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Notice

Establishment of a Database Containing the Official Insignia of Federally and State Recognized Native American Tribes

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Information about this document as published in the Federal Register.

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AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Procedures for establishment and maintenance of a database of the official insignia of federally and state-recognized Native American tribes.

SUMMARY:

The United States Patent and Trademark Office (USPTO) is announcing the procedures it will follow in creating and maintaining a database of the official insignia of federally and state-recognized Native American tribes. The database, recommended in a report required by the Trademark Law Treaty Implementation Act, will assist examining attorneys in their examinations of applications for registration.

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SUPPLEMENTARY INFORMATION:

The Trademark Law Treaty Implementation Act, Pub. L. 105-330, § 302, 112 Stat. 3071 (1998) required the USPTO to study issues surrounding protection of the official insignia of federally and state-recognized Native American tribes. The study was conducted, and a report was presented to the Chairman of the Committee on the Judiciary of the Senate and to the Chairman of the Committee on the Judiciary of the House of Representatives on November 30, 1999 (hereinafter “the Report”).

One of the recommendations set forth in the Report was that the USPTO create and maintain an accurate and comprehensive database of the official insignia of Native American tribes.

On January 9, 2001, the USPTO published a notice in the Federal Register describing the proposed procedures for creating and maintaining the database (Federal Register, Vol. 66, No. 6), and requesting comments on these procedures.

Two parties submitted responses to the January 9, 2001 Federal Register Notice. One party submitted a comment regarding the proposed procedures for creating and maintaining the database, a request that the USPTO extend the time for submitting comments regarding the database, and a suggestion that the USPTO allow third parties to object to particular requests for entries of insignia in the database. Additionally, that party, as well as the other party that submitted a response, objected to the creation of the database.

Acceptable Form for Insignias

The proposed procedures published in the notice of January 9, 2001, provided that, if an insignia consists solely of a word or words, then the request to enter that insignia in the database should include a depiction of the word or words in uppercase letters.

Comment: One comment suggested that the proposed procedures should not Start Printed Page 44604have allowed parties to submit requests to record matter comprised solely of words. This comment noted that the Report suggested that words, by themselves, could not function as official insignia of Native American tribes. Instead, the Report provided that insignia would be defined as “flag or coat of arms or other emblem or device of any federally or state-recognized Native American tribe, as adopted by tribal resolution and notified to the U.S. Patent and Trademark Office.” Accordingly, the comment suggested that the database not include entries of matter comprised solely of words.

Response: The suggestion has been adopted. The procedures for requesting entry of an insignia in the database have been modified to delete the reference to insignia composed solely of words, and to clarify that in order to be entered into the database, an insignia must consist of a flag or coat of arms or other emblem or device of any federally or state-recognized Native American tribe, as adopted by tribal resolution.

Propriety of Creating and Maintaining the Database of Insignia of Federally and State Recognized Native American Tribes

Two comments suggested that the USPTO should not establish a database of insignia of federally and state-recognized Native American Tribes. Both of these comments argued that the establishment of the database will confer rights on Native American Tribes that are not enjoyed by other groups. Additionally, both comments also argued that the USPTO would incur substantial costs in maintaining the database.

Response: The USPTO does not believe that entry of the official insignia of a Native American Tribe in the database will confer any rights on that tribe. The presence of an insignia in the database will not create any legal presumption of validity or priority, and none of the benefits of Federal trademark registration will accrue to a Native American tribe whose insignia is recorded pursuant to this notice. The sole function of the database will be to assist examining attorneys in their examination of applications for registration.

The USPTO believes that it currently has adequate resources to create and maintain the database. Additionally, it is noted that the database is being created pursuant to one of the recommendations of the Report. The Senate Appropriations Committee directed the USPTO to comply with this recommendation by creating and maintaining the database. See Senate Report 106-404 and H. Report 106-1005.

Time for Submitting Comments

One comment suggested that if comments regarding the proposed procedures were not received from each of the thirty-six entities who commented on the Report, then the USPTO should extend the period for commenting on the proposed procedures.

Response: The USPTO does not believe that it is necessary to extend the comment period. The USPTO believes that the thirty-day period provided for submitting comments was sufficient to allow all interested parties to prepare and submit comments.

Third Party Objections to Entry of Insignia

One comment suggested that establishment of the database would require the USPTO to accept and consider objections from third parties to the recordal of particular insignia.

Response: The USPTO does not believe that it should consider third party objections to entries of insignia in the database. The entry of an insignia will not confer any rights on the tribe that submitted the insignia. The sole function of the database will be to assist examining attorneys in their examination of applications for registration. Because no rights will accrue from entries of insignia into the database, it is unlikely that there can be any grounds for objecting to these entries.

