83 FR 33129 - Removal of Rules Governing Trademark Interferences

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 83, Issue 137 (July 17, 2018)

Page Range		33129-33132
FR Document		2018-15163

The United States Patent and Trademark Office (USPTO or Office) amends the Rules of Practice in Trademark Cases to remove the rules governing trademark interferences. This rule arises out of the USPTO's work during FY 2017 to identify and propose regulations for removal, modification, and streamlining because they are outdated, unnecessary, ineffective, costly, or unduly burdensome on the agency or the private sector. The revisions put into effect the work the USPTO has done, in part through its participation in the Regulatory Reform Task Force (Task Force) established by the Department of Commerce (Department or Commerce) pursuant to Executive Order 13777, to review and identify regulations that are candidates for removal.

Federal Register, Volume 83 Issue 137 (Tuesday, July 17, 2018)

[Federal Register Volume 83, Number 137 (Tuesday, July 17, 2018)]
[Rules and Regulations]
[Pages 33129-33132]
From the Federal Register Online [www.thefederalregister.org]
[FR Doc No: 2018-15163]

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2017-0032]
RIN 0651-AD23

Removal of Rules Governing Trademark Interferences

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) amends the Rules of Practice in Trademark Cases to remove the
rules governing trademark interferences. This rule arises out of the
USPTO's work during FY 2017 to identify and propose regulations for
removal, modification, and streamlining because they are outdated,
unnecessary, ineffective, costly, or unduly burdensome on the agency or
the private sector. The revisions put into effect the work the USPTO
has done, in part through its participation in the Regulatory Reform
Task Force (Task Force) established by the Department of Commerce
(Department or Commerce) pursuant to Executive Order 13777, to review
and identify regulations that are candidates for removal.

DATES: This rule is effective on August 16, 2018.

FOR FURTHER INFORMATION CONTACT: Catherine Cain, Office of the Deputy
Commissioner for Trademark Examination Policy, by email at
TMFRNotices@uspto.gov, or by telephone at (571) 272-8946.

SUPPLEMENTARY INFORMATION:

I. Background

In accordance with Executive Order 13777, ``Enforcing the
Regulatory Reform Agenda,'' the Department established a Task Force,
comprising, among others, agency officials from the National Oceanic
and Atmospheric Administration, the Bureau of Industry and Security,
and the USPTO, and charged the Task Force with evaluating existing
regulations and identifying those that should be repealed, replaced, or
modified because they are outdated, unnecessary, ineffective, costly,
or unduly burdensome to both government and private-sector operations.
To support its regulatory reform efforts on the Task Force, the
USPTO assembled a Working Group on Regulatory Reform (Working Group),
consisting of subject-matter experts from each of the business units
that implement the USPTO's regulations, to consider, review, and
recommend ways that the regulations could be improved, revised, and
streamlined. In considering the revisions, the USPTO, through its
Working Group, incorporated into its analyses all presidential
directives relating to regulatory reform. The Working Group reviewed
existing regulations, both discretionary rules and those required by
statute or judicial order. The USPTO also solicited comments from
stakeholders through a web page established to provide information on
the USPTO's regulatory reform efforts and through the Department's
Federal Register Notice titled ``Impact of Federal Regulations on
Domestic Manufacturing'' (82 FR 12786, Mar. 7, 2017), which addressed
the impact of regulatory burdens on domestic manufacturing. These
efforts led to the development of candidate regulations for removal
based on the USPTO's assessment that these regulations were not needed
and/or that elimination could improve the USPTO's body of regulations.
This rule removes certain trademark-related regulations. Other rules
removing regulations on other subject areas may be published
separately.

[[Page 33130]]

