Changes To Implement Provisions of the Trademark Modernization Act of 2020

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2021-0008]

RIN 0651-AD55

Changes To Implement Provisions of the Trademark Modernization Act of 2020

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (USPTO or Office) amends the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020 (TMA). This rule establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made; provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board (TTAB or Board); establishes flexible Office action response periods; and amends the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable. The rule also sets fees for petitions requesting institution of ex parte expungement and reexamination proceedings, and for requests to extend Office action response deadlines. The rules governing the suspension of USPTO proceedings and attorney recognition in trademark matters are also amended. Finally, a new rule is added to address procedures regarding court orders cancelling or affecting registrations.

DATES:

This rule is effective on December 18, 2021, except for §§ 2.6(a)(28); 2.62(a) and (c); 2.63(b) introductory text, (b)(1) and (2), (c), and (d); 2.65(a); 2.66(b); 2.163(b) through (e); 2.165; 2.176; 2.184(b); 2.186(b) through (d); 7.6(a)(9); 7.39; and 7.40, which are effective on December 1, 2022.

FOR FURTHER INFORMATION CONTACT:

Robert Lavache, Office of the Deputy Commissioner for Trademark Examination Policy, USPTO, at 571-272-5881, or by email at

TMPolicy@uspto.gov.

SUPPLEMENTARY INFORMATION:

The TMA was enacted on December 27, 2020. See Public Law 116-260, Div. Q, Tit. II, Subtit. B, sections 221-228 (Dec. 27, 2020). The TMA amends the Trademark Act of 1946 (the Act) to establish new ex parte expungement and reexamination proceedings to cancel, either in whole or in part, registered marks for which the required use in commerce was not made.

Id.

at section 225(a), (c). Furthermore, the TMA amends section 14 of the Act to allow a party to allege that a mark has never been used in commerce as a basis for cancellation before the TTAB.

Id.

at section 225(b). The TMA also authorizes the USPTO to promulgate regulations to set flexible Office action response periods between 60 days and 6 months, with an option for applicants to extend the deadline up to a maximum of 6 months from the Office action issue date.

Id.

at section 224. In addition, the TMA includes statutory authority for the USPTO's letter-of-protest procedures, which allow third parties to submit evidence to the USPTO relevant to the registrability of a trademark during the initial examination of the application, and provides that the decision of whether to include such evidence in the application record is final and non-reviewable.

Id.

at section 223. The TMA requires the USPTO to promulgate regulations to implement the provisions relating to the new ex parte expungement and reexamination proceedings, and the letter-of-protest procedures, within one year of the TMA's enactment.

Id.

at sections 223(b), 225(f).

Accordingly, the USPTO revises the rules in 37 CFR part 2 to implement the TMA's provisions and set fees for the new ex parte expungement and reexamination proceedings and for response deadline extensions. The rule also clarifies that the new ex parte expungement and reexamination proceedings are subject to suspension in appropriate cases and reflects existing practice regarding suspension of proceedings before the USPTO and the TTAB. The USPTO also amends the rules regarding attorney recognition and correspondence to clarify that the USPTO will not recognize an attorney who has been “mistakenly, falsely, or fraudulently designated” and that an attorney need not formally withdraw under such circumstances. Finally, a new rule is added, formalizing the USPTO's longstanding procedures concerning action on court orders canceling or affecting a registration under section 37 of the Act, 15 U.S.C. 1119. In formulating this final rule, the USPTO considered the public comments submitted pursuant to the notice of proposed rulemaking (NPRM) published in the

Federal Register

on May 18, 2021, at 86 FR 26862, and made adjustments to the substance of this rule based on these considerations. Comments the USPTO received about specific requirements or procedures are summarized, and the USPTO's responses are provided, in section VIII below.

I. Ex Parte Expungement and Reexamination Proceedings

As the House Report for the TMA explained, “Trademarks are at the foundation of a successful commercial marketplace. Trademarks allow companies to identify their goods and services, and they ensure that consumers know whose product they are buying. . . . By guarding against deception in the marketplace, trademarks also serve an important consumer protection role.” H.R. Rep. No. 116-645, at 8-9 (2020) (citation omitted).

In order to have a well-functioning trademark system, the trademark register should accurately reflect trademarks that are currently in use.

Id.

at 9. When the register includes marks that are not currently in use, it is more difficult for legitimate businesses to clear and register their own marks.

Id.

It has become apparent in recent years that registrations are being obtained and maintained for marks that are not properly in use in commerce.

Id.

at 9-10. Moreover, this “cluttering” has real-world consequences when the availability of marks is depleted.

Id.

at 9.

The House Report also noted that “[a] recent rise in fraudulent trademark applications has put further strain on the accuracy of the federal register. Although trademark applications go through an examination process, some of these forms of fraud are difficult to detect in individual applications (even if patterns of fraud can be seen across multiple applications), leading to illegitimate registrations. Although the USPTO can try to develop better systems to detect fraud during the examination process, its authority to reconsider applications after registration is currently limited.”

Id.

at 10-11 (citation omitted).

To address these problems, the TMA created two new ex parte processes that will allow a third party, or the Director, to challenge whether a registrant made use of its registered trademark in commerce. If the registered mark was not properly used, the Office will be able to cancel the registration.

Id.

at 11. The TMA also provides for improvements to make the trademark examination process more efficient and more effective at clearing applications that may block later-filed applications from proceeding to registration.

Id.

The two new ex parte proceedings created by the TMA—one for expungement and one for reexamination—provide new mechanisms for removing a registered mark from the trademark register, or cancelling the registration as to certain goods and/or services, when the registrant has not used the mark in commerce as of the relevant date required by the Act. In an expungement proceeding, the USPTO must determine whether the evidence of record supports a finding that the registered mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration. In a reexamination proceeding, the USPTO must determine whether the evidence of record supports a finding that the mark registered under section 1 of the Act was not in use in commerce on or in connection with some or all of the goods and/or services as of the filing date of the application or amendment to allege use, or before the deadline for filing a statement of use, as applicable. If the USPTO determines that the required use was not made for the goods or services at issue in the proceeding, and that determination is not overturned on review, the registration will be cancelled in whole or in part, as appropriate.

These new proceedings are intended to provide a more efficient and less expensive alternative to a contested inter partes cancellation proceeding before the TTAB. While the authority for the expungement and reexamination proceedings is set forth in separate subsections of the Act, the procedures for instituting the proceedings, the nature of the evidence required, and the process for evaluating evidence and corresponding with the registrant, as set forth in this rule, are essentially the same. Thus, for administrative efficiency, proceedings involving the same registration may be consolidated by the USPTO for review.

To implement these new proceedings and related procedures, the USPTO amends its rules to add the following new rules:

• Section 2.91, setting forth the requirements for a petition requesting the institution of expungement or reexamination proceedings;

• Section 2.92, regarding the institution of ex parte expungement and reexamination proceedings; and

• Sections 2.93 and 2.94, setting forth the procedures for expungement and reexamination proceedings, and for action after those proceedings.

In addition, conforming amendments are made to the following existing rules:

• Section 2.6, which sets the fees for petitions for expungement and/or reexamination and for requests for extensions of time to respond to an Office action;

• Section 2.11, which requires U.S. counsel for foreign-domiciled petitioners and registrants;

• Section 2.23, which addresses the duty to monitor the status of a registration;

• Section 2.67, which addresses suspension of action by the USPTO;

• Section 2.117, which addresses suspension of proceedings before the TTAB;

• Section 2.142, which addresses the time and manner of ex parte appeals;

• Section 2.145, which addresses appeals to the U.S. Court of Appeals for the Federal Circuit;

• Section 2.146, which addresses petitions to the Director; and

• Section 2.193, which addresses signature requirements.

A. Timing for Requests for Proceedings

The TMA specifies the time periods during which a petitioner can request institution of expungement and reexamination proceedings, and during which the Director may institute such proceedings based on a petition or on the Director's own initiative. Accordingly, under § 2.91(b)(1), a petitioner may request, and the Director may institute, an ex parte expungement proceeding between 3 and 10 years following the date of registration. However, the TMA provides that, until December 27, 2023 (3 years from the TMA's enactment date), a petitioner may request, and the Director may institute, an expungement proceeding for a registration that is at least 3 years old, regardless of the 10-year limit. Under § 2.91(b)(2), a petitioner may request, and the Director may institute, a reexamination proceeding during the first five years following the date of registration.

The TMA gives discretion to the Director to establish by rule a limit on the number of petitions for expungement or reexamination that can be filed against a registration. However, after consideration of the comments received regarding establishing such a limitation, which are discussed below, and to foster clearing of the register of unused marks, the USPTO has determined that it will not impose a limitation on the number of petitions at this time. This will allow the USPTO time to determine whether existing safeguards in the statute and the regulations implemented herein suffice to protect registrants from potential misuse of the proceedings. These safeguards include the fact that the registrant does not participate until after the Director institutes a proceeding based on a prima facie case of nonuse of the mark, and the registrant cannot be subject to another proceeding for the same goods and/or services for which use of the mark was established in a prior proceeding. If the existing safeguards in the statute and the regulations do not suffice to protect registrants from misuse of the proceedings, the USPTO may establish a limit on the number of petitions for expungement or reexamination that can be filed against a registration in a future rule.

B. Petition Requirements

Under the TMA, and § 2.91, any person may file a petition with the USPTO requesting institution of an expungement or reexamination proceeding. In the NPRM, the USPTO sought comments on whether and when the Director should require a petitioner to identify the name of the real party in interest on whose behalf the petition is filed. As discussed below, this rule does not require a petitioner to identify the name of the real party in interest on whose behalf the petition is filed, but retains the Director's authority to require that information in particular cases.

Reexamination and expungement petitions are intended to allow third parties to bring unused registered marks to the attention of the USPTO. To the extent a registrant believes its own mark was not used in commerce, or is no longer used in commerce, on or in connection with some or all of the goods and/or services listed in the registration, the registrant should utilize the existing mechanisms for voluntarily amending the registration to delete the goods and/or services or surrendering the registration in its entirety, pursuant to section 7 of the Act, 15 U.S.C. 1057. To incentivize registrants to keep their registrations accurate and up-to-date as to the goods and/or services on which the mark is actually used in commerce, the USPTO previously established a $0 fee for voluntary deletions of goods and/or services made outside of a maintenance examination. See Trademark Fee Adjustment rule (85 FR 73197, November 17, 2020).

A petition for expungement must allege that the relevant registered trademark has never been used in commerce on or in connection with some or all of the goods and/or services listed in the registration.

A petition for reexamination must allege that the trademark was not in use in commerce on or in connection with

some or all of the goods and/or services listed in the registration on or before the relevant date, which, for any particular goods and/or services, is determined as follows:

• In a use-based application for registration of a mark with an initial filing basis of section 1(a) of the Act for the goods and/or services listed in the petition, and not amended at any point to be filed pursuant to section 1(b) of the Act, 15 U.S.C. 1051(b), the relevant date is the filing date of the application; or

• In an intent-to-use application for registration of a mark with an initial filing basis or amended basis of section 1(b) of the Act for the goods and/or services listed in the petition, the relevant date is the later of the filing date of an amendment to allege use identifying the goods and/or services listed in the petition, pursuant to section 1(c) of the Act, or the expiration of the deadline for filing a statement of use for the goods and/or services listed in the petition, pursuant to section 1(d), including all approved extensions thereof.

Under § 2.91(c), the Director will consider only complete petitions for expungement or reexamination. To be considered complete, the petition must be made in writing and filed through the USPTO's Trademark Electronic Application System (TEAS), and must include:

• The fee required by § 2.6(a)(26);

• The U.S. trademark registration number of the registration subject to the petition;

• The basis for petition under § 2.91(a);

• The name, domicile address, and email address of the petitioner;

• If the domicile of the petitioner is not located within the United States or its territories, a designation of an attorney, as defined in §  11.1, who is qualified to practice under §  11.14;

• If the petitioner is, or must be, represented by an attorney, as defined in § 11.1, who is qualified to practice under § 11.14, the attorney's name, postal address, email address, and bar information under § 2.17(b)(3);

• Identification of each good and/or service recited in the registration for which the petitioner requests that the proceeding be instituted on the basis identified in the petition;

• A verified statement signed by someone with firsthand knowledge of the facts to be proved that sets forth in numbered paragraphs:

a. The elements of the reasonable investigation of nonuse conducted, as defined under § 2.91(d), where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed; and

b. A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in § 2.91(a);

• A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.

If a petition does not satisfy the requirements for a complete petition, the USPTO will issue a letter providing the petitioner 30 days to perfect the petition by complying with the outstanding requirements, if otherwise appropriate.

C. Petition Fee

After consideration of the comments discussed below regarding the proposed fee of $600 per class, this final rule sets a fee of $400 per class for a petition for expungement or reexamination. In setting this fee, the USPTO intends to strike a balance between recovering the costs associated with conducting these proceedings (including Director-initiated proceedings) and providing a less expensive alternative to a contested inter partes cancellation proceeding before the TTAB.

D. Reasonable Investigation Requirement

Under § 2.91(c)(8), a petition requesting institution of an expungement or reexamination proceeding must include a verified statement that sets forth the elements of the reasonable investigation the petitioner conducted to determine that the mark was never used in commerce (for expungement petitions) or not in use in commerce as of the relevant date (for reexamination petitions) on or in connection with the goods and/or services identified in the petition.

A reasonable investigation is an appropriately comprehensive search likely to reveal use of the mark in commerce on or in connection with the relevant goods and/or services, if such use was, in fact, made. Thus, what constitutes a reasonable investigation is a case-by-case determination, but any investigation should focus on the mark disclosed in the registration and the identified goods and/or services, keeping in mind their scope and applicable trade channels.

The elements of a petitioner's investigation should demonstrate that a search for use in relevant channels of trade and advertising for the identified goods and/or services did not reveal any relevant use. In addition, the petitioner's statement regarding the elements of the reasonable investigation should specifically describe the sources searched, how and when the searches were conducted, and what information and evidence, if any, the searches produced.

Sources of information and evidence should include reasonably accessible sources that can be publicly disclosed, because petitions requesting institution of expungement and reexamination proceedings will be entered in the registration record and thus be publicly viewable through the USPTO's Trademark Status & Document Retrieval (TSDR) database. The number and nature of the sources a petitioner must check in order for its investigation to be considered reasonable, and the corresponding evidence that would support a prima facie case, will vary depending on the goods and/or services involved, their normal trade channels, and whether the petition is for expungement or reexamination. Because nonuse for purposes of expungement and reexamination is necessarily determined in reference to a time period that includes past activities (not just current activities), a petitioner's investigation normally would include research into past usage of the mark for the goods and/or services at issue in the petition and thus may include archival evidence.

