May 22, 2003

Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202

Attention: Cheryl L. Black

Re: Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act

The International Trademark Association takes this opportunity to offer its response to the March 28, 2003 notice of proposed rulemaking concerning the implementation of the Madrid Protocol. INTA has long been a supporter of the Madrid Protocol and worked towards its passage in the United States Congress. We look forward to working with the PTO to implement the Madrid rules in anticipation of a November 2, 2003 start date for the treaty in the United States.

INTA supports the majority of the proposed rules changes as necessary to implement the Madrid Protocol. Those proposed rules for which we have either a question or comment are identified below.

PART 2 - RULES OF PRACTICE IN TRADEMARK CASES

Proposed § 2.34 (b)(2) and (b)(3)

INTA recommends that proposed § 2.34(b)(2) be amended by inserting the following underlined text:

Intent-to-use under section 1(b) of the Act. In an application under section 1(b) of the Act, the applicant must verify that it has a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application. If the verification is not filed with the initial application, the verified statement must allege that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application, as of the filing date of the application.

We recommend this change so that the second sentence of the proposed rule is phrased consistently with the first sentence.

Proposed § 2.34(b)(3) states: "A basis under section 66(a) of the Act cannot be combined with any other basis." We believe that this is an accurate statement, but we wish to verify our understanding that this does not preclude the use of Paris Convention priority under the Madrid System. As we understand, a priority claim under the Paris Convention would only be included as a part of a filing with the International Bureau and would therefore not be included as an additional basis for any filing in the PTO. Please confirm, however, that this proposed rule does not interfere with the ability to claim priority under the Paris Convention in a Madrid filing.

Proposed § 2.35(b)(2)

INTA recommends a change to the language of proposed § 2.35(b)(2) requiring applicants who wish to file a post-publication amendment to add or substitute the filing basis for Section 1 or 44 applications, to file a petition to the Director. That requirement adds unnecessary delay to the registration process, with little benefit, as such amendments do not typically change any substantive rights in a registration in relation to third parties, thus making the granting of the amendment virtually a matter of routine for the Director. Pursuant to the practice established in In re Monte Dei Maschi Di Siena, 34 USPQ2d 1415 (Comm'r Pats. 1995), petitions to add or substitute a filing basis are virtually always granted, making them little more than a time-consuming, pro forma exercise for both the PTO and the applicant. Because of this, INTA recommends providing the examining attorney with discretion to review such post-publication amendments, in order to reduce unnecessary delays and work for both the PTO and for the applicant.

INTA also recommends a change to the proposed language of § 2.35(b)(2) requiring applicants who wish to file a post-publication amendment to add or substitute the filing basis for Section 1 or 44 applications, to have all such amended applications re-published. If the amendment does not change the application's constructive first use date, re-publication does not seem necessary and will cause undue delay. We recognize that amendments to add a 1(a) filing basis to an application originally filed only on a Section 44 basis would need to be re-published. For this reason, INTA recommends permitting the trademark examining attorney reviewing an amendment to the basis to determine whether the nature of the particular amendment would change any constructive use priority so as to require republication.

In light of the two comments just conveyed, INTA recommends that § 2.35(b)(2) read:

After publication, an applicant may add or substitute a basis in an application that is not the subject of an inter partes proceeding before the Trademark Trial and Appeal Board. The trademark examining attorney shall review any such request, and if the request would change the use dates, or constructive use priority in the application, the trademark examining attorney shall require republication of the application. The amendment of an application that is the subject of an inter partes proceeding before the Board is governed by § 2.133(a).

