Monday, December 22, 2008

PTO Publishes Summary of Rule Changes Effective January 16, 2009

On November 17, 2008, the PTO published a final rule entitled "Miscellaneous Changes to Trademark Rules of Practice," 73 F.R. 67759. (pdf here). These changes become effective on January 16, 2009. According to the PTO, "[t]he changes clarify certain requirements for applications, intent to use documents, amendments to classification, requests to divide, and Post Registration practice; modernize the language of the rules; and make other miscellaneous changes." For the most part, "the rule changes merely codify and clarify existing practice, as set forth in the Trademark Manual of Examining Procedure (TMEP)." The PTO has now published a "Summary of Miscellaneous Changes to Trademark Rules" (pdf here).

One controversial amendment appears in Rule 2.85(f), which states that:

Classification schedules shall not limit or extend the applicant’s rights, except that in a section 66(a) application, the scope of the identification of goods or services for purposes of permissible amendments (see § 2.71(a)) is limited by the class, pursuant to § 2.85(d).

Michael E. Hall (here) and Thilo Agathe (here) have criticized Rule 2.85(f) as being beyond the PTO's authority and not required by the provisions of the Madrid Protocol.

Text Copyright John L. Welch 2008.


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