Re: Changes in the Requirements for Amendment and Correction of Trademark Registrations
Published for Comment at 68 FR 70482 (December 18, 2003}

Dear Ms. Hannon,

This is in response to the request for comments concerning the proposed rule changes by the USPTO to 37 C.F.R. 2.174 and 2.175 to place a one-year time limit on correction of errors in a trademark registration.

Respectfully, I believe that, if such a change is made, then provision must be made for older, uncorrected registrations whose correction would be precluded immediately upon enactment of such a change in the rules.

I sympathize with inconvenience experienced by the Office in making corrections to registrations more than a year after the issuance of those registrations. Sadly, errors in trademark registrations are commonplace. Although I have not made a detailed tabulation, I would expect that about ten percent, and perhaps as high as twenty-five percent, of all trademark applications and registrations that our office sees processed by the Trademark Office and/or its Assignment Branch have errors of one sort or the other. On rare occasions, our firm's own staff has been known to make an error too, but not at the high rate that we see from the USPTO clerical staff. Correction of these errors can be costly for clients, especially when multiple attempts have to be made before the USPTO finally corrects the error(s) without introducing new errors in the process.

Some errors may not be immediately noticed either by the applicant/registrant- or by the IJSPTO, and may not be noticed, for example, until a subsequent Section 8 Declaration or section 9 renewal is processed. Other errors may not be deemed significant enough to warrant the expense of independent correction and the registrant may decide to wait until the next renewal to correct the errors, especially if past experience with attempted error correction has been less than positive.

For example, there may be simple and obvious typographical or transcription errors in the description of goods/services that are not deemed important enough to affect the enforceability of the registration. Likewise, there may be a simple typographical or transcription error in the name of the applicant/registrant, such as, for example, indicating that the entity is ABC Inc. rather than ABC Company, or ABC Inc. rather than ABC LLC. Or, the applicant/registrant may have inadvertently supplied, as the entity's name, the common name under which it does business rather than its precise legal name. All of these are examples of readily-correctable errors that might not be noticed by a casual examination of the registration and/or that might not be deemed significant enough to correct. See TMEP § l20l.02(c) (correctable errors in identification of the applicant.).

Such an error might be noticed for the first time when a Section 8 Declaration or Section 9 renewal is processed subsequent to issuance of the registration, and might be first noticed either by an overzealous trademark examiner who refuses entry of the Section 8 or Section 9 filing because the registrant's name does not EXACTLY match the name on record, or by a meticulous attorney or paralegal upon preparation, of the subsequent Section 8 or Section 9 filing, perhaps not even the same attorney or trademark examiner involved in prosecution of the original application that could have been filed perhaps 20 or more years prior.

It may be entirely reasonable to place a one-year time limit on correction of errors in newly-issued registrations, because applicants, registrants, and their attorneys will then be on notice of such a requirement and take appropriate precautions. But to impose such a requirement on older registrations, when that duty to closely examine the registration was not previously imposed and for which the applicants/registrants previously had a less harsh penalty for not noticing errors present in an issued registration, seems improper. Even if a year's grace period for correction were to be given such older registrations following this proposed change to the rules, such a grace period would not be a sufficient alternative because, as a practical matter, every attorney who has ever prosecuted a trademark matter before the USPTO would then be forced to review every single one of his/her closed files since the beginning of his/her practice to ensure that no error was present in any of those closed cases, and then attempt to locate and notify those former clients (a non-trivial task having high risk, high cost, and extremely low benefit) of the deadline for correcting a possibly-trivial and insignificant error.

Therefore, if the Office believes that such a one-year time limit is needed, then a more reasonable change to the rules would be to impose such a time limit only on registrations and renewals that are issued after the rules are changed so that prior registrations, issued without this time limit for correction, are not harshly penalized.

Respectfully submitted,

/Russell H. Walker/

Russell H. Walker
U.S.P.T.O. Registration No. 35,401
Walker, McKenzie & Walker, P.C.
6363 Poplar Ave., Suite 434
Memphis, Tennessee 38119-4896
Tel: 901-685-7428 Fax: 901-682-6488