Trademark Office proposed rule re specimen of continued use

8/4/2019 Trademark Office proposed rule re specimen of continued use

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This section of the FEDERAL REGISTERcontains notices to the public of the proposedissuance of rules and regulations. The

purpose of these notices is to give interestedpersons an opportunity to participate in therule making prior to the adoption of the finalrules.

Proposed Rules Federal Register

40839

Vol. 76, No. 133

Tuesday, July 12, 2011

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO–T–2010–0073]

RIN 0651–AC49

Changes in Requirements forSpecimens and for Affidavits orDeclarations of Continued Use orExcusable Nonuse in Trademark Cases

AGENCY: United States Patent andTrademark Office, Commerce.ACTION: Proposed rule.

SUMMARY: In order to help assess andensure the accuracy of the trademarkregister, the United States Patent andTrademark Office (‘‘USPTO’’) proposesto revise the Trademark Rules of Practice and the Rules of Practice forFilings Pursuant to the Madrid Protocol

to provide for the USPTO to require: anyinformation, exhibits, and affidavits ordeclarations deemed reasonablynecessary to examine an affidavit ordeclaration of continued use orexcusable nonuse in trademark cases, orfor the USPTO to assess the accuracyand integrity of the register; and uponrequest, more than one specimen inconnection with a use-based trademarkapplication, an allegation of use, anamendment to a registered mark, or anaffidavit or declaration of continued usein trademark cases. A lack of ability torely on the trademark register as an

accurate reflection of marks that areactually in use in the United States forthe goods/services identified in theregistration imposes costs and burdenson the public. The proposed rules willallow the USPTO to require additionalproof of use of a mark to verify theaccuracy of claims that a trademark is inuse on particular goods/services. TheUSPTO anticipates issuing requirementsfor such proof in a relatively smallnumber of cases to assess the accuracyof the identifications. The proposedrules will facilitate an assessment of the

reliability of the trademark register inthis regard, so that the USPTO andstakeholders may determine whetherand to what extent a general problemmay exist and consider measures toaddress it, if necessary.DATES: Comments must be received bySeptember 12, 2011 to ensureconsideration.

ADDRESSES: The USPTO prefers thatcomments be submitted via electronicmail message [email protected]. Writtencomments may also be submitted bymail to Commissioner for Trademarks,P.O. Box 1451, Alexandria, VA 22313–1451, attention Cynthia C. Lynch; byhand delivery to the TrademarkAssistance Center, Concourse Level,

James Madison Building—East Wing,600 Dulany Street, Alexandria, Virginia,attention Cynthia C. Lynch; or byelectronic mail message via the FederaleRulemaking Portal. See the FederaleRulemaking Portal Web site (http:// www.regulations.gov ) for additionalinstructions on providing comments viathe Federal eRulemaking Portal. Thecomments will be available for publicinspection on the USPTO’s Web site athttp://www.uspto.gov , and will also beavailable at the Office of theCommissioner for Trademarks, Madison

East, Tenth Floor, 600 Dulany Street,Alexandria, Virginia.SUPPLEMENTARY INFORMATION: To benefitthe public through a better ability toassess the accuracy of the trademarkregister, the USPTO proposes to revisethe Trademark Rules of Practice (37 CFRpart 2) and the Rules of Practice forFilings Pursuant to the Madrid Protocol(‘‘Madrid Rules’’) (37 CFR part 7) toprovide for the USPTO to require:(1) Any information, exhibits, andaffidavits or declarations deemedreasonably necessary to examine a postregistration affidavit or declaration of

continued use in trademark cases, or forthe USPTO to assess the accuracy andintegrity of the register; and (2) uponrequest, more than one specimen inconnection with a use-based trademarkapplication, an allegation of use, anamendment to a registered mark, or anaffidavit or declaration of continued usein trademark cases.

The proposed revisions will facilitatethe USPTO’s ability to verify theaccuracy of identifications of goods/services. The accuracy of the trademarkregister as a reflection of marks that are

actually in use in the United States forthe goods/services identified in theregistration serves an important purposefor the public. The public relies on theregister to clear trademarks that theymay wish to adopt or are already using.Where a party searching the registeruncovers a potentially confusinglysimilar mark, that party may incur avariety of resulting costs and burdens,such as changing plans to avoid use of the mark, investigative costs todetermine how the similar mark isactually used and assess the nature of any conflict, or cancellation proceedingsor other litigation to resolve a disputeover the mark. If a registered mark is notactually in use in the United States, or

is not in use on all the goods/servicesin the registration, these types of costsand burdens may be incurredunnecessarily. Thus, accuracy andreliability of the trademark register helpavoid such needless costs and burdens,and thereby benefit the public.

