January 13, 2004

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

Attn. Mary Hannon

Re: Changes in the Requirements for Amendment and Correction of Trademark Registrations (Docket No. 2003-T-023)

Dear Ms. Hannon:

While I sympathize with the sentiment that certificates of registration should be checked to ensure that the data is correct, I have a situation right now that shows why a strict rule prohibiting changes to the registration data after one year may be unwise.

A trademark was registered in 1998 and the certificate of registration was error-free. In 2003, the owner began work to file an Affidavit of Use under Section 8. In connection with that, a check of the TESS database was done. Much to our surprise, we found that the data in TESS and TARR (and in TrademarkScan for that matter) did not match the data on the certificate. In particular, the goods were completely different. It is still unclear how this happened.

When I asked the Trademark Assistance Center what to do about this, they replied that I had to file a formal request for correction of the registration under Section 7. However, if the rule proposed by the PTO were in effect, I would now be precluded from doing that and we would not be able to maintain the registration.

Clearly this is an unusual case. In fact, in my 20 years of practice I have never seen this happen before. But I hope that there is some wiggle room in the proposed rule for cases where the error is in the PTO databases and not in the certificate of registration.

Very truly yours,

Frank Terranella
ABELMAN, FRAYNE & SCHWAB
Attorneys at Law
150 East 42nd Street
New York, New York 10017-5612
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Telephone: (212) 949-9022
Facsimile: (212) 949-9190
Writer's email: fterranella@lawabel.com