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The May 30 public hearing was the final chance for anyone to have officially commented on the U.S. Patent and Trademark Office’s proposed changes to the rules regarding U.S. trademarks. Issued March 28 and expected to take effect Nov. 2, such changes primarily address the U.S. implementation of the Madrid Protocol, an international trademark treaty focused on simplifying international trademark registration and maintenance. But as illustrated by the concerns voiced at this public hearing, some changes will likely catch many people off guard because they will affect all U.S. trademark applications. At the hearing, Anne Chasser, the U.S. Patent and Trademark Office’s commissioner for trademarks, began by explaining that the U.S. PTO had received 14 written responses to its proposed rules, and that the hearing would comprise the oral presentations of three of those 14 parties: Sheldon Klein (for the American Intellectual Property Law Association); Albert Tramposch (of Burns, Doane, Swecker & Mathis); and Robert Sacoff (for the American Bar Association). No more than 20 people were in the audience. It is hard to know what to make of the minimal attendance and the fact that only 14 parties submitted comments on such significant changes to U.S. trademark law. Certainly the small number is due in large part to the U.S. PTO’s excellent job drafting the proposed rules. Others may have been content to hope their concerns would be voiced by the larger organizations such as the ABA or the AIPLA. But one cannot doubt that the lack of response indicates that many trademark owners and practitioners still do not know about, or fully understand, the U.S. accession to the Madrid Protocol. The Madrid Protocol provides a centralized process through which member countries can apply to the World Intellectual Property Organization’s International Bureau to register trademarks, and maintain trademark registrations, within other member countries. The U.S. is the 58th country to join the Madrid Protocol. Under the Madrid Protocol, a trademark owner can file an international application to obtain an international registration in designated member countries based on an application or registration in the owner’s country of origin. The owner can also file Requests for Extension of Protection to expand the international registration’s coverage to other member countries. This centralized process results in a single registration number, registration date and renewal date. It obviates the need for filing a separate application in each country, and renewals and changes in ownership can be recorded through a single entity. The international application also can be submitted in English with all of the relevant filing and registration fees paid upfront. Some of the concerns aired at the May 30 hearing related to the U.S. PTO’s proposed rules for U.S. implementation of the Madrid Protocol. For example, the comments included: • The U.S. PTO should lobby Congress to change the grace periods for maintaining U.S. extensions of international registrations to mirror the six-month grace periods permitted for U.S. registrations (because the U.S. Madrid Protocol Implementation Act permits only a three-month grace period for renewing U.S. extensions, and no grace period for filing Declarations of Use between the fifth and sixth anniversary of the U.S. extension). • Upon receipt of a Request for Extension of Protection to the U.S., the International Bureau should forward to the U.S. PTO a copy of the applicant’s verified statement in that request (to help potential opposers confirm whether the applicant had the requisite intent to use the mark in the U.S.). • The fees that the U.S. PTO proposes to charge for forwarding information to the International Bureau should not be so high (particularly because the transmissions will be done electronically). • When responding to the International Bureau through the U.S. PTO, the applicant should be encouraged to submit the response to the U.S. PTO only seven days before the International Bureau deadline (rather than the proposed recommendation of 30 days). • The U.S. PTO should lobby the International Bureau to accept electronic filings, to do away with the concept of “dependency” and “central attack” under the Madrid Protocol, and to permit applicants to designate a U.S. representative when filing a Request for Extension of Protection to the U.S. • Instead of stating that applicants may submit only JPEG images with the international application, the U.S. PTO should allow for the development of new technologies and expressly give itself the option of later permitting other formats. • The U.S. PTO should develop some way to reconcile minor differences in the owner and owner address information between the international application and the U.S. basic application or basic registration (to prevent refusals of the international application based on minor discrepancies). The concerns that the speakers repeated most, however, focused on proposed rules that would affect all U.S. applications, even those unrelated to the Madrid Protocol. Such comments included the following: • Rather than changing the rules to give applicants two months from the mailing of the Notice of Abandonment to file a Petition to Revive, the U.S. PTO should continue to permit applicants to file Petitions to Revive up to two months after the applicants’ actual knowledge of the abandonment (so as not to penalize applicants who did not timely receive a Notice of Abandonment). • Rather than changing the rules to permit only two requests for extension of time and a maximum of 120 days to oppose a U.S. application (regardless of whether the parties want to consent to further extensions), the U.S. PTO should continue to allow applicants an unlimited number of consented extensions for good cause in order to facilitate settlement prior to the filing of an opposition. • The U.S. PTO should clarify that the phrase “standard characters” will be used in place of the phrase “typed drawing” to refer to word marks that are filed in block letters so as to protect the mark in any stylization, size or color. • In a U.S. application seeking protection for the colors in the trademark, it should be unnecessary to require applicants to identify and describe the colors (because the colors will be evident given that the applicants will have to file such trademarks in color). • Instead of requiring applicants to submit Petitions to Revive abandoned applications and requests for post-publication changes of the U.S. filing basis to the Commissioner for Trademarks, such petitions and requests should be handled by examining attorneys (to help expedite handling). • The U.S. PTO should consider whether to continue its practice of narrowing applications’ descriptions of goods and services (because such narrowing gives European companies an unfair advantage by allowing them to more specifically determine what their U.S. competitors are doing). Again, it is likely that many of these changes will catch people by surprise, particularly those who may have thought the proposed rules related solely to the Madrid Protocol. Although the Madrid Protocol is to take effect in the U.S. in November, trademark owners and practitioners should meet now to discuss issues and ramifications and to develop clearance and registration strategies. Robert Burlingame is an associate in Pillsbury Winthrop’s ( www.pillsburywinthrop.com ) intellectual property group in San Francisco. He can be reached at [email protected] . For more information on this topic, see www.pillsburywinthrop.com/madrid/madrid_main.asp . If you are interested in submitting an article to law.com, please click here for our submission guidelines.

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