Subject: Comments to Proposed Amendments of Trademark Rules of Practice to Implement Madrid Protocol Legislation

Sec. 2.102(c) Extension of time for filing an opposition.

The restriction of extensions of an opposition period to no more than 120 days from the date of publication should apply only to applications filed under Section 66(a) of the Act. Though it may be necessary for such applications, the proposed rule is counterproductive as to applications not filed under Section 66(a). The filing of numerous oppositions, with their attendant burdens on the TTAB, are avoided by settlement negotiations. Such negotiations would often extend beyond the contemplated 120 day cutoff period. The resultant filing of an opposition, caused by the proposed amendment, could militate against an amicable resolution.

The PTO's current practice should be continued as to applications not filed under Section 66(a), subject to the requirement that the parties submit with each post-120 day request for extension an explanation of the progress made in their settlement negotiations.

Sec. 2.146 Petitions to the Director.

For the reasons discussed below, we believe that the PTO should not amend Rule 2.146(i) to shorten the current time period for checking the status of pending matters from one year to six months, to show due diligence for petitions to reactivate.

(1) The proposed amendment would unduly prejudice owners of vested registration rights or constructive use application filing dates. The PTO's reliance on the possible harm to third parties is misplaced. It emphasizes the speculative over the real. The trademark owner's current registration or constructive use rights are real, and the forfeiture that may result from the amended requirements is real. The possible harm to third parties is speculative. Moreover, third parties can usually ascertain through investigation whether the supposed abandoned mark is in use. The vested rights of a registrant or applicant adversely affected by a PTO's loss of a file should not be subordinated to those of a third party newcomer who pursues an application or commences use without investigating whether the prior mark was still in use.

(2) The proposed amendment penalizes the owner of an application or registration for a problem essentially created by the PTO's having lost or mislaid a timely filed document. The PTO could largely minimize the speculative harm to third parties by adopting and implementing stricter procedures governing its receipt, database entry and movement, and tracking of files.

(3) The proposed amendment imposes additional burdens on owners of applications/registrations, particularly corporate owners with large portfolios, at a time when they will be otherwise busy familiarizing themselves with the new substantive and procedural practices under the Madrid Protocol Legislation.

Respectfully submitted,

V.T. Giordano
von Maltitz, Derenberg, Kunin
Janssen & Giordano
60 East 42nd Street
New York, NY 10165

Tel: (212) 661-140
Fax: (212) 370-1819