The foregoing alternative provides the trademark examining attorney with jurisdiction over an application file involving a post-publication amendment to add or substitute a filing basis and also allows the trademark examining attorney to review whether or not the proposed change would change any constructive use dates as to require re-publication. This alternative approach would also require an amendment to § 2.84(a), to allow a trademark examining attorney to have jurisdiction over such applications after they are published. INTA's proposed § 2.84(a) would read:

The trademark examining attorney may exercise jurisdiction over an application up to the date the mark is published in the Official Gazette. After publication of an application under section 1(a), 44 or 66(a) of the Act, the trademark examining attorney shall exercise jurisdiction over the application for the purpose of reviewing an amendment of the application filing basis. After publication of an application under section 1(a), 44 or 66(a) of the Act, the trademark examining attorney may, with the permission of the Director, exercise jurisdiction over the application, for other purposes. After publication of an application under section 1(b) of the Act, the trademark examining attorney may exercise jurisdiction over the application after the issuance of the notice of allowance under section 13(b)(2) of the Act. After publication, and prior to issuance of a notice of allowance in an application under section 1(b), the trademark examining attorney may, with the permission of the Director, exercise jurisdiction over the application.

Proposed § 2.52 (a)(1)

Proposed § 2.52(a)(1) defines what constitutes a "standard character" drawing - "words, letters, numbers, or any combination thereof without claim to any particular font style" - and that a "standard character" application must include "a statement that the mark is in standard characters and no claim is made to any particular font style."

We recognize that this amendment is necessary to change the existing vernacular in the rules of "Typed Drawing" and "Special Form Drawing" to comport with the use of "Standard Character Drawing" and "Special Form Drawing" under the Madrid System. We agree with the goal of adopting a common set of definitions regarding drawing types in order to minimize potential confusion. This change in practice, however, leaves open for misunderstanding certain drawing elements, such as the use of capitalization.

For example, if an applicant would like to claim capitalization for its mark, under the current system, the applicant would be required to submit a special form drawing. Under the system contemplated by this proposed rule, however, we cannot determine with certainty whether the applicant wishing to claim capitalization as an element of its mark would be required to: (1) submit a special form drawing showing such capitalization, (2) submit a standard character drawing with no limiting statement regarding a particular font or (3) submit a standard character drawing and include a statement that a special font is claimed.

INTA understands that the PTO will be publishing a character set to clarify what may be included in a standard character drawing and when an applicant must include a claim to a particular font. We look forward to this publication being made available to practitioners as soon as possible.

Proposed § 2.53(c)

Proposed § 2.53(c) permits drawings to be submitted only in the .jpg format. Currently, the PTO accepts drawings in either .jpg or .gif formats, and the PTO also accepts assignments in .tif format. INTA believes multiple formats should be maintained. We also believe this rule should be amended to permit the PTO's acceptance of other drawing formats as they develop, to avoid the need for the PTO to engage in formal rulemaking simply to adopt new formats.

In considering this rule, INTA notes that the discussion of the change did not provide any reason for limiting the format to .jpg. Federal Register, March 28, 2003, p. 15124, col. 2. As the comments specifically mentioned that the permitted size of a drawing is dictated by international requirements, Id., the absence of such a justification for the limitation to .jpg formats suggests that the format is not dictated by international requirements.

Proposed § 2.66(a)

Proposed § 2.66(a) would require that an applicant file a petition to revive an application within two months of the mailing date of the notice of abandonment. INTA is concerned that the newly imposed time limit to file a petition to revive an abandoned application is too short, particularly given the high incidence of problems in receiving mail.

INTA instead proposes that the time period for filing a petition to revive an application coincide with the applicant's duty of diligence regarding that application (i.e., six months). This would remove any potential unfairness to an applicant who is regularly monitoring the status of an application, but who might not actually receive a notice of abandonment from the PTO, while at the same time achieving the PTO's worthy goal of cutting down on the number of late-filed petitions to revive. In addition, setting the time period for filing a petition to revive at six months would reduce the uncertainty faced by new applicants who are searching the PTO's records to determine whether there may be conflicts with prior-filed applications. Currently, such applicants face the potential risk of a six-month "reach back" for incoming applications claiming priority under the Paris Convention. Such applicants would face the same type of potential window regarding the re-instatement of abandoned applications. Thus, on the whole, permitting a six-month period for filing petitions to revive appears to strike an optimal balance between the interests of the applicant who would not otherwise learn of the status of their application, the PTO, and of new applicants relying on a search of PTO records for status information.