Specimens of use in use-basedtrademark applications illustrate howthe applicant is using the proposedmark in commerce on particular goods/services identified in the application.Post registration affidavits ordeclarations of use and theiraccompanying specimens demonstrate a

trademark owner’s continued use of itsmark in commerce for the goods/services in the registration. The USPTOanticipates issuing requirements foradditional specimens or otherinformation, exhibits, and affidavits ordeclarations in a relatively smallnumber of cases, to assess the accuracyof the identifications of goods/services.

On April 26, 2010, the USPTO andthe George Washington University LawSchool hosted a roundtable discussionon the topic of ‘‘The Future of the Use-Based Register.’’ Panelists and audiencemembers explored the implications of

the decision of the Court of Appeals forthe Federal Circuit in In re Bose Corp.,580 F.3d 1240, 91 USPQ2d 1938 (Fed.Cir. 2009), clarifying the high standardfor fraud on the USPTO in connectionwith trademark cases. Specifically, theroundtable focused on Bose’s impact onthe growing length of identifications of goods and services in U.S. trademarkregistrations and how to assess whethersuch identifications accurately reflectactual use or intent to use.

A ‘‘brainstorming’’ session at theconclusion of the roundtable resulted in

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40840 Federal Register / Vol. 76, No. 133/ Tuesday, July 12, 2011/ Proposed Rules

a list of suggestions for how to improvethe accuracy of identifications of goods/services. These suggestions were notfocused on fraud, but rather on accuracyin the register. Several participantsmade the suggestion that the USPTOrequire additional specimens, or aspecific type of proof of use of a mark,for all, or more than one, of the

identified goods/services. Suchadditional requirements could helpprovide information about to whatextent a problem with inaccuracy existson the register, and could helpdiscourage inaccuracies.

The Trademark Act gives the Directordiscretion regarding the number of specimens to require, 15 U.S.C.1051(a)(1), (d)(1), 1058(b)(1)(C),1141k(b)(1)(C). However, the currentTrademark Rules of Practice and MadridRules mandate the submission of onlyone specimen per class in connectionwith use-related filings, 37 CFR

2.34(a)(1)(iv), 2.56(a), 2.76(b)(2),2.86(a)(3) and (b), 2.88(b)(2), 2.161(g),7.37(g). Similarly, the current rulesrequire only one specimen to besubmitted in connection with theamendment to a registered mark, 37 CFR2.173(b)(3). In addition, although thecurrent Trademark Rules of Practiceallow the USPTO to require additionalinformation or exhibits deemedreasonably necessary to the examinationof a pending application (37 CFR2.61(b)), no counterpart rule exists inthe post registration context to facilitateproper examination of an affidavit ordeclaration of continued use or

excusable nonuse.To ensure that the USPTO may

properly examine affidavits ordeclarations, and the nature andveracity of the use claimed therein,additional specimens or otherinformation or exhibits, such as aphotograph of the mark appearing oncertain goods, may be needed.Accompanying affidavits or declarationsto verify information or exhibits mayalso be needed. One purpose of the ruleis to allow the USPTO to requiretrademark applicants or registrants tosubmit any additional specimens or

other information, exhibits andaffidavits or declarations necessary toproperly examine an applicant’s orregistrant’s claim to be using the mark.The USPTO wishes to use suchrequirements as a means to assess andimprove the accuracy and integrity of the register. The proposed rules do notfocus on fraud issues, but only on themore general concern with ensuringaccuracy. Another purpose of the rule isto harmonize the requirements that can

be made as part of the examination of use allegations made in post registration

maintenance documents with therequirements currently authorized inthe examination of use allegations madeprior to registration.

Though the proposed rules allow forthe possibility that additionalspecimens or evidence may be requiredin any case, the USPTO currently has noplans to implement such requirements

in all cases. Rather, the USPTO likelywould rely on the proposed rules toseek additional specimens or a specifictype of evidence of use in a relativelysmall subset of cases to assess theaccuracy of particular identifications of goods/services. Where an Office actionissues requiring additional specimens orevidence, a response must be filedwithin six months of the Office action,or before the end of the filing period forthe Section 8 affidavit, whichever islater, 37 CFR 2.163(b). If no response isfiled within this time period, theregistration will be cancelled. 37 CFR

2.163(c). If a response is filed but failsto include the required specimens orevidence, the USPTO may deem theSection 8 affidavit unacceptable as tothe goods/services to which therequirement pertained and delete themfrom the registration, or in the case of all goods/services, cancel theregistration for failure to file anacceptable Section 8 affidavit. See 37CFR 2.163.