As a general matter, a single search using an internet search engine likely would not be considered a reasonable investigation. See H.R. Rep. No. 116-645, at 15 (2020). On the other hand, a reasonable investigation does not require a showing that all of the potentially available sources of evidence were searched. Generally, an investigation that produces reliable and credible evidence of nonuse at the relevant time should be sufficient.

As set forth in § 2.91(d)(2), appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:

• State and Federal trademark records;

• internet websites and other media likely to or believed to be owned or controlled by the registrant;

• internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;

• Print sources and web pages likely to contain reviews or discussions of the relevant goods and/or services;

• Records of filings made with or of actions taken by any State or Federal

business registration or regulatory agency;

• The registrant's marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services;

• Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant's use or nonuse of the registered mark; and

• Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.

A petitioner is not required or expected to commission a private investigation but may choose to generally reference the results of any report from such an investigation without disclosing specific information that would waive any applicable privileges.

Finally, any party practicing before the USPTO, including those filing petitions to request institution of these ex parte proceedings, is bound by all ethical rules involving candor toward the USPTO as the adjudicating tribunal. Of particular relevance in ex parte expungement and reexamination proceedings is 37 CFR 11.303(d), which states: “In an ex parte proceeding, a practitioner shall inform the tribunal of all material facts known to the practitioner that will enable the tribunal to make an informed decision, whether or not the facts are adverse.” Also relevant is the USPTO rule concerning submissions in trademark matters, which provides that by presenting any trademark submission to the USPTO, a party, whether a practitioner or non-practitioner, is certifying that “[t]o the best of the party's knowledge, information and belief, formed after an inquiry reasonable under the circumstances, . . . the paper is not being presented for any improper purpose, such as to harass someone or cause unnecessary delay” and “[t]he allegations and other factual contentions have evidentiary support.” 37 CFR 11.18(b)(2).

See also

37 CFR 11.18(c) (providing that violations of any subparagraphs of § 11.18(b)(2) are “subject to such sanctions or actions as deemed appropriate by the USPTO Director”).

E. Director-Initiated Proceedings

As authorized by the TMA, § 2.92(b) provides that the Director may, within the time periods set forth in § 2.91(b), institute an expungement or reexamination proceeding on the Director's own initiative, if the information and evidence available to the USPTO supports a prima facie case of nonuse.

Section 2.92(e)(1) provides that, for efficiency and consistency, the Director may consolidate proceedings (including a Director-initiated proceeding with a petition-initiated proceeding). Consolidated proceedings are related parallel proceedings that may include both expungement and reexamination grounds.

In addition, under § 2.92(e)(2), if two or more petitions under § 2.91 are directed to the same registration and are pending concurrently (

i.e.,

expungement or reexamination proceedings based on these petitions are not yet instituted), or the Director wishes to institute an ex parte expungement or reexamination proceeding on the Director's own initiative under § 2.92(b) concerning a registration for which one or more petitions under § 2.91 are pending, the Director may elect to institute a single proceeding.

F. Establishing a Prima Facie Case

Under § 2.92, as provided for explicitly in the TMA, an expungement or reexamination proceeding will be instituted only in connection with the goods and/or services for which a prima facie case of relevant nonuse has been established.

See

Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 225(a), (c). For the purpose of this rule, a prima facie case requires only that a reasonable predicate concerning nonuse be established.

See

H.R. Rep. No. 116-645, at 8 (2020) (citing

In re Pacer Tech.,

338 F.3d 1348, 1351 (Fed. Cir. 2003) and

In re Loew's Theatres, Inc.,

769 F.2d 764, 768 (Fed. Cir. 1985)). Thus, with respect to these proceedings, a prima facie case includes sufficient notice of the claimed nonuse to allow the registrant to respond to and potentially rebut the claim with competent evidence, which the USPTO must then consider before making a determination as to whether the registration should be cancelled in whole or in part, as appropriate.

For expungement and reexamination proceedings instituted on the basis of a petition under § 2.91, the determination of whether a prima facie case has been made is based on the evidence and information that is collected as a result of the petitioner's reasonable investigation and set forth in the petition, along with the USPTO's electronic record of the involved registration. Appropriate sources of such evidence and information include those listed in § 2.91(d)(2).

For Director-initiated expungement and reexamination proceedings, the evidence and information that may be relied upon to establish a prima facie case may be from essentially the same sources as those in the petition-initiated proceeding.

G. Notice of Petition and Proceedings

When a petitioner files a petition requesting institution of expungement or reexamination proceedings, the petition will be uploaded into the registration record and be viewable through TSDR. The USPTO plans to send a courtesy email notification of the filing to the registrant and/or the registrant's attorney, as appropriate, if an email address is of record. The registrant may not respond to this courtesy notice. No response from the registrant will be accepted unless and until the Director institutes a proceeding under § 2.92.

Once the Director has determined whether to institute a proceeding based on the petition, notice of that determination will be sent to the petitioner and the registrant, along with the means to access the petition and supporting documents and evidence.

If a proceeding is instituted, the petitioner will not have any further involvement. In the case of Director-initiated proceedings, there is no petitioner, and thus all relevant notices will be provided only to the registrant. In both types of proceedings, documents associated with the proceeding will be uploaded into the registration record and will be publicly viewable through TSDR.

Under the TMA and § 2.92(c)(1), any determination by the Director whether to institute an expungement or reexamination proceeding, based either on a petition or on the Director's own initiative, is final and non-reviewable. See Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 225(a), (c).

Finally, for purposes of correspondence relating to these proceedings, the “registrant” is the owner/holder currently listed in USPTO records.

H. Procedures for Expungement and Reexamination Proceedings

Under § 2.92(f)(2), the Director's determination to institute a proceeding is set forth in an Office action, which, in accordance with § 2.93(a), will require the registrant to provide such evidence of use, information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case by establishing that the

required use in commerce has been made on or in connection with the goods and/or services at issue, as required by the Act. While institution necessitates a response from the registrant that includes evidence rebutting the prima facie case, the ultimate burden of proving nonuse by a preponderance of the evidence remains with the Office.

Although the Office action will be substantively limited in scope to the question of use in commerce, the registrant will also be subject to the requirements of § 2.11 (requirement for representation), § 2.23 (requirement to correspond electronically), and § 2.189 (requirement to provide a domicile address). Thus, the USPTO will require the registrant to furnish domicile information as necessary to determine if the registrant must be represented by a U.S.-licensed attorney. In addition, all registrants will be required to provide a valid email address for correspondence, if one is not already in the record, and to update the email address as necessary to facilitate communication with the USPTO.

The TMA provides that any documentary evidence of use provided by the registrant need not be the same as that required under the USPTO's rules of practice for specimens of use under section 1(a) of the Act, 15 U.S.C. 1051(a), but must be consistent with the definition of “use in commerce” set forth in section 45 of the Act, 15 U.S.C. 1127, and in relevant case law. Although testimonial evidence may be submitted, it should be supported by corroborating documentary evidence.

The USPTO anticipates that the documentary evidence of use in most cases will take the form of specimens of use, but the TMA contemplates situations where, for example, specimens for particular goods and/or services are no longer available, even if they may have been available at the time the registrant filed an allegation of use. In these cases, the registrant may be permitted to provide additional evidence and explanations supported by declaration to demonstrate how the mark was used in commerce at the relevant time. As a general matter, because the registration file, including any specimens, has already been considered in instituting the proceeding based on a prima facie case of nonuse, merely resubmitting the same specimen of use previously submitted in support of registration or maintenance thereof, or a verified statement alone, without additional supporting evidence, will likely be insufficient to rebut a prima facie case of nonuse.

For expungement proceedings, the registrant's evidence of use must show that the use occurred before the filing date of the petition to expunge under § 2.91(a), or before the date the proceeding was instituted by the Director under § 2.92(b), as appropriate. For reexamination proceedings, the registrant's evidence of use must demonstrate use of the mark in commerce on or in connection with the goods and/or services at issue on or before the relevant date established pursuant to the TMA under the relevant section of the Act.

Under § 2.93(b)(5)(ii), a registrant in an expungement proceeding may provide verified statements and evidence to establish that any nonuse as to particular goods and/or services with a sole registration basis under section 44(e) of the Act, 15 U.S.C. 1126(e), or section 66(a) of the Act, 15 U.S.C. 1141f(a), is due to special circumstances that excuse such nonuse, as set forth in § 2.161(a)(6)(ii). However, excusable nonuse will not be considered for any goods and/or services registered under section 1 of the Act, 15 U.S.C. 1051.

Section 2.93(d) provides that a registrant in an expungement or reexamination proceeding may also respond to an Office action by deleting some or all of the goods and/or services at issue in the proceeding and that an acceptable deletion will be immediately effective, that is, upon deletion the registration is considered cancelled as to the deleted goods and/or services, and the deleted goods and/or services cannot be reinserted. The rule further specifies that no other amendment to the identification of goods and/or services in a registration will be permitted as part of the proceeding. If goods and/or services that are subject to an expungement or reexamination proceeding are deleted after the filing, and before the acceptance, of an affidavit or declaration under section 8 or 71 of the Act, the deletion will be subject to the fee under § 2.161(c) or § 7.37(c).

In addition, a registrant may submit a request to surrender the subject registration for cancellation under § 2.172 or a request to amend the registration under § 2.173, but the mere filing of these requests will not constitute a sufficient response to an Office action requiring the registrant to provide evidence of use of the mark in the expungement or reexamination proceeding. The registrant must affirmatively notify the Office of the separate request in a timely response to the Office action.

Any deletion of goods and/or services at issue in a pending proceeding requested in a response, a surrender for cancellation under § 2.172, or an amendment of the registration under § 2.173 shall render the proceeding moot as to those goods and/or services, and the Office will not make any further determination regarding the registrant's use of the mark in commerce as to those goods and/or services.

Under § 2.93(b)(1), the registrant must respond to the initial Office action via TEAS within three months of the issue date, but has the option to request a one-month extension of time to respond for a fee of $125, as set forth in § 2.6(a)(27). As discussed below, the USPTO made this change after consideration of the comments received in response to the proposed response period in the NPRM of two months for an Office action issued in connection with an expungement or reexamination proceeding. If the registrant fails to timely respond, the rule provides that the USPTO will terminate the proceedings and the registration will be cancelled, in whole or in part, as appropriate. However, a registrant may request reinstatement of the registration and resumption of the proceeding if the registrant failed to respond to the Office action because of an extraordinary situation. Under § 2.146(d)(2)(iv), such a petition must be filed no later than two months after the date of actual knowledge of the cancellation of goods and/or services in a registration and not later than six months after the date of cancellation as indicated in TSDR. Section 2.146(c)(2) requires the registrant to include a response to the Office action with the petition.

Relatedly, § 2.23(d)(3) provides that registrants are responsible for monitoring the status of their registrations in the USPTO's electronic systems at least every three months after notice of the institution of an expungement or reexamination proceeding until a notice of termination issues under § 2.94.

The USPTO also sought comments regarding whether § 2.93 should provide that, when a timely response by the registrant is a bona fide attempt to advance the proceeding and is a substantially complete response to the Office action, but consideration of some matter or compliance with a requirement has been omitted, the registrant may be granted 30 days, or to the end of the time period for response in the Office action to which the substantially complete response was submitted, whichever is longer, to resolve the issue. As discussed below, after consideration of the comments received, § 2.93 includes the option for the USPTO to issue a 30-day letter in

such circumstances. However, granting the registrant additional time in such circumstances does not extend the time for filing an appeal to the TTAB or a petition to the Director. In addition, the USPTO sought comments on whether it should take additional action when a registrant's failure to respond in an expungement or reexamination proceeding leads to cancellation of some of the goods and/or services in the registration. Specifically, the USPTO considered whether, in these cases, the registration should also be selected for audit under 37 CFR 2.161(b) or 7.37(b) if a registration maintenance filing is pending or, if one is not pending, when the next maintenance filing is submitted. As under current practice, if selected for audit, the registrant would be required to substantiate use for some or all of the remaining goods and/or services recited in the registration. As discussed below, after consideration of the comments received, the USPTO will not automatically select for audit a registration when the registrant fails to respond to an expungement or reexamination Office action and its registration is cancelled in part.

If the registrant timely responds to the initial Office action in the expungement or reexamination proceeding, the USPTO will review the response to determine if use of the mark in commerce at the relevant time has been established for each of the goods and/or services at issue. If the USPTO finds, during the course of the proceeding, that the registrant has demonstrated relevant use of the mark in commerce on or in connection with the goods and/or services at issue sufficient to rebut the prima facie case, demonstrated excusable nonuse in appropriate expungement cases, or deleted goods and/or services, such that no goods and/or services remain at issue, the proceeding will be terminated upon the USPTO issuing a notice of termination under § 2.94.

If, however, the response fails to establish use of the mark in commerce at the relevant time (or to sufficiently establish excusable nonuse, if applicable) for all of the goods and/or services at issue, or otherwise fails to comply with all outstanding requirements, the USPTO will issue a final action. In an expungement proceeding, the final action will include the examiner's decision that the registration should be cancelled for each good or service for which the mark was determined to have never been used in commerce or for which no excusable nonuse was established. In a reexamination proceeding, the final action will include the examiner's decision that the registration should be cancelled for each good and/or service for which it was determined the mark was not in use in commerce on or before the relevant date. As appropriate, in either an expungement or reexamination proceeding, the final action will include the examiner's decision that the registration should be cancelled in whole for noncompliance with any requirement under §§ 2.11, 2.23, and 2.189.

If a final action is issued, the registrant will have three months to file a request for reconsideration or an appeal to the TTAB, if appropriate. These deadlines are not extendable. In accordance with § 2.93(c)(3)(ii), if the registrant fails to timely appeal or file a request for reconsideration that establishes use of the mark in commerce at the relevant time for all goods and/or services that remain at issue in a final action (or that deletes the remaining goods and/or services at issue), the USPTO will issue a notice of termination of the proceeding under § 2.94, clearly setting forth the goods and/or services for which relevant use was, or was not, established, as well as any other outstanding requirements. The notice of termination is a statement intended to provide notice to the registrant and the public of the ultimate outcome of the proceedings and is not itself reviewable. The USPTO will also issue, as appropriate, an order canceling the registration in whole or in part, in accordance with the examiner's decision in the final action. Section 2.93(b)(1) provides that, if the registrant fails to timely respond, the USPTO will terminate the proceedings, and the registration will be cancelled, in whole or in part, as appropriate. However, a registrant may request reinstatement of the registration and resumption of the proceeding if the registrant failed to respond to the Office action because of an extraordinary situation. Under § 2.146(d)(2)(iv), such a petition must be filed no later than two months after the date of actual knowledge of the cancellation of goods and/or services in a registration and may not be filed later than six months after the date of cancellation in TSDR. Under § 2.146(c)(2), the registrant must include a response to the Office action with the petition.