II. Regulations Being Removed

This rule removes the regulations concerning trademark
interferences codified at 37 CFR 2.91-2.93, 2.96, and 2.98. The rule
also revises the authority citation for part 2 and revises the
undesignated center heading ``INTERFERENCES AND CONCURRENT USE
PROCEEDINGS'' to read ``CONCURRENT USE PROCEEDINGS'' to more accurately
reflect the final regulations. A trademark interference is a proceeding
in which the Trademark Trial and Appeal Board (Board) determines which,
if any, of the owners of conflicting applications (or of one or more
applications and one or more conflicting registrations) is entitled to
registration. 15 U.S.C. 1066. A trademark interference can be declared
only upon petition to the Director of the USPTO (Director). However,
the Director will grant such a petition only if the petitioner can show
extraordinary circumstances that would result in a party being unduly
prejudiced in the absence of an interference. 37 CFR 2.91(a). The
availability of an opposition or cancellation proceeding to determine
rights to registration ordinarily precludes the possibility of such
undue prejudice to a party. Id. Thus, a petitioner must show that there
is some extraordinary circumstance that would make the remedy of
opposition or cancellation inadequate or prejudicial to the party's
rights.
Trademark interferences have generally been limited to situations
where a party would otherwise be required to engage in a series of
opposition or cancellation proceedings involving substantially the same
issues. Trademark Manual of Examining Procedure Sec. 1507. The
promulgation of the interference regulations suggests that at that
time, the Office contemplated such situations arising with enough
frequency to merit particular regulations governing interference
proceedings. However, the rarity of interference proceedings over an
extended period of time indicates that the regulations are unnecessary.
To the extent that the USPTO's paper petition records are searchable,
the USPTO reviewed them and its electronic records of petitions and
found that since 1983, the USPTO has received an average of
approximately one petition for a trademark interference per year, and
almost all of them have been denied except for one petition that was
granted in 1985 (32 years ago). The USPTO has been unable to identify a
situation since that time in which the Director has granted a petition
to declare a trademark interference. Given the extremely low rate of
filing over this long period of time, and because parties would still
retain an avenue for seeking a declaration of interference through the
general petition regulations, the USPTO considers the trademark
interference regulations unnecessary.
Section 16 of the Trademark Act, 15 U.S.C. 1066, states that the
Director may declare an interference ``[u]pon petition showing
extraordinary circumstances.'' Although eliminating Sec. Sec. 2.91-
2.93, 2.96, and 2.98 removes the regulations regarding the requirements
for declaring a trademark interference, the statutory authority will
remain. On the rare occasion that the Office receives a request that
the Director declare a trademark interference, it is currently
submitted as a petition under 37 CFR 2.146, a more general regulation
on petitions. In the unlikely event that a need for an interference
arose, it is still possible for a party to seek institution of a
trademark interference by petitioning the Director under 37 CFR
2.146(a)(4), whereby a petitioner may seek relief in any case not
specifically defined and provided for by Part 2 of Title 37. Thus, even
after removal of these rules, parties retain an avenue for seeking a
declaration of interference.
Removal of the identified trademark interference regulations in
this rule achieves the objective of making the USPTO regulations more
effective and more streamlined, while enabling the USPTO to fulfill its
mission goals. The USPTO's economic analysis shows that while the
removal of these regulations is not expected to substantially reduce
the burden on the impacted community, the regulations are nonetheless
being eliminated because they are ``outdated, unnecessary, or
ineffective'' regulations encompassed by the directives in Executive
Order 13777.

III. Proposed Rule: Comments and Responses

The USPTO published a proposed rule on October 18, 2017 at 82 FR
48469, soliciting comments on the proposed amendments. In response, the
USPTO received three comments relevant to the proposed rule. The
commenters generally supported the proposed amendments as meeting the
stated objectives. The USPTO appreciates the positive input, and these
comments require no response.
One commenter noted that the removal of the trademark interference
rules will not relieve any burden, as a party can petition the Director
to declare an interference with or without these rules, and suggested
``that there should be real amendments which actually mitigate
regulatory burden to incent entrepreneurship and market growth.'' As
noted above, removal of the identified regulations achieves the
objective of making the USPTO regulations more effective and more
streamlined, while enabling the USPTO to fulfill its mission goals.
Moreover, although removal of these regulations is not expected to
substantially reduce the burden on the impacted community, they are
being eliminated because they are ``outdated, unnecessary, or
ineffective'' regulations that are encompassed by the directives in
Executive Order 13777. The Office sought public suggestions on
regulatory changes to reduce burdens in order to benefit from the
public's input.
All comments are posted on the USPTO's website at https://www.uspto.gov/trademark/trademark-updates-and-announcements/comments-proposed-rulemaking-related-removal-rules.

IV. Discussion of Rules Changes

The USPTO revises the authority citation for part 2 to add ``Sec.
2.99 also issued under secs. 16, 17, 60 Stat. 434; 15 U.S.C. 1066,
1067.'' The USPTO revises the undesignated center heading
``INTERFERENCES AND CONCURRENT USE PROCEEDINGS'' to read ``CONCURRENT
USE PROCEEDINGS'' and removes the authority citation immediately
following that heading. The USPTO removes and reserves Sec. Sec. 2.91-
2.93, 2.96, and 2.98.

