USPTO proposes revisions to clarify Trademark Rules of Practice

The US Patent and Trademark Office (USPTO) has issued two sets of proposed revisions to the Trademark Rules of Practice.  
The first set of rules is entitled "Changes in requirements for signature of documents, recognition of representatives, and establishing and changing the correspondence address in trademark cases". Although the proposed rules do not appear to present any significant departures from existing practice, one minor revision is noteworthy. According to the proposed rules, an amendment or correction of an error in a registration must be filed and signed by:
  • its owner;
  • someone with legal authority to bind the owner (eg, a corporate officer or general partner of a partnership); or
  • a qualified practitioner. 
Current practice permits anyone with first-hand knowledge of the facts and actual or implied authority to act on behalf of the owner to sign these documents. This could conceivably include someone with no legal authority to bind the owner. The USPTO believes:
"that the better practice would be to require that requests to amend or correct a registration be signed by someone with legal authority to bind the owner or by a qualified practitioner."
The second set of proposed rules, entitled "Miscellaneous changes to Trademark Rules of Practice", seeks to clarify certain requirements for new applications, intent-to-use documents, amendments to classification, requests to divide and post-registration practice. It also attempts to modernize the language of the rules and make other miscellaneous changes. While the rules generally confirm existing practice, a few subtle changes are as follows:
  • Use-based applications - the applicant need no longer claim that a mark has been in lawful use in commerce. The USPTO will presume that an applicant who has alleged that "the mark is used in commerce" is claiming lawful use. For marks without colour, the rule that a drawing "must" appear in black on a white background has been liberalized to "should" appear. This would permit an examining attorney to accept a drawing of a mark in white on a black background if it provides a more accurate depiction. The proposed rules would also limit the types of applications that could be amended to seek concurrent use registration to those claiming Section 1(a) of the Lanham Act as a filing basis. The previous rules permitted such an amendment in Section 44 or Section 66(a) applications, even where there was no allegation of use of the mark in commerce. The proposed rules also provide that applications based solely on Sections 44 and 66(a) are not subject to concurrent use proceedings.
  • Intent-to-use applications - the proposed rules provide that both amendments to allege use and statements of use should now be captioned 'allegations of use'. However, the USPTO will still accept documents entitled 'amendment to allege use' or 'statement of use'. As for the content of statements of use, the USPTO will no longer inquire as to discrepancies between the goods and services recited in the statement of use and those listed in the application. Instead, the applicant will be responsible for setting forth the proper goods and services and the examiner will not be permitted to reinsert omitted goods or services.
  • Madrid Protocol applications - generally, all changes to international registrations must be filed with the International Bureau of the World Intellectual Property Organization. The proposed rules would permit an applicant who makes a mistake in a document filed during the prosecution before the USPTO - one that affects only the extension of protection in the United States - to request correction of the error. If granted, the USPTO will notify the International Bureau of the change to the extension of protection to the United States.
  • Assignment cover sheet - the proposed rules make mandatory the requirement that a request to record a change of ownership of a trademark application or registration must include the citizenship of the party receiving the interest. If that party is a domestic partnership or joint venture, it must include the names, legal entities and citizenship of all general partners or active members that compose the partnership or joint venture. This requirement was optional under the previous rules.            
The USPTO has sought public comment before implementing the proposed rules. Comments must be received by August 11 2008 to ensure consideration.
Henry W Huffnagle, Arent Fox LLP, Washington DC

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