Under § 2.94, if the required use in commerce (or excusable nonuse, in appropriate cases) is not established, the notice of termination will indicate a cancellation of either some of the goods and/or services or the entire registration, depending on the circumstances. If the goods and/or services for which use (or excusable nonuse) was not demonstrated are the only goods and/or services in the registration, or there remain any additional outstanding requirements, the entire registration will be cancelled. However, if the notice of termination relates only to a portion of the goods and/or services in the registration, and there are no other outstanding requirements, the registration will be cancelled in part, as appropriate. A notice of termination will not issue until all outstanding issues are satisfactorily resolved (and thus no cancellation is necessary) or the time for appeal has expired or any appeal proceeding has terminated. Petitioners and other interested parties may monitor the progress of a proceeding by reviewing the status and associated documents through TSDR.

In setting the deadlines for expungement and reexamination proceedings, the USPTO considered the amount of time a registrant might need to research and collect relevant evidence of use, the fact that some proceedings may involve more goods and/or services than others, and the comments it received regarding the proposed deadlines. The USPTO also weighed these considerations against the goal that these proceedings be faster and more efficient than other available options for cancellation of registrations for marks not used with goods and/or services listed therein, as well as the probability that most registrants are likely to have evidence of use that is contemporaneous with the relevant date at issue.

I. Estoppel and Co-Pending Proceedings

Section 2.92(d) of this rule includes provisions for estoppel and bars co-pending proceedings involving the same registration and the same goods and/or services.

Specifically, § 2.92(d)(1) provides that, upon termination of an expungement proceeding where it was established that the registered mark was used in commerce on or in connection with any of the goods and/or services at issue in the proceedings prior to the date a petition to expunge was filed under § 2.91 or the Director-initiated proceedings were instituted under § 2.92, no further expungement proceedings may be instituted as to those particular goods and/or services. Subsequent reexamination proceedings for marks registered under section 1 of the Act are not barred under these circumstances because reexamination proceedings involve a question of whether the mark was in use in commerce as of a particular relevant date, whereas earlier expungement proceedings would only have involved

a determination of whether the mark was never used. Proof of use sufficient to rebut a prima facie case of nonuse in an expungement proceeding might not establish use in commerce as of a particular relevant date, as required in a reexamination proceeding.

Section 2.92(d)(2) provides that, upon termination of a reexamination proceeding where it was established that the registered mark was used in commerce on or in connection with any of the goods and/or services at issue, on or before the relevant date at issue in the proceedings, no further expungement or reexamination proceedings may be instituted as to those particular goods and/or services. The TMA does not explicitly bar a subsequent expungement proceeding following a determination in a reexamination proceeding. However, the rule takes into account that it would be unnecessary for the registrant to be subjected to a later-instituted proceeding alleging the mark was never used in commerce when the USPTO has already determined that the mark was used in commerce on or before a relevant date.

In addition, § 2.92(d)(3) provides that, with respect to a particular registration, while an expungement proceeding is pending, no later expungement proceeding may be instituted with respect to the same goods and/or services at issue in the pending proceeding. Section 2.92(d)(4) establishes that, with respect to a particular registration, while a reexamination proceeding is pending, no later expungement or reexamination proceeding may be instituted with respect to the same goods and/or services at issue in the pending proceeding.

For the purposes of these rules, the wording “same goods and/or services” refers to identical goods and/or services that are the subject of the pending proceeding or the prior determination. Thus, for example, if a subsequent petition for reexamination identifies goods that are already the subject of a pending reexamination proceeding and goods that are not, only the latter goods could potentially be the subject of a new proceeding. The fact that there is some overlap between the goods and/or services in the pending proceeding and those identified in a petition would not preclude the goods and/or services that are not the same from being the subject of a new proceeding, if otherwise appropriate. This situation is addressed in § 2.92(c)(2), which permits the Director to institute a proceeding on petition for fewer than all of the goods and/or services identified in the petition. The comments received in connection with the estoppel and co-pending provisions are discussed below.

II. New Nonuse Ground for Cancellation Before the TTAB

The TMA created a new nonuse ground for cancellation under section 14 of the Act, allowing a petitioner to allege that a mark has never been used in commerce as a basis for cancellation before the TTAB. This ground is available at any time after the first three years from the registration date. Therefore, the USPTO amends § 2.111(b) to indicate when a petition on this ground may be filed and to distinguish it from the timing of other nonuse claims.

III. Flexible Response Periods

The TMA amended section 12(b) of the Act, 15 U.S.C. 1062(b), to allow the USPTO to set response periods by regulation for a time period between 60 days and 6 months, with the option for extensions to a full 6-month period. Under current § 2.62(a), applicants have six months to respond to Office actions issued during the examination of a trademark application. Many examination issues, particularly formal requirements like amendments to identifications or mark descriptions, can be resolved well before the current six-month deadline. However, the USPTO also recognizes that Office actions containing statutory refusals may present complex issues that require more time to address, and thus applicants and their attorneys may need the full response period to prepare and submit a response.

USPTO data analytics indicate that, in fiscal year (FY) 2020, 42% of represented applicants and 66% of unrepresented applicants responded to an Office action with a single substantive ground of refusal within three months from the issuance of a non-final Office action. Where the Office action covered multiple refusals, 31% of represented applicants and 56% of unrepresented applicants responded within three months.

Accordingly, the USPTO amends § 2.62 to set a response period of three months for responses to Office actions in applications under sections 1 and/or 44 of the Act. Under § 2.62(a)(2), applicants may request a single three-month extension of this three-month deadline, subject to payment of the fee in § 2.6(a)(28), namely, $125 for an extension request filed through TEAS and $225 for a permitted paper-filed request. To be considered timely, the request for an extension must be received by the USPTO on or before the deadline for response, which, consistent with current examination practice, will be set forth in the Office action. If an applicant fails to respond or request an extension within the specified time period, the application will be abandoned. This extension will not affect the existing practice under § 2.65(a)(2) that permits an examiner to grant an applicant 30 days, or to the end of the time period for response to the action to which a substantially complete and timely response was submitted, whichever period is longer, to explain or supply an omission. The amendments to § 2.66 address the requirement for the extension fee in situations where an applicant files a petition to revive past a three-month deadline.

Although post-registration actions are not subject to the response provisions in section 12 of the Act, for convenience and predictability, the same three-month response period and single three-month extension apply to Office actions issued in connection with post-registration review of registration maintenance and renewal filings.

However, applications under section 66(a) of the Act will not be subject to the three-month deadline for Office action responses; the deadline will instead remain at six months. USPTO data analytics indicate that in FY 2020, only 11% of Madrid applicants filed a response to a non-final Office action with multiple grounds within three months, while 62% of Madrid applicants took six months to file a response. The additional processing required for these applications, both at the USPTO and the World Intellectual Property Organization's International Bureau (IB), per article 5(2) of the Madrid Protocol, introduces time constraints that justify maintaining the current deadlines.

These flexible response periods are intended to promote efficiency in examination by shortening the prosecution timeline for applications with issues that are relatively simple to address, while providing sufficient time, through an optional extension, for responses to Office actions with more complex issues. In addition, shorter response periods may result in faster disposal of applications and thus reduce the potential delay in examination of later-filed applications for similar marks.

The rule includes conforming revisions to §§ 2.63, 2.65, 2.66, 2.141, 2.142, 2.163, 2.165, 2.176, 2.184, 2.186, 7.6, 7.39, and 7.40 to account for the deadlines and extensions. The USPTO inadvertently failed to list § 2.176 in the NPRM but has included it here.

Although the rules regarding expungement and reexamination proceedings must be implemented within one year of the TMA's enactment, there is no required date of implementation for the flexible response and extension provisions. Therefore, because these flexible response periods and extensions will involve significant changes to examination processes and the USPTO's information technology (IT) systems, the Office will delay implementation of them until December 1, 2022. This will also allow customers to update their practices and IT systems for these changes.

The USPTO also sought comments on two alternatives to the procedures discussed above. The comments received regarding the flexible response period implemented herein, as well as the proposed alternatives, are discussed below.

IV. Letters of Protest

The TMA amends section 1 of the Act, 15 U.S.C. 1051, to add a new paragraph (f), providing express statutory authority for the USPTO's existing letter-of-protest procedure, which allows third parties to submit to the USPTO for consideration and entry into the record evidence bearing on the registrability of a mark. This procedure is intended to aid in examination without causing undue delay or compromising the integrity and objectivity of the ex parte examination process. The TMA also provides that the Director shall determine whether evidence should be included in the record of the relevant application within two months of the date on which a letter of protest is filed.

The USPTO promulgated letter-of-protest procedures at 37 CFR 2.149 in a final rule published in the

Federal Register

on November 17, 2020 (85 FR 73197). The requirements set out in § 2.149 are consistent with those in the TMA. However, the TMA further provides that any determination by the Director of the USPTO whether to include letter-of-protest evidence in the record of an application shall be final and non-reviewable, and that such a determination shall not prejudice any party's right to raise any issue and rely on any evidence in any other proceeding.

See

Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 223(a). Therefore, the USPTO revises § 2.149 to include these additional provisions.

The TMA also authorizes the USPTO to charge a fee for letters of protest. Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 223(a). Under existing § 2.6(a)(25), the USPTO currently charges $50 per letter-of-protest submission. That fee is not changed in this rulemaking. Comments received in connection with the procedures for letters of protest are discussed below.

V. Suspension of Proceedings

The USPTO revises §§ 2.67 and 2.117 to clarify that expungement and reexamination proceedings are included among the types of proceedings for which suspension of action by the Office or the TTAB is authorized. In addition, the USPTO revises these rules to align them with the existing practice regarding suspension of proceedings before the USPTO or the TTAB. Generally, the USPTO will suspend prosecution of a trademark application or a matter before the TTAB during the pendency of a court or TTAB proceeding that is relevant to the issue of registrability of the involved mark; therefore, this rule eliminates the limitation in § 2.117 to other proceedings in which a party or parties are engaged.

Suspension will normally be maintained until the outcome of the proceeding has been finally determined. As set forth in the current version of section 510.02(b) of the Trademark Trial and Appeal Board Manual of Procedure, the USPTO considers a proceeding to have been finally determined when an order or ruling that ends litigation has been rendered and noticed, and no appeal has been filed, or all appeals filed have been decided and the time for any further review has expired without further review being sought. The expiration of time for any further review includes the time for petitioning for rehearing or U.S. Supreme Court review. Thus, the Office will not normally lift a suspension until after the time for seeking such review has expired, a decision denying or granting such review has been rendered, and any further review has been completed. Comments received regarding suspension procedures are discussed below.

VI. Attorney Recognition

The USPTO proposed revising § 2.17(g) to indicate that, for the purposes of an application or registration, recognition of a qualified attorney as the applicant's or registrant's representative will continue until the owner revokes the appointment or the attorney withdraws from representation. Accordingly, to end attorney recognition by the USPTO under the proposal, owners and attorneys would be required to proactively file an appropriate revocation or withdrawal document under § 2.19, rather than the current situation, where recognition automatically ends when one of the events listed in current § 2.17(g) occurs.

Furthermore, under the proposed revision to § 2.17(g), if the applicant or registrant wished to retain a new attorney for submissions to the USPTO following abandonment or registration, the applicant or registrant would be required to revoke the original power of attorney, or the attorney would need to request to withdraw from representation, before a new attorney could be recognized.

In addition, under the proposed rule, recognition of the attorney of record would continue, even when there is a change of ownership, until the attorney affirmatively withdraws or representation is revoked.

After consideration of the comments received in connection with the proposed changes, as discussed below, the USPTO has decided not to implement these proposed changes to the rules governing attorney recognition and withdrawal at this time.

However, as proposed, this rule adds § 2.17(b)(4) to specify that when a practitioner has been mistakenly, falsely, or fraudulently designated as an attorney for an applicant, registrant, or party to a proceeding without the practitioner's prior authorization or knowledge, recognition of that practitioner shall be ineffective.

In addition, the USPTO revises § 2.18(a)(1) to refer to “recognition” instead of “representation,” consistent with the wording in § 2.18(a)(2). The term “recognition” reflects the fact that the USPTO does not control representation agreements between practitioners and clients but merely recognizes an attorney for purposes of representation before the USPTO. In addition, revised § 2.18(a)(2) indicates that, as with service of a cancellation petition, the USPTO may correspond directly with a registrant in connection with notices of institution of expungement or reexamination proceedings. Accordingly, the USPTO plans to send notices of institution of expungement and reexamination proceedings to the owner currently identified in the registration record and to the attorney of record, if any, or any previous attorney of record whose contact information is still in the record.

VII. Court Orders Concerning Registrations

This rule also adds new § 2.177 to codify the USPTO's longstanding procedures concerning action on court orders cancelling or affecting a registration under section 37, 15 U.S.C. 1119, which are currently set forth in section 1610 of the Trademark Manual

of Examining Procedure (TMEP). The USPTO requires submission of a certified copy of the order and normally does not act on such orders until the case is finally determined.

VIII. Comments and Responses

A. Number of Petitions

Comment 1:

Several commenters submitted comments about whether the USPTO should limit the number of petitions for expungement or reexamination that can be filed against a registration. Two commenters agreed with the approach, stated in the NPRM, that the USPTO would not initially limit the number of petitions. These commenters suggested that the Report on Decluttering Initiatives would inform the USPTO on whether additional safeguards might be needed after some experience with these proceedings and encouraged the USPTO to address patterns of abusive filings by denying institution of bad-faith petitioners' future requests. One commenter was concerned about the possibility of misuse by deferring a limit on the number of petitions that can be filed against a registration, but was amenable to a wait-and-see approach, while encouraging the USPTO to reserve the authority of the Director to limit the number of petitions at his or her discretion or for the USPTO to establish a limit in a future rule. Two commenters stated that the USPTO should limit the number of petitions that can be filed as an additional safeguard against abuse, one opining that allowing multiple ex parte proceedings against a single registration disproportionately impacts small and medium-sized enterprises.

