PTO Seeks Comment On Codification of Current Trademark Practices

by Shannon Allen

The United States Patent and Trademark Office (“PTO”) seeks input on codifying current practices.  This notice of proposed rulemaking proposes changes to the “Trademark Rules of Practice” and the “ Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.”  

In general, the proposed amendments are “intended to codify existing practice.”  Specifically, the PTO’s goal is to“benefit the public” by offering more “clarity” regarding mandates relating to the following:

• Representation by Attorneys or Other Authorized Persons before the PTO
• Applications for Registration
• Examination of Application and Action by Applicants Procedures
• Amendment of Applications
• Publication and Post Publication Procedures
• Appeals
• Petitions
• Post Registration Practice
• General Information and Correspondence in Trademark Cases
• Classification of Goods and Services
• Procedures Under The Madrid Protocol

The PTO solicits input in order to:

• evaluate whether the proposed collection of information is necessary for the proper performance of the functions of the agency, including whether the information will have practical utility;
• evaluate the accuracy of the agency’s estimate of the burden of the proposed collection of information, including the validity of the methodology and assumptions used;
• enhance the quality, utility, and clarity of the information to be collected; and
• minimize the burden of information on those who are to respond, including through the use of appropriate automated, electronic, mechanical, or other technological collection techniques or other forms of information technology (e.g. permitting electronic submission of responses).

According to the Administrative Procedure Act, prior notice and opportunity for public comment are not required for interpretive rules or rulemaking that involves rules of agency practice and procedure.   This notice of proposed rulemaking proposes changes that simply clarify agency practices.  Thus, these amendments do not require notice and comment. The PTO, however, “has chosen to seek public comment before implementing the rule.”

Interested parties are invited to submit comments by April 23, 2014.  The PTO prefers comments be submitted via electronic mail message to: TMFRNotices@uspto.gov.  They can also be sent:

• by mail to: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451, attention Cynthia C. Lynch;
• by hand delivery to: the Trademark Assistance Center, Concourse Level, James Madison Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention Cynthia C. Lynch; OR
• by electronic message via the Federal eRulemaking Portal at: http://www.regulations.gov.