 

appellant must take the following steps 

in such an appeal: 

* * * * * 

■ 17. Amend § 2.146 by revising 

paragraphs (a)(1) and (g) to read as 

follows: 

§ 2.146 Petitions to the Director. 

(a) * * * 

(1) From any repeated or final formal 

requirement of the examiner in the ex 

parte prosecution of an application if 

permitted by § 2.63(a) and (b); 

* * * * * 

(g) The mere filing of a petition to the 

Director will not act as a stay in any 

appeal or inter partes proceeding that is 

pending before the Trademark Trial and 

Appeal Board nor stay the period for 

replying to an Office action in an 

application except when a stay is 

specifically requested and is granted or 

when §§ 2.63(a) and (b) and 2.65(a) are 

applicable to an ex parte application. 

* * * * * 

■ 18. Amend § 2.171 by revising 

paragraph (b)(2)(i) to read as follows: 

§ 2.171 New certificate on change of 

ownership. 

* * * * * 

(b) * * * 

(2)(i) When the International Bureau 

of the World Intellectual Property 

Organization notifies the Office that an 

international registration has been 

divided as the result of a change of 

ownership with respect to some but not 

all of the goods and/or services, the 

Office will construe the International 

Bureau’s notice as a request to divide. 

The Office will update Office records to 

reflect the change in ownership, divide 

out the assigned goods and/or services 

from the registered extension of 

protection (parent registration), and 

publish notice of the parent registration 

in the Official Gazette. 

* * * * * 

■ 19. Revise § 2.172 to read as follows: 

§ 2.172 Surrender for cancellation. 

Upon application by the owner, the 

Director may permit any registration to 

be surrendered for cancellation. The 

application for surrender must be signed 

by the owner of the registration, 

someone with legal authority to bind the 

owner (e.g., a corporate officer or 

general partner of a partnership), or a 

practitioner qualified to practice under 

§ 11.14 of this chapter. When a 

registration has more than one class, one 

or more entire class(es) but fewer than 

the total number of classes may be 

surrendered. Deletion of fewer than all 

the goods or services in a single class 

constitutes amendment of the 

registration as to that class (see § 2.173), 

rather than surrender. A surrender for 

cancellation may not subsequently be 

withdrawn. 

■ 20. Amend § 2.185 by revising 

paragraph (a) introductory text to read 

as follows: 

§ 2.185 Correcting deficiencies in renewal 

application. 

(a) If the renewal application is filed 

within the time periods set forth in 

section 9(a) of the Act, deficiencies may 

be corrected after notification from the 

Office, as follows: 

* * * * * 

■ 21. Amend § 2.198 by revising 

paragraphs (a)(1)(vi) and (vii) and 

adding paragraph (a)(1)(viii) to read as 

follows: 

§ 2.198 Filing of correspondence by 

Priority Mail Express®. 

(a)(1) * * * 

(vi) Renewal requests under section 9 

of the Act; 

(vii) Requests to change or correct 

addresses; and 

(viii) Affidavits of use under section 

71 of the Act. 

* * * * * 

PART 6—CLASSIFICATION OF GOODS 

AND SERVICES UNDER THE 

TRADEMARK ACT 

■ 22. The authority citation for 37 CFR 

part 6 is revised to read as follows: 

Authority: Secs. 30, 41, 60 Stat. 436, 440; 

15 U.S.C. 1112, 1123; 35 U.S.C. 2, unless 

otherwise noted. 

■ 23. Amend § 6.1 by revising paragraph 

5 to read as follows: 

§ 6.1 International schedule of classes of 

goods and services. 

* * * * * 

5. Pharmaceutical and veterinary 

preparations; sanitary preparations for 

medical purposes; dietetic food and 

substances adapted for medical or 

veterinary use, food for babies; dietary 

supplements for humans and animals; 

plasters, materials for dressings; 

material for stopping teeth, dental wax; 

disinfectants; preparations for 

destroying vermin; fungicides, 

herbicides. 

* * * * * 


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Federal Register / Vol. 80, No. 11 / Friday, January 16, 2015 / Rules and Regulations 2313 

PART 7—RULES OF PRACTICE IN 

FILINGS PURSUANT TO THE 

PROTOCOL RELATING TO THE 

MADRID AGREEMENT CONCERNING 

THE INTERNATIONAL REGISTRATION 

OF MARKS 

■ 24. 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. 

■ 25. Amend § 7.23 by revising 

paragraph (a)(5) and (6) to read as 

follows: 

§ 7.23 Requests for recording 

assignments at the International Bureau. 

* * * * * 

(a) * * * 

(5) A statement, signed and verified 

(sworn to) or supported by a declaration 

under § 2.20 of this chapter, that, for the 

request to record the assignment, either 

the assignee could not obtain the 

assignor’s signature because the holder 

no longer exists, or, after a good-faith 

effort, the assignee could not obtain the 

assignor’s signature; 

(6) An indication that the assignment 

applies to the designation to the United 

States or an international registration 

that is based on a U.S. application or 

registration; 

* * * * * 

■ 26. Amend § 7.24 by revising 

paragraphs (b)(5)(ii) and (b)(7) to read as 

follows: 

§ 7.24 Requests to record security interest 

or other restriction of holder’s rights of 

disposal or release of such restriction 

submitted through the Office. 