Response:

As noted above, the USPTO is not imposing a limitation on the number of petitions at this time. The USPTO agrees with those commenters who believe that experience with these proceedings will inform the USPTO as to whether there are patterns of abuse in the filing of petitions for expungement or reexamination. As referenced by the comments, the TMA requires the USPTO to collect data for a congressionally mandated report on the effectiveness of the expungement and reexamination proceedings in addressing inaccurate and false claims of use. Some of these comments suggested that this data could identify whether or not abuses of the proceedings have occurred. In connection with the report, the USPTO is establishing internal systems for collecting data on, among other things, the number of petitions for expungement or reexamination filed, the number of proceedings instituted, and the final outcome of those proceedings. However, this data is primarily for the purpose of measuring the effectiveness of the proceedings and likely will not inform the USPTO as to the potential for abuse. Thus, the USPTO's Special Task Force for Improper Activities (STF) will be separately analyzing other data elements to evaluate abuse of the proceedings. The USPTO does not intend to make this investigative data collection public because of the potential for bad actors to use that information to evade detection. If it appears that abuse of the petition process or of the nonuse proceedings is occurring, the USPTO may take steps to prevent such abuse from continuing to occur, the USPTO may take steps to prevent it from continuing by establishing a limit on the number of petitions for expungement or reexamination in a future rulemaking or by imposing appropriate sanctions under 37 CFR 11.18, which may include striking submissions and precluding parties from making submissions. Regarding the concern that multiple ex parte proceedings against a single registration would disproportionately impact small and medium-sized enterprises, the USPTO notes that the absence of a limit on petitions to cancel at the TTAB does not appear to have disproportionately impacted these enterprises and there is no evidence to suggest a different result with respect to petitions for reexamination or expungement. It should be noted, however, that, based on information already collected, many of the applications and registrations in which nonuse may be an issue are owned by individuals or small-volume filers. Therefore, the USPTO anticipates that a significant portion of the expungement and reexamination proceedings instituted will be brought against registrants who are considered small enterprises. If so, this fact alone would not indicate that the process was unfairly impacting this group. However, the USPTO will carefully review the data to be collected for the above-referenced report, along with the data to be collected by the STF, which should provide additional insight to allow the USPTO to assess the impact of these proceedings on registrants, as well as potential abuse, and make adjustments if necessary. For now, given the per-class filing fee for submitting a petition for expungement and/or reexamination, the time and resources required to demonstrate the petitioner's search for use in relevant channels of trade and advertising, and the potential ramifications under § 11.18 of submitting a petition for an improper purpose, the USPTO expects that petitioners will take care to submit petitions that appropriately challenge all goods and/or services for which they allege nonuse.

B. Real Party in Interest

Comment 2:

The USPTO received six comments agreeing that it should not require a petitioner to identify the name of the real party in interest on whose behalf a petition is filed. These commenters stated, among other things, that: (1) Allowing the real party in interest to remain anonymous will encourage filers to take advantage of the system by reducing the likelihood of retaliation, (2) requiring real-party-in-interest information could become an obstacle to the use of the system, (3) it is consistent with the TMA and congressional intent not to require standing, and (4) these proceedings are only between the USPTO and the registrant after institution. Four commenters supported a requirement to identify the real party in interest in order to discourage frivolous, speculative, or abusive filings and so the registrant would know who is challenging its registration. Two commenters suggested that the USPTO adopt a wait-and-see approach and revisit the issue after gaining some experience with processing the petitions, with one stating that the Director should nonetheless retain the discretion to require a petitioner to identify the real party in interest.

Response:

The USPTO agrees with the rationale articulated by those commenters who stated that the identity of the real party in interest should not be required in order to file a petition for expungement or reexamination. The TMA allows any party to file and does not require the real party in interest to be identified and requiring such information could discourage legitimate petitions from being filed where the potential filers have concerns about being identified in the petitions. However, the USPTO also agrees that there is merit in retaining the Director's discretion to require the identity of the real party in interest in order to discourage and prevent abusive filings. Therefore, this rule retains such discretion in § 2.91(h).

C. 30-Day Letter—Petition

Comment 3:

One commenter supported providing petitioners an opportunity to supplement a deficient petition. Another stated that allowing petitioners 30 days to perfect a deficient petition is too long and does not appear fairly balanced with the registrant's

proposed response period of two months to provide evidence of use for a potentially large number of goods and/or services across multiple classes. One commenter requested that the USPTO clarify whether a petitioner's failure to establish a prima facie case will be correctable under the 30-day letter process for perfecting a petition or if the letter will only issue when a petition is incomplete as a result of other formal requirements. Another commenter asked whether the USPTO will place 30-day letters in the TSDR record of the challenged registration, whether it will notify the registrant of the letter, and whether it will issue the 30-day letter under the same current processes and procedures as letters issued in relation to petitions to the Director. That commenter also recommended that any notification to the registrant be made to the email addresses of the registrant, attorney of record, and any secondary email addresses listed in the registration. Finally, one commenter suggested that a technical defect in a petition, such as failing to adequately describe its reasonable investigation, should not preclude the Director from instituting a proceeding.

Response:

A 30-day letter will be issued in connection with a petition for expungement or reexamination when the petition is incomplete because it fails to include all of the required elements listed in § 2.91(c). For example, a 30-day letter will be issued when: (1) The petition does not include the name, domicile address, or email address of the petitioner; (2) a U.S.-licensed attorney is not designated when the petitioner has a foreign domicile; (3) the petition does not include the required verified statement; or (4) the documentary evidence is not clear and legible. As set out in § 2.91(c)(8)(i), the verified statement must include the elements of the petitioner's reasonable investigation, a description of how and when the searches were conducted, and what the searches disclosed. For purposes of determining whether the petition includes elements required under § 2.91(c), the verified statement will be reviewed for whether it includes the descriptions listed in paragraph (c)(8)(i), but not for the substantive adequacy of those descriptions. If the USPTO determines that the petition does not include the descriptions required in § 2.91(c)(8)(i), the petitioner may be given 30 days to perfect its petition.

The 30-day letter is intended only to give the petitioner an opportunity to provide a required element for a complete petition, consistent with the current procedure regarding missing required elements for petitions to the Director under § 2.146. It will not include a determination regarding whether the petition establishes a prima facie case, and the petitioner may not include additional evidence in its response. If the petitioner includes additional evidence in its response, such evidence will not be considered. If a proceeding is not instituted because the USPTO ultimately determines that the petition fails to establish a prima facie case based on the evidence originally submitted, the petitioner may submit a new petition with additional evidence.

Regarding the inquiry about whether the USPTO will place 30-day letters in the TSDR record of the challenged registration and whether it will notify the registrant of the letter, as well as the recommendation that any notification to the registrant be made to the email addresses of the registrant, attorney of record, and any secondary email addresses listed in the registration, the USPTO notes that the issue of whether a petition for expungement or reexamination complies with the requirements set out in § 2.91 involves only the petitioner and the USPTO. Therefore, a 30-day letter giving a petitioner an opportunity to perfect an incomplete petition will be sent only to the petitioner. The letter will be loaded into TSDR, as will the petitioner's response, if one is received. The registrant will have received notice of the petition via the courtesy email notification sent by the USPTO when the petition is filed, and will be able to view any 30-day letter issued in connection with an incomplete petition, and the petitioner's response, in TSDR.

Finally, the USPTO agrees with the commenter who suggested that a technical defect in a petition should not preclude a Director-instituted proceeding. If a petitioner fails to perfect its petition by supplying all of the required elements, the petition will be denied, and none of the petitioner's evidence will be reviewed. However, nothing in § 2.92(b) prohibits the Director from instituting a proceeding on the Director's own initiative simply because a third party filed an incomplete petition.

D. Petition Fee

Comment 4:

Two commenters agreed with the proposed $600 per-class fee for filing a petition for expungement or reexamination, with one noting that the fee should be adequate to discourage abuse by petitioners, while also accounting for the increased administrative burden on the Office. Several others thought that it was too high. Those commenters generally opined that the proposed fee was excessive considering the limited scope and duration of the proceedings and that it would discourage parties from using the process. Four commenters suggested specific fees, ranging from $250 to $400 per class. Two commenters also recommended that the USPTO extend the applicability of the fee for deleting goods and/or services after submission and prior to acceptance of a section 8 or section 71 affidavit to goods and/or services deleted as a result of reexamination or expungement, and that the Office issue these fees back to petitioners.

Response:

The USPTO agrees with the commenter who noted that the fee should be adequate to discourage abuse by petitioners, while also accounting for the increased administrative burden on the Office. As noted above, the USPTO must determine whether the requirements to establish a prima facie case have been satisfied by the petitioner in order to institute a proceeding. Thus, although the proceeding is more limited in scope than examination prior to registration, the USPTO must expend the time and resources to evaluate whether the petitioner has provided sufficient notice of the claimed nonuse to allow the registrant to respond to and potentially rebut the claim. Upon response by the registrant, the USPTO must review and evaluate all evidence provided by the registrant to determine whether it is sufficient to show use in commerce for each challenged good and/or service. Nevertheless, after consideration of the comments recommending a lower fee, the USPTO has adjusted the per-class fee for filing a petition for expungement or reexamination to $400 per class to ensure that it adequately discourages abuse and accounts for the increased costs to the Office, while also incentivizing the use of these procedures.

Regarding the suggestion to extend the fee for deleting goods and/or services after submission and prior to acceptance of a section 8 or section 71 affidavit to goods and/or services deleted as a result of reexamination or expungement, the USPTO notes that the deletion fee would be charged if goods and/or services are deleted from a registration in response to a petition for expungement or reexamination and a section 8 or section 71 affidavit is pending while the expungement or reexamination proceeding is ongoing. However, extending the applicability of the deletion fee during other periods was not proposed in the NPRM and is outside the scope of this rule.

E. Reasonable Investigation Requirements

Comment 5:

One commenter stated that allowing internet search engine results, let alone a single internet search, to suffice as a reasonable investigation biases ex parte proceedings against small and medium-sized enterprises. That commenter suggested that: (1) The limitations of internet search engine results should preclude such results alone from constituting a reasonable search and that evidence be required from at least one additional source before a prima facie case can be established; and (2) any internet search relied upon as part of the broader body of evidence should be conducted within the United States and at a time reasonably contemporaneous with the filing of the petition,

e.g.,

within 14 calendar days. Another commenter suggested adding a statement in § 2.91(d)(3) to indicate that a petitioner's investigation will be deemed reasonable if the sources used sufficiently demonstrate that a search for use in the typical relevant channels of trade and advertising for the identified goods and/or services did not reveal any relevant use. A third commenter suggested that “information about domain name registrations presently or previously in the name of the Registrant, including offers of such domain names for sale,” be included within the sources of information for a reasonable investigation. Another commenter suggested that the USPTO assign a dedicated group of examiners to review and evaluate whether a petitioner has conducted a reasonable investigation and established a prima facie case. That commenter and two others suggested that such examiners receive specialized training. Another commenter suggested that the notice regarding whether a proceeding will be instituted should clarify what evidence is required to meet the reasonable investigation requirement, whether such evidence is sufficiently provided, and whether the evidence supports a prima facie case. Several commenters also requested clarification regarding whether the petitioner's sources and evidence will be viewable in TSDR in addition to the petition itself.

Response:

The USPTO appreciates the commenter's concerns regarding the limitations of search-engine results. However, the commenter did not provide evidence that such searches are biased against small and medium-sized enterprises other than to state that they are prone to variation based on such factors as the location of the user, the time the search was conducted, and prior search history. Even assuming that an internet search would not return evidence of use by small and medium-sized enterprises, the petitioner still bears the responsibility of demonstrating that its investigation was reasonable and producing reliable and credible evidence of nonuse at the relevant time. Moreover, there may be situations in which an investigation comprised only of internet searches would be deemed reasonable, based on the nature of the goods and/or services at issue. Therefore, the USPTO declines to adopt a requirement that evidence be provided from at least one additional source before a prima facie case can be established.

Regarding the commenter's suggestion that any internet search relied upon be conducted within the United States, the USPTO understands that search-engine algorithms may include a geographic component that may lead to different search results for users in different countries. Thus, users outside the United States may not see the same search results that U.S. users see. Generally, a search should encompass the relevant online sources that would be searched and returned if it was conducted by someone seeking information about a product or service that is in use in commerce in or with the United States, as defined by the Act. However, there are means for conducting such a search that do not require the person conducting such a search to be located in the United States; any suggestion that the search be conducted by someone located in the Unites States may unfairly inhibit foreign parties from submitting legitimate petitions. Therefore, the USPTO declines to adopt such a requirement in the final rule.

As to requiring that searches be conducted at a particular time that is reasonably contemporaneous with the filing of the petition, the USPTO notes that under § 2.91, evidence comprising screenshots from relevant web pages must include the URL and access or print date. This information will allow the USPTO to weigh the value and currency of such evidence when determining whether a prima facie case of nonuse has been established by the petitioner.

As to the request that the regulatory text specifically list information about domain name registrations owned or offered for sale by the registrant as a source for a reasonable investigation, the USPTO notes that § 2.91(d)(2) clearly states that the sources for a reasonable investigation are not limited to those listed in the regulation. Therefore, the rule does not prohibit petitioners from including such information.

Regarding the suggestion that § 2.91(d)(3) include a statement specifying the circumstances in which a petitioner's investigation will be deemed reasonable, the USPTO declines to include such a statement in the regulations. If the USPTO issues a notice instituting a proceeding after submission of a petition for expungement or reexamination, institution of the proceeding will demonstrate that the USPTO determined the petitioner's investigation was reasonable and provided sufficient evidence of nonuse for the challenged goods and/or services.

Regarding the request that the notice regarding whether a proceeding will be instituted clarify what evidence is required to meet the reasonable investigation requirement, the USPTO notes that examples of the types of evidence required to meet the reasonable investigation requirement are set out in § 2.91(d)(2). Further, what constitutes a reasonable investigation is a case-by-case determination, and the USPTO will not provide specific guidance as to what types of evidence would comprise a reasonable investigation in a particular situation.

As to the suggestion that a specialized group of examiners should be assigned to review and evaluate whether a petitioner has conducted a reasonable investigation and established a prima facie case, and that they receive specialized training, the USPTO assures the commenters that attorneys within the Trademarks organization who are assigned to review petitions for expungement and reexamination will receive appropriate training.

Finally, because the petitioner's sources and evidence are required for a complete petition under § 2.91(c), they are not separate from the petition, but form part of the petition. As noted in the NPRM, petitions requesting institution of expungement and reexamination proceedings will be entered in the registration record, and thus these materials will be publicly viewable in TSDR.

F. Professional Responsibility

Comment 6:

Two commenters submitted comments regarding the USPTO's reference to a practitioner's responsibility under 37 CFR 11.303(d) to inform the USPTO in an ex parte proceeding of all material facts known to the practitioner that will enable the USPTO to make an informed decision, whether or not the facts are adverse. One commenter requested that the

USPTO clarify whether reference to this rule means that after submission of a petition, but prior to institution of a proceeding, a registrant could provide evidence of use to the petitioner, and thereby obligate the petitioner to submit such evidence to the USPTO or withdraw the petition, if withdrawal is possible. The other commenter inquired whether a petitioner is required to update its evidence to account for adverse evidence discovered after its petition is filed and before a proceeding is instituted.

