Tuesday, December 04, 2007

Commissioner Beresford Reviews Pending PTO Rulemaking Matters

At IPO's PTO Day Seminar held yesterday in Washington, D.C., Commissioner for Trademarks Lynne G. Beresford related the following impressive statistics regarding the PTO's Trademark Operations: In FY 2007, nearly 300,000 applications were filed, for a total of nearly 400,000 classes. That is an increase of 11.2% over the prior year. More than 95% of applications are now filed electronically. The average pendency before a first office action is 2.9 months. The quality rate (i.e., the error-free rate) for first office actions was 95.9% and for final actions 97.4%.

The Commissioner also reported on the status of several current and future rulemaking and legislative matters:

Requests for Reconsideration: In February 2007, the PTO proposed to reduce the time period for filing a request for reconsideration of a PTO final refusal from 6 months to 3 months, and to require that the request be filed electronically. (See TTABlog posting here). The comments received by the PTO were "very negative," particularly regarding the 3-month deadline. Consequently, the PTO will be issuing a new notice of proposed rulemaking, in which the request for reconsideration may be filed electronically or on paper, but with the paper filing requiring payment of a fee. The 6-month deadline will remain unchanged.

Description of the Mark: The comment period expires on December 24th for the proposed rule that would require the applicant to describe its mark in all applications other than those for standard character marks. (See TTABlog posting here). This proposed change was mainly intended to help the PTO coders to assign an appropriate design code or codes to the mark.

Registration Certificates: The PTO is planning to propose the automatic printing of registration certificates. Applicants/Registrants will be able to request a printed certificate, but probably for a fee. Concomitantly, the application filing fee may be lowered, in light of the reduced cost to the PTO resulting from not having to print the certificate. Commissioner Beresford said that the Trademark Public Advisory Committee reacted with "horrified silence" to the proposal to eliminate printed certificates.

Letters of Protest: A lowering of the standard for acceptance of letters of protest prior to publication is in the works. The PTO will go back to the old standard: if the letter makes a prima facie case and if the subject matter is appropriate (e.g., mere descriptiveness or genericness), the evidence (but not the letter) will be forwarded to the Examining Attorney. This will replace the "clear error" standard and the companion requirement that the Examining Attorney enter the refusal if the letter of protest is accepted. The higher standard will remain in effect for post-publication letters of protest. (See 2005 TTABlog posting here, and see TMEP Section 1715 (here)).

Madrid Protocol Corrections: The PTO is working on legislation to correct Section 71 of the Trademark Act, which deals with the filing deadlines for Section 8 declarations and renewals for extensions of protection granted under the Madrid Protocol. Section 71 still conforms to the old statutory provisions and not the statute as amended in 1999 by the Trademark Law Treaty Implementation Act.

Text Copyright John L. Welch 2007.


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