82 FR 22517 - Improving the Accuracy of the Trademark Register: Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and Nonuse

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 82, Issue 93 (May 16, 2017)

Page Range		22517-22519
FR Document		2017-09856

The United States Patent and Trademark Office (``USPTO'') seeks comments from stakeholders, mark owners, and all those interested in the maintenance of an accurate U.S. Trademark Register, on the establishment of a streamlined version of the existing inter partes abandonment and nonuse grounds for cancellation before the USPTO's Trademark Trial and Appeal Board (``TTAB'').

Federal Register, Volume 82 Issue 93 (Tuesday, May 16, 2017)

[Federal Register Volume 82, Number 93 (Tuesday, May 16, 2017)]
[Notices]
[Pages 22517-22519]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2017-09856]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-T-2017-0012]


Improving the Accuracy of the Trademark Register: Request for 
Comments on Possible Streamlined Version of Cancellation Proceedings on 
Grounds of Abandonment and Nonuse

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'') 
seeks comments from stakeholders, mark owners, and all those interested 
in the maintenance of an accurate U.S. Trademark Register, on the 
establishment of a streamlined version of the existing inter partes 
abandonment and nonuse grounds for cancellation before the USPTO's 
Trademark Trial and Appeal Board (``TTAB'').

DATES: To ensure consideration, comments should be submitted no later 
than August 14, 2017.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected] or to the following 
address: United States Patent and Trademark Office, Trademark Trial and 
Appeal Board, P.O. Box 1451, Alexandria, VA 22313-1451, ATTN: Cynthia 
Lynch.
    The comments will be available for public inspection via the USPTO 
Web site at http://www.uspto.gov. Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Cynthia Lynch, Trademark Trial and 
Appeal Board, by email at [email protected] or by telephone at 
(571) 272-8742.

SUPPLEMENTARY INFORMATION:

Background

    As part of the USPTO's ongoing effort to improve the accuracy of 
the U.S. Trademark Register, the USPTO has been consulting with 
stakeholders on

[[Page 22518]]

ways to eliminate from the Register registrations for marks that are 
not in use. Stakeholders asked the USPTO to consider creating 
additional tools to facilitate challenges by interested parties to 
registrations for unused marks. The USPTO considered cost and 
efficiency, the potential for abuse of any such tools, U.S. treaty 
obligations, and the existing legal framework for abandonment, nonuse, 
and registration-maintenance requirements.
    The USPTO has assessed many options, including making statutory and 
regulatory changes, as part of this ongoing effort and has decided to 
prioritize proposals for modifying existing regulations at this time. 
Accordingly, this Request for Comments addresses an option for a 
streamlined version of the existing inter partes abandonment and nonuse 
grounds for cancellation before the TTAB (``Streamlined 
Proceedings'').\1\
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    \1\ If this Streamlined Proceedings proposal is implemented, the 
USPTO will have a better sense of whether the proceedings are 
effective for their intended purpose and can then evaluate whether 
proposals necessitating statutory amendment also would be useful.
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Streamlined Proceedings