Response:

Under the TMA, any person may file a petition to expunge or reexamine a registration of a mark on the basis that the mark has never been used in commerce, or was not used on or before a relevant date, on or in connection with some or all of the goods or services recited in the registration. The petition is the mechanism by which a third party may submit such a challenge to the USPTO. In that way, it is similar to the letter-of-protest process whereby third parties may submit evidence relevant to the registrability of a mark in a pending application. The involvement of the third party in that situation ends with the submission of the letter of protest. Here, if the USPTO determines that the petition establishes a prima facie case of nonuse during the relevant time period and institutes an expungement or reexamination proceeding, such proceeding is ex parte, and, as noted in the NPRM and reiterated above, the petitioner will have no further involvement.

As to the first comment, under the procedures set forth in the rules, the registrant should not engage with the petitioner regarding a pending petition, but rather only with the USPTO after a proceeding is instituted. The petitioner's involvement ends with the filing of the petition. Any evidence of use should be submitted by the registrant in a timely response to an Office action issued in connection with the proceeding.

As to the second comment, if the petitioner discovers that its petition included false or fraudulent information, the petitioner should seek to correct the petition by filing a petition under § 2.146(a)(3) to invoke the supervisory authority of the Director to correct the submission and specifying the facts to be corrected.

See

§ 11.18(b)(2) (submission constitutes certification) and § 11.303(d) (duty of candor).

G. Director-Initiated Proceedings

Comment 7:

One commenter requested that the USPTO explain the meaning of “essentially” in the statement that “for Director-initiated expungement and reexamination proceedings, the evidence and information that may be relied upon to establish a prima facie case may be from essentially the same sources as in the petition-initiated proceeding.” The commenter also asked whether the Director will be able to use evidence submitted in support of one or more failed petitions to establish a prima facie case of non-use in a Director-initiated proceeding against the same registration and whether the reference to a preponderance of the evidence applies only to Director-initiated proceedings. Another commenter asked if the USPTO contemplated further investigating potential nonuse whenever a petition for expungement or reexamination is filed for fewer than all the goods and/or services in a registration and requested clarification as to whether third parties may request consolidation of proceedings. A third commenter suggested that the USPTO consider setting up an email address for parties to notify the Director if there are registrations that may be vulnerable to a Director-initiated expungement or reexamination proceeding.

Response:

Regarding the inquiry about the use of the term “essentially” in connection with sources of evidence and information relied upon in a Director-instituted proceeding, the term merely emphasized that the Director's evidence will come from the same types of sources as those of a petitioner. In this final rule, § 2.92(a) refers to proceedings instituted upon petition and § 2.92(b) refers to proceedings instituted upon the Director's initiative. In either case, institution of the relevant proceeding must be based on information that supports a prima facie case for expungement or reexamination of a registration for some or all of the goods or services identified in the registration. Section 2.91(c)(9) provides a non-exhaustive list of the types of evidence that may support a prima facie case of nonuse. The USPTO anticipates that the evidence put forth in a Director-initiated proceeding would come from the same types of sources as those relied on in a petition submitted by a third party. As to the commenter's second question, nothing in the rule prohibits the Director from using evidence submitted in support of a petition that failed to establish a prima facie case of non-use in a Director-initiated proceeding against the same registration as part of the prima facie case in a Director-initiated proceeding.

As to whether the USPTO contemplated further investigating potential nonuse whenever a petition for expungement or reexamination is filed for fewer than all the goods and/or services in a registration, the USPTO has contemplated such a situation. As noted in the NPRM and above, if the Director wishes to institute an ex parte expungement or reexamination proceeding on the Director's own initiative concerning a registration for which one or more petitions are pending, the Director may elect to institute a proceeding for other goods and/or services and consolidate the proceedings as related parallel proceedings. Regarding consolidation of proceedings, the rule provides that, for efficiency and consistency, the Director may consolidate consideration of a new proceeding with a pending proceeding. There is no provision for requests by third parties to consolidate proceedings.

Regarding the suggestion that the USPTO provide an email address for parties to notify the Director about registrations they believe may be vulnerable to a Director-initiated expungement or reexamination proceeding, the USPTO will not provide a separate email address for such notifications. If a third party has information and evidence to support a prima facie case of nonuse, the appropriate vehicle for providing such information and evidence to the USPTO is a petition for expungement or reexamination.

H. Establishing a Prima Facie Case

Comment 8:

One commenter requested that the USPTO clarify whether examiners should conduct independent internet searches or rely primarily on the petitioner's evidence, and further stated that the USPTO should conduct such independent searches to ensure the prima facie case is met. The commenter also suggested that the USPTO conduct a more thorough review when the goods and/or services are industrial or business-to-business products, or other goods/services not typically sold or advertised online. Another commenter inquired whether the USPTO will supplement the prima facie evidence of the petitioner to meet the preponderance-of-the-evidence standard of proof. A third commenter suggested that the USPTO corroborate in appropriate cases whether the reasonable predicate concerning nonuse is supported.

Response:

Under § 2.92, an expungement or reexamination proceeding will be instituted only in connection with the goods and/or services for which a prima facie case of relevant nonuse has been established. Section 2.92(a) provides that the Director will determine “

if the petition

sets forth a prima facie case of nonuse to support the petition basis” (emphasis added). It is the petitioner's burden to establish a prima facie case. Therefore, with regard to a petition for expungement or reexamination, the USPTO will review the evidence provided and determine whether it establishes a prima facie case. The USPTO will not conduct independent research to ensure that the prima facie case is met, nor will it supplement the evidence of the petitioner. The USPTO notes, however, that in a Director-instituted proceeding, the evidence and information that may be relied upon to establish a prima facie case may be from the same types of sources as in the petition-initiated proceeding, as well as independent research conducted by the USPTO and the electronic record of the registration. Regarding goods and/or services not typically sold or advertised online, as noted above, a prima facie case must include sufficient notice of the claimed nonuse to allow the registrant to respond to and potentially rebut the claim with competent evidence. The USPTO will not impose a higher level of review based on the nature of the goods and/or services but will thoroughly review the evidence in all cases to determine whether this standard has been met.

I. Notice of Petition and Proceedings

Comment 9:

Three commenters expressed concern that numerous registrations do not have up-to-date email addresses for the registrant and assigned attorneys or details regarding any assignments. One commenter suggested that where a petitioner's research has disclosed one or more email addresses of appropriate parties, the petitioner should have an ethical duty to provide such information for proper notification of the proceeding by the USPTO. Another commenter asked whether the USPTO would accept a response from a new owner when the registration was assigned, but the assignment was not recorded before the proceeding was instituted, and whether the new owner is required to formally record documents evidencing a change of title to be recognized as the registrant or if it would be sufficient to supply ownership documents with its response.

Response:

The USPTO appreciates the commenters' concerns regarding proper notification of a proceeding to the relevant registrant. Under 37 CFR 2.23(b), registrants must provide and maintain a valid email address for correspondence. Therefore, it is the registrant's responsibility to ensure that any changes to its email address have been properly submitted to the USPTO. Moreover, in order to change a registrant's correspondence address, a properly signed written request is required. 37 CFR 2.18(c), 2.193(e)(9). Therefore, the USPTO cannot change the registrant's email address based on information provided by a third party.

Similarly, it is the registrant's or the new owner's responsibility to provide information regarding changes of ownership to the USPTO. In a registration based on section 1 or section 44 of the Act, if the registrant has not recorded a change of ownership with the Assignment Recordation Branch of the USPTO, and a party other than the owner of record attempts to take an action with respect to the registration, the party must establish ownership of the registration. To establish ownership, the new owner must either: (1) Record the assignment (or other document affecting title) with the Assignment Recordation Branch, and notify the Trademarks organization that the document has been recorded; or (2) submit other evidence of ownership, in the form of a document transferring ownership from one party to another, or an explanation, in the form of an affidavit or declaration under 37 CFR 2.20, that a valid transfer of legal title has occurred. 37 CFR 3.73(b)(1). The document(s) must show a clear chain of title from the original owner to the party who is taking the action.

See

TMEP section 502.01. In an application under section 66(a) of the Act, or a registered extension of protection, the new owner must record changes in ownership or in the name or address of the holder with the World Intellectual Property Organization's IB in order to take an action with respect to a registration. The new owner does not have the option to submit documentary evidence of ownership pursuant to 37 CFR 3.73(b)(1). 37 CFR 7.22. Therefore, it is in the best interests of both the prior and new owners to provide evidence of changes of title, either by recordation of an assignment or otherwise, in a timely manner.

J. Response Period—Expungement and Reexamination Proceedings

Comment 10:

Several commenters encouraged the USPTO to allow registrants longer than two months to respond to an Office action in an expungement or reexamination proceeding. They noted, among other things, that it may be difficult for foreign owners or large corporations to collect use evidence where: (1) Communication with multiple layers of personnel who may be in different countries and time zones is required; (2) the registrant has recently acquired a company with a large portfolio of marks, including the challenged registration; or (3) the registrant is a large company, and key personnel with knowledge have recently left the company. Two commenters suggested a six-month response period, while another suggested that registrants be given nine months to respond. Four commenters noted that the response period should be consistent with what is contemplated for other Office actions, with five commenters proposing a three-month response period. Multiple commenters also asked that the USPTO allow registrants to request an extension of time to respond, five of whom suggested that such extension include a statement of good cause. In addition, one commenter suggested that the registrant should have an opportunity to set aside a default, for good cause, when correspondence was not received, similar to situations at the TTAB.

Response:

The USPTO appreciates the concerns the commenters raised about the proposed two-month response period for Office actions issued in connection with expungement and reexamination proceedings, including that registrants likely will need more time to get counsel and gather use evidence in response, especially in proceedings involving multiple goods and/or services. To address these concerns, the USPTO is setting the response period at three months, which has the additional benefit of aligning response deadlines for these proceedings with those the USPTO intends to implement for Office actions in the examination of applications and post-registration submissions, thus making deadline management easier. The rule also provides for a one-month extension of the response deadline to a non-final Office action in expungement and reexamination proceedings, recognizing that there may be situations where a registrant may need an additional month to locate and supply the use evidence and information necessary to respond to the initial Office action. This rule also sets the same fee of $125 for filing a request for extension of time to file a response to a non-final Office action through TEAS in an expungement or reexamination proceeding as the Office is setting for extensions of time to respond to Office actions in the examination of applications and post-registration submissions. In addition, consistent with the regulation enacted herein permitting requests to extend the time to respond to Office actions issued prior to registration, the USPTO will not require a statement of good cause for extension

requests submitted in connection with responses to expungement/reexamination or to examination/post-registration Office actions.

Although the response and extension periods for responding to a non-final Office action in expungement and reexamination proceedings being set in the rule double the response timeframe from what was originally proposed, the USPTO believes that the additional time should result in registrants providing complete responses to the initial Office action and should not overly lengthen resolution of the proceedings. To balance the competing interests of providing more time for the registrant to respond against ensuring resolution of the proceedings is not unduly delayed by the registrant, the Office also is setting the deadline to request reconsideration or appeal after a final Office action at three months, but is not providing for any extension of those deadlines. The USPTO does not believe more time to respond is warranted because registrants are expected to file a complete response to the initial Office action and, unlike Office actions issued in the examination of applications that may raise multiple substantive refusals, the scope of Office actions in expungement and reexamination proceedings is limited to a single substantive issue—the mark's use in commerce for particular goods and/or services. The procedural requirements that may be made in Office actions issued in expungement and reexamination proceedings are similarly limited to straightforward and readily resolvable issues, such as a requirement to appoint counsel if the registrant is foreign-domiciled. If the registrant wishes to comply with any unsatisfied requirements or address any remaining issues raised in the final Office action, it now will have three months from the issuance of the final Office action to do so, one month more than initially proposed.

Regarding the request that the USPTO set aside a default when correspondence was not received that resulted in cancellation of the registration, the USPTO notes that the registrant must maintain a current and accurate correspondence address for itself and its attorney, if one is designated. 37 CFR 2.18(c). If any of these addresses change, a properly signed request to change the address must be promptly filed.

Id.

If the registrant did not receive an Office action and the registration was cancelled in whole or in part, the registrant may request reinstatement of the registration pursuant to a petition to the Director under § 2.146(c)(2). Consistent with USPTO practice in other ex parte matters, the failure to respond to an Office action is not set aside for good cause in the way that a default or notice of default may be cured in inter partes proceedings.

K. Burden and Standards of Proof

Comment 11:

Regarding the submission of evidence to prove use, one commenter noted that the USPTO should not rely solely on statements of testimony but should require supporting documentary evidence to show that the use occurred in the United States, that the use occurred on or prior to the relevant date, and possibly that the use was more than a mere token use. Another commenter stated that vagueness exists in what evidence would be required to be submitted for expungement and reexamination issues and any responses related thereto, and that the USPTO should adopt general guidelines, with specific language and examples of acceptable evidence that an attorney or petitioner can follow without any legal knowledge of the process.

Response:

The USPTO agrees with the commenter that testimonial evidence typically should be supported by corroborating documentary evidence, as stated in section I.H above. Further, § 2.93(b)(7) requires that any evidence of use of the mark in commerce be “consistent with the definition of `use in commerce' set forth in section 45 of the Act and is not limited in form to that of specimens under § 2.56.” Evidence of use must be accompanied by a verified statement setting forth factual information about the use of the mark in commerce and the supporting evidence, including how the evidence demonstrates use of the mark in commerce as of any relevant date for the goods and/or services at issue.

Id.

Therefore, the registrant will be required to verify, under penalty of perjury, the dates of use and that such use was bona fide use in the ordinary course of trade and not merely to reserve a right in the mark.

Regarding the request for general guidelines, examples of acceptable evidence, and specific responses that a registrant could submit in response to an Office action issued in an expungement or reexamination proceeding, this final rule notes that expected documentary evidence of use in most cases will take the form of specimens of use, and that when specimens are no longer available, the registrant may be permitted to provide additional evidence and explanations supported by declaration to explain how the mark was used in commerce at the relevant time. The evidence of use will differ in each case, and the USPTO cannot provide examples of what might demonstrate sufficient evidence of use during the relevant time period for the vast array of goods and/or services that may be challenged in these proceedings. In addition, under 37 CFR 11.18(b), any registrant or attorney who presents a paper to the USPTO is certifying, among other things, that the statements made therein of the party's own knowledge are true, or are believed to be true; the legal contentions are warranted by existing law; and any allegations are supported by evidence. Therefore, it is incumbent upon the registrant or its attorney to be knowledgeable about the requirements for registering its mark, including the requirement to use the mark in commerce and what constitutes such use.

