January 29, 2004

Commissioner for Trademarks
2900 Crystal Drive
Arlington, VA 22202-3514

Attention: Mary Hannon

Dear Ms. Hannon:

The International Trademark Association, the largest organization in the world dedicated solely to the interests of trademark owners, takes this opportunity to offer its response to the December 18, 2003 notice of proposed rule making concerning changes in the requirements for amendment and correction of trademark registrations.

INTA supports the change that would eliminate the requirement that a request for amendment or correction of a registration be accompanied by the original certificate or a certified copy thereof, and the requirement that an application to surrender a registration for cancellation be accompanied by the original certificate or a certified copy.

INTA opposes, however, the proposed addition of a requirement that a request for correction of a mistake in a registration, whether made by the USPTO or the registrant, be filed within one year of the date of registration. Although INTA shares the USPTO's interest in providing certainty and reliability to the public and to examining attorneys, INTA believes that the proposed amendments to Sections 2.174 and 2.175 regarding a one-year time limit are not consistent with the requirements of Section 7 of the Lanham Act and, in any event, do not serve the best interests of the public in having access to the most accurate information available.

Sections 7(g) and 7(h) of the Lanham Act deal with the correction of errors in certificates of registration arising from mistakes by the USPTO and by applicants, respectively. Neither of these statutory provisions contains any reference to a time limit for correcting the office's records. For example, Section 7(g), dealing with mistakes arising from USPTO error, provides that "[w]henever a material mistake in a registration, incurred through the fault of the Patent & Trademark Office, is clearly disclosed by the records of the Office a certificate stating the fact and the nature of such mistake, shall be issued." (15 U.S.C. § 1057(g) emphasis added). The clear intent of these Lanham Act provisions is to ensure that the office's records are accurate, irrespective of when the error is discovered. The imposition of a time limit for correcting errors in a certificate of registration does not comport with the requirements of the Lanham Act.

Further, while INTA recognizes the potential prejudice to examining attorneys and to third parties that might arise when a mistake is corrected after an examining attorney or third party has relied on incorrect or mistaken information, we believe that any such prejudice is outweighed by the interest of the public and of future examining attorneys in having access to accurate information. Indeed, permitting mistaken information to remain on the office's records would only compound the potential for prejudice.

It is unfortunate that third parties might rely on mistaken information in the office's records when making their own decisions on the adoption or registration of trademarks. Refusing to correct such mistaken information after a one-year period, however, only increases the number of third parties who might potentially make such decisions based on inaccurate information.

In our common law system, an applicant who is unable to correct an error in the office's records after a one-year period would nevertheless be able to assert common law rights against third parties who file applications or adopt marks in reliance on their search of the office's records. Thus, the proposed one-year time limit would not assist third parties who might be prejudiced by errors in the office's records and could, by failing to alert future searchers as to the actual scope of an applicant's trademark rights, subject future searchers to unnecessary liability. As discussed above, such a limitation would only serve to increase the potential pool of such third parties.

INTA agrees that applicants should be encouraged to carefully review notices of publication, notices of allowance and certificates of registration to ensure that the data is correct. INTA also encourages applicants to correct any discrepancies at the earliest possible time. INTA recognizes, however, that trademark owners frequently acquire trademarks or interests in trademarks through purchase transactions, mergers, licenses or other transactions. In these situations, the new owner may discover an error in a registration certificate years after the date of initial registration. Other types of errors, such as minor discrepancies in the corporate name of an applicant, or in the applicant's state of incorporation, may only come to light when the applicant files a maintenance affidavit. Denying trademark owners the ability to correct such errors could lead to the loss of substantive trademark rights, as trademark owners would be forced to file new applications, rather than maintain the priority of their existing registrations.

Finally, the public at large has an important interest in having access to accurate information on the USPTO's records. Imposing a one-year time limit on the correction of errors does not advance this interest.

INTA appreciates the opportunity to provide comments on the proposed rules changes. Questions concerning INTA's position can be directed to Mike Heltzer, the INTA External Relations Manager, at mheltzer@inta.org.

Sincerely,

Jacqueline A. Leimer
President