    Under existing law, cancellation of a registration for nonuse 
requires a showing of either: (1) Abandonment as to some or all of the 
goods/services (nonuse plus intention not to resume use); or (2) no use 
for some or all of the goods/services in a Section 1-based registration 
prior to the relevant operative date (i.e., filing date, date of 
amendment to allege use, or date of statement of use). The USPTO is 
considering offering a streamlined TTAB cancellation proceeding limited 
to the assertion of one or both of these claims. No other possible 
grounds for cancellation would be included in the Streamlined 
Proceedings.
    The introduction of this flexibility in the relevant rules would 
include specific procedures and timing to facilitate speed and 
efficiency, including that the evidence must be submitted with the 
pleadings, very limited discovery only when granted by the TTAB for 
good cause shown, an abbreviated schedule, no oral hearing, and 
issuance of the TTAB's decision within an expedited timeframe. These 
proceedings would provide a significantly streamlined process because 
pleading, presentation of evidence, and limited briefing would occur 
simultaneously. The fee for a petition to cancel in a Streamlined 
Proceeding would be lower than for a petition in a full proceeding--
with possible fees totaling $300 per class when filing through the 
Electronic System for Trademark Trials and Appeals (ESTTA), or $400 per 
class when filing on paper.
    A petition to cancel in a Streamlined Proceeding would be required 
to set forth facts to establish the petitioner's standing and set forth 
with particularity the factual basis for the ground(s) asserted as the 
basis for cancellation. While the Streamlined Proceedings would be 
limited to assertion of two possible grounds, there may be cases in 
which the petitioner would assert both; and in that scenario, each 
ground would have to be stated with particularity. Additionally, the 
petition would be required to be supported by the proof upon which the 
petitioner relies to establish both standing and the claim of 
abandonment and/or nonuse. As proof for the claim, for example, a 
petitioner might provide a declaration outlining a search for use of 
the mark and the results, or other evidence of abandonment or nonuse.
    The respondent's answer would be required within 40 days. In 
addition to the requirement that the respondent admit or deny the 
averments in the petition and, if applicable, state the defenses of 
either estoppel or prior judgments, the answer would be required to 
also include proof of use or other evidence on which the respondent 
seeks to rely to counter the abandonment or nonuse grounds for the 
goods or services as to which the grounds have been alleged, or to 
support any pleaded defenses.
    After reviewing the answer and proof, within 40 days the petitioner 
may elect to:
    (1) Reply, providing any rebuttal evidence, thereby submitting the 
Streamlined Proceeding for decision by the TTAB (typically within 90 
days);
    (2) Withdraw the petition for cancellation without prejudicing the 
right to file another cancellation proceeding on grounds other than the 
grounds raised in the Streamlined Proceeding; or
    (3) File a notice of conversion to a full cancellation proceeding, 
along with the appropriate fee and any proposed amendment of the 
petition to cancel, including adding other grounds for cancellation. 
Upon any such conversion to a full proceeding, the TTAB would designate 
a time within which an amended answer must be filed, and issue a trial 
order setting deadlines and dates to allow for disclosures, discovery, 
trial and briefing. The cancellation proceeding then would continue 
pursuant to the usual practices and rules for non-streamlined 
proceedings. Notably, the respondent would not have the option of 
converting to a full TTAB proceeding.\2\ However, both parties would 
retain the right to judicial review of TTAB decisions in Streamlined 
Proceedings, under 15 U.S.C. 1071.
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    \2\ Given that the respondent, rather than the petitioner, 
generally has the relevant information about use, the respondent 
would seem to have no legitimate need for a full proceeding. 
Although the USPTO considered some stakeholder suggestions that the 
respondent also have the conversion option, the USPTO concluded that 
such a mechanism would undercut the speed and efficiency for a 
petitioner and result in the streamlined proceedings lacking any 
real benefit over existing cancellation procedures.
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    At the time of the answer, the respondent may, by separate motion, 
request limited discovery solely on the issue of standing, based on a 
showing of good cause. Upon the grant of such a motion, the TTAB would 
issue an order setting the deadline for discovery and deadlines by 
which the respondent may submit a motion to challenge standing and by 
which the petitioner may respond to such a motion, if filed. The TTAB 
would grant such a motion only when it appears that discovery could 
provide outcome determinative information with respect to standing. 
Such a motion would not stay or otherwise extend deadlines. Regardless 
of the request for discovery or any challenge to standing, the 
respondent must nonetheless still timely answer the petition and 
provide its proof, and the petitioner must provide any reply brief or 
conversion request.
    Counterclaims would not be permitted in Streamlined Proceedings. To 
the extent that a respondent believes that it has the basis for a 
counterclaim, it would have to bring the claim in a separate 
proceeding. As a general rule, suspensions would be rare and would 
typically be available only when there is concurrent district court 
litigation involving the same mark(s) and issue(s).
    The Streamlined Proceedings could offer a substantially quicker 
schedule than a full cancellation proceeding. In the case of a default 
judgment where the respondent does not respond to the petition, the 
entire proceeding could conclude within approximately 70 days. In a 
case where a respondent elects to respond, the entire proceeding could 
conclude within approximately 170 days in most cases. Extensions of 
time for the answer or reply would be limited to one per party.

Request for Public Comments

    The USPTO is requesting written public comments on the Streamlined 
Proceedings, as outlined above, or other options for a streamlined 
version of the existing inter partes abandonment and nonuse grounds for 
cancellation before

[[Page 22519]]

the TTAB. The Office also invites any other input the public wishes to 
convey about the topics addressed in this Request for Comments.