Rulemaking Considerations

A. Administrative Procedure Act: The changes in this rulemaking
involve rules of agency practice and procedure, and/or interpretive
rules. See Perez v. Mortg. Bankers Ass'n, 135 S. Ct. 1199, 1204 (2015)
(Interpretive rules ``advise the public of the agency's construction of
the statutes and rules which it administers.'' (citation and internal
quotation marks omitted)); Nat'l Org. of Veterans' Advocates v. Sec'y
of Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that
clarifies interpretation of a statute is interpretive.); Bachow
Commc'ns Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules
governing an application process are procedural under the
Administrative Procedure Act.); Inova Alexandria Hosp. v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims.).
Accordingly, prior notice and opportunity for public comment for
the changes in this rulemaking are not required pursuant to 5 U.S.C.
553(b) or (c), or any other law. See Perez, 135 S.

[[Page 33131]]

Ct. at 1206 (Notice-and-comment procedures are required neither when an
agency ``issue[s] an initial interpretive rule'' nor ``when it amends
or repeals that interpretive rule.''); Cooper Techs. Co. v. Dudas, 536
F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and
thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment
rulemaking for ``interpretative rules, general statements of policy, or
rules of agency organization, procedure, or practice'' (quoting 5
U.S.C. 553(b)(A))). However, the Office chose to seek public comment
before implementing the rule to benefit from the public's input.
B. Regulatory Flexibility Act: For the reasons set forth herein,
the Senior Counsel for Regulatory and Legislative Affairs, Office of
General Law, of the USPTO has certified to the Chief Counsel for
Advocacy of the Small Business Administration that this rule will not
have a significant economic impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
This rule removes the regulations addressing trademark
interferences codified at 37 CFR 2.91-2.93, 2.96, and 2.98. In
trademark interferences, the Board determines which, if any, of the
owners of conflicting applications (or of one or more applications and
one or more conflicting registrations) is entitled to registration. 15
U.S.C. 1066. Where searchable, the USPTO reviewed its paper and
electronic records of petitions and found that since 1983, USPTO has
received an average of approximately 1 such petition a year, and almost
all of them have been denied except for one petition that was granted
in 1985 (32 years ago). Because these regulations have rarely been
invoked in the last 32 years and no trademark interference proceedings
occurred during that time, the USPTO considers these regulations
unnecessary and has determined to remove them. Removing the trademark
interference regulations in this rule achieves the objective of making
the USPTO regulations more effective and more streamlined, while
enabling the USPTO to fulfill its mission goals. The removal of these
regulations is not expected to substantively impact parties as, in the
unlikely event that a need for a trademark interference arose, a party
would be able to petition the Director under 37 CFR 2.146(a)(4) for
institution of an interference. For these reasons, this rulemaking will
not have a significant economic impact on a substantial number of small
entities.
C. Executive Order 12866 (Regulatory Planning and Review): This
rulemaking has been determined to be not significant for purposes of
Executive Order 12866.
D. Executive Order 13563 (Improving Regulation and Regulatory
Review): The Office has complied with Executive Order 13563.
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule; (2) tailored the rule to impose the least burden on
society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) involved the public in an open exchange of
information and perspectives among experts in relevant disciplines,
affected stakeholders in the private sector and the public as a whole,
and provided on-line access to the rulemaking docket; (7) attempted to
promote coordination, simplification, and harmonization across
government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes.
E. Executive Order 13771 (Reducing Regulation and Controlling
Regulatory Costs): This rule is not an Executive Order 13771 regulatory
action because this rule is not significant under Executive Order
12866.
F. Executive Order 13132 (Federalism): This rulemaking does not
contain policies with federalism implications sufficient to warrant
preparation of a Federalism Assessment under Executive Order 13132
(Aug. 4, 1999).
G. Executive Order 13175 (Tribal Consultation): This rulemaking
will not: (1) Have substantial direct effects on one or more Indian
tribes; (2) impose substantial direct compliance costs on Indian tribal
governments; or (3) preempt tribal law. Therefore, a tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
H. Executive Order 13211 (Energy Effects): This rulemaking is not a
significant energy action under Executive Order 13211 because this
rulemaking is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
I. Executive Order 12988 (Civil Justice Reform): This rulemaking
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
J. Executive Order 13045 (Protection of Children): This rulemaking
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr.
21, 1997).
K. Executive Order 12630 (Taking of Private Property): This
rulemaking will not affect a taking of private property or otherwise
have taking implications under Executive Order 12630 (Mar. 15, 1988).
L. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the USPTO
will submit a report containing the final rule and other required
information to the United States Senate, the United States House of
Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this notice are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of United States-based enterprises to
compete with foreign-based enterprises in domestic and export markets.
Therefore, this notice is not expected to result in a ``major rule'' as
defined in 5 U.S.C. 804(2).
M. Unfunded Mandates Reform Act of 1995: The changes set forth in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
N. National Environmental Policy Act: This rulemaking will not have
any effect on the quality of the environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
O. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are not

