90 FR 104 pgs. 23288-23290 - Partial Replacement of an Earlier National Registration or Registrations by an International Registration
Type: RULEVolume: 90Number: 104Pages: 23288 - 23290
Pages: 23288, 23289, 23290Docket number: [Docket No. PTO-T-2025-0002]
FR document: [FR Doc. 2025-09916 Filed 5-30-25; 8:45 am]
Agency: Commerce Department
Sub Agency: Patent and Trademark Office
Official PDF Version: PDF Version
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 7
[Docket No. PTO-T-2025-0002]
RIN 0651-AD82
Partial Replacement of an Earlier National Registration or Registrations by an International Registration
AGENCY:
United States Patent and Trademark Office, Department of Commerce.
ACTION:
Final rule.
SUMMARY:
The United States Patent and Trademark Office (USPTO) issues this final rule to implement an amendment to the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) adopted by the Madrid Union Assembly that went into effect on February 1, 2021, with a delayed implementation date of February 1, 2025. This final rule modifies U.S. trademark regulations addressing the replacement of a national registration or registrations by an international registration to allow for submission of partial replacement requests, in alignment with the Madrid Protocol, and to require a listing of the goods and/or services for which replacement is requested.
DATES:
This rule is effective on July 2, 2025.
FOR FURTHER INFORMATION CONTACT:
Cristiana Schwab, Office of the Deputy Commissioner for Trademark Examination Policy, at 571-272-3514 or TMFRNotices@uspto.gov.
SUPPLEMENTARY INFORMATION:
The USPTO is revising 37 CFR 7.28 to incorporate an amendment to the Madrid Protocol for international trademark registration.
The Madrid Protocol is an international treaty that allows a trademark owner to seek registration of its trademark in any of the member countries by filing a single international application. The International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, administers the international registration system. The Madrid Protocol Implementation Act of 2002 amended the U.S. Trademark Act to provide that: (1) the owner of a U.S. application or registration may seek protection of its mark in any of the member countries of the Madrid Protocol by submitting a single international application through the USPTO and (2) the holder of an international registration may request an extension of protection of the international registration to the United States. The Madrid Protocol came into effect in the United States on November 2, 2003, and is implemented under 15 U.S.C. 1141 et seq. and 37 CFR parts 2 and 7. Each member country to the Madrid Protocol, including the United States, is represented at the Madrid Union Assembly, which meets annually at WIPO to vote on proposed changes to the Regulations under the Madrid Protocol. Each member country is obligated to implement any changes to the Regulations once adopted.
At its fifty-third (23rd ordinary) session, the Madrid Union Assembly adopted an amendment to Rule 21(3)(d) of the Regulations under the Madrid Protocol that requires member countries to provide for partial replacement of an earlier national registration(s) in addition to requests for full replacement. This amendment went into effect on February 1, 2021. However, at its fifty-fifth (24th ordinary) session, the Madrid Union Assembly adopted a new provision to the Regulations, paragraph (7) of Rule 40, that amended the compliance date for members to February 1, 2025.
This final rule incorporates the amendment adopted under the Madrid Protocol to provide partial replacement of earlier national registrations. To implement this amendment, this final rule revises the procedures at 37 CFR 7.28 to require the submission of additional information in requests to note replacement of a U.S. registration with an extension of protection, which will enable the USPTO to process requests for partial replacement of earlier national registrations. Specifically, a request to note replacement must specify the goods and/or services for which replacement is sought. The requirement to specify the goods and/or services for which replacement is requested applies to all requests to note replacement, both full and partial requests. Finally, the USPTO revises §?7.28 to clarify that for a pending request for extension of protection that, once registered, will meet the requirements of paragraph (a), the holder may file a request to note replacement of the U.S. registration with the extension of protection. However, requests to note replacement filed in reference to a pending request for extension of protection will not be processed until the extension of protection is registered. This action ensures that the USPTO is in compliance with the Madrid Protocol. It also ensures that all replacements of earlier national registrations, not just partial replacements, clearly identify those goods and/or services that are being replaced, which will promote transparency in the trademark system.
Discussion of Regulatory Changes
The USPTO amends §?7.28 to revise paragraph (a)(2) to replace the wording "are also listed in" with "that are identified for replacement are covered by." The USPTO revises paragraph (b) to include language clarifying addressing pending requests for extension of protection.