    Dated: May 10, 2017.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2017-09856 Filed 5-15-17; 8:45 am]
 BILLING CODE P

Federal Register / Vol. 82, No. 93 / Tuesday, May 16, 2017 / Notices 22517

U.S.C. 1852, a copy of the recording is FOR FURTHER INFORMATION CONTACT: Dated: May 11, 2017.
available upon request. Shasta McClenahan or Carrie Hubard, Julia Harrison,
Authority: 16 U.S.C. 1801 et seq. (301) 427–8401. Chief, Permits and Conservation Division,
Office of Protected Resources, National
Dated: May 10, 2017. SUPPLEMENTARY INFORMATION: The Marine Fisheries Service.
Tracey L. Thompson, subject permit is requested under the [FR Doc. 2017–09854 Filed 5–15–17; 8:45 am]
Acting Deputy Director, Office of Sustainable authority of the Marine Mammal BILLING CODE 3510–22–P
Fisheries, National Marine Fisheries Service. Protection Act of 1972, as amended
[FR Doc. 2017–09832 Filed 5–15–17; 8:45 am] (MMPA; 16 U.S.C. 1361 et seq.), the
BILLING CODE 3510–22–P regulations governing the taking and DEPARTMENT OF COMMERCE
importing of marine mammals (50 CFR
part 216), the Endangered Species Act of Patent and Trademark Office
DEPARTMENT OF COMMERCE 1973, as amended (ESA; 16 U.S.C. 1531 [Docket No.: PTO–T–2017–0012]
et seq.), and the regulations governing
National Oceanic and Atmospheric Improving the Accuracy of the
the taking, importing, and exporting of
Administration Trademark Register: Request for
endangered and threatened species (50
CFR 222–226). Comments on Possible Streamlined
RIN 0648–XF367 Version of Cancellation Proceedings
The applicant requests a five-year
on Grounds of Abandonment and
Marine Mammals; File No. 20951 research permit to study cetaceans in
Nonuse
the Gulf of Maine to determine
AGENCY: National Marine Fisheries population behavior, size, distribution, AGENCY: United States Patent and
Service (NMFS), National Oceanic and seasonal variations, habitat utilization, Trademark Office, Commerce.
Atmospheric Administration (NOAA), and trophic ecology. The research ACTION: Request for comments.
Commerce. would target 17 species of cetaceans
ACTION: Notice; receipt of application. including the following endangered SUMMARY: The United States Patent and
species: Blue (Balaenoptera musculus), Trademark Office (‘‘USPTO’’) seeks
SUMMARY: Notice is hereby given that fin (B. physalus), North Atlantic right comments from stakeholders, mark
Ann Zoidis, Ph.D., Cetos Research (Eubalaena glacialis), sei (B. borealis), owners, and all those interested in the
Organization, 11 Des Isle Avenue, Bar maintenance of an accurate U.S.
and sperm (Physeter macrocephalus)
Harbor, ME 04609, has applied in due Trademark Register, on the
whales. Researchers would conduct
form for a permit to conduct research on establishment of a streamlined version
marine mammals. vessel and unmanned aerial surveys for
of the existing inter partes abandonment
counts, biological sampling,
DATES: Written, telefaxed, or email and nonuse grounds for cancellation
observations, photography, and
comments must be received on or before before the USPTO’s Trademark Trial
photogrammetry of cetaceans. Standard and Appeal Board (‘‘TTAB’’).
June 15, 2017. research activities for target large whale
ADDRESSES: The application and related DATES: To ensure consideration,
species include annual takes of 400 each
documents are available for review by comments should be submitted no later
fin and humpback (Megaptera
selecting ‘‘Records Open for Public than August 14, 2017.
novaeangliae) whales, 100 each minke
Comment’’ from the ‘‘Features’’ box on (B. acutorostrata) and sei whales, and 50 ADDRESSES: Comments should be sent
the Applications and Permits for each blue, North Atlantic right, and by electronic mail message over the
Protected Species (APPS) home page, sperm whales. Adult and juvenile Internet addressed to: TTABFRNotices@
https://apps.nmfs.noaa.gov, and then uspto.gov or to the following address:
whales may be biopsy sampled
selecting File No. 20951 from the list of United States Patent and Trademark
annually: Up to 100 each fin and
available applications. Office, Trademark Trial and Appeal
humpback whales, and 30 each blue, Board, P.O. Box 1451, Alexandria, VA
These documents are also available
minke, and sei whales. Up to 10 22313–1451, ATTN: Cynthia Lynch.
upon written request or by appointment
humpback and fin whale calves, 6 The comments will be available for
in the Permits and Conservation
months or older, may be biopsy sampled public inspection via the USPTO Web
Division, Office of Protected Resources,
NMFS, 1315 East-West Highway, Room each year. Other Level B harassment site at http://www.uspto.gov. Because
13705, Silver Spring, MD 20910; phone takes may occur for nine smaller, non- comments will be made available for
(301) 427–8401; fax (301) 713–0376. listed cetacean species; please see the public inspection, information that the
Written comments on this application take table of the application. submitter does not desire to make
should be submitted to the Chief, In compliance with the National public, such as an address or phone
Permits and Conservation Division, at Environmental Policy Act of 1969 (42 number, should not be included in the
the address listed above. Comments may U.S.C. 4321 et seq.), an initial comments.
also be submitted by facsimile to (301) determination has been made that the FOR FURTHER INFORMATION CONTACT:
713–0376, or by email to activity proposed is categorically Cynthia Lynch, Trademark Trial and
NMFS.Pr1Comments@noaa.gov. Please excluded from the requirement to Appeal Board, by email at
include the File No. in the subject line prepare an environmental assessment or TTABFRNotices@uspto.gov or by
of the email comment. telephone at (571) 272–8742.
sradovich on DSK3GMQ082PROD with NOTICES

