Comments to Proposed Amendments of Trademark Rules of Practice to Implement
Madrid Protocol Legislation
Sec. 2.102(c) Extension
of time for filing an opposition.
The restriction of extensions of an opposition period to no more than
120 days from the date of publication should apply only to applications
filed under Section 66(a) of the Act. Though it may be necessary for such
applications, the proposed rule is counterproductive as to applications
not filed under Section 66(a). The filing of numerous oppositions, with
their attendant burdens on the TTAB, are avoided by settlement negotiations.
Such negotiations would often extend beyond the contemplated 120 day cutoff
period. The resultant filing of an opposition, caused by the proposed
amendment, could militate against an amicable resolution.
The PTO's current practice should be continued as to applications not
filed under Section 66(a), subject to the requirement that the parties
submit with each post-120 day request for extension an explanation of
the progress made in their settlement negotiations.
Sec. 2.146 Petitions to the Director.
For the reasons discussed below, we believe that the PTO should not amend
Rule 2.146(i) to shorten the current time period for checking the status
of pending matters from one year to six months, to show due diligence
for petitions to reactivate.
(1) The proposed amendment would unduly prejudice owners of vested registration
rights or constructive use application filing dates. The PTO's reliance
on the possible harm to third parties is misplaced. It emphasizes the
speculative over the real. The trademark owner's current registration
or constructive use rights are real, and the forfeiture that may result
from the amended requirements is real. The possible harm to third parties
is speculative. Moreover, third parties can usually ascertain through
investigation whether the supposed abandoned mark is in use. The vested
rights of a registrant or applicant adversely affected by a PTO's loss
of a file should not be subordinated to those of a third party newcomer
who pursues an application or commences use without investigating whether
the prior mark was still in use.
(2) The proposed amendment penalizes the owner of an application or registration
for a problem essentially created by the PTO's having lost or mislaid
a timely filed document. The PTO could largely minimize the speculative
harm to third parties by adopting and implementing stricter procedures
governing its receipt, database entry and movement, and tracking of files.
(3) The proposed amendment imposes additional burdens on owners of applications/registrations,
particularly corporate owners with large portfolios, at a time when they
will be otherwise busy familiarizing themselves with the new substantive
and procedural practices under the Madrid Protocol Legislation.
von Maltitz, Derenberg, Kunin
Janssen & Giordano
60 East 42nd Street
New York, NY 10165
Tel: (212) 661-140
Fax: (212) 370-1819