References below to ‘‘the Act,’’ ‘‘theTrademark Act,’’ or ‘‘the statute’’ refer tothe 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 7thedition, October 2010.

Discussion of Proposed Rules Changes

The USPTO proposes to revise§§ 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2),2.86(a)(3), 2.86(b), and 2.88(b)(2) toindicate that the USPTO may, uponrequest, require more than onespecimen, including more than onespecimen per class, if the USPTO deemsadditional specimens reasonablynecessary to examine the application orallegation of use. These revisions codifyexisting practice, where such additionalspecimens occasionally are requestedunder §2.61 as information or exhibitsnecessary to examination. TheTrademark Act gives the Directordiscretion regarding the number of specimens to require, 15 U.S.C.1051(a)(1), (d)(1).

The USPTO proposes to revise§ 2.61(b) to indicate that accompanyingaffidavits or declarations may berequired along with information orexhibits, and to clarify that therequirement may issue for the Office to

assess the accuracy and integrity of theregister.

The USPTO proposes to revise§ 2.161(g) and § 7.37(g) to indicate thatthe USPTO may require more than onespecimen in connection with theexamination of the affidavit ordeclaration of continued use. Forexample, additional specimens may be

requested in a case to verify theaccuracy and the nature of the use whenthe identification includes a largenumber of, or significant disparity in,goods/services. The Trademark Actgives the Director discretion regardingthe number of specimens to require, 15U.S.C. 1058(b)(1)(C), 1141k(b)(1)(C).

The USPTO proposes to add§ 2.161(h) and § 7.37(h) to provide thatthe USPTO may require suchinformation, exhibits, and affidavits ordeclarations as the USPTO deemsreasonably necessary to the properexamination of the affidavit or

declaration of continued use, or for theUSPTO to assess the accuracy andintegrity of the register. Theseprovisions are corollaries to §2.61(b),which currently allows the USPTO torequire additional information orexhibits in connection with theexamination of a pending application.These provisions also clarify thataccompanying affidavits or declarationsmay be required.

For example, the USPTO may requirea verified photograph showing use of the mark on particular goods in aregistration for which an affidavit or

declaration of continued use is beingexamined in order to verify the accuracyof goods/services in the identification.This type of requirement may morelikely be made where an identificationincludes a large number of, orsignificant disparity in, goods/services.Or, such a requirement may issue aspart of an effort to assess and improvethe accuracy and integrity of theregister.

The USPTO proposes to revise§ 2.173(b)(3) to clarify that where anamendment involves a change in themark, a new specimen must be provided

for each class in a multiple-classregistration and to add § 2.173(b)(4) toprovide that the USPTO may requireadditional specimens and suchinformation, exhibits, and affidavits ordeclarations as the USPTO deemsreasonably necessary to the properexamination of the proposedamendment.

Rule Making Requirements

Executive Order 12866: This rule has been determined not to be significant forpurposes of Executive Order 12866.




40841Federal Register / Vol. 76, No. 133/ Tuesday, July 12, 2011/ Proposed Rules

Executive Order 13563: The Office hascomplied with Executive Order 13563.Specifically, the Office has: (1) Used the

best available techniques to quantifycosts and benefits, and has consideredvalues such as equity, fairness anddistributive impacts, (2) provided thepublic with a meaningful opportunity toparticipate in the regulatory process,

including soliciting the views of thoselikely affected prior to issuing a noticeof proposed rule making, and providedonline access to the rule making docket,(3) attempted to promote coordination,simplification and harmonization acrossgovernment agencies and identifiedgoals designed to promote innovation,(4) considered approaches that reduce

burdens and maintain flexibility andfreedom of choice for the public, and (5)ensured the objectivity of scientific andtechnological information andprocesses, to the extent applicable.

Administrative Procedure Act: This

rule merely involves rules of agencypractice and procedure within themeaning of 5 U.S.C. 553(b)(A).Therefore, this rule may be adoptedwithout prior notice and opportunity forpublic comment under 5 U.S.C. 553(b)and (c), or thirty-day advancepublication under 5 U.S.C. 553(d).However, the USPTO has chosen to seekpublic comment before implementingthe rule.

Regulatory Flexibility Act: As priornotice and an opportunity for publiccomment are not required pursuant to 5U.S.C. 553 or any other law, neither aRegulatory Flexibility Act analysis nor a

certification under the RegulatoryFlexibility Act (5 U.S.C. 601 et seq.) isrequired. See 5 U.S.C. 603. Theproposed rules involve rules of agencypractice and procedure.

