USPTO Proposes to Remove Certain Rules Governing Trademark Interference Proceedings

The USPTO has issued a Notice of Proposed Rulemaking (here) that would streamline the Trademark Rules of Practice by removing certain regulations concerning trademark interferences. The proposed action is consistent with Executive Order 13777, "Enforcing the Regulatory Reform Agenda," and Executive Order 13771, "Reducing Regulation and Controlling Regulatory Costs."

A trademark interference is a proceeding in which the TTAB "determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more conflicting registrations) is entitled to registration." 15 U.S.C. 1066. A trademark interference may be declared only upon petition to the Director of the USPTO. The Director will grant such a petition only if the petitioner can show extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 37 CFR 2.91(a).

"The availability of an opposition or cancellation proceeding to determine rights to registration ordinarily precludes the possibility of such undue prejudice to a party. Thus, a petitioner must show that there is some extraordinary circumstance that would make the remedy of opposition or cancellation inadequate or prejudicial to the party's rights."

"[S]ince 1983, the USPTO has received an average of approximately 1 such petition a year, and almost all of them have been denied except for three petitions that were granted in 1985 (32 years ago)."

"Trademark interferences have generally been limited to situations where a party would otherwise be required to engage in successive or a series of opposition or cancellation proceedings involving substantially the same issues."

The statutory authority for declaring an interference will remain. (Section 16 of the Trademark Act). "In the unlikely event that a need for an interference arose, it would still be possible for a party to seek institution of a trademark interference by petitioning the Director under 37 CFR 2.146(a)(4)."

Written comments must be received on or before November 17, 2017.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.