PTO Issues Notice Regarding Its Failure to Notify WIPO in Certain Section 66(a) Applications
As reported at the TTABlog here on October 25, 2005, the TTAB was recently forced to dismiss at least five Section 66(a) oppositions because the PTO had failed to provide timely notice to the International Bureau (IB) at WIPO under Section 68(c)(1)(C) of the Trademark Act. In that regard, on November 7, 2005, the USPTO issued the following "Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a):"
Pursuant to Trademark Act § 68(c)(1), 15 U.S.C. § 1141h(c)(1), the USPTO must, within 18 months of the date a request for extension of protection is transmitted to the USPTO, send to the International Bureau of the World Intellectual Property Organization notice of: (A) a refusal of registration based on examination of the request; (B) an opposition to registration; or (C) the possibility that an opposition may be filed after the conclusion of the 18-month period. If a notice under either subsection (B) or (C) is not sent within the 18-month period, the Trademark Trial and Appeal Board may not entertain an opposition to registration, and “the Director shall issue a certificate of extension of protection pursuant to the request.” Trademark Act § 68(c)(4), 15 U.S.C. § 1141h(d)(4).TTABlog comment: It is reported on the "Madrid list serve" that the PTO has promised to refund any opposition filing fees expended with regard to these Section 66(a) applications.
The notice required under § 68(c)(1)(C), 15 U.S.C. § 1141h(c)(1)(C), was inadvertently not sent with respect to a number of requests for extension of protection, which are listed below by serial number. Because in each case more than 18 months has passed since transmission of the request for extension of protection to the USPTO, no opposition or extension of time to oppose may be considered, and if filed, will be dismissed. The USPTO will promptly issue a certificate of protection with respect to the listed requests.
Affected parties are not precluded from filing a petition for cancellation of the certificate of protection, if otherwise appropriate.
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BTW: The Madrid list serve is another valuable creation of Oppedahl & Larson LLP, whose website at www.patents.com provides a wealth of information regarding the Madrid Protocol. To join the Madrid list serve: "send email to email@example.com and in the body of the message, say 'subscribe madrid Homer Simpson,' using your name rather than Homer Simpson's. To post a message, send email to firstname.lastname@example.org."
Text Copyright John L. Welch 2005.