Nonetheless, in an abundance of caution, the USPTO has undertaken anInitial Regulatory Flexibility ActAnalysis of the proposed rule.

1. Description of the Reasons That Action by the Office Is Being Considered

The United States Patent andTrademark Office (USPTO) is proposingto require: (1) Any information, exhibits,

and affidavits or declarations deemedreasonably necessary to examine anaffidavit or declaration of continued usein trademark cases; and (2) uponrequest, more than one specimen inconnection with a use-based trademarkapplication, an allegation of use, anamendment to a registered mark, or anaffidavit or declaration of continued usein trademark cases.

These proposed revisions willfacilitate the USPTO’s ability to verifythe accuracy of identifications of good/services. Specimens of use in use-based

trademark applications illustrate howthe applicant is using the proposedmark in commerce on particular goods/services identified in the application.Post registration affidavits ordeclarations of use and theiraccompanying specimens demonstrate atrademark owner’s continued use of itsmark in commerce for the goods/

services in the registration.2. Succinct Statement of the Objectivesof, and Legal Basis for, the Proposed Rule

The objective of the proposed rules isto facilitate the USPTO’s ability to verifythe accuracy of identifications of goods/services in trademark applications andregistrations. The proposed rules wouldensure that the USPTO may properlyexamine the nature and veracity of allegations of use made during thetrademark application or postregistration phase, and upon request,may require additional specimens orother information or exhibits, such as aphotograph of the mark appearing oncertain goods. Another purpose of therule is to harmonize the requirementsthat can be made as part of theexamination of use allegations made inpost registration maintenancedocuments, which are currently morelimited, with the requirementsauthorized in the examination of useallegations made prior to registration.

The Trademark Act gives the Directorof the USPTO discretion regarding thenumber of specimens to require, 15U.S.C. 1051(a)(1), (d)(1), 1058(b)(1)(C),

1141k(b)(1)(C). However, the currentTrademark Rules of Practice and theRules of Practice for Filings Pursuant tothe Madrid Protocol Trademarkmandate the submission of only onespecimen per class in connection withuse-related filings, 37 CFR 2.34(a)(1)(iv),2.56(a), 2.76(b)(2), 2.86(a)(3) and (b),2.88(b)(2), 2.161(g), 7.37(g). Similarly,the current rules require only onespecimen to be submitted in connectionwith a proposed amendment of aregistered mark, 37 CFR 2.173(b)(3). Inaddition, although the currentTrademark Rules of Practice allow the

USPTO to require additionalinformation or exhibits deemedreasonably necessary to the examinationof a pending application (37 CFR2.61(b)), no counterpart rule exists inthe post registration context to facilitateproper examination of an affidavit ordeclaration of continued use orexcusable nonuse.

3. Description and Estimate of theNumber of Affected Small Entities

The USPTO does not collect ormaintain statistics in trademark cases on

small versus large entity applicants, andthis information would be required inorder to estimate the number of smallentities that would be affected by theproposed rules. However, the USPTO

believes that the overall impact of theproposed rules on applicants andregistrants will be relatively minimal.

The proposed rules could apply to

any entity filing a use-based trademarkapplication and to any entity filingtrademark registration maintenancefilings or amendments. With respect toallegations of use in trademarkapplications, the proposed rules merelycodify existing practice, whereby theUSPTO already occasionally requestsadditional specimens or otherinformation under 37 CFR 2.61. Thus,

because no change in practice wouldresult from the proposed rules in thisregard, they will have no impact in thetrademark application context.

After registration, registrants mustmake periodic filings with the USPTOto maintain their registrations. ASection 8 affidavit of continued use isa sworn statement that the mark is inuse in commerce, filed by the owner of a registration, 15 U.S.C. 1058. Thepurpose of the Section 8 affidavit is tofacilitate the cancellation of registrations for marks no longer in use.With respect to post registrationmaintenance filings, the Office estimatesthat only a small subset of registrantswould be required to provide more thanone specimen, or information orexhibits in connection with a Section 8affidavit. The USPTO is unable to

estimate what subset of the registrantswould be small entities impacted by theproposed rules. In Fiscal Year 2010,105,244 Section 8 affidavits were filed.

