[Federal Register: August 24, 2001 (Volume 66, Number 165)]
[Notices]
[Page 44603-44605]
From the Federal Register Online via GPO Access [wais.access.gpo.gov]
[DOCID:fr24au01-58]
-----------------------------------------------------------------------
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. 010723184-118401]
RIN 0651-AB30
Establishment of a Database Containing the Official Insignia of
Federally and State Recognized Native American Tribes
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.
SUPPLEMENTARY INFORMATION: The Trademark Law Treaty Implementation Act,
Pub. L. 105-330, Sec. 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
[[Page 44604]]
have 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 8\1/2\
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
[[Page 44605]]
to 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.
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.
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.
[FR Doc. 01-21479 Filed 8-23-01; 8:45 am]
BILLING CODE 3510-16-P