SUPPLEMENTARY INFORMATION:

This final rule amends 37 CFR part 7 to replace references to the USPTO's electronic filing system names, “Trademark Electronic Application System” and ( printed page 43340) “TEAS” with generic terminology for the filing systems used to submit documents as part of international applications and subsequent designations originating in the United States under the Madrid Protocol.

The Madrid Protocol went into effect in the United States on November 2, 2003, and was implemented under 15 U.S.C. 1141 et seq. and 37 CFR parts 2 and 7. The International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland administers the Madrid system for international trademark registration. The Regulations Under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Regs. Rule) set forth the procedures regarding the administration of the Madrid Protocol, pursuant to Madrid Protocol Article (Article) 10(2)(iii). The Madrid Protocol Implementation Act of 2002 amended the U.S. Trademark Act to provide that the owner of a U.S. trademark registration or pending application (basic registration or basic application) may seek protection of its mark in any of the member countries of the Madrid Protocol by submitting a single international application originating in the United States if the owner is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States. 15 U.S.C. 1141a; Trademark Manual of Examining Procedure (TMEP) 1902.01.

The USPTO Madrid Processing Unit (MPU) reviews international applications to determine whether the information contained therein corresponds to the information in the associated basic application or basic registration. If the international application meets the requirements of 37 CFR 7.11(a), the MPU will certify the application and forward it to the IB. 15 U.S.C. 1141b; 37 CFR 7.13(a).

Once the IB receives the certified international application from the USPTO, the IB will examine the application for completeness. If an international application is not complete, the IB will notify both the applicant and the USPTO of the irregularity. TMEP 1902.07. The irregularity notice will specify whether the response must be provided by the USPTO or the applicant. See 37 CFR 7.14; TMEP 1902.07; Regs. Rule 11.

Applicants must file responses to irregularities regarding the classification and/or identification of goods and/or services through the USPTO. See TMEP 1902.07(c). For responses to IB notices of irregularity that must be submitted by the applicant through the USPTO, the response must be filed through the Trademark Electronic Application System (TEAS) unless the filer is a national of a country that has acceded to the Trademark Law Treaty but not to the Singapore Treaty on the Law of Trademarks. 37 CFR 7.4(a), (c). If TEAS is unavailable, or in an extraordinary situation, an applicant or registrant under this section who is required to file a submission through TEAS may submit a petition to the Director under 37 CFR 2.146(a)(5) and (c) of this chapter to accept the submission filed on paper. 37 CFR 7.4(d).

Further, the holder of an international registration may request an extension of protection of the international registration to additional Contracting Parties after the IB registers the mark. This request for an extension of protection is known as a subsequent designation. 37 CFR 7.21(b). A holder may file a subsequent designation originating with the USPTO if: (1) the international registration is based on a basic application filed with the USPTO and/or a basic registration issued by the USPTO and (2) the holder is a national of, is domiciled in, or has a real and effective industrial or commercial establishment in the United States. 15 U.S.C. 1141d; 37 CFR 7.21(a)-(b); TMEP 1902.01.

The nomenclature change in this final rule supports a technology update that will enable filers to submit international applications and responses to irregularity notices through the Madrid e-Filing system (Madrid e-Filing), a WIPO-operated electronic filing system, that has been designated by the Director of the USPTO for filing. Although Madrid e-Filing will be the primary method of filing these documents, TEAS will remain available for filing U.S. office of origin international applications until at least September 2026 and responses to notices of irregularity until all international applications originally filed through TEAS have reached a final disposition. The holder of a U.S. office of origin international registration who is a national of, is domiciled in, or has a real and effective business or commercial establishment in the United States will continue to have the option to submit a subsequent designation through the IB or through the USPTO using TEAS, and eventually Trademark Center, which is another trademark electronic filing system that will replace TEAS.

The rule does not change any statutory obligations under 15 U.S.C. 1141-1141c or the filing requirements of 37 CFR part 7. However, when applicants use Madrid e-Filing to submit a U.S. office of origin international application, all fees are paid directly to WIPO, and therefore the fees required by 37 CFR 7.6(a)(1)-(2) and 7.7(a)(1) will be charged in the Swiss franc equivalent of the U.S. dollar amount at the time of transaction. See Regs. Rule 35(1).