[[Page 33132]]

applicable because this rulemaking does not contain provisions that
involve the use of technical standards.
P. Paperwork Reduction Act: This rulemaking involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in
this rule has been reviewed and previously approved by OMB under
control number 0651-0054.
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.

List of Subjects for 37 CFR Part 2

Administrative practice and procedure, Trademarks.

For the reasons stated in the preamble and under the authority
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office
amends part 2 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for part 2 is revised to read as follows:

Authority: 15 U.S.C. 1123 and 35 U.S.C. 2 unless otherwise
noted. Sec. 2.99 also issued under secs. 16, 17, 60 Stat. 434; 15
U.S.C. 1066, 1067.

0
2. Revise the undesignated center heading ``INTERFERENCES AND
CONCURRENT USE PROCEEDINGS'' above Sec. 2.91 to read ``CONCURRENT USE
PROCEEDINGS'' and remove the authority citation immediately following
that heading.

Sec. 2.91 [Reserved and Reserved]

0
3. Remove and reserve Sec. 2.91.

Sec. 2.92 [Reserved and Reserved]

0
4. Remove and reserve Sec. 2.92.

Sec. 2.93 [Reserved and Reserved]

0
5. Remove and reserve Sec. 2.93.

Sec. 2.96 [Reserved and Reserved]

0
6. Remove and reserve Sec. 2.96.

Sec. 2.98 [Reserved and Reserved]

0
7. Remove and reserve Sec. 2.98.

Dated: July 10, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2018-15163 Filed 7-16-18; 8:45 am]
BILLING CODE 3510-16-P

Federal Register / Vol. 83, No. 137 / Tuesday, July 17, 2018 / Rules and Regulations 33129