environmental impact statement.
Those individuals requesting a public SUPPLEMENTARY INFORMATION:
Concurrent with the publication of
hearing should submit a written request
this notice in the Federal Register, Background
to the Chief, Permits and Conservation
NMFS is forwarding copies of the
Division at the address listed above. The As part of the USPTO’s ongoing effort
request should set forth the specific application to the Marine Mammal to improve the accuracy of the U.S.
reasons why a hearing on this Commission and its Committee of Trademark Register, the USPTO has
application would be appropriate. Scientific Advisors. been consulting with stakeholders on

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Federal Register / Vol. 82, No. 93 / Tuesday, May 16, 2017 / Notices 22519

the TTAB. The Office also invites any collection is also available at http:// Post-Notice of Allowance (NOA)
other input the public wishes to convey www.reginfo.gov under ‘‘Information Amendment, a Petition to Amend Basis
about the topics addressed in this Collection Review.’’ Post-Publication, or a Response to
Request for Comments. SUPPLEMENTARY INFORMATION: Suspension Inquiry or Letter of
Dated: May 10, 2017. Suspension. In rare instances, an
I. Abstract applicant may also submit a Substitute
Michelle K. Lee,
This collection of information is Trademark/Servicemark, Substitute
Under Secretary of Commerce for Intellectual
Property and Director of the United States required by the Trademark Act, 15 Certification Mark, Substitute Collective
Patent and Trademark Office. U.S.C. 1051 et seq., which provides for Membership Mark, or Substitute
[FR Doc. 2017–09856 Filed 5–15–17; 8:45 am]
the federal registration of trademarks, Collective Trademark/Servicemark
service marks, collective trademarks and application.
BILLING CODE P
services marks, collective membership
II. Method of Collection
marks, and certification marks.
DEPARTMENT OF COMMERCE Individuals and business that use such The forms in this collection are
marks, or intend to use such marks, in available in electronic format through
Patent and Trademark Office interstate commerce may file an the Trademark Electronic Application
application to register their marks with System (TEAS), which may be accessed
Responses to Office Action and the United States Patent and Trademark on the USPTO Web site. TEAS Global
Voluntary Amendment Forms Office (USPTO). This collection Forms are available for the items where
generally contains information that is a TEAS form with dedicated data fields
ACTION: Proposed collection; comment not submitted with the initial trademark is not yet available. Applicants may also
request. application but is associated with, or submit the information in paper form by
required for, the USPTO review of mail, fax, or hand delivery.
SUMMARY: The United States Patent and
Trademark Office (USPTO), as required applications for registration. III. Data
by the Paperwork Reduction Act of In some cases, the USPTO issues
Office Actions to applicants who have OMB Number: 0651–0050.
1995, invites comments on a proposed
applied to register a mark, requesting Form Numbers: PTO–1771, PTO–
extension of an existing information
information that was not provided with 1822, PTO–1957, PTO–1960, and PTO–
collection: 0651–0050 (Responses to
the initial submission, but is required 1966.
Office Action and Voluntary
before the issuance of a registration. Type of Review: Extension of a
Amendment Forms).
Also, the USPTO may determine that a currently approved collection.
DATES: Written comments must be Affected Public: Businesses or other
mark is not entitled to registration,
submitted on or before July 17, 2017. pursuant to one or more provisions of for-profits; not-for-profit institutions;