Comment 12:

One commenter requested that the USPTO consider adding a provision allowing a registrant to designate certain information or documents submitted with its response as confidential and that such designated information or documents be excluded from the publicly viewable file.

Response:

The USPTO appreciates that, in rare circumstances, there may be a need for confidentiality with regard to proof of use in commerce for certain goods and/or services. If a registrant believes that responding to an Office action issued in connection with an expungement or reexamination proceeding would require the submission of confidential information in order to prove use in commerce of the mark, the registrant may submit a response to the Office action with the confidential information redacted. However, if the redacted response is not sufficient to establish the required use in commerce for the challenged goods and/or services, the registrant may be required to submit to the Office a non-redacted form of the confidential information. In such a case, the registrant may petition the Director under § 2.146, requesting that the registrant be permitted to submit the information outside of TEAS and that it not be made part of the public record.

Comment 13:

One commenter stated that the NPRM appeared to contemplate that nonuse is established by a preponderance of the evidence merely by the failure of the registrant to show sufficient use. The commenter requested that the USPTO clarify whether the USPTO considers the registrant's failure to show sufficient use in rebuttal to the prima facie case that led to institution of an expungement and/or reexamination proceeding as necessarily requiring a conclusion that nonuse has been shown by a preponderance of

evidence of nonuse, and whether the reference to a preponderance of the evidence standard applies only to Director-initiated proceedings.

Response:

The registrant must rebut a prima facie case of nonuse by providing competent evidence of use of the mark on the challenged goods and/or services. If the USPTO determines that the registrant's evidence is not sufficient to rebut the evidence of nonuse,

i.e.,

that the preponderance of evidence shows nonuse, the registration will be cancelled, in whole or in part, as appropriate. If the registrant in either a petition-based or Director-instituted proceeding elects to appeal the decision to cancel the relevant goods and/or services, the ultimate determination of whether the USPTO met its burden of establishing nonuse by a preponderance of the evidence would be made by the TTAB or subsequently by a court.

L. Excusable Nonuse

Comment 14:

One commenter inquired whether the provision in § 2.93(b)(5)(ii) regarding excusable nonuse in an expungement proceeding as to particular goods and/or services with a sole basis under section 44(e) or section 66(a) of the Act rescind current excusable nonuse protection for marks registered under section 1. The commenter also stated that the difference in treatment between domestic versus foreign registrations appears to put domestic trademark owners at a disadvantage versus foreign counterparts.

Response:

The USPTO assures the commenter that the provision regarding excusable nonuse as to particular goods and/or services in a registration with a sole basis under section 44(e) or section 66(a) applies only to goods and/or services challenged in an expungement proceeding. The provision in § 2.161 regarding a claim of excusable nonuse in connection with an affidavit or declaration of use under section 8 of the Act remains unchanged. Regarding the comment that domestic owners are at a disadvantage because they cannot claim excusable nonuse in an expungement proceeding, the U.S. Congress explicitly provided that treaty entitlement in the TMA only for foreign owners whose marks were registered via the Paris Convention and Madrid Protocol. Therefore, the USPTO cannot eliminate or expand that provision to section 1 registrants through rulemaking. In addition, unlike registrations with a sole basis under section 44(e) or section 66(a) that may register prior to use in commerce, registrations under section 1 issue based on a sworn statement and proof that the mark is in use in commerce on or in connection with the goods and/or services. In the context of an expungement proceeding, requiring a showing that the mark was never used, allowing for an allegation of excusable nonuse, would conflict with the use requirement under section 1 for issuance of the registration.

M. Duty To Monitor Status

Comment 15:

One commenter stated that the requirement to monitor in § 2.23(d)(3) would require an ongoing responsibility to regularly monitor the registration that is too burdensome and suggested that regular monitoring be required not more often than once a year. Another commenter opined that the new monitoring provisions may be costly for all, and cost-prohibitive for individual applicants and small businesses, and inquired whether this obligation applies retroactively to all existing registrants.

Response:

After consideration of the comments, the USPTO will not include the requirement in § 2.23(d)(3) that registrants monitor the status of their registrations at least every six months following the issue date of the registration. Although this requirement is not included in the final rule, registrants are still encouraged to monitor the status of their registrations using TSDR every six months from the date of issuance. It is in the registrant's best interests to ensure that it is aware of any challenges to its registration submitted to the USPTO and that it does not miss any deadlines in connection with such challenges.

The USPTO also notes that all registrants must maintain a valid email address for themselves to ensure they receive correspondence from the USPTO relating to their registrations.

See

37 CFR 2.23(b). If a registrant neglects to update its own email address, or to notify the USPTO of an assignment of its registration to another party, the new owner will not receive notifications from the USPTO regarding the filing of a petition for expungement or reexamination, the institution of one or both of those proceedings or of a Director-instituted proceeding, or the issuance of an Office action in connection with such a proceeding. In these situations, the owner would lose valuable time to begin collecting evidence to support its showing of use in commerce of the challenged goods and/or services. Further, if the owner does not timely respond to an Office action, the registration may be cancelled in whole or in part based upon the failure to respond. If a registrant does not receive USPTO correspondence because it failed to maintain a valid email address as required by the USPTO rules, and its registration is cancelled, its failure to comply with § 2.23(b) normally will preclude the registrant from establishing an extraordinary circumstance to waive the timing provisions for a petition to reinstate a registration under § 2.146(d)(2)(iv). Therefore, registrants should ensure that USPTO assignment records are updated and that email addresses are up-to-date so that USPTO correspondence concerning the registration is sent to the proper address, including notification of reexamination or expungement proceedings filed in registrations.

N. 30-Day Letter—Expungement/Reexamination Proceeding

Comment 16:

Several commenters responded to the USPTO's request for comments regarding whether to grant 30 days, or to the end of the response period, whichever is longer, when a timely response to an expungement or reexamination Office action is substantially complete, but consideration of some matter or compliance with a requirement has been omitted. Four commenters agreed with the proposal to issue a 30-day letter, with one commenter requesting that the USPTO clarify what is meant by a “substantially complete” response. One commenter stated that such a provision is not necessary, given that § 2.93(c) provides for a final action with the option to request reconsideration if there are outstanding issues. Another commenter stated that deficiencies in a response to an initial Office action should be addressed through a final action, rather than an additional 30-day response period and that the USPTO should apply the additional 30-day response period to timely requests for reconsideration.

Response:

During the examination of an application for registration, examining attorneys have discretion to grant an applicant 30 days, or to the end of the time period for response to the Office action, whichever is longer, to perfect a response if: (1) The response was timely filed, (2) the response was a bona fide attempt to advance examination, (3) the response was a substantially complete response to the Office action, and (4) consideration of some matter or compliance with some requirement was omitted. Generally, such 30-day letters are issued only after submission of a response to a final action, and the response is considered to be “substantially complete” because the missing part could put the application in condition for publication or registration.

See

37 CFR 2.65(a)(2).

Consistent with existing examination procedures, the USPTO proposed a similar procedure in connection with responses to initial or final actions in expungement or reexamination proceedings, or requests for reconsideration in such proceedings, to further its stated goal of making these proceedings faster and more efficient than pre- or post-registration processes. For example, if a registrant submits a response to an initial expungement or reexamination Office action that establishes use of the mark in commerce (or excusable nonuse, when applicable), but fails to provide the URL and date accessed or printed for any web pages, or submits an improperly signed response, the USPTO may issue a 30-day letter requiring the missing information or a response that is properly signed pursuant to § 2.193. If the registrant supplies the required information within the 30-day period (or the time remaining in the initial response period), the USPTO can terminate the proceeding faster and more efficiently because it will not have to issue a final action giving the registrant another three months to respond. In addition, registrants who are able to establish use will benefit by having the proceeding terminated at an earlier date than might otherwise occur. For these reasons, this final rule provides discretion to grant a registrant 30 days, or to the end of the time period for response to the previous Office action, whichever is longer, to perfect a response. However, granting the registrant additional time in such circumstances does not extend the time for filing an appeal to the TTAB or a petition to the Director.

O. Timeline for Proceedings and Combined Proceedings

Comment 17:

One commenter stated that the USPTO should require that the Director issue a decision on an expungement or reexamination petition within a certain amount of time and specify the consequences to the petitioner, registrant, and subject registration if a timely decision is not rendered. The commenter also stated that the USPTO should provide that a petitioner may assert both expungement and reexamination bases in a single petition under § 2.92(a) for a single filing fee.

Response:

The USPTO intends to review a petition for expungement or reexamination and to determine whether to institute a proceeding in a timely manner after receipt of the petition. It is in the interest of the USPTO to remove unused registrations from the trademark register as expeditiously as possible. However, the TMA does not impose a deadline for deciding such petitions, and the USPTO does not know how many petitions will be submitted within, for example, the first six months after implementation of this rule. Therefore, it is not possible to predict the level of staffing and the amount of time that will be required to review and make determinations regarding such petitions. However, the USPTO assures the commenter, and all interested parties, that the goal of these proceedings is faster and more efficient cancellation of registrations for marks not used with goods and/or services listed therein. As such, the USPTO's goal is to issue these decisions promptly.

As to allowing a petitioner to assert both expungement and reexamination grounds in a single petition, the USPTO does not believe that doing so would be an efficient way to implement these proceedings. The evidence required for each ground will differ based on the relevant time period, and combining them would complicate the review of evidence to determine what applies to which ground, and would not be the most efficient use of USPTO resources.

P. Post Registration Audit

Comment 18:

The USPTO received several responses regarding its request for comments on whether a registration should be pre-selected for audit during any concurrent or subsequent review of a post-registration maintenance filing when a registrant fails to respond in an expungement or reexamination proceeding, leading to cancellation of some of the goods and/or services in the registration. Eleven commenters stated that a registration should not automatically be selected for audit in such circumstances. One of those commenters suggested that the USPTO wait until it can evaluate how many registrations would be impacted by such a procedure, and another commenter proposed specific criteria for selecting a registration for audit after failure to respond in an expungement or reexamination procedure. Some of the commenters also noted that the audit procedure is intended to be random; that selecting a registration for audit in this situation appears to be punitive; and that failure to respond, resulting in deletion of some goods and/or services, does not lead to a presumption that the remaining goods and/or services are not in use. Four commenters were in favor of selecting a registration for audit if a registrant's failure to respond leads to cancellation of some goods and/or services. One of those commenters also suggested that the Director evaluate whether there is sufficient evidence to institute an expanded proceeding against the entire registration.

Response:

To promote the accuracy and integrity of the trademark register and preserve the register as a reliable reflection of marks in use in commerce, the USPTO conducts audits of section 8 and section 71 affidavits or declarations in which the mark is registered for more than one good or service per class. TMEP sections 1604.22, 1613.22. After careful consideration of the comments, the USPTO will not at this time automatically select a registration for audit because a registrant failed to respond to an expungement or reexamination Office action and its registration is cancelled in part. However, cancellation in part as a result of an expungement or reexamination proceeding, either for failure to respond to an Office action or failure to rebut a prima facie case of nonuse, does not shield a registration from being selected for audit under the current procedures after submission of a post-registration maintenance filing. Thus, a registration that still includes at least one class with four or more goods or services, or at least two classes with two or more goods or services, could be subject to audit following submission of a section 8 or section 71 affidavit or declaration. Regarding the suggestion of particular criteria for selecting a registration for audit, specifically, that registrations be selected for audit based upon the number of items in the original registration, the number of items in the expungement proceeding, and whether the registrant deletes items from the registration at or before the submission of a section 8 declaration, the USPTO declines to adopt a second set of criteria that would unnecessarily complicate the procedures for selecting registrations for audit.

Q. Estoppel

Comment 19:

One commenter requested that the rule expressly state that the Director will have the burden of ensuring an expungement or reexamination proceeding is not initiated if estoppel applies. Another commenter: (1) Sought clarification as to whether the USPTO will automatically review petitions and registration records to determine whether estoppel should apply or whether the burden will be on the registrant to show it should apply; (2) suggested permitting registrants to petition the Director to prove that additional goods and/or services may be considered the “same” goods and/or services for purposes of estoppel where they are highly similar to previously challenged goods/services, but not

identical; (3) proposed adding a mechanism by which a registrant subject to an expungement proceeding can also show use as to the same goods/services at issue on or before the relevant date for a reexamination proceeding, so that future reexamination proceedings may also be estopped; and (4) requested clarification concerning the extent to which, or whether, termination of an expungement or reexamination proceeding in favor of the registrant may bar future nonuse cancellation actions with respect to the registration.

Response:

Regarding the request that the rule expressly state that it is the Director's burden to ensure that an expungement or reexamination proceeding is not initiated if estoppel applies, the USPTO believes that such an express provision is not necessary. The TMA and § 2.92(d)(1) specifically prohibit institution of a later expungement proceeding as to goods and/or services when it has been established that a registered mark was used in commerce on or in connection with those goods and/or services at issue in a prior expungement proceeding. Section 2.92(d)(2) specifically prohibits institution of a later reexamination proceeding as to goods and/or services when it has been established that a registered mark was used in commerce on or in connection with any of those goods and/or services at issue in a prior reexamination proceeding. Because of these prohibitions, when the USPTO receives a petition to institute an expungement or reexamination proceeding, the USPTO examiner must review the entire record to determine whether there was a prior proceeding. If estoppel applies, no new proceeding will be instituted. However, the fee for the petition requesting expungement or reexamination will not be refunded in such circumstances. Therefore, it would be prudent for petitioners to ensure that estoppel does not apply to the goods and/or services identified in the petition prior to submitting a petition for expungement or reexamination.

Regarding the suggestion that registrants be permitted to petition the Director to prove that additional goods/services may be considered the “same” goods and/or services for purposes of estoppel where they are highly similar to previously challenged goods and/or services, but not identical, as noted above, the wording “same goods and/or services” refers to identical goods and/or services that are the subject of the pending proceeding or the prior determination. The registrant's burden in expungement and reexamination proceedings is to demonstrate use of its mark in commerce on the challenged goods and/or services. Although certain goods may be related, demonstrating acceptable use on one of the challenged goods listed in an identification does not establish use on other listed related goods. Further, the TMA and § 2.92(d)(1) and (2) specifically provide that no further expungement or reexamination proceedings may be instituted only as to those “particular” goods and/or services that were previously challenged and determined to be in use in commerce. Therefore, the wording “particular” cannot be read to include similar goods and/or services.

