Strategic Plan > Index to Action Papers > Trademark Legislative and Rulemaking Issues

Action:

The USPTO is considering changes that could be made to the Lanham Act and Trademark Rules of Practice that would assist the Agency in implementing e-Government in Trademarks without affecting the value of Federal registrations.

Background Information:

Statutory and regulatory requirements implemented when the Office primarily used paper for communication and record keeping have a negative impact on the use of electronic systems in Trademarks.  These requirements include: (1) The requirement to submit a signed affidavit or declaration in support of certain filings; (2) submitting specimens showing use of the mark, (3) for non-U.S. filers, appointing of domestic representatives for service of process, and (4) for filers whose applications are based on foreign registrations, submitting certified copies of these foreign registrations to support applications for registration in the United Stated made under provisions of the Paris Convention.  These requirements result in a correspondingly large number of initial refusals or impede the use of electronic filing.  This in turn increases costs and increases pendency. 

The USPTO is proposing to lessen cumbersome requirements and reduce costs and pendency by recommending the following changes:

1.     Eliminate the requirement for signatures on trademark documents submitted to the USPTO.  Include a declaration that the owner has knowledge of the content of the application consistent with the Lanham Act verification requirements.

2.     Eliminate the requirement for appointment of a domestic representative and replace that requirement with a provision that by declining to appoint a domestic representative, a foreign applicant agrees to accept service by publication.

3.     Eliminate the requirement for submission of a certified copy of foreign registrations and provide that applicants may, instead, provide an uncertified copy or facsimile of the foreign registration.

In numbers 2 and 3 above, the requirement for appointment of a domestic representative for foreign applicants and the requirement for the submission of a certified copy of the foreign registration were eliminated through the "Technical Corrections in Trademark Law" enacted on November 2, 2002.

Amend the Rules of Practice to allow applicants to choose between three examination options: (1) file using paper, (2) file electronically; (3) file electronically complying with additional requirements that will provide for expedited registration of the trademark.

Applications filed through the "expedited" examination procedure, and those filed electronically, will have lower filing fees than those filed on paper.  Applications filed under Option 3 will be subject to the following requirements to be implemented through rule making:

1.     The applications, and all subsequent related communications must be submitted electronically;

2.     All fees must be submitted with the initial application;

3.     All requirements for a complete application must be submitted with the initial application;

4.     Descriptions of goods and/ or services must be derived from the U.S. Identification Manual; and

5.     All responses to office actions forwarded by the Office must be submitted within 60 days of date the electronic communication was forwarded.

Proof of Concept:

The USPTO will consult with user groups prior to establishing the requirements for filing an "expedited" application.

Timing:

·       Consult with the user community prior to establishing "expedited filing" requirements

·       Draft and publish Federal Register and Trademark Manual of Examining Procedure (TMEP) changes in fiscal year 2003

·       Implement on November 2, 2003 in conjunction with e-government initiatives and the implementation of the Madrid Protocol

Estimated Benefits:

·       Promotes electronic filing

·       Removes examination procedures that may result in extended pendency

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