The USPTO also redesignates paragraph (c) as paragraph (d) and adds a new paragraph (c) to provide a stand-alone paragraph that sets forth the requirements for requests to note replacement. This paragraph includes the new requirement that requesters must specify the goods and/or services for which replacement is requested, which is set forth in paragraph (c)(3).
Rulemaking Requirements
[top] A. Administrative Procedure Act: The changes in this rulemaking involve rules of agency practice and procedure and/or interpretive rules and do not require notice-and-comment rulemaking. See Perez v. Mortg. Bankers Ass'n, 575 U.S. 92, 97, 101 (2015) (explaining that interpretive rules "advise the public of the agency's construction of the statutes and rules which it administers" and do not require notice-and-comment when issued or amended); 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."); Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (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 addition, the Office finds good cause pursuant to the authority at 5 U.S.C. 553(b)(B) to adopt the changes in this final rule without prior notice and an opportunity for public comment, as such procedures would be unnecessary, impracticable, and contrary to the public interest. As discussed above, the changes in this rulemaking involve implementation of provisions that were adopted by the United States as a member of the Madrid Protocol. The revisions made in this final rule provide the procedures for requests for partial replacement of earlier national registrations, which were adopted by member states to the Madrid Protocol. As a member of the Madrid Protocol, the United States is obligated to implement these changes. In addition, this final rule expands the new requirement to specify the goods and/or services for which replacement is requested to all requests to note replacement, both full and partial. This final rule will assist the United States in complying with the Madrid Protocol and avoiding any confusion that could result if these provisions are not implemented as close to the effective date as possible. Furthermore, the expansion of the requirement to specify the goods and/or services for which replacement is requested to all requests to note replacement will ensure that all replacements of earlier national registrations are clearly identified. This change promotes transparency in the trademark system. For the reasons above, the agency finds good cause to conclude that notice and an opportunity for public comment are impracticable, unnecessary, and contrary to the public interest.
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. See 5 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.
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. See 2 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. See 42 U.S.C. 4321 et seq.
[top] 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
P. Paperwork Reduction Act of 1995: The Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq. ) requires that the USPTO consider the impact of paperwork and other information collection burdens imposed on the public. The collection of information affected by this final rule is 0651-0051 (Madrid Protocol). This collection has been previously reviewed and approved by OMB under the most recent renewal of this control number. This rulemaking implements the provisions addressing the replacement of a National or Regional Registration by an International Registration to receive partial replacement requests in alignment with the Madrid Protocol. This will result in a slight increase in respondents. In keeping with that increase, the hourly and non-hourly cost burdens for 0651-0051 will be adjusted to reflect these new respondents and their submissions of replacement requests. As a result of this final rule, updates to the information collection 0651-0051 will be submitted to the OMB as non-substantive change requests.
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 displays 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 access to government information and services, and for other purposes.
List of Subjects in 37 CFR Part 7
Administrative practice and procedure, Trademarks.
For the reasons stated in the preamble, the USPTO amends 37 CFR part 7 as follows:
PART 7-RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
1. The authority citation for part 7 continues to read as follows:
Authority:
15 U.S.C. 1123, 35 U.S.C. 2, Pub. L. 116-260, 134 Stat. 1182, unless otherwise noted.
2. Revise §?7.28 to read as follows:
§?7.28 Replacement of U.S. registration by registered extension of protection.
(a) A registered extension of protection affords the same rights as those afforded to a previously issued U.S. registration if:
(1) Both registrations are owned by the same person and identify the same mark; and
(2) All the goods and/or services listed in the U.S. registration that are identified for replacement are covered by the registered extension of protection.
(b) The holder of an international registration with a registered extension of protection to the United States that meets the requirements of paragraph (a) of this section, or with a pending request for extension of protection that, once registered, will meet the requirements of paragraph (a) of this section, may file a request to note replacement of the U.S. registration with the extension of protection. If the request to note replacement is filed in reference to a pending request for extension of protection, the request will not be processed until the extension of protection registers.
(c) If the request to note replacement contains all of the following, the Office will take note of the replacement in its automated records:
(1) The serial number or registration number of the extension of protection;
(2) The registration number of the replaced U.S. registration;
(3) The goods and/or services for which replacement is requested; and
(4) The fee required by §?7.6.
(d) If the request to note replacement is denied, the Office will notify the holder of the reason(s) for refusal.
Coke Morgan Stewart,
Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.
[FR Doc. 2025-09916 Filed 5-30-25; 8:45 am]
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