4. Description of the Reporting,Recordkeeping, and Other ComplianceRequirements of the Proposed Rule,Including an Estimate of the Classes of Small Entities Which Will Be Subject tothe Requirement and the Type of Professional Skills Necessary for Preparation of the Report or Record

The proposed rules impose no newrecordkeeping requirements on

trademark applicants or registrants.Regarding compliance with theproposed rules, as an initial matter, theUSPTO does not anticipate that theproposed rules would have adisproportionate impact upon anyparticular class of small or large entities.Any entity that has a registeredtrademark could potentially beimpacted by the proposed rules.

The USPTO estimates that in thosepost registration cases where arequirement for additional information,exhibits, declarations, or specimens is





issued, it will take less than one hour tocomply.

While the statement of use is a similartype of filing to those at issue in theproposed rules applied in the postregistration context, as the statement of use involves providing one or morespecimens of use and an accompanyingdeclaration, the compliance time

involved to comply with the proposedrules should be less. Under theproposed rules applied in the postregistration context, the type of factgathering and review of the nature andextent of the use of the mark thatunderlies a statement of use will alreadyhave occurred. Compliance with theproposed requirement will onlynecessitate gathering and submitting theevidence to demonstrate what hasalready been assessed.

Assuming the mark is in use, asclaimed, the compliance time involvesthe length of time to secure a specimen,exhibit (such as taking a digitalphotograph), information, ordeclaration, plus any time it takes anattorney to communicate with the clientin order to obtain what is required andmake the necessary filing with theUSPTO. In reality, approximately one-third of applications are filed pro se.These applicants and registrants,therefore, would likely have a lowercompliance time than the USPTO hasestimated, which assumes theinvolvement of counsel. These proposedrules do not mandate the use of counsel.

The Office does not estimate anychange in compliance cost associated

with the proposed rules with respect toallegations of use in trademarkapplications, since the USPTO’s currentpractice already allows for this. The rulechange merely codifies existing practice.

5. Description of Any Significant Alternatives to the Proposed Rule WhichAccomplish the Stated Objectives of Applicable Statutes and WhichMinimize Any Significant EconomicImpact of the Rule on Small Entities

The USPTO has considered whetherand how it is appropriate to reduce any

burden on small businesses through

increased flexibility. The followingoptions have been considered, butrejected, by the USPTO.

The alternative of never requiringadditional specimens or otherinformation in connection with Section8 affidavits or exempting small entitiesfrom such requirements would have alesser economic impact on smallentities, but would not accomplish thestated objective of verifying theaccuracy of identifications of goods/services in trademark registrations. Asset forth above, the USPTO will rely on

the proposed rules to assess theaccuracy of use allegations. Thisassessment may provide a better senseof whether significant problems mayexist with the accuracy of identifications of goods and services.Thus, exempting small entities wouldprevent the potential consideration of all Section 8 affidavits for this purpose,

and therefore would not achieve thestated objective of verifying accuracy.

The stated objective of the proposedrules also facilitates the cancellation of any registrations for marks that are nolonger in use, the policy underlying thestatutory requirement for Section 8affidavits. Exempting small entities fromany possible scrutiny regarding useallegations would fail to reach non-useof marks by small entity owners, therebyfailing to achieve the objective.

Other options to potentially lessen theimpact on small entities have beenrejected. For example, the USPTOdeems unnecessary extended timeperiods for small entity compliance

because there appears to be no reasonthat compliance with the requirementsin the proposed rules would be moretime-consuming for small entities, and

because the USPTO’s standard six-month time for responding to trademarkOffice actions allows sufficient timeregardless of small entity status.

The USPTO deems any streamlined orsimplified compliance mechanism forsmall entities unnecessary, given theease of responding to trademark Officeactions electronically. Thus, compliancewill be as streamlined and simplified as

possible for all affected entities.Moreover, where the objective is toverify the accuracy of a claim of use inan affidavit, the proposed requirementsof one or more additional examples of the manner of the claimed use, or of other information such as photographicproof already seem to be the least

burdensome and complex way toachieve the objective. Any moreminimal requirement would notdemonstrate use and therefore wouldnot meet the objective to verify useclaims.

Use of performance rather than design

standards is not applicable to theproposed rule making because theUSPTO is not issuing any sort of standard. Rather, the proposed ruleswill require applicants and registrants tofurnish evidence of use, rather thancomply with a performance or designstandard.

Finally, with respect to allegations of use in trademark applications, theproposed rules merely codify existingpractice, whereby the USPTO alreadyoccasionally requests additionalspecimens or other information under

37 CFR 2.61. Thus, because no changein practice would result from theproposed rules in this regard, anydifferent treatment of small entities inthis context would fail to meet thestated objective and likely wouldgenerate concern and confusion about achange in practice.