* * * * * 

(b) * * * 

(5) * * * 

(ii) Where the restriction is the result 

of an agreement between the holder of 

the international registration and the 

party restricting the holder’s right of 

disposal, a statement, signed and 

verified (sworn to) or supported by a 

declaration under § 2.20 of this chapter, 

that, for the request to record the 

restriction, or release of the restriction, 

either the holder of the international 

registration could not obtain the 

signature of the party restricting the 

holder’s right of disposal because the 

party restricting the holder’s right of 

disposal no longer exists, or, after a 

good-faith effort, the holder of the 

international registration could not 

obtain the signature of the party 

restricting the holder’s right of disposal; 

* * * * * 

(7) An indication that the restriction, 

or the release of the restriction, of the 

holder’s right of disposal of the 

international registration applies to the 

designation to the United States or an 

international registration that is based 

on a U.S. application or registration; and 

* * * * * 

■ 27. Amend § 7.25 by revising 

paragraph (a) to read as follows: 

§ 7.25 Sections of part 2 applicable to 

extension of protection. 

(a) Except for §§ 2.21 through 2.23, 

2.76, 2.88, 2.89, 2.130, 2.131, 2.160 

through 2.166, 2.168, 2.173, 2.175, 2.181 

through 2.186, and 2.197, all sections in 

parts 2 and 11 of this chapter shall 

apply to an extension of protection of an 

international registration to the United 

States, including sections related to 

proceedings before the Trademark Trial 

and Appeal Board, unless otherwise 

stated. 

* * * * * 

■ 28. Amend § 7.31 by revising the 

introductory text and paragraphs (a)(3) 

and (4) and adding paragraph (a)(5) to 

read as follows: 

§ 7.31 Requirements for transformation of 

an extension of protection to the United 

States into a U.S. application. 

If the International Bureau cancels an 

international registration in whole or in 

part, under Article 6(4) of the Madrid 

Protocol, the holder of that international 

registration may file a request to 

transform the goods and/or services to 

which the cancellation applies in the 

corresponding pending or registered 

extension of protection to the United 

States into an application under section 

1 or 44 of the Act. 

(a) * * * 

(3) Identify the goods and/or services 

to be transformed, if other than all the 

goods and/or services that have been 

cancelled; 

(4) The application filing fee for at 

least one class of goods or services 

required by § 2.6(a)(1) of this chapter; 

and 

(5) An email address for receipt of 

correspondence from the Office. 

* * * * * 

Dated: January 6, 2015. 

Michelle K. Lee, 

Deputy Under Secretary of Commerce for 

Intellectual Property and Deputy Director, 

United States Patent and Trademark Office. 

[FR Doc. 2015–00267 Filed 1–15–15; 8:45 am] 

BILLING CODE 3510–16–P 

ENVIRONMENTAL PROTECTION 

AGENCY 

40 CFR Part 52 

[EPA–R10–OAR–2011–0446, FRL–9921–69– 

Region 10] 

Approval and Promulgation of 

Implementation Plans; Oregon: 

Interstate Transport of Fine Particulate 

Matter 

AGENCY: Environmental Protection 

Agency (EPA). 

ACTION: Final rule. 

SUMMARY: The EPA is approving a 

portion of the State Implementation 

Plan submission from the State of 

Oregon to address Clean Air Act 

interstate transport requirements for the 

2006 24-hour fine particulate matter 

(PM2.5) National Ambient Air Quality 

Standards. The Clean Air Act requires 

that each State Implementation Plan 

contain adequate provisions prohibiting 

air emissions that will have certain 

adverse air quality effects in other 

states. The EPA is determining that 

Oregon’s existing State Implementation 

Plan contains adequate provisions to 

ensure that air emissions in Oregon will 

not significantly contribute to 

nonattainment or interfere with 

maintenance of the 2006 24-hour PM2.5

National Ambient Air Quality Standards 

in any other state. 

DATES: This final rule is effective on 

February 17, 2015. 

ADDRESSES: The EPA has established a 

docket for this action under Docket 

Identification No. EPA–R10–OAR– 

2011–0446. All documents in the docket 

are listed on the http://

www.regulations.gov Web site. Although 

listed in the index, some information 

may not be publicly available, i.e., 

Confidential Business Information or 

other information the disclosure of 

which is restricted by statute. Certain 

other material, such as copyrighted 

material, is not placed on the Internet 

and will be publicly available only in 

hard copy form. Publicly available 

docket materials are available either 

electronically through http://

www.regulations.gov or in hard copy at 

EPA Region 10, Office of Air, Waste, 

and Toxics, AWT–150, 1200 Sixth 

Avenue, Seattle, Washington 98101. The 

EPA requests that you contact the 

person listed in the FOR FURTHER

INFORMATION CONTACT section to 

schedule your inspection. The Regional 

Office’s official hours of business are 

Monday through Friday, 8:30 to 4:30, 

excluding Federal holidays. 

FOR FURTHER INFORMATION CONTACT: Dr. 

Karl Pepple at: (206) 553–1778, 


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