Thilo C. Agthe Comments on Proposed New Rule 2.85(f)
Loyal TTABlog reader and reliable "Meet the Blogger" attendee Thilo C. Agthe has taken up my invitation to comment on the recently-proposed PTO rule changes. (See TTABlog posting here.) Thilo is a partner in the New York City firm of Wuersch & Gering LLP. His comment is reproduced below:
Even though my last name begins with "A," I have a comment regarding the second set of proposed rule changes:
Under the heading "Amendments to Classification," the PTO "proposes to redesignate § 2.85(g), which provides that classification schedules shall not limit or extend the applicant’s rights, as § 2.85(f), and amend it to note an exception that in section 66(a) applications, the scope of the identification of goods or services for purposes of permissible amendments is limited by the class, because the classification assigned by the IB cannot be changed. This is consistent with TMEP section 1402.07(a)."
This proposed amendment would have the effect of penalizing the applicant for mistakes in classification made by the IB and, therefore, is unfair to foreign applicants. Because foreign applicants often use and are permitted to use classification headings in their applications, it is not unusual that, upon amendment pursuant to an Office Action, it becomes apparent that the IB has misclassified the goods or services. In situations like this, the applicant is now in a position where he/she may not be able to list core goods in an application, even though he/she may have had no input into the decision the IB made with respect to classification. The proposed amendment may be consistent with TMEP section 1402.07(a), but I would submit that the result is inconsistent with the intent of the Madrid Protocol as well as the implementing legislation.
Rather than limiting the applicant in this manner, the Office should recognize that classification mistakes made by the IB should not be held against the applicant and that amendments should be permitted even if those amendments would not be classified in the same class under normal Office practice. TMEP Section 1402.07(a) should be changed to reflect this (I believe that this part of 1402.07(a) is inconsistent with the Madrid Protocol: "In §66(a) applications, the classification assigned by the IB cannot be changed, so the scope of the identification for purposes of permissible amendments is limited by the class.") I believe that the Office has overstepped its authority by imposing this limitation. As far as I can tell, nothing in the Madrid Protocol or in the implementing legislation authorizes the imposition of this limitation on foreign applicants.
I have run into this problem on a number of occasions and it is extremely frustrating to applicants when this happens. The IB determines the classification and there is nothing the applicant can do. If an applicant is within his/her rights when using very broad descriptions of goods or services, especially where this is permitted in the home country of the applicant, why should the applicant now be penalized in this manner when he/she attempts to extend the international registration to the US? It just doesn't make sense to me.
I am considering submitting a comment to the Office on this point.
Best regards from New York,
Thilo C. Agthe
Thank you, Thilo. I again invite others to send their comments to me.