6. Identification, to the Extent Practicable, of All Relevant Federal Rules Which May Duplicate, Overlap or Conflict With the Proposed Rule

The proposed rules would notduplicate, overlap or conflict with anyother Federal rules.

Unfunded Mandates: The UnfundedMandates Reform Act requires, at 2U.S.C. 1532, that agencies prepare anassessment of anticipated costs and

benefits before issuing any rule that mayresult in expenditure by State, local, andtribal governments, in the aggregate, or

by the private sector, of $100 million ormore (adjusted annually for inflation) inany given year. This rule would have nosuch effect on State, local, and tribalgovernments or the private sector.

Executive Order 13132: This rule doesnot contain policies with federalismimplications sufficient to warrantpreparation of a Federalism Assessmentunder Executive Order 13132 (Aug. 4,1999).

Paperwork Reduction Act: Thechanges in this rule making involveinformation collection requirementswhich are subject to review by theOffice of Management and Budget(OMB) under the Paperwork Reduction

Act of 1995 (44 U.S.C. 3501 et seq.). TheOffice will be submitting an informationcollection request to OMB for its reviewand approval because the changes inthis proposed rule would affect theinformation collection requirementsassociated with the informationcollection under OMB control number0651–0055.

This rule making will provide for theUSPTO to require: (1) Any information,exhibits, and affidavits or declarationsdeemed reasonably necessary toexamine an affidavit or declaration of continued use or excusable nonuse in

trademark cases, or for the USPTO toassess the accuracy and integrity of theregister; and (2) upon request, more thanone specimen in connection with a use-

based trademark application, anallegation of use, an amendment to aregistered mark, or an affidavit ordeclaration of continued use intrademark cases.

There is no fee impact for submissionof specimens. Additional burden due topostage costs for paper submissions forthe post-registration office actions isestimated at $181, for a total increase in




40843Federal Register / Vol. 76, No. 133/ Tuesday, July 12, 2011/ Proposed Rules

fee burden by an estimated $181. Theagency estimates the following overallimpact on burden: an increase of responses of 3,165; an increase in

burden hours of 1,120; and an increasein burden hour costs of $364,000.

Comments are invited on: (1) Whetherthe collection of information isnecessary for proper performance of the

functions of the agency; (2) the accuracyof the agency’s estimate of the burden;(3) ways to enhance the quality, utility,and clarity of the information to becollected; and (4) ways to minimize the

burden of the collection of informationto respondents.

Interested persons are requested tosend comments regarding theseinformation collections, includingsuggestions for reducing this burden, toCommissioner for Trademarks, P.O. Box1451, Alexandria, VA 22313–1451,attention Cynthia C. Lynch, or to theOffice of Information and Regulatory

Affairs, Office of Management andBudget, New Executive Office Building,Room 10235, 725 17th Street, NW.,Washington, DC 20503, Attention: DeskOfficer for the Patent and TrademarkOffice.

Notwithstanding any other provisionof law, no person is required to respondto nor shall a person be subject to apenalty for failure to comply with acollection of information subject to therequirements of the PaperworkReduction Act unless that collection of information displays a currently validOMB control number.

List of Subjects

37 CFR Part 2

Administrative practice andprocedure, Trademarks.

37 CFR Part 7

Administrative practice andprocedure, Trademarks, Internationalregistration.

For the reasons stated in the preambleand under the authority contained in 15U.S.C. 1123 and 35 U.S.C. 2, asamended, the USPTO proposes toamend parts 2 and 7 of title 37 as

follows:PART 2—RULES OF PRACTICE INTRADEMARK CASES

1. The authority citation for 37 CFRpart 2 continues to read as follows:

Authority: 15 U.S.C. 1123, 35 U.S.C. 2,unless otherwise noted.

2. Revise §2.34(a)(1)(iv) to read asfollows:

§ 2.34 Bases for filing.

(a) * * *

(1) * * *(iv) One specimen per class showing

how the applicant actually uses themark in commerce. When requested bythe Office, additional specimens must

be provided.

* * * * *3. Revise §2.56(a) to read as follows:

§2.56 Specimens.(a) An application under section 1(a)

of the Act, an amendment to allege useunder §2.76, and a statement of useunder §2.88 must each include onespecimen per class showing the mark asused on or in connection with thegoods, or in the sale or advertising of theservices in commerce. When requested

by the Office, additional specimensmust be provided.

* * * * *4. Revise §2.61(b) to read as follows:

§ 2.61 Action by examiner.