National Environmental Policy Act of anchor within the safety zone unless identify regulations that are candidates
1969 (42 U.S.C. 4321–4370f), and have authorized by the Captain of the Port for removal.
determined that this action is one of a Detroit (COTP), or his on-scene
DATES: This rule is effective on August
category of actions that do not representative.
(2) The safety zone is closed to all 16, 2018.
individually or cumulatively have a
significant effect on the human vessel traffic, except as may be FOR FURTHER INFORMATION CONTACT:
environment. This rule involves a safety permitted by the COTP or his on-scene Catherine Cain, Office of the Deputy
zone lasting less than thirty minutes representative. Commissioner for Trademark
that will prohibit entry into a designated (3) The ‘‘on-scene representative’’ of Examination Policy, by email at
area. It is categorically excluded from COTP is any Coast Guard TMFRNotices@uspto.gov, or by
further review under paragraph L60(a) commissioned, warrant or petty officer telephone at (571) 272–8946.
of Appendix A, Table 1 of DHS or a Federal, State, or local law
enforcement officer designated by or SUPPLEMENTARY INFORMATION:
Instruction Manual 023–01–001–01,
Rev. 01. A Record of Environmental assisting the Captain of the Port Detroit I. Background
Consideration supporting this to act on his behalf.
determination is available in the docket (4) Vessel operators shall contact the In accordance with Executive Order
where indicated under ADDRESSES. COTP or his on-scene representative to 13777, ‘‘Enforcing the Regulatory
obtain permission to enter or operate Reform Agenda,’’ the Department
G. Protest Activities within the safety zone. The COTP or his established a Task Force, comprising,
The Coast Guard respects the First on-scene representative may be among others, agency officials from the
Amendment rights of protesters. contacted via VHF Channel 16 or at National Oceanic and Atmospheric
Protesters are asked to contact the 313–568–9464. Vessel operators given Administration, the Bureau of Industry
person listed in the FOR FURTHER permission to enter or operate in the and Security, and the USPTO, and
INFORMATION CONTACT section to regulated area must comply with all charged the Task Force with evaluating
coordinate protest activities so that your directions given to them by the COTP or existing regulations and identifying
message can be received without his on-scene representative. those that should be repealed, replaced,
jeopardizing the safety or security of Dated: July 11, 2018. or modified because they are outdated,
people, places or vessels. Kevin D. Floyd, unnecessary, ineffective, costly, or
Commander, U.S. Coast Guard, Acting unduly burdensome to both government
List of Subjects in 33 CFR Part 165
Captain of the Port Detroit. and private-sector operations.
Harbors, Marine safety, Navigation
[FR Doc. 2018–15182 Filed 7–16–18; 8:45 am] To support its regulatory reform
(water), Reporting and record keeping
BILLING CODE 9110–04–P efforts on the Task Force, the USPTO
requirements, Security measures,
assembled a Working Group on
Waterways.
Regulatory Reform (Working Group),
For the reasons discussed in the consisting of subject-matter experts from
DEPARTMENT OF COMMERCE
preamble, the Coast Guard amends 33 each of the business units that
CFR part 165 as follows: Patent and Trademark Office implement the USPTO’s regulations, to
consider, review, and recommend ways
PART 165—REGULATED NAVIGATION
37 CFR Part 2 that the regulations could be improved,
AREAS AND LIMITED ACCESS AREAS
revised, and streamlined. In considering
[Docket No. PTO–T–2017–0032]
■ 1. The authority citation for part 165 the revisions, the USPTO, through its
continues to read as follows: RIN 0651–AD23 Working Group, incorporated into its
analyses all presidential directives
Authority: 33 U.S.C. 1231; 50 U.S.C. 191; Removal of Rules Governing relating to regulatory reform. The
33 CFR 1.05–1, 6.04–1, 6.04–6, and 160.5; Trademark Interferences
Department of Homeland Security Delegation Working Group reviewed existing
No. 0170.1. AGENCY: United States Patent and regulations, both discretionary rules and
Trademark Office, Commerce. those required by statute or judicial
■ 2. Add § 165.T09–0690 to read as
ACTION: Final rule. order. The USPTO also solicited
follows:
comments from stakeholders through a
§ 165.T09–0690 Yankee Air Museum’s SUMMARY: The United States Patent and web page established to provide
Fundraiser Air Demonstration, Lake St. Trademark Office (USPTO or Office) information on the USPTO’s regulatory
Clair, Grosse Pointe Farms, MI. amends the Rules of Practice in reform efforts and through the
(a) Location. A safety zone is Trademark Cases to remove the rules Department’s Federal Register Notice
established to include all U.S. navigable governing trademark interferences. This titled ‘‘Impact of Federal Regulations on
waters of Lake St. Clair within the rule arises out of the USPTO’s work Domestic Manufacturing’’ (82 FR 12786,
following corner points: Northeast during FY 2017 to identify and propose Mar. 7, 2017), which addressed the
corner, 42°24.670′ N, 082°51.594′ W, regulations for removal, modification, impact of regulatory burdens on
Northwest corner 42°24.671′ N, and streamlining because they are domestic manufacturing. These efforts
082°51.368′ W, Southeast corner outdated, unnecessary, ineffective, led to the development of candidate
42°24.034′ N, 082°51.857′ W, Southwest costly, or unduly burdensome on the regulations for removal based on the
corner 42°24.023′ N, 082°51.626′ W agency or the private sector. The USPTO’s assessment that these
revisions put into effect the work the regulations were not needed and/or that
daltland on DSKBBV9HB2PROD with RULES

(NAD 83).
(b) Enforcement period. The regulated USPTO has done, in part through its elimination could improve the USPTO’s
area described in paragraph (a) will be participation in the Regulatory Reform body of regulations. This rule removes
enforced 8 p.m. through 8:30 p.m. on Task Force (Task Force) established by certain trademark-related regulations.
July 18, 2018. the Department of Commerce Other rules removing regulations on
(c) Regulations. (1) No vessel or (Department or Commerce) pursuant to other subject areas may be published
person may enter, transit through, or Executive Order 13777, to review and separately.

