May 27, 2003

The Honorable James E. Rogan
Under Secretary of Commerce for Intellectual Property
and Director of the U.S. Patent and Trademark Office
2900 Crystal Drive
Arlington, VA 22202

ATTN: Cheryl L. Black

Re: Notice of Proposed Rulemaking on Rules of Practice for Trademark Related Filings Under the Madrid Protocol Implementation Act, 68 Fed. Reg. 15119 (March 28, 2003)

Dear Director Rogan:

Intellectual Property Owners Association (IPO) appreciates this opportunity to comment on the rules for implementation of the Madrid Protocol. Comments on specific proposals in Part 2 rules and Part 7 rules are provided below, followed by a few additional comments.


Rule 2.47 Supplemental Register. The proposed policy of not making the Supplemental Register available to incoming Madrid applications does not seem to comport with the "same examination" standard. Section 44 applicants can amend to the Supplemental Register without demonstrating use, but Madrid applicants cannot. Most countries have abandoned two-part registers, but if the Supplemental Register option is available, then all applicants should be equally eligible.

Rule 2.66 Revival of abandoned applications. We believe the proposed two-month rule is too strict, particularly in situations where a notice of abandonment is not received promptly. IPO proposes that the "within two months of actual knowledge" standard of current Rule 2.66(a)(2) be retained, but IPO does not object to the new six-month due diligence standard of Rule 2.146.

Rule 2.101 Filing an opposition; Rule 2.111 Filing petition for cancellation. The Office should not automatically refuse to accept a timely electronically-filed opposition or cancellation when the required fees for each opposer or petitioner and each class are not paid upfront. Such a rule is not necessary to satisfy requirements under the legislation. An opposer or petitioner should be notified of the fee deficiency and provided a reasonable time period to rectify the matter.

Rule 2.102 Extension of time for filing an opposition. The limit of 120 days beyond the date of publication for extensions seems unnecessarily short, given that the Office has seven months from the beginning of the opposition period to notify WIPO of the grounds for refusal. Also, we do not believe the 120-day limit should apply to all oppositions. Since, under Rule 2.107, an opposer can amend its pleading if it is not opposing a Madrid application, we suggest having a different extension practice for Madrid applications. IPO proposes a 180-day limit that would apply only to Madrid applications.


Rule 7.11 Requirements for international applications originating from the United States. We believe there should be a means to reconcile discrepancies in the address of record and the current address. The same is true for the applicant name. IPO believes that applicants should be able to quickly correct any name or address discrepancies without jeopardizing timely certification of the international application and possible loss of Paris Convention priority claims.

Rule 7.13 Certification of international application. If an outgoing Madrid application does not contain all of elements of Rule 7.11, IPO believes the applicant should have some means of quickly and easily curing any defect.

Rule 7.14 Correcting irregularities in international applications. IPO believes the Office, after having certified the application, should, if requested, assist the international applicant in resolving classification or identification issues raised by WIPO.


The procedure for Madrid applicants to respond to Office actions would be streamlined if the Madrid applicant had the option of designating a U.S. representative at the time of filing its request for an extension of protection to the U.S. who would be notified in the event of a refusal. Significant time could be saved if communications did not have to go from the USPTO to WIPO to the applicant or its home country representative and then to the U.S. representative.

It would be useful for the USPTO to adopt a procedure permitting a U.S. applicant who submits an international application to the Office the option of including both a USPTO deposit account number (for USPTO-dollar fees) and a WIPO deposit account number (for WIPO Swiss franc fees). This would facilitate the payment of all fees and avoid problems resulting from currency conversions and any other unintentional underpayments.

The relationship of proposed Rule 2.17 and Rule 10.14(b) appears to need clarification. Proposed rule 7.36 contains outdated time and grace periods for Section 8, but IPO understands that the Office will make a correction before any Section 8 filings become due.

IPO looks forward to issuance of the final rules. We believe the Madrid Protocol will be an important benefit for members of our association.


John K. Williamson