* * * * *(b) The Office may require theapplicant to furnish such information,exhibits, and affidavits or declarationsas may be reasonably necessary to theproper examination of the application,or for the Office to assess the accuracyand integrity of the register.

* * * * *5. Revise §2.76(b)(2) to read as

follows:

§ 2.76 Amendment to allege use.

* * * * *(b) * * *(2) One specimen per class showing

the mark as actually used in commerce.When requested by the Office,additional specimens must be provided.See § 2.56 for the requirements forspecimens; and

* * * * *6. Revise §§2.86(a)(3) and (b) to read

as follows:

§ 2.86 Application may include multipleclasses.

(a) * * *(3) Include either dates of use (see

§§ 2.34(a)(1)(ii) and (iii)) and onespecimen for each class, or a statement

of a bona fide intention to use the markin commerce on or in connection withall the goods or services specified ineach class. When requested by theOffice, additional specimens must beprovided. The applicant may not claim

both use in commerce and a bona fideintention to use the mark in commercefor the identical goods or services in oneapplication.

(b) An amendment to allege use under§ 2.76 or a statement of use under §2.88must include, for each class, therequired fee, dates of use, and one

specimen. When requested by theOffice, additional specimens must beprovided. The applicant may not file theamendment to allege use or statement of use until the applicant has used themark on all the goods or services, unlessthe applicant files a request to divide.See §2.87 for information regardingrequests to divide.

* * * * *7. Revise §2.88(b)(2) to read as

follows:

§ 2.88 Filing statement of use after noticeof allowance.

* * * * *(b) * * *(2) One specimen of the mark as

actually used in commerce. Whenrequested by the Office, additionalspecimens must be provided. See §2.56for the requirements for specimens; and

* * * * *8. Amend §2.161 by revising the

introductory text of paragraph (g) andadding paragraph (h) to read as follows:

§ 2.161 Requirements for a completeaffidavit or declaration of continued use orexcusable nonuse.

* * * * *(g) Include one specimen showing

current use of the mark for each class of goods or services, unless excusablenonuse is claimed under § 2.161(f)(2).When requested by the Office,additional specimens must be provided.The specimen must:

* * * * *(h) The Office may require the owner

to furnish such information, exhibits,and affidavits or declarations as may bereasonably necessary to the properexamination of the affidavit ordeclaration under section 8 of the Act,or for the Office to assess the accuracyand integrity of the register.

9. Amend §2.173 by revisingparagraph (b)(3) and adding paragraph(b)(4) to read as follows:

§ 2.173 Amendment of registration.

* * * * *(b) * * *(3) If the amendment involves a

change in the mark: One new specimenper class showing the mark as used onor in connection with the goods orservices; an affidavit or declarationunder §2.20 stating that the specimenwas in use in commerce at least as earlyas the filing date of the amendment; anda new drawing of the amended mark.When requested by the Office,additional specimens must be provided.

(4) The Office may require the ownerto furnish such information, exhibits,and affidavits or declarations as may bereasonably necessary to the proper





examination of the amendment, or forthe Office to assess the accuracy andintegrity of the register.

* * * * *

PART 7—RULES OF PRACTICE INFILINGS PURSUANT TO THEPROTOCOL RELATING TO THEMADRID AGREEMENT CONCERNING

THE INTERNATIONAL REGISTRATIONOF MARKS

10. The authority citation for 37 CFRpart 7 continues to read as follows:

Authority: 15 U.S.C. 1123, 35 U.S.C. 2,unless otherwise noted.

11. Amend §7.37 by revisingparagraph (g) and adding paragraph (h)to read as follows:

§ 7.37 Requirements for a completeaffidavit or declaration of continued use orexcusable nonuse.

* * * * *

(g) Include a specimen showingcurrent use of the mark for each class of goods or services, unless excusablenonuse is claimed under § 7.37(f)(2).When requested by the Office,additional specimens must be provided.The specimen must meet therequirements of §2.56 of this chapter.

(h) The Office may require the holderto furnish such information, exhibits,and affidavits or declarations as may bereasonably necessary to the properexamination of the affidavit ordeclaration under section 71 of the Act,or for the Office to assess the accuracyand integrity of the register.

Dated: June 29, 2011.

David J. Kappos,

Under Secretary of Commerce for Intellectual Property and Director of the United StatesPatent and Trademark Office.

[FR Doc. 2011–17121 Filed 7–11–11; 8:45 am]

BILLING CODE 3510–16–P

POSTAL SERVICE

39 CFR Part 111

Changes to Move Update Standards

AGENCY

: Postal ServiceTM

.ACTION: Proposed rule, revised.