Procedures for Submitting Requests for Entry of Insignia in the Database of Insignia of Federally and State Recognized Native American Tribes

All requests to enter an official insignia of a Native American tribe into the USPTO database must be in writing, addressed to the Commissioner for Trademarks, and must include the following:

(1) A depiction of the insignia. This depiction should not be larger than 4 inches by 4 inches (10.3 cm. by 10.3 cm.), and should be placed at or near the center of a sheet of white paper 8 to 81/2 inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long. The paper should have a heading that includes the name of the tribe and the address for correspondence;

(2) A copy of the tribal resolution adopting the insignia in question as the official insignia of the tribe;

(3) A statement, signed by an official with authority to bind the tribe, confirming that the insignia included with the request is identical to the official insignia adopted by tribal resolution; and

(4) For all entities not recognized as Native American tribes by the Bureau of Indian Affairs (BIA), either: (a) a document issued by a state official that evidences the state's determination that the entity is a Native American tribe, or (b) a citation to a state statute designating the entity as a Native American tribe.

The request should be sent by facsimile to (703) 872-9192, or mailed to the Commissioner for Trademarks at the following address: P.O. Box 16471, Arlington, Virginia 22215.

The insignia must consist of a flag or coat of arms or other emblem or device of any federally or state-recognized Native American tribe, as adopted by tribal resolution. A word or words alone will not be considered an insignia, and will not be entered in the insignia database.

The USPTO will record any official insignia of a Native American tribe submitted in the manner described above, if the Commissioner determines that the entity that submitted the request is a Native American tribe recognized by the Federal Government or by one or more state governments.

The Commissioner will determine whether the entity that submitted the request is a federally recognized Native American tribe by consulting the list of Native American tribes maintained by the BIA.

If an entity seeking recordal of its insignia wishes to demonstrate that it is a state-recognized Native American tribe rather than a federally recognized Native American tribe, that entity must provide the Commissioner with either: (1) A document issued by a state official that evidences the state's determination that the entity is a Native American tribe, or (2) a citation to a state statute designating the entity as a Native American tribe.

The USPTO will begin to accept requests to record insignia one week after the publication of this notice.

Legal Significance of Recordal

The recordal of an official insignia of a Native American tribe at the USPTO will not be the equivalent of registering that insignia as a trademark pursuant to 15 U.S.C. 1051 et seq. Thus, including an insignia in the USPTO's database will not create any legal presumption of validity or priority, and none of the benefits of federal trademark registration will accrue to a Native American tribe whose insignia is recorded pursuant to this notice.

Acceptance of the insignia for recordal will not be a determination as Start Printed Page 44605to whether a particular insignia for which recordal has been requested would be refused registration as a trademark pursuant to 15 U.S.C. 1051 et seq., or to some provision of Chapter 37 of the Code of Federal Regulations, or to any requirement of the USPTO.

The USPTO will use the official insignia recorded by the USPTO as information useful in the examination of certain applications for registration of trademarks and as evidence of what a federally or state-recognized tribe considers to be its official insignia.

The database of official insignia of Native American tribes will be included, for informational purposes, within the USPTO's database of material that is not registered but is searched to make determinations regarding the registrability of marks. This database is available at the USPTO's web site. Inclusion of official insignia in this database will ensure that an examining attorney, who is searching a mark that is confusingly similar to an official insignia will find and consider the official insignia before making a determination of registrability.

For correspondence pertaining to the database of official insignia of Native American tribes, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office has waived the requirement of 37 CFR 1.1 that all correspondence intended for the United States Patent and Trademark Office be mailed to one of the addresses identified in 37 CFR 1.1.

The USPTO is in the process of requesting approval for establishment of the database under the Paperwork Reduction Act from the Office of Management and Budget.

The USPTO has determined that the proposed establishment of the database has no federalism implications affecting the relationship between the National Government and the State as outlined in Executive Order 13132. The USPTO has further determined that the proposed establishment of the database has no tribal implications as described in Executive Order 13175.

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FOR FURTHER INFORMATION CONTACT:

Ari Leifman by telephone at (703) 308-8900, or by mail addressed to: P.O. Box 16471, Arlington, Virginia, 22215, or by facsimile to (703) 872-9285, marked to the attention of Ari Leifman.

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Dated: August 20, 2001.

Nicholas P. Godici,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.

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[FR Doc. 01-21479 Filed 8-23-01; 8:45 am]

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