The commenter also requested that the USPTO add a mechanism by which a registrant subjected to an expungement proceeding can also show use as to the same goods and/or services at issue on or before the relevant date for a reexamination proceeding, so that future reexamination proceedings may also be estopped. A registrant in an expungement proceeding can include specific dates of use for each challenged good and/or service when it provides proof of use in commerce as to each. If a petition for reexamination of the same goods and/or services was submitted after the registrant prevailed in the expungement proceeding, the USPTO examiner would review the entire registration record, which would include any dates of use established in the prior proceeding, in order to determine whether institution of a reexamination proceeding would be appropriate.

Regarding the question about the extent to which, or whether, termination of an expungement or reexamination proceeding in favor of the registrant may bar future nonuse cancellation actions before the TTAB with respect to the registration, the USPTO clarifies here that termination of an expungement or reexamination proceeding in favor of the registrant does not bar future nonuse cancellation actions under § 2.111 with respect to the registration.

R. Flexible Response Periods

Comment 20:

The USPTO received a significant number of comments on the proposal to implement flexible periods for responding to Office actions in the examination of applications and post-registration submissions. Some commenters favored the primary proposal to implement a three-month response period with an optional three-month extension, or some variation thereof. These commenters noted that this option would be administratively simpler to implement compared to the proposed alternatives and that the three-month response period would be adequate in most cases to provide a sufficient response. Other commenters opposed any reduction to the current six-month response deadline and urged the USPTO to retain the current response deadline framework. These commenters cited concerns that three months may be an insufficient amount of time to properly respond to some Office actions, especially if foreign applicants or substantive refusals are involved; that the change in deadlines creates an administrative burden on stakeholders, particularly with regard to updating and managing case docketing systems; and that a system involving extensions could increase costs for applicants.

Of the comments that opposed changing the current deadline framework, most indicated that if one of the three flexible response deadline options were to be implemented, the primary proposal of a three-month response period with a single optional three-month extension would be preferred.

Overall, the comments reflected little support for the two alternative flexible response proposals, namely, the two-phase examination option and the “patent model” option involving progressively higher extension fees for each successive monthly extension after two months. Comments about these proposals noted that they would be more burdensome and complicated than the primary proposal, and that they do not appear to support the USPTO's objectives in implementing flexible response periods.

Of those comments voicing an opinion on extensions of time to respond to an Office action, most expressed a preference for a single three-month extension. Regarding the proposed $125 fee (if filed through TEAS) for these extensions, some comments were in favor, while others opposed charging a fee or suggested that the fee be reduced.

One commenter supported the USPTO's proposal to implement flexible response periods only for applications based on section 1 or section 44 of the Act, while retaining the six-month deadline for applications based on section 66(a) of the Act, but others were concerned that such an implementation would disadvantage section 1 and section 44 applicants. To address this, a couple of commenters suggested that section 66(a) applicants should not be required to proactively seek extension requests, but should be required to pay the same fees based on the timing of the response.

Another commenter noted that the NPRM suggests that only applications with more complex issues would be permitted to obtain the optional extension and requested clarification on this point.

Finally, a number of commenters agreed that the USPTO should delay the implementation of flexible response periods until June 2022 or beyond, to enable the USPTO to gather additional stakeholder feedback.

Response:

The USPTO appreciates the comments regarding flexible response periods and understands the concerns some of these expressed about the potential effects of reducing the current six-month deadline for responses to Office actions. However, based on a review of all the comments, the USPTO has determined that a three-month response deadline with a single optional three-month extension for a fee of $125 (if filed through TEAS) is the best option to promote efficiency in examination by shortening the overall prosecution timeline for applications and facilitating faster disposal of applications that may delay the disposition of later-filed applications. As some commenters noted, three months should be sufficient time to review an Office action and submit a response in many, if not most, cases, especially those with issues that are relatively easy to address. The USPTO's historical data on response times support this conclusion. For those applicants who need more time to respond, a full six months will still be available by requesting the three-month extension.

While the USPTO acknowledges the concerns some commenters expressed about imposing a $125 fee (if filed through TEAS) for the extension, and has considered them carefully, the USPTO believes that charging no fee or a nominal fee would undercut the USPTO's objective of encouraging applicants to respond sooner. If an extension were available at a low cost, or at no cost, many applicants and their attorneys would have no incentive to respond within the three-month period. The fee for an extension under this rule is set at a level to address this reality and is the same amount as the analogous fee for requesting an extension of time for filing a statement of use through TEAS.

Regarding the comments about retaining the six-month deadline for section 66(a) applications, while implementing flexible response deadlines for section 1 and section 44 applications, the USPTO has determined that this difference in implementation is appropriate, based on data showing that, in contrast with section 1 and section 44 applicants, only 11% of section 66(a) applicants filed a response to a non-final Office action with multiple grounds within three months, while 62% of Madrid applicants took six months to file a response. In short, as noted in the NPRM, the additional processing required for these applications, both at the USPTO and the IB, per article 5(2) of the Madrid Protocol, justifies maintaining the current six-month deadline.

As to the comment requesting clarification of the NPRM's statement that optional extensions would provide sufficient time for responses to Office actions with more complex issues, this statement was not intended to suggest that only Office actions with certain refusals or requirements would be eligible for an extension. Rather, the statement was intended to indicate that the extension option is available if the applicant or its attorney felt there were complex issues in an Office action that required more time to respond. To be clear, under this rule, an extension can be requested regardless of the type or level of complexity of the issues raised in the Office action.

Finally, the USPTO recognizes that changes to the deadline for responding to Office actions would require stakeholders to change their processes for reviewing, docketing, and submitting responses. Likewise, the USPTO must perform a significant amount of work and planning to adjust its IT systems and processes to accommodate new deadlines. Therefore, to allow sufficient time for this planning and work to be carried out by both the USPTO and its stakeholders, the USPTO has determined that the implementation of the rules regarding flexible deadlines for Office actions issued in connection with pending applications or post-registration maintenance documents should be delayed beyond the initially proposed effective date of June 27, 2022, to a new effective date of December 1, 2022.

S. Letters of Protest

Comment 21:

The USPTO received a few comments on the proposed amendment to § 2.149 to add provisions from the TMA relating to the USPTO's letter-of-protest procedures. While the comments generally supported the proposed amendment, a couple of commenters expressed concerns about the TMA's provision that, within two months of submission of a letter of protest, the USPTO must determine whether the evidence submitted in the letter of protest should be included in the relevant application record. One commenter suggested that § 2.149 should specify a shorter time period for making that determination, because the two-month time period could lead to examining attorneys acting on applications before receiving relevant letter-of-protest evidence. Another commenter recommended that the USPTO should identify the consequences for the USPTO failing to meet the two-month requirement, specifically whether the letter-of-protest evidence will be entered into the record if the requirement is not met.

Response:

The USPTO understands the desire to ensure timely forwarding of relevant letter-of-protest evidence to examining attorneys, which is, in fact, the objective of the TMA's two-month requirement.

See

H.R. Rep. No. 116-645, at 12 (2020). Any failure of the USPTO to meet the two-month requirement is subject to oversight by the U.S. Congress. The USPTO will dedicate appropriate resources to meet the requirement, taking into account letter-of-protest filing levels and examination pendency timelines.

The USPTO does not believe a shorter time frame for determining whether the evidence submitted in the letter of protest should be included in the relevant application record is necessary or administratively feasible, given the recent increases in application filings and the number of letters of protest the USPTO has historically received, particularly over the last year. Section 2.149 and the USPTO's current procedures allow for letter-of-protest evidence to be forwarded and considered even after an application is approved for publication, under appropriate circumstances. Thus, the fact that an examining attorney has already acted on an application does not necessarily preclude the examining attorney's consideration of relevant evidence included in a timely, properly filed letter of protest.

Regarding the comment suggesting that the USPTO specify the consequences for failing to meet the two-month requirement, the USPTO notes that the TMA imposes the two-month deadline on the USPTO, and the statute does not itself specify any consequences for failing to meet the requirement.

See

H.R. Rep. No. 116-645, at 12 (2020). In view of this and the USPTO's general obligation to meet the statutory mandate, the USPTO has determined that it is not necessary for § 2.149 to specify consequences for the USPTO for failing to meet the deadline. Nor would it be appropriate for the rule to establish any consequences affecting letter-of-protest filers, who have no

control over whether the USPTO meets the deadline. If a timely and properly filed letter of protest contains relevant evidence that should be included in the application record of a pending application, but the USPTO fails to make that determination within the required two months, the USPTO may still forward the evidence to the examining attorney for consideration, if possible under the circumstances.

T. Suspension of Proceedings

Comment 22:

The USPTO received two comments regarding including expungement and reexamination proceedings among the types of proceedings for which suspension of action by the Office or the TTAB is authorized. One commenter supported suspension while expungement or reexamination proceedings are pending. The other commenter disagreed that inter partes proceedings should be suspended during the pendency of ex parte proceedings under any circumstances. The commenter stated further that unless ex parte proceedings are stayed while inter partes proceedings are pending, the ex parte proceedings will have the unintended consequence of undermining inter partes proceedings, because faster resolution of an ex parte proceeding resulting in cancellation of a registration potentially moots or impacts the more robust proceedings in inter partes forums and that the proposed rules depart from the Office's longstanding practice of staying the more jurisdictionally limited forum. Finally, the commenter proposed amending § 2.67 to provide for suspension when “ownership” was an issue in another pending proceeding.

Response:

The USPTO appreciates the comment in support of the revision to §§ 2.67 and 2.117. Regarding the concerns of the other commenter, the USPTO notes that suspension of a Board proceeding pending the final determination of another proceeding is solely within the discretion of the Board. If a cancellation proceeding pending before the TTAB includes nonuse as basis for cancellation, and there is an expungement or reexamination proceeding involving some or all of the goods and/or services in the cancellation proceeding, the outcome of the expungement or reexamination proceeding may have a bearing on the Board proceeding. The expungement or reexamination may result in the cancellation of the registration at issue in the Board proceeding. Therefore, the TTAB may exercise its discretion to suspend. As the commenter noted, ex parte proceedings generally are less costly and time-consuming, and thus an ex parte proceeding may resolve a nonuse issue more efficiently. Suspending Board proceedings in favor of expungement and reexamination proceedings is consistent with the TMA's objective to provide a faster and more efficient alternative to address claims of lack of proper use.

The commenter expresses concern about suspending “more robust proceedings” at the TTAB in favor of ex parte proceedings. While the commenter refers to inter partes Board proceedings having larger evidentiary records and more thorough fact-finding, these characteristics primarily result from the broader scope of claims and issues addressed in inter partes Board proceedings, which range well beyond nonuse. The ex parte reexamination and expungement proceedings will address a more limited inquiry regarding lack of proper use of a registered mark, and within that context the proceedings are designed to provide the registrant a sufficiently robust, full and fair opportunity to be heard.

While the commenter characterized suspension of Board proceedings in favor of expungement or reexamination proceedings as a change in practice, the USPTO disagrees. As set forth in section 510.02(b) of the Trademark Trial and Appeal Board Manual of Procedure, the longstanding practice of the Board has been that “[u]nless there are unusual circumstances, the Board will suspend proceedings in the case before it if the final determination of the other proceeding may have a bearing on the issues before the Board.” Pursuant to this practice, the Board has suspended its proceedings in favor of many types of other proceedings, including arbitration proceedings, state court cases, and foreign actions.

Id.

The USPTO considers suspending Board proceedings in favor of expungement and reexamination proceedings under the same conditions to be a continuation of longstanding TTAB practice rather than a departure from it.

With regard to the addition of “ownership” as a reason to suspend, the wording as proposed is broad enough to include the issue of ownership and there is no need to list separately that specific issue pertaining to the initial or continued registrability of a mark.

U. Attorney Recognition

Comment 23:

The USPTO received a significant number of comments regarding attorney recognition and withdrawal. The comments regarding the proposed amendments to § 2.17(g), providing for ongoing attorney recognition, were mixed. Several commenters supported ongoing recognition, while others preferred the USPTO continue to cease recognition under specified circumstances. One commenter noted that the existing rule was a “familiar and practical approach” to representation, while another noted that the change “would simplify how an attorney can be removed from recognition.” Some commenters expressed concern about how the transition from the current rules to the new rules would be implemented. Other commenters sought additional information regarding the specifics on the implementation of the role-based access control system intended to improve USPTO database security and integrity, which was referenced in the NPRM. One comment suggested that any rule change to implement such a system would be premature until the plans for the system could be discussed in detail.

Commenters also raised questions about the obligations imposed by the requirements for withdrawal under § 2.19, citing issues pertaining to attorney discharge and change of ownership.

Response:

After carefully considering all of the comments, the USPTO has decided not to implement any of the NPRM's proposed changes to the rules governing attorney recognition and withdrawal at this time, except for § 2.17(b)(4), which provides that a false, fraudulent, or mistaken attorney designation will be considered ineffective; § 2.18(a)(1), which replaces “representation” with “recognition”; § 2.18(a)(2), which indicates that, with respect to notices of institution of expungement and reexamination proceedings and ineffective attorney designations under § 2.17(b)(4), the Office may correspond directly with the applicant, registrant, or party to a proceeding; and § 2.19(d), which indicates that an attorney need not formally withdraw when recognition is not effective under § 2.17(b)(4).

While the USPTO may make changes to the attorney recognition and withdrawal rules in a future rulemaking, it has determined that additional work, planning, and stakeholder communications should be carried out before any such changes are made.

V. Court Orders Concerning Registrations

Comment 24:

One commenter expressed concerns about proposed § 2.177, regarding action on court orders canceling or affecting a registration under section 37 of the Act, 15 U.S.C. 1119. Specifically, the commenter

requested that proposed § 2.177 be revised to remove the requirement that a party obtain and submit the certified copy of the court order to the USPTO, noting that the requirement adds an unnecessary burden on litigant parties. In addition, the commenter found the proposed rule's reference to “a party” to be vague because it does not identify which party to the litigation is responsible for submitting the court order, nor does it specify a penalty for failing to submit the order.

Response:

The intent of § 2.177 is to codify the USPTO's longstanding procedures concerning action on court orders cancelling or affecting a registration under section 37, 15 U.S.C. 1119, that are currently set forth in TMEP section 1610. These procedures enable parties to litigation to properly notify the USPTO of a court order so that the USPTO may take appropriate action. Thus, § 2.177 imposes the obligation to file a certified court order only on those parties who wish for the USPTO to take action on the order. To address the concerns about possible ambiguity resulting from the wording “a party,” the text of § 2.177 has been amended to clarify that if a party wishes that the USPTO take action on a court order, that party must submit a certified copy of the order.