ADDRESSES: You may submit comments the Trademark Act. In such cases, the individuals.
by any of the following methods: USPTO will issue an Office Action Estimated Number of Respondents:
• Email: InformationCollection@ advising the applicant of the refusal to 472,301 responses per year.
uspto.gov. Include ‘‘0651–0050 register the mark. Applicants reply to Estimated Time per Response: The
comment’’ in the subject line of the these Office Actions by providing the USPTO estimates that it will take the
message. required information and/or by putting public between 10 minutes (0.16 hours)
• Mail: Marcie Lovett, Records forth legal arguments as to why the and 45 minutes (0.75 hours), depending
Management Division Director, Office of refusal of registration should be on the complexity of the situation, to
the Chief Information Officer, United withdrawn. gather the necessary information,
States Patent and Trademark Office, The USPTO administers the prepare the appropriate documents, and
P.O. Box 1450, Alexandria, VA 22313– Trademark Act through Chapter 37 of submit the information required for this
1450. the Code of Federal Regulations. These collection.
• Federal Rulemaking Portal: http:// rules allow the USPTO to request and Estimated Total Annual Respondent
www.regulations.gov. receive information required to process Burden Hours: 266,184 hours per year.
FOR FURTHER INFORMATION CONTACT: applications. These rules also allow Estimated Total Annual Respondent
Requests for additional information applicants to submit certain Cost Burden: $109,135,440.00. The
should be directed to Catherine Cain, amendments to their applications. USPTO expects that the information in
Attorney Advisor, Office of the Applicants may also supplement their this collection will be prepared by
Commissioner for Trademarks, United applications and provide further attorneys at an estimated rate of $410
States Patent and Trademark Office, information by filing a Voluntary per hour. Therefore, the USPTO
P.O. Box 1450, Alexandria, VA 22313– Amendment Not in Response to USPTO estimates that the respondent cost
1450, by telephone at 571–272–8946, or Office Action/Letter, a Request for burden for this collection will be
by email at Catherine.Cain@uspto.gov. Reconsideration after Final Office approximately $109,135,440.00 per
Additional information about this Action, a Post-Approval/Publication/ year.

TABLE 1—TOTAL HOURLY BURDEN
Estimated Estimated
Estimated time for Rate Estimated
sradovich on DSK3GMQ082PROD with NOTICES

IC # Item annual annual burden
response (hours) ($/hr) annual burden
responses hours

(a) (b) (a) × (b) = (c) (d) (c) × (d) = (e)

1 ..................... Response to Office Action (TEAS) .. 0.58 (35 minutes) 410,722 238,219 $410.00 $97,699,790.00
1 ..................... Response to Office Action (Paper) .. 0.67 (40 minutes) 9,847 6,597 410.00 2,704,770..00

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Document Created: 2017-05-16 13:52:32
Document Modified: 2017-05-16 13:52:32

Category		Regulatory Information
Collection		Federal Register
sudoc Class		AE 2.7: GS 4.107: AE 2.106:
Publisher		Office of the Federal Register, National Archives and Records Administration
Section		Notices
Action		Request for comments.
Dates		To ensure consideration, comments should be submitted no later than August 14, 2017.
Contact		Cynthia Lynch, Trademark Trial and Appeal Board, by email at [email protected] or by telephone at (571) 272-8742.
FR Citation		82 FR 22517

82 FR 22517 - Improving the Accuracy of the Trademark Register: Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and Nonuse

DEPARTMENT OF COMMERCEPatent and Trademark Office

Federal Register Volume 82, Issue 93 (May 16, 2017)

DEPARTMENT OF COMMERCE
Patent and Trademark Office