We therefore propose amending this rule as follows (change underlined):

An applicant may file a petition to revive an application abandoned because applicant did not timely respond to an Office action or notice of allowance, if the delay was unintentional. The applicant must file the petition either within two months of the mailing date of the notice of abandonment or within six months of the date the notice of abandonment is posted on the PTO's TARR database, whichever is later.

Proposed §§ 2.101 and 2.111

In the proposed rules, the filing of an opposition (§ 2.101) or cancellation (§2.111) proceeding with insufficient fees is treated differently for documents filed electronically and for those filed by paper. For example, proposed Rule 2.101(d)(2) indicates an opposition filed through ESTTA:

will not be accepted if it is accompanied by a fee that is insufficient to pay in full for each named party opposer to oppose the registration of a mark in each class specified in the opposition.

On the other hand, proposed § 2.101 (d)(3)(iii) indicates that an opposition by paper will be accepted, even if it does not contain sufficient fees to cover all classes being opposed or for any party opposers, but subject to certain rules regarding application of the fees as they relate to classes and party opposers. Proposed § 2.111 uses identical language.

INTA requests that the PTO explain the difference in the treatment of notices of opposition and petitions for cancellation with regard to insufficient fees depending on how the notice of opposition is filed. INTA asks that the PTO either amend these rules to allow for uniform treatment of notices of opposition or petitions for cancellation that are filed with insufficient fees, regardless of the manner in which they are filed, or implement a mechanism in ESTTA to ensure that all sufficient fees are paid as part of the filing of a notice of opposition or a petition for cancellation filed on ESTTA. For example, if two classes are being opposed but an opposer attempts to pay only one fee, the ESTTA system could reject the filing of the notice of opposition and advise the opposer that additional fees are needed to complete the filing process.

INTA fully supports the PTO's efforts to implement an e-government system, and we wish to avoid any discrepancies between the paper and electronic systems that might be perceived as "drawbacks" to users of the electronic system. In this connection, the PTO should seek to encourage broader use of ESTTA by ensuring that this system provides at least the same favorable aspects as the existing paper-based system. Opposers wishing to ensure that their oppositions will not be completely rejected should not be forced or encouraged to elect the paper-filing route because of its more flexible treatment of insufficient fees.

Proposed § 2.102(c)

Proposed § 2.102(c) provides that:

  • only two extensions of time may be filed;
  • the total time shall not be extended beyond 120 days from the date of publication (30 days of publication plus 90 days);
  • the first extension request must be for 30 days or 90 days, but a 90 day request must show good cause; and
  • a 30 day request may only be followed by 60 day request showing good cause.

INTA understands the PTO's need to conform to the strict time limits imposed by the Madrid Protocol, specifically that no more than seven months after the date of publication, the PTO must notify WIPO as to whether there will be an opposition and of the grounds for any such opposition. We also understand based on previous discussion with TTAB officials in 2000, that of these seven months, the TTAB would need a month at the end of the period to process paperwork and the PTO would also need a month to organize and transmit the documentation to WIPO. It appears that the proposed rule 2.102(c) is intended to reserve additional time to the TTAB, providing only four months in which a potential opposer must file a Notice of Opposition, and presumably reserving three months for the TTAB to process the appropriate paperwork and notify the International Bureau.

Unfortunately, based on our understanding of the Madrid Protocol, the PTO will not be able to reserve this additional time for processing purposes, and shortening the opposition period will therefore serve only to create an earlier deadline for both potential opposers and for the TTAB. Article 5(2)(c)(ii) of the Protocol states that the notification of grounds for an opposition must be made to the International Bureau "within a time limit of not more than seven months from the date on which the opposition period begins; if the opposition period expires before this time limit of seven months, the notification must be made within a time limit of one month from the expiry of the opposition period." (emphasis added). See also Lanham Act, § 68(c)(2). In effect, one month is the most time that the TTAB will be able to secure for purposes of processing notices of opposition against Madrid Protocol applications and notifying the International Bureau of grounds for opposition. The seven-month period is only available if the applicable opposition period lasts that long; if not, according to Article 5(2)(c)(ii), then a shorter time period of one month after the expiration of the opposition period applies. Therefore, by limiting the duration of the opposition period to 120 days from the date of publication, the proposed rule will have the effect of reducing the amount of time in which a potential opposer may seek to resolve a dispute without filing an opposition (thereby increasing the total number of oppositions filed and the concomitant workload on the TTAB) without gaining any additional time for the TTAB to discharge its obligation of providing notice to the International Bureau.

INTA therefore recommends that the TTAB permit extensions for up to 180 days total (30 days of publication plus 150 days of extensions). Extensions could be requested for 30, 60 or 90 days, but any extension request for more than 30 days would have to show good cause. Because trademark disputes involve a balancing of diverse commercial considerations, they often do not lend themselves to easy resolution. From the perspective of the potential opposer, the additional time may well be required in order to conduct an appropriate investigation, contact the applicant and negotiate a resolution, if possible, to avoid the necessity of filing a notice of opposition.

At the same time, providing flexibility as to the number of extensions of time to oppose and the duration of each extension permits the parties to seek to resolve disputes among themselves, based on their assessment of the complexity of each particular situation, and provides the benefit of not unduly delaying registration of an application by requiring fewer, longer extensions that may not be necessary in the circumstances.

The foregoing proposal will provide applicants and potential opposers with the maximum possible amount of time to seek to resolve disputes and thereby should reduce the overall number of oppositions that must be handled by the TTAB. At the same time, this proposal will provide the TTAB with the maximum time period that the Protocol will allow for processing oppositions and sending notice to the International Bureau (i.e., thirty days).

In order to accomplish this change, we propose Rule 2.102(c) read as follows:

The time for filing an opposition shall not be extended beyond 180 days from the date of publication. A request to extend the time for filing an opposition must be filed in the Office and addressed to the Trademark Trial and Appeal Board. A request to extend the time for filing an opposition may request an extension of an additional thirty, sixty or ninety days; provided, however, that any request for more than thirty days must demonstrate good cause. If a potential opposer does not show good cause, the Board will treat the request as a request for extension of time for thirty days. The first request for extension of time to file a notice of opposition must be filed before thirty days have expired from the date of publication. Any subsequent request for extension of time to file a notice of opposition must be filed before the expiration of the last-granted request; provided, however, that extensions of time to file an opposition aggregating more than 120 days from the date of publication of the application will not be granted except upon (1) a written consent or stipulation signed by the applicant or its authorized representative, or (2) a written request by the potential opposer or its authorized representative stating that the applicant or its authorized representative has consented to the request, or (3) a showing of extraordinary circumstances.

Proposed §§ 2.105, 2.113(a), and 2.118

All three proposed rules involve the procedures followed by the PTO in contacting applicants, registrants, or their representatives.

  • § 2.105 - The TTAB shall forward a copy of the notification of opposition to the opposer's attorney, or other authorized representative (if any), or its domestic representative (if any), or to the opposer, and to the applicant's attorney, other authorized representative, or domestic representative (if any), or to the applicant.
  • § 2.113(a) - Notification of cancellation proceedings shall be forwarded to petitioner's attorney, domestic representative (if any) or to petitioner, and to the respondent.
  • § 2.118- Additional notice may be given by publication in the Official Gazette if notice sent by Office is returned undelivered.

INTA believes that the PTO should in the first instance always be communicating with the correspondent of record. The PTO's electronic system currently allows for easy updating of this contact, and the correspondent of record is therefore the most likely of the various contact addresses in a file wrapper to be current and up-to-date. The proposed changes, because they are phrased in the alternative and do not specify a clear order for contact attempts if the first attempt at sending a notice is unsuccessful, do not provide the PTO with clear-cut guidelines with regard to whom it should send notices and correspondence.

Therefore, INTA recommends that these rules be rewritten to indicate that the PTO will send all notices and communications in all circumstances to the correspondent of record. If returned as undeliverable, the PTO should then attempt delivery to the applicant or registrant, if domiciled in the United States or, if not, to the domestic representative, if any, and if different from the current correspondent of record. If still undeliverable, notice by publication in the Official Gazette would be appropriate.

Proposed § 2.127(a)

Proposed § 2.217(a) states: "The Board may, in its discretion, consider a reply brief." INTA recommends that this proposed rule be amended to indicate that a reply brief, if any, shall be filed within ten days from the date of service of a brief in response to the motion.

Reply briefs are consistent with motion practice under the Federal Rules. In current practice before the Board, reply briefs often are filed, and the discretionary nature of such briefs can lead to considerable unfairness and uncertainly. Particularly to the extent that the rationale supporting reply briefs is to permit the moving party to fairly address new issues raised by the non-moving party, fairness and common practice should give parties a right to file such briefs.

Because the Board must, under current practice, review a reply brief in order to determine whether to exercise its discretion to consider the brief, allowing for consideration of reply briefs under the rules should not substantially increase the workload imposed on the Board. In addition, the Board would in all circumstances retain discretion to determine how much weight to give to a particular reply brief.


PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE MADRID PROTOCOL

Proposed § 7.26(a)

INTA recommends that proposed § 7.26(a) be amended by inserting the following underlined text:

If a request for extension of protection of an international registration to the United States is made in an international application and the request includes a declaration of a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application, the filing date of the extension of protection to the United States is the international registration date.

We recommend this change so that this provision is phrased consistently with our recommended changes to proposed § 2.34(b)(2).

Proposed § 7.36(b)

Proposed § 7.36(b) requires a holder of an international registration with a registered extension of protection to the United States to file an affidavit or declaration of use in commerce or excusable nonuse during the following time periods: (1) between the fifth and sixth year after registration; and (2) within the six-month period before the end of every ten-year period after the date of registration, or upon payment of a grace period surcharge, within the three-month grace period immediately following. The time period for filing this §71 affidavit differs from the time period for filing a similar §8 affidavit. This discrepancy could lead to unnecessary confusion and could create the potential for missed deadlines.

INTA therefore recommends that the time periods for a Lanham Act § 71 affidavit be amended to correspond with the time periods for filing a Lanham Act § 8 affidavit; that is, that the six-year § 71 should be filed not only between the fifth and sixth anniversaries of the date of registration but also within a six-month grace period following the sixth anniversary of the date of registration. The 10-year § 71 should be permitted to be filed within one year preceding the end of the 10-year period and for six months after the end of the 10-year period. INTA believes that harmonization between the Madrid procedures and those for domestic applications is more agreeable for both the PTO and trademark applicants. INTA acknowledges that its recommendation would require a legislative change, as the current time periods in proposed § 7.36(b) track the requirements of the Madrid Protocol Implementation Act. We look forward to working with the PTO to pass an appropriate legislative fix.

Further Proposal - Appointment of Local Attorney in REP Filings

In addition to the changes set forth in the proposed rulemaking, INTA recommends that the USPTO provide a procedure for filing a power of attorney or other appointment of a local representative directly with the PTO relating to a request for extension of protection received by the PTO. Preferably, this would be an electronic form available as a part of the TEAS system. The ability to appoint a U.S. attorney would help to eliminate the inherent delays in communication that would result from the PTO sending an office action relating to a request for extension of protection first to the International Bureau, the IB then forwarding the office action to the applicant, and the applicant subsequently having to appoint U.S. counsel to prepare and file a response. We understand that the PTO will need to continue to send office actions and other refusals to the International Bureau but, because Madrid applications will be handled electronically, we believe that providing an additional notice of office actions or refusals directly to a local attorney who is the correspondent of record in an REP would not create an undue burden on the PTO.

Providing a mechanism to submit an appointment of local counsel appears to also be consistent with proposed § 2.17, which contemplates such filings. Further, allowing for such appointments to be filed would provide the PTO with additional certainty as to communications.

CONCLUSION

Thank you for the opportunity to submit comments on the proposed rules for the implementation of the Madrid Protocol. In conclusion, we urge the PTO to remain in close contact with the State Department, notifying that agency of its readiness to implement the Madrid Protocol so that the instrument of ratification can be deposited in time for the PTO to begin Madrid operations on November 2, 2003.

Should the PTO have any questions or comments concerning the INTA response, please contact Mike Heltzer, INTA External Relations Manager, at (212) 642-1741.

Sincerely,
Kathryn Barrett Park
President