W. Paperwork Reduction Act—Respondent Burden Hours

Comment 25:

One commenter expressed concerns about the USPTO's estimated burden hours for preparing petitions for expungement and/or reexamination and responses to Office actions issued in connection with such petitions. The commenter noted that accurate estimates are necessary for realistic assessments of the regulatory burden of complying with the rules and weighing the costs with the benefits of the rules. The commenter opined that it may generally take, on average, at least 12 hours or more, rather than the 1-1.5 hours posited by the USPTO.

Response:

The USPTO appreciates the feedback regarding burden estimates. As these are new proceedings, it is difficult to predict the average amount of time that will be required to research, collect, and compile the evidence required for an expungement and/or reexamination petition or response to an Office action regarding such petition. However, upon consideration of the commenter's concerns, the USPTO agrees that its original estimate did not sufficiently account for the time burden to submit these petitions and responses. Therefore, the USPTO has adjusted the time burdens to 4.5 hours for petitions for expungement and/or reexamination and 4 hours for responses to Office actions issued in connection with such petitions. The USPTO does not believe more time is warranted because the scope of both the petitions and Office actions in expungement and reexamination proceedings is limited to a single substantive issue—the mark's use in commerce for particular goods and/or services. However, the USPTO will continue to consider public feedback regarding the burden estimates for these items and will raise the burden estimates as needed.

Changes From the NPRM

Based on the comments and responses above, the USPTO has made the following changes to the proposals in the NPRM. Section 2.6(a) is revised to include a request for extension of time for filing a response to a non-final Office action under § 2.93(b)(1) via TEAS, with a fee of $125.00. The proposed revisions to § 2.17(g) are not implemented in this rule. Section 2.18(a)(1) is revised to refer to “recognition” instead of “representation.” The proposed revisions regarding § 2.19(b) and (c) are not implemented in this rule. However, proposed § 2.19(d) is added as § 2.19(c). Section 2.93(b)(1) is revised to change the deadline for response from two months to three months and to provide for a one-month extension of time to respond to a non-final Office action, and § 2.93(c)(1) is revised to change the deadline for filing a response to a final Office action to three months.

Discussion of Rule Changes

The USPTO adds § 2.6(a)(26) to establish a fee of $400, per class, for filing a petition for expungement or reexamination under § 2.91. The USPTO adds § 2.6(a)(27) to establish a fee of $125 for filing through TEAS a request for an extension of time for filing a response to a non-final Office action under § 2.93(b)(1). The USPTO adds § 2.6(a)(28)(i) to establish a fee of $225 for filing on paper a request for an extension of time for filing a response to an Office action under § 2.62(a)(2), § 2.163(c), § 2.165(c), § 2.176, § 2.184(b)(2), or § 2.186(c), and § 2.6(a)(28)(ii) to establish a fee of $125 for filing through TEAS a request for an extension of time for filing a response to an Office action under § 2.62(a)(2), § 2.163(c), § 2.165(c), § 2.176, § 2.184(b)(2), or § 2.186(c).

The USPTO amends § 2.11(d) to add cross-references to §§ 2.93, 2.163, and 7.39, and amends § 2.11(f) to add a cross-reference to § 2.93(c)(1).

The USPTO adds § 2.17(b)(4) to specify that when a practitioner has been falsely, fraudulently, or mistakenly designated as a representative for an applicant, registrant, or party to a proceeding without the practitioner's prior authorization or knowledge, recognition of that practitioner shall be ineffective.

The USPTO amends § 2.18 to revise paragraphs (a)(1) and (2) to clarify the circumstances under which the Office will communicate directly with an applicant, registrant, or party to a proceeding.

The USPTO amends § 2.19 to add paragraph (c) to indicate that an attorney need not formally withdraw when recognition is not effective under § 2.17(b)(4).

The USPTO amends § 2.23 to revise paragraph (c) to clarify that certain submissions are not subject to the exemption allowing paper filing and to add paragraph (d)(3) to address the duty to monitor the status of a registration once an expungement or reexamination proceeding has been instituted.

The USPTO amends § 2.61 to remove paragraph (c).

The USPTO amends § 2.62 to revise paragraph (a) to provide for flexible response periods and extensions of time to respond and paragraph (c) to include a reference to requests for extensions of time to respond.

The USPTO amends § 2.63 to revise paragraph (b) to include a request for an extension of time to respond or appeal under § 2.62(a)(2) as a response option, and makes other minor stylistic changes; revises paragraph (c) to include a reference to requests for extensions of time to respond or appeal under § 2.62(a)(2), and makes other minor stylistic changes; and revises paragraph (d) to remove the wording “six-month.”

The USPTO amends § 2.65 to revise paragraph (a) to replace “six months from the date of issuance” with “the relevant time period for response under § 2.62(a)(1), including any granted extension of time to respond under § 2.62(a)(2).”

The USPTO amends § 2.66 to revise paragraph (b)(1) to replace the citation to § 2.6 with a citation to § 2.6(a)(15); revises paragraph (b)(3) by removing a portion of the current paragraph to add new paragraph (b)(5); and adds paragraph (b)(4) to include a provision for Office actions with a three-month response period.

The USPTO amends § 2.67 to codify the existing practice regarding suspension of proceedings before the USPTO and the TTAB.

The USPTO revises the undesignated center heading appearing before § 2.91 from “CONCURRENT USE PROCEEDINGS” to “EX PARTE

EXPUNGEMENT AND REEXAMINATION.”

The USPTO adds § 2.91 to set forth the procedures for petitions for expungement or reexamination.

The USPTO adds § 2.92 to set forth the procedures for instituting ex parte expungement and reexamination proceedings.

The USPTO adds § 2.93 to set forth the procedures for conducting expungement and reexamination proceedings.

The USPTO adds § 2.94 to set forth the procedures for action after expungement or reexamination.

The USPTO adds the undesignated center heading “CONCURRENT USE PROCEEDINGS” before existing § 2.99.

The USPTO revises the undesignated center heading appearing before § 2.111 from “CANCELLATION” to “CANCELLATION PROCEEDINGS BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD” to differentiate cancellation proceedings before the TTAB from ex parte expungement and reexamination proceedings.

The USPTO amends § 2.111(b) to specify the time for filing a petition for cancellation with the TTAB on the ground specified in section 14(6) of the Act and to distinguish it from the timing of other nonuse claims.

The USPTO amends § 2.117(a) to include a reference to an expungement or reexamination proceeding instituted under § 2.92, to eliminate the limitation to other proceedings in which a party or parties are engaged, and to indicate that a civil action or proceeding is not considered to have been terminated until an order or ruling that ends litigation has been rendered and noticed and the time for any further review has expired with no further review sought.

The USPTO amends § 2.141 to revise the heading to “Ex parte appeals”; adds the title “Appeal from final refusal of application” to paragraph (a) and replaces the six-month deadline with a reference to § 2.142(a)(1); adds a new paragraph (b) regarding expungement and reexamination appeals with the title “Appeal from expungement or reexamination proceeding”; and renumbers current paragraph (b) as paragraph (c) and clarifies that (1) if the applicant or registrant does not pay the appeal fee for at least one class of goods or services before expiration of the time for appeal, the application will be abandoned or the proceeding will be terminated and (2) if the applicant or registrant does not submit the required fee or specify the class(es) being appealed from either a final refusal of an application or from an expungement or reexamination proceeding within the set time period, the TTAB will apply the fee(s) to the class(es) in ascending order, beginning with the lowest-numbered class.

The USPTO amends § 2.142 to revise paragraph (a) to replace the six-month deadline with a reference to the deadline for appeal from the final refusal of an application in paragraph (a)(1) and the deadline for appeal from an expungement or reexamination proceeding in paragraph (a)(2); adds wording in current paragraph (a) to new paragraph (a)(3); revises paragraph (b)(3) to include a reference to proceedings involving registrations; and revises paragraph (d) for clarity and adds paragraphs (d)(1) and (2) to address appeals from a refusal to register and appeals from an expungement or reexamination proceeding, respectively.

The USPTO amends § 2.145 to revise paragraph (a)(1) to include a reference to ex parte expungement or reexamination proceedings, to delete the heading from paragraph (a)(3) and add introductory text, and to revise paragraph (c)(1) to add an exception for ex parte expungement or reexamination proceedings.

The USPTO amends § 2.146 to include expungement and reexamination in paragraph (b); revises paragraph (c) to indicate that a petition requesting reinstatement of a registration cancelled in whole or in part for failure to timely respond to an Office action issued in an expungement and/or reexamination proceeding must include a response to the Office action, signed in accordance with § 2.193; and adds paragraph (d)(2)(iv) to specify the filing deadline for a petition in connection with an expungement or reexamination proceeding.

The USPTO amends § 2.149 to revise paragraph (a) to replace the word “entry” with “inclusion” and amends paragraph (i) for clarity and to replace the words “not petitionable” with “final and non-reviewable, and a determination to include or not include evidence in the application record shall not prejudice any party's right to raise any issue and rely on any evidence in any other proceeding.”

The USPTO amends § 2.163 to revise paragraph (b) to specify a response deadline of three months; revise paragraph (c) to provide for extensions of time to respond; add paragraph (d) to address substantially complete responses; and add paragraph (e) to set forth the wording formerly in paragraph (c) with conforming revisions.

The USPTO amends § 2.165 to revise paragraph (a) to revise the internal citation to § 2.163(b)-(c); revise paragraph (b) to include a citation to the response deadlines in § 2.163(b)-(c); add new paragraph (c) to specify that a registration will be cancelled if a petition is not timely filed; and renumber previous paragraph (c) as paragraph (d).

The USPTO amends § 2.176 to revise the title to “Consideration of above matters in §§ 2.171 through 2.175” and to specify a response deadline of three months and to provide for an extension of time to respond.

The USPTO adds the undesignated center heading “COURT ORDERS UNDER SECTION 37” before § 2.177.

The USPTO adds § 2.177 to address procedures concerning action on court orders cancelling or affecting a registration under section 37 of the Act.

The USPTO amends § 2.184 to revise paragraph (b)(1) to specify a response deadline of three months; revise paragraph (b)(2) to provide for extensions of time to respond; add paragraph (b)(3) to address substantially complete responses; add paragraph (b)(4) to set forth wording formerly in paragraph (b)(1); and add paragraph (b)(5) to set forth wording formerly in paragraph (b)(2).

The USPTO amends § 2.186 to revise paragraph (b) to include a citation to the response deadlines in § 2.184(b); add new paragraph (c) to specify that a registration will expire if a petition is not timely filed; and renumber previous paragraph (c) as paragraph (d).

The USPTO amends § 2.193(e)(5) to include a reference to petitions for expungement or reexamination.

The USPTO amends § 7.6 to add paragraph (a)(9)(i) to establish a fee of $225 for a request for an extension of time for filing a response to an Office action under § 7.39(b) or § 7.40(c) on paper and to add paragraph (a)(9)(ii) to establish a fee of $125 for a request for an extension of time for filing a response to an Office action under § 7.39(b) or § 7.40(c) via TEAS.

The USPTO amends § 7.39 to revise paragraph (a) to specify a response deadline of three months; revise paragraph (b) to provide for extensions of time to respond; revise paragraph (c) to address substantially complete responses; revise paragraph (d) to set forth wording formerly in paragraph (b); add paragraph (e) to set forth wording formerly in paragraph (c); and add paragraph (f) to set forth wording formerly in paragraph (d).

The USPTO amends § 7.40 to revise paragraph (a) to revise the internal citation to § 7.39(a)-(c); revise paragraph (b) to include a citation to the response deadlines in § 7.39(a)-(c); add new paragraph (c) to specify that a registration will be cancelled if a

petition is not timely filed; and renumber previous paragraph (c) as paragraph (d).

Rulemaking Requirements

A. Administrative Procedure Act:

The changes in this rulemaking involve rules of agency practice and procedure, and/or interpretive rules. See

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 are procedural where they do not change the substantive standard for reviewing claims);

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).

Accordingly, prior notice and opportunity for public comment for this rulemaking 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), do 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 USPTO chose to seek public comment before implementing the rule to benefit from the public's input.

B. Regulatory Flexibility Act:

The USPTO publishes this Final Regulatory Flexibility Analysis (FRFA), as required by the Regulatory Flexibility Act (RFA) (5 U.S.C. 601

et seq.

), to examine the impact of the Office's changes to trademark fees on small entities. Under the RFA, whenever an agency is required by 5 U.S.C. 553 (or any other law) to publish an NPRM, the agency must prepare and make available for public comment an Initial Regulatory Flexibility Analysis (IRFA), unless the agency certifies under 5 U.S.C. 605(b) that the rule, if implemented, will not have a significant economic impact on a substantial number of small entities. 5 U.S.C. 603, 605. The USPTO published an IRFA, along with the NPRM, on May 18, 2021 (86 FR 26862). The USPTO received no comments from the public directly applicable to the IRFA, as stated below in Item 2.

Items 1-6 below discuss the six criteria specified in 5 U.S.C. 604(a)(1)-(6) to be addressed in a FRFA. Item 6 discusses alternatives considered by the Office.

1. Succinct statement of the need for, and objectives of, the rule:

The USPTO amends the rules of practice in trademark cases to implement provisions of the (TMA), Public Law 116-260, Div. Q, Tit. II, Subtit. B, section 228 (Dec. 27, 2020). The TMA sets a deadline of December 27, 2021, for the USPTO to promulgate rules governing letter-of-protest procedures and implementing ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made. In addition, the TMA authorizes the USPTO to promulgate rules to provide for flexible Office action response periods. The USPTO also sets fees for petitions requesting the institution of ex parte expungement and reexamination proceedings and for requests to extend Office action response deadlines, as required or authorized by the TMA, and to amend the rules concerning the suspension of USPTO proceedings and the rules governing attorney recognition in trademark matters.

As required or authorized by the TMA, the objective of the rule is to implement the provisions of the TMA by: (1) Establishing ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made, to ensure an accurate trademark register that supports and promotes commerce; (2) amending the rules governing the USPTO's letter-of-protest procedures, which allow third parties to submit evidence to the USPTO regarding a trademark's registrability during the initial examination of the trademark application, to provide that the decision whether to include such evidence in the application record is final and non-reviewable and that such a determination shall not prejudice any party's right to raise any issue and rely on any evidence in any other proceeding; and (3) implementing flexible response periods, along with optional extensions of time, to promote efficiency in examination by shortening the prosecution timeline for applications with issues that are relatively simple to address, while providing sufficient time for response to Office actions with more complex issues. In addition, this rule also formalizes existing practice regarding the suspension of proceedings before the Office and the TTAB; specifies when re

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