USPTO Issues Another Notice Regarding Its Failure to Notify WIPO in 42 More Section 66(a) Applications

On February 28, 2006, the USPTO again issued a Notice Regarding Certain Requests for Extension of Protection Under Trademark Act § 66(a) regarding its failure to provide timely notice to the International Bureau (IB) at WIPO under Section 68(c)(1)(C) of the Trademark Act. The PTO issued a nearly identical notice on November 7, 2005, reported here at the TTABlog. This February 28 Notice, however, adds the statement that "The USPTO has corrected the condition that resulted in a failure to send the notices. To ensure that this problem will not happen again, until further notice the USPTO will send both an electronic and a paper notice of possible opposition to the International Bureau."

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).

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.

The USPTO has corrected the condition that resulted in a failure to send the notices. To ensure that this problem will not happen again, until further notice the USPTO will send both an electronic and a paper notice of possible opposition to the International Bureau.

79001941	79002208	79002588	79003583
79002197	79002440	79002603	79002517
79002656	79002452	79002612	79002470
79002472	79002466	79002614	79003124
79002492	79002468	79002621	79000129
79002577	79002478	79002630	79001952
79002591	79002481	79002631	79002788
79002620	79002503	79003120	79003475
79002622	79002515	79003458	79002125
79002632	79002556	79003459
79003571	79002566	79003573

TTABlog note: For additional discussion of this problem, see the TTABlog posting of October 25, 2005 (here).

Text Copyright John L. Welch 2005-6.