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33130 Federal Register / Vol. 83, No. 137 / Tuesday, July 17, 2018 / Rules and Regulations

II. Regulations Being Removed the extremely low rate of filing over this entrepreneurship and market growth.’’
This rule removes the regulations long period of time, and because parties As noted above, removal of the
concerning trademark interferences would still retain an avenue for seeking identified regulations achieves the
codified at 37 CFR 2.91–2.93, 2.96, and a declaration of interference through the objective of making the USPTO
2.98. The rule also revises the authority general petition regulations, the USPTO regulations more effective and more
citation for part 2 and revises the considers the trademark interference streamlined, while enabling the USPTO
undesignated center heading regulations unnecessary. to fulfill its mission goals. Moreover,
‘‘INTERFERENCES AND CONCURRENT Section 16 of the Trademark Act, 15 although removal of these regulations is
USE PROCEEDINGS’’ to read U.S.C. 1066, states that the Director may not expected to substantially reduce the
‘‘CONCURRENT USE PROCEEDINGS’’ declare an interference ‘‘[u]pon petition burden on the impacted community,
showing extraordinary circumstances.’’ they are being eliminated because they
to more accurately reflect the final
Although eliminating §§ 2.91–2.93, 2.96, are ‘‘outdated, unnecessary, or
regulations. A trademark interference is
and 2.98 removes the regulations ineffective’’ regulations that are
a proceeding in which the Trademark
regarding the requirements for declaring encompassed by the directives in
Trial and Appeal Board (Board)
a trademark interference, the statutory Executive Order 13777. The Office
determines which, if any, of the owners
authority will remain. On the rare sought public suggestions on regulatory
of conflicting applications (or of one or
occasion that the Office receives a changes to reduce burdens in order to
more applications and one or more
request that the Director declare a benefit from the public’s input.
conflicting registrations) is entitled to
trademark interference, it is currently All comments are posted on the
registration. 15 U.S.C. 1066. A
submitted as a petition under 37 CFR USPTO’s website at https://
trademark interference can be declared 2.146, a more general regulation on www.uspto.gov/trademark/trademark-
only upon petition to the Director of the petitions. In the unlikely event that a updates-and-announcements/
USPTO (Director). However, the need for an interference arose, it is still comments-proposed-rulemaking-
Director will grant such a petition only possible for a party to seek institution of related-removal-rules.
if the petitioner can show extraordinary a trademark interference by petitioning
circumstances that would result in a IV. Discussion of Rules Changes
the Director under 37 CFR 2.146(a)(4),
party being unduly prejudiced in the whereby a petitioner may seek relief in The USPTO revises the authority
absence of an interference. 37 CFR any case not specifically defined and citation for part 2 to add ‘‘Sec. 2.99 also
2.91(a). The availability of an opposition provided for by Part 2 of Title 37. Thus, issued under secs. 16, 17, 60 Stat. 434;
or cancellation proceeding to determine even after removal of these rules, parties 15 U.S.C. 1066, 1067.’’ The USPTO
rights to registration ordinarily retain an avenue for seeking a revises the undesignated center heading
precludes the possibility of such undue declaration of interference. ‘‘INTERFERENCES AND CONCURRENT
prejudice to a party. Id. Thus, a Removal of the identified trademark USE PROCEEDINGS’’ to read
petitioner must show that there is some interference regulations in this rule ‘‘CONCURRENT USE PROCEEDINGS’’
extraordinary circumstance that would achieves the objective of making the and removes the authority citation
make the remedy of opposition or USPTO regulations more effective and immediately following that heading.
cancellation inadequate or prejudicial to more streamlined, while enabling the The USPTO removes and reserves
the party’s rights. USPTO to fulfill its mission goals. The §§ 2.91–2.93, 2.96, and 2.98.
Trademark interferences have USPTO’s economic analysis shows that
generally been limited to situations Rulemaking Considerations
while the removal of these regulations is
where a party would otherwise be not expected to substantially reduce the A. Administrative Procedure Act: The
required to engage in a series of burden on the impacted community, the changes in this rulemaking involve rules
opposition or cancellation proceedings regulations are nonetheless being of agency practice and procedure, and/
involving substantially the same issues. eliminated because they are ‘‘outdated, or interpretive rules. See Perez v. Mortg.
Trademark Manual of Examining unnecessary, or ineffective’’ regulations Bankers Ass’n, 135 S. Ct. 1199, 1204
Procedure § 1507. The promulgation of encompassed by the directives in (2015) (Interpretive rules ‘‘advise the
the interference regulations suggests Executive Order 13777. public of the agency’s construction of
that at that time, the Office the statutes and rules which it
contemplated such situations arising III. Proposed Rule: Comments and administers.’’ (citation and internal
with enough frequency to merit Responses quotation marks omitted)); Nat’l Org. of
particular regulations governing The USPTO published a proposed Veterans’ Advocates v. Sec’y of Veterans
interference proceedings. However, the rule on October 18, 2017 at 82 FR Affairs, 260 F.3d 1365, 1375 (Fed. Cir.
rarity of interference proceedings over 48469, soliciting comments on the 2001) (Rule that clarifies interpretation
an extended period of time indicates proposed amendments. In response, the of a statute is interpretive.); Bachow
that the regulations are unnecessary. To USPTO received three comments Commc’ns Inc. v. FCC, 237 F.3d 683,
the extent that the USPTO’s paper relevant to the proposed rule. The 690 (D.C. Cir. 2001) (Rules governing an
petition records are searchable, the commenters generally supported the application process are procedural
USPTO reviewed them and its proposed amendments as meeting the under the Administrative Procedure
electronic records of petitions and stated objectives. The USPTO Act.); Inova Alexandria Hosp. v.
found that since 1983, the USPTO has appreciates the positive input, and these Shalala, 244 F.3d 342, 350 (4th Cir.
received an average of approximately comments require no response. 2001) (Rules for handling appeals were
one petition for a trademark interference One commenter noted that the procedural where they did not change
per year, and almost all of them have removal of the trademark interference
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the substantive standard for reviewing
been denied except for one petition that rules will not relieve any burden, as a claims.).
was granted in 1985 (32 years ago). The party can petition the Director to declare Accordingly, prior notice and
USPTO has been unable to identify a an interference with or without these opportunity for public comment for the
situation since that time in which the rules, and suggested ‘‘that there should changes in this rulemaking are not
Director has granted a petition to be real amendments which actually required pursuant to 5 U.S.C. 553(b) or
declare a trademark interference. Given mitigate regulatory burden to incent (c), or any other law. See Perez, 135 S.