Discussion of Regulatory Changes

The USPTO amends §  7.1 to revise paragraph (c) to replace “The acronym TEAS means the Trademark Electronic Application System” with “Trademark electronic filing system means the electronic filing system designated by the Director” and to replace “TEAS” with “the trademark electronic filing system.”

The USPTO amends § 7.4 to revise paragraphs (a) and (d) to replace references to “TEAS” with “the trademark electronic filing system.”

The USPTO amends § 7.6 to revise paragraph (b) to add “or the U.S. dollar equivalent if the fee is paid directly to the International Bureau at the time of submission of the requested action.”

The USPTO amends § 7.7 to revise paragraph (a) to replace “TEAS” with “the trademark electronic filing system.” The USPTO revises paragraph (b)(1)(ii) to remove “In this case, an applicant or holder's submission to the Office must include the International Bureau receipt number for payment of the fees.”

The USPTO amends § 7.11 to revise paragraphs (a) and (a)(10) to replace the “TEAS” with “the trademark electronic filing system.”

The USPTO amends § 7.21 to revise paragraphs (b) and (b)(8) to replace “TEAS” with “the trademark electronic filing system.”

Rulemaking Requirements

A. Administrative Procedure Act: This final rule amends the regulations to implement a nomenclature change by substituting generic terminology for references to TEAS, the USPTO's trademark electronic filing system used to submit documents as part of international applications and subsequent designations originating in the United States under the Madrid Protocol system. The amendments in this final rule do not change the substantive criteria for the registration of an international trademark originating with the United States under the Madrid Protocol. Therefore, the changes in this rulemaking involve rules of agency practice and procedure and/or interpretive rules and do not require notice-and-comment rulemaking pursuant to 5 U.S.C. 553(b)(B). See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) (explaining that interpretive rules “advise the public of ( printed page 43341) the agency's construction of the statutes and rules which it administers” and do not require notice-and-comment when issued or amended); 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”); In re Chestek PLLC, 92 F.4th 1105, 1110 (Fed. Cir. 2024) (noting that rule changes that “do[ ] not alter the substantive standards by which the USPTO evaluates trademark applications” are procedural in nature and thus “exempted from notice-and-comment rulemaking.”); and JEM Broad. Co. v. F.C.C., 22 F.3d 320, 328 (D.C. Cir. 1994) (“[T]he `critical feature' of the procedural exception [in 5 U.S.C. 553(b)(A)] `is that it covers agency actions that do not themselves alter the rights or interests of parties, although [they] may alter the manner in which the parties present themselves or their viewpoints to the agency.' ” (quoting Batterton v. Marshall, 648 F.2d 694, 707 (D.C. Cir. 1980))).

B. Regulatory Flexibility Act: As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 or any other law, neither a Regulatory Flexibility Act analysis nor a certification under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See5 U.S.C. 603.

C. Executive Order 12866 (Regulatory Planning and Review): This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993).

D. Executive Order 13563 (Improving Regulation and Regulatory Review): The USPTO has complied with Executive Order 13563 (Jan. 18, 2011). Specifically, and as discussed above, the USPTO 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 online 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 14192 (Deregulation): This regulation is not an Executive Order 14192 regulatory action because it has been determined to be not significant under Executive Order 12866.

F. Executive Order 13132 (Federalism): This rulemaking pertains strictly to federal agency procedures and 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 effect 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.), 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 rulemaking are not expected to result in an annual effect on the economy of $100 million 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 rulemaking 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 rulemaking 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 (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 (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. See2 U.S.C. 1501 et seq.

N. National Environmental Policy Act of 1969: 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. See42 U.S.C. 4321 et seq.

O. National Technology Transfer and Advancement Act of 1995: The requirements of section 12(d) of the National Technology Transfer and Advancement Act of 1995 (15 U.S.C. 272 note) are not applicable because this rulemaking does not contain provisions that involve the use of technical standards.

P. Paperwork Reduction Act of 1995: This final rule does not involve information collection requirements that 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.).

Notwithstanding any other provision of law, no person is required to respond to, nor shall any 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 has a currently valid OMB control number.

Q. E-Government Act Compliance: The USPTO is committed to compliance with the E-Government Act to promote the use of the internet and other information technologies, to provide increased opportunities for citizen ( printed page 43342) access to Government information and services, and for other purposes.

For the reasons stated in the preamble, the USPTO amends 37 CFR part 7 as follows: