Via Electronic Mail
madridrules.comments@uspto.gov

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

Intel Corporation offers its response to the March 28, 2003 notice of proposed rule-making concerning the implementation of the Madrid Protocol. Specifically, Intel responds to proposed rules §§ 2.66(a) and 2.102(c) as follows.

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. Intel strongly supports this proposed change as achieving the correct balance between (1) safeguarding the applicant from unintentional permanent abandonment of its application and (2) increasing the certainty of and trademark owners' reliance on U.S. search reports. While others may suggest a longer revival period, in Intel's view, two months appears to be more than enough time to allow for revival of unintentionally abandoned applications (given the common law firm practice of docketing deadlines, unintentional abandonment should occur only rarely in any event). Further, any increase of the revival period would significantly prejudice trademark owners who rely on the U.S. trademark database for accurate and timely information. For example, in its clearance efforts, Intel spends a large amount of resources investigating the owners of recently abandoned applications to confirm that the applicant has no interest in the mark applied for. Any revival period longer than two months would decrease our reliance on search results in relation to abandoned applications and substantially increase the time and money involved in investigating abandoned applications that might still be subject to revival.

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.

Intel understands that the impetus of this proposed rule is the PTO's need to conform to the time limits imposed by the Madrid Protocol, specifically that 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 the opposition. It is our further understanding that the TTAB has estimated that it will need one month to process paperwork and the PTO has estimated that it will need one additional month to organize and transmit documentation to WIPO, estimates which in our view appear more than adequate. Thus it appears that the PTO can provide potential opposers at least five months (or 150 days) in which to determine whether to oppose a Madrid application, rather than the 120 days provided for in the proposed rule. The addition of thirty days to this time period is very significant to Intel Corporation and other trademark owners, in that it will provide additional time to locate and investigate the applicant and to negotiate and reach a potential resolution, which typically requires several communications and can be a timely process. Further, if potential opposers such as Intel are granted this additional time and are able to resolve the issue within that time, this will obviate the need to file an opposition, and decrease the number of oppositions filed, resulting in less work for the TTAB.

Thus, Intel strongly recommends that the TTAB permit extensions for up to 150 days total (30 days of publication plus 120 days of extensions for good cause) to oppose applications based on the Madrid Protocol.

Sincerely,

Kelly W. Smith
Senior Trademark Attorney
Intel Corporation