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Federal Register / Vol. 83, No. 137 / Tuesday, July 17, 2018 / Rules and Regulations 33131

Ct. at 1206 (Notice-and-comment significant for purposes of Executive litigation, eliminate ambiguity, and
procedures are required neither when Order 12866. reduce burden as set forth in sections
an agency ‘‘issue[s] an initial D. Executive Order 13563 (Improving 3(a) and 3(b)(2) of Executive Order
interpretive rule’’ nor ‘‘when it amends Regulation and Regulatory Review): The 12988 (Feb. 5, 1996).
or repeals that interpretive rule.’’); Office has complied with Executive J. Executive Order 13045 (Protection
Cooper Techs. Co. v. Dudas, 536 F.3d Order 13563. Specifically, the Office of Children): This rulemaking does not
1330, 1336–37 (Fed. Cir. 2008) (stating has, to the extent feasible and concern an environmental risk to health
that 5 U.S.C. 553, and thus 35 U.S.C. applicable: (1) Made a reasoned or safety that may disproportionately
2(b)(2)(B), does not require notice and determination that the benefits justify affect children under Executive Order
comment rulemaking for ‘‘interpretative the costs of the rule; (2) tailored the rule 13045 (Apr. 21, 1997).
rules, general statements of policy, or to impose the least burden on society K. Executive Order 12630 (Taking of
rules of agency organization, procedure, consistent with obtaining the regulatory Private Property): This rulemaking will
or practice’’ (quoting 5 U.S.C. objectives; (3) selected a regulatory not affect a taking of private property or
553(b)(A))). However, the Office chose approach that maximizes net benefits; otherwise have taking implications
to seek public comment before (4) specified performance objectives; (5) under Executive Order 12630 (Mar. 15,
implementing the rule to benefit from identified and assessed available 1988).
the public’s input. alternatives; (6) involved the public in L. Congressional Review Act: Under
B. Regulatory Flexibility Act: For the an open exchange of information and the Congressional Review Act
reasons set forth herein, the Senior perspectives among experts in relevant provisions of the Small Business
Counsel for Regulatory and Legislative disciplines, affected stakeholders in the Regulatory Enforcement Fairness Act of
Affairs, Office of General Law, of the private sector and the public as a whole, 1996 (5 U.S.C. 801 et seq.), prior to
USPTO has certified to the Chief and provided on-line access to the issuing any final rule, the USPTO will
Counsel for Advocacy of the Small rulemaking docket; (7) attempted to submit a report containing the final rule
Business Administration that this rule promote coordination, simplification, and other required information to the
will not have a significant economic and harmonization across government United States Senate, the United States
impact on a substantial number of small agencies and identified goals designed House of Representatives, and the
entities. See 5 U.S.C. 605(b). to promote innovation; (8) considered Comptroller General of the Government
This rule removes the regulations approaches that reduce burdens and Accountability Office. The changes in
addressing trademark interferences maintain flexibility and freedom of this notice are not expected to result in
codified at 37 CFR 2.91–2.93, 2.96, and choice for the public; and (9) ensured an annual effect on the economy of 100
2.98. In trademark interferences, the the objectivity of scientific and million dollars or more, a major increase
Board determines which, if any, of the technological information and in costs or prices, or significant adverse
owners of conflicting applications (or of processes. effects on competition, employment,
one or more applications and one or E. Executive Order 13771 (Reducing investment, productivity, innovation, or
more conflicting registrations) is Regulation and Controlling Regulatory the ability of United States-based
entitled to registration. 15 U.S.C. 1066. Costs): This rule is not an Executive enterprises to compete with foreign-
Where searchable, the USPTO reviewed Order 13771 regulatory action because based enterprises in domestic and
