Changes To U.S. Patent And Trademark Office Practice Under The Trademark Law Treaty
The United States signed the Trademark Law Treaty (TLT) on October 28, 1994. The TLT establishes uniform, formal requirements for trademark applications and registrations in member countries. It will enter into force three months after five states have deposited their instruments of ratification or accession. The U.S. Patent and Trademark Office has drafted implementing legislation and is expected to seek early transmittal of a request for the Senate's advice and consent to ratify the treaty.
Implementation of the TLT will not entail any major changes to the Lanham Act. However, several of the Trademark Rules of Practice will require amendment. Compliance with the TLT will require various changes to the U.S. Patent and Trademark Office automated system and to traditional office practice in the areas of powers of attorney, drawing requirements and recordation of changes of name and assignments. Although the United States could, by declaration, invoke certain of the transitional provisions of Article 22 of the TLT, any such declaration will lose its effect at the end of a period of six years from the date of entry into force of the TLT, or no later than October 28, 2004.
Set forth below is a chart of the expected changes to U.S. practice upon implementation of the Trademark Law Treaty.
|Applicant's representative is required to be a natural person.||Representative can be legal entity or partnership. Article 3(1)(a)(v).|
|Applicants are required to use color lining to claim substantive rights in the color of the mark.||No color lining requirement-USPTO will reproduce the marks in color. Article 3(1)(a)(x).|
|Single two-dimensional view of three dimensional marks.||USPTO may have to accept multiple, two dimensional views of three dimensional marks. Article 3(1)(a)(xi).|
|Bases for Registration|
|USPTO will not accept application based on both use [Section 1(a)] and Intent-to-Use [Section 1(b)]; Trademark Rule 2.33(d).||USPTO will change practice and accept use and ITU bases in same application. Article 3(1)(b).|
|USPTO requires signature of Applicant rather than Applicant's representative.||USPTO will accept application and declaration as two separate documents. Representative can sign former. Applicant must sign latter. Article 3(4).|
|USPTO requires certificate from appropriate authority for recordation of changes in corporate names and mergers.||USPTO cannot require certificate for recording name changes and mergers (see Article 10 and 11 below). Article 3(7).|
|Powers of Attorney|
|Powers of Attorney pertain to single application or single registration.||A single Power of Attorney may be filed to cover all existing and all future applications and registrations [Note Reservation Transitional Provision Article 22(2) under which USPTO may extend the present practice.] Article 4(3)(a).|
|General powers are given regarding practice before the office.||USPTO must accept powers limited to certain acts. Article 4(3)(c).|
|Filing Date Requirements|
|Drawings must be in black and white with color-coded lining or stippling.||USPTO will have to accept color drawings and be able to scan same. Article 5(1)(a)(iv).|
|For applications based on Section 44(e) of the Trademark Act, certified copy of the home country registration is required for receipt of a filing date.||USPTO will have to accord filing date without certified copy of home country registration. Article 5(1)(a). USPTO can ask for a certified copy during the examination stage.|
|USPTO presently returns applications that do not meet filing date requirements along with a deficiency notice.||USPTO could retain applications and issue deficiency notices with response times of not less than one month for domestic and two months for foreign applicants. A special fee may be charged for compliance. Article 5(3). Rule 5.|
|No request to divide an application is permitted after the date of expiration of the sixth month response period after issuance of a final action.||USPTO will have to allow division during any appeal proceeding, including cancellation or opposition proceeding appeals. Article 7(1)(a)(iii) and (iii).|
|USPTO does not specifically accept printed, stamped or auto-penned signatures.||USPTO can specifically authorize faxed, pinted, stamped or auto-penned signatures. Article 8(1)ii.|
|USPTO accepts notarized statement to support substitute specimens in lieu of declaration pursuant to Trademark Rule 2.20.||A possible change would disallow notarized statement as permissive alternative to declaration. Article 8(4).|
|Changes of Name|
|Recording changes of name requires certified true copy from appropriate authorities.||USPTO will have to accept form signed by holder or his representative. Articles 10(1) and 10(4).|
|Changes of Address|
|USPTO does not presently charge for changes of address.||USPTO could charge a fee. Article 10(1)(d).|
|Presently, owners file a request for each registration and application affected by a change of address.||USPTO will have to accept a single request for change of address for more than one registration and/or application. Article 10(1)(e).|
|The Assignments Branch only accepts original documents for recordation.||Certified copies or certified extracts from competent authorities will be accepted in the case of transfers by merger or, in the case of assignments by contract, an uncertified certificate of transfer or uncertified transfer document signed by both the holder and the new owner will be accepted. Articles 11(1)(b), (c) & (e).|
|The Assignments Branch does not currently accept changes in ownership regarding some of the goods in a registration.||USPTO must accept and record changes in ownership regarding some of the goods in a registration by creating a new separate registration referring to the goods and/or services in respect of which the ownership has changed. Article 11(1)(i).|
|The renewal grace period is presently three months; Section 9(a) of Trademark Act.||The renewal period runs from six months prior to the date when renewal is due and ends at the earliest six months after that date. Article 13(1)(i). Rule 8.|
|Trademark Act Section 9(a) requires a verified application and a specimen or facsimile that shows current use of the mark.||TLT specifically prohibits Contracting Parties from requiring the submissions of a declaration and/or evidence concerning use of the mark. Article 13(4)(iii). USPTO may invoke Transitional Provision Article 22(5).|
The procedural changes to U.S. trademark practice under the Trademark Law Treaty, when viewed individually, are not dramatic. The significance of the changes is in their overall simplification of procedural practices in the United States and, particularly, in the harmonization of these practices throughout the world.
P. Jay Hines
© 1995 Oblon, Spivak
Published in the INTA Bulletin June 1995.