SUMMARY: The Postal Service proposesto revise Mailing Standards of theUnited States Postal Service, DomesticMail Manual (DMM®) to add 602.5.0and 602.6.0, and to revise the MoveUpdate standards regarding change of address orders, by including in therevised standards change of addressnotices filed by postal employees. ThePostal Service also deletes multiplesections throughout the DMM to

centralize Move Update and ZIP CodeTM accuracy standards under section 602.DATES: We must receive your commentson or before August 11, 2011.ADDRESSES: Mail or deliver writtencomments to the manager, ProductClassification, U.S. Postal Service,® 475L’Enfant Plaza, SW., Room 4446,Washington, DC 20260–5015. You mayinspect and photocopy all writtencomments at USPS® HeadquartersLibrary, 475 L’Enfant Plaza, SW., 11thFloor North, Washington, DC, between9 a.m. and 4 p.m., Monday throughFriday. Email comments, containing thename and address of the commenter,may be sent to:[email protected], with asubject line of ‘‘Move Update.’’ Faxedcomments are not accepted.FOR FURTHER INFORMATION CONTACT: JimWilson at 901–681–4600, or BillChatfield at 202–268–7278.SUPPLEMENTARY INFORMATION: OnSeptember 21, 2010, the Postal Servicepublished a proposed rule in theFederal Register (75 FR 57410–57412)to include all changes-of-address,whether filed by customers or postalemployees, as subject to Move Updaterequirements. In addition, the proposalannounced that the online publication,Guide to Move Update, is theappropriate source for additionalinformation and procedures for meetingthe Move Update requirements.

The prior proposal also would havechanged the timeframe for providingaddress correction and nixie notices

without charge for First-Class Mail®,Standard Mail®, and Bound PrintedMatter (BPM) pieces eligible for full-service Intelligent Mail® prices. ThePostal Service is not including thatinitiative in this rule; for now, we willretain the current timeframe for noticeswithout charge for pieces eligible forfull-service prices.

In this notice we provide an overviewof the revised proposal, a summary of comments on the original proposal, ourresponse to those comments, and theproposed new mailing standards toimplement this proposal.

Change of Address OrdersThe Postal Service proposes that the

Move Update standards are met, notonly by updating address records fromcustomer-filed change-of-address (COA)orders, but also from COA orderssupplied by postal employees.Customers occasionally move from astreet address or allow their PostOfficeTM Box service to expire withoutproviding a new address to redirecttheir mail. In these instances, thecustomer no longer receives mail at that

address, and the postal employee fileseither a ‘‘Moved Left No Address’’(MLNA) or a ‘‘Box Closed No Order’’(BCNO) COA order. These two types of COAs are included in the addresschange databases the Postal Servicemaintains. To comply with the newproposed Move Update standards,mailers must not include pieces in

presorted mailings to theseundeliverable addresses once theeffective date of the COA is older than95 days.

However, the Postal Serviceunderstands that some mailers mayhave difficulty isolating MLNAs andBCNOs in their mailing processes.Therefore, to allow mailers sufficienttime to modify their mailing systems toproperly handle MLNA and BCNOoccurrences, MLNAs and BCNOs witheffective dates older than 95 days wouldnot be classified as failures to update aCOA by Performance Based Verification

(PBV) Move Update verifications until ayear after publication of the final rule.After the one-year grace period, MLNA/BCNO addresses with effective dates

between 95 days and 18 months would be treated by PBV verifications forcommercial mailings of First-Class Mailand Standard Mail pieces as failures toupdate a COA.

Guide to Move Update

The online USPS publication Guide toMove Update (available on the RIBBS® Web site at http://ribbs.usps.gov ) provides general information andrecommendations about each authorizedMove Update method. This publicationalso provides specific information onthe best use of the methods available formeeting the Move Update standards. Itdescribes in detail the four primary andthe two alternative Move Updatemethods available for updating mailinglists.

Since the amount of information onMove Update involves numeroustechnical details in addition to the basicstandards, it is not appropriate toinclude all the information within theDMM. Therefore, we reference theGuide to Move Update where relevant

and appropriate in sections of the DMM.The Guide to Move Update is accessibleonline at: ribbs.usps.gov/move _ update/ documents/tech _ guides/ GuidetoMoveUpdate.pdf.

Comments and USPS Responses

General

We received comments from twocustomers and eight mailer associations.A general comment recommended thatthe Postal Service explain the financialand other service-related benefits to



http://ribbs.usps.gov/




Documents

Trademark Office proposed rule re specimen of continued use