its paper and electronic records of this rule is not significant under export markets. Therefore, this notice is
petitions and found that since 1983, Executive Order 12866. not expected to result in a ‘‘major rule’’
USPTO has received an average of F. Executive Order 13132 as defined in 5 U.S.C. 804(2).
approximately 1 such petition a year, (Federalism): This rulemaking does not M. Unfunded Mandates Reform Act of
and almost all of them have been denied contain policies with federalism 1995: The changes set forth in this
except for one petition that was granted implications sufficient to warrant notice do not involve a Federal
in 1985 (32 years ago). Because these preparation of a Federalism Assessment intergovernmental mandate that will
regulations have rarely been invoked in under Executive Order 13132 (Aug. 4, result in the expenditure by State, local,
the last 32 years and no trademark 1999). and tribal governments, in the aggregate,
interference proceedings occurred G. Executive Order 13175 (Tribal of 100 million dollars (as adjusted) or
during that time, the USPTO considers Consultation): This rulemaking will not: more in any one year, or a Federal
these regulations unnecessary and has (1) Have substantial direct effects on one private sector mandate that will result
determined to remove them. Removing or more Indian tribes; (2) impose in the expenditure by the private sector
the trademark interference regulations substantial direct compliance costs on of 100 million dollars (as adjusted) or
in this rule achieves the objective of Indian tribal governments; or (3) more in any one year, and will not
making the USPTO regulations more preempt tribal law. Therefore, a tribal significantly or uniquely affect small
effective and more streamlined, while summary impact statement is not governments. Therefore, no actions are
enabling the USPTO to fulfill its required under Executive Order 13175 necessary under the provisions of the
mission goals. The removal of these (Nov. 6, 2000). Unfunded Mandates Reform Act of
regulations is not expected to H. Executive Order 13211 (Energy 1995. See 2 U.S.C. 1501 et seq.
substantively impact parties as, in the Effects): This rulemaking is not a N. National Environmental Policy
unlikely event that a need for a significant energy action under Act: This rulemaking will not have any
trademark interference arose, a party Executive Order 13211 because this effect on the quality of the environment
would be able to petition the Director rulemaking is not likely to have a and is thus categorically excluded from
under 37 CFR 2.146(a)(4) for institution significant adverse effect on the supply, review under the National
daltland on DSKBBV9HB2PROD with RULES

of an interference. For these reasons, distribution, or use of energy. Therefore, Environmental Policy Act of 1969. See
this rulemaking will not have a a Statement of Energy Effects is not 42 U.S.C. 4321 et seq.
significant economic impact on a required under Executive Order 13211 O. National Technology Transfer and
substantial number of small entities. (May 18, 2001). Advancement Act: The requirements of
C. Executive Order 12866 (Regulatory I. Executive Order 12988 (Civil Justice section 12(d) of the National
Planning and Review): This rulemaking Reform): This rulemaking meets Technology Transfer and Advancement
has been determined to be not applicable standards to minimize Act of 1995 (15 U.S.C. 272 note) are not

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Document Created: 2018-07-17 01:38:48
Document Modified: 2018-07-17 01:38:48

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		Rules and Regulations
Action		Final rule.
Dates		This rule is effective on August 16, 2018.
Contact		Catherine Cain, Office of the Deputy Commissioner for Trademark Examination Policy, by email at [email protected], or by telephone at (571) 272-8946.
FR Citation		83 FR 33129
RIN Number		0651-AD23
CFR Associated		Administrative Practice and Procedure and Trademarks

83 FR 33129 - Removal of Rules Governing Trademark Interferences

DEPARTMENT OF COMMERCEPatent and Trademark Office

Federal Register Volume 83, Issue 137 (July 17, 2018)

DEPARTMENT OF COMMERCE
Patent and Trademark Office