By Ivy Clarice Celestial Estoesta, Esq.

Earlier this year, the U.S. Patent and Trademark Office (USPTO) proposed to amend the Trademark Rules of practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and the rules related to collective marks and certification marks.  In general, the proposed changes will codify current practice set forth in the USPTO’s Trademark Manual of Examining Procedure and procedural case law. To view a detailed account of the proposed amendments, please visit the USPTO’s Trademark Federal Register Notices and Comments 2014 webpage (http://www.uspto.gov/trademarks/law/rules.jsp).

Proposed changes to the Trademark Rules of Practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks

The USPTO has proposed to revise the rules in parts 2, 6, and 7 of 37 CFR in order to streamline the process for filing, prosecuting and maintaining U.S. trademark and service mark applications and international trademark and service mark applications. Although the majority of comments submitted by the trademark community show overall support for the proposed changes, some comments raise issue with the proposed rules’ potential effects on the process of filing a response to Office actions issued in U.S. trademark and service mark applications and the process for recording an assignment in an international application.

Regarding the proposed changes to the Trademark Rules of Practice, one commentator, for example, points out that the time period to respond to an Office action is inconsistently worded in proposed Rules 2.63(a)(2) and 2.63(c).  Specifically, proposed Rule 2.63(a)(2) states that “the applicant shall have until six months from the date of the Office Action…to comply,” while proposed Rule 2.63(c) states that “the applicant will have until six months from the date of the issuance of the Office action…to comply with the requirement.” The commentator has therefore requested that both Rules be consistently worded to avoid potential confusion as to duration of the response period. Relatedly, the International Trademark Association (INTA) has raised its concern that proposed Rule 2.62, which prohibits email responses to Office actions, may affect the USPTO’s current practice of encouraging information (usually email) communication between examining attorneys and applicants (or their representatives) to resolve issues via Examiner’s Amendment, when possible.

Regarding the proposed changes to the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, INTA’s comments regarding the proposed revisions to Rule 7.23 are most notable.  Rule 7.23 governs request for recording assignments at the International Bureau. According to INTA, the proposed revisions do not remedy the present rule’s limitations on transferring ownership of international registrations that are not based on a U.S. application or registration and that do not designate the U.S. Additionally INTA thinks that the good faith effort requirement for recording assignments under proposed Rule 7.23(a)(5) does not contemplate changes in ownership resulting from inheritance, judicial decision, or mergers.  INTA similarly questions the need for proposed Rule 7.23(a)(6), which INTA believes is redundant with current Rule 7.23(a)(4).  Thus, INTA has suggested revisiting Rule 7.23 in general and at the least, expunging proposed Rule 7.23(a)(6).

The deadline to submit comments to the USPTO was April 23, 2014, and it how the USPTO will address the substantive issues that have been raised, particularly with regard to Rule 7.23. Nevertheless, it appears that most of the proposed amendments to the Trademark Rules of practice and the Rules of Practice in Filings Pursuant to the Protocol Relating to the Madrid Agreement will likely be adopted.

Proposed changes to the rules related to collective and certification marks

A collective trademark or collective service mark is used by members of an organization who meet the collective organization’s standard of admission.  By contrast, a certification mark is used by parties whose products or services meet the certifying organization’s established standards; the users are not members the certifying organization. The current wording in the trademark and service mark application rules sometimes are not specifically suited to collective and certification mark applications. Therefore, the USPTO has proposed to revise the rules in parts 2 and 7 of 37 CFR to state clearly and provide sufficient detail regarding the requirements for collective and certification mark applications.

The revisions appear to be mainly clerical in nature, and as such, have garnered minimal comments from the trademark community.  The American Bar Association Section of Intellectual Property Law (the ABA Section), for example, submitted comments that indicate the Section’s general support for adopting the proposed changes with minimal revision.  Specifically, the ABA Section notes that proposed Rule 2.34(a)(1)(i) regarding the applicant’s verified statement in the filing basis a trademark or service mark application is potentially ambiguous. Proposed Rule 2.34(a)(1)(i) states that “the applicant’s verified statement that the mark is in use in commerce. If the verified statement is not filed with the initial application, the verified statement must also allege that the mark has been in use in commerce as of the application filing date.”  Since the proposed rule replaces the term “was” with the phrase “has been,” the ABA Section is concerned that the proposed rule may be interpreted as requiring declarants to affirm that the mark is in use at the time of filing and that the mark has been in continuous use since that time up to the date that the verified statement is filed.  Thus, the ABA Sections has recommended revising proposed rule 2.34(a)(1)(i) to state that ” If the verified statement is not filed with the initial application, the verified statement must also allege that the mark was in use in commerce as of the application filing date,”  which is consistent with the wording in original 2.34(a)(1)(i) and would avoid possible misinterpretation.

INTA, similarly appears to support the adoption of the proposed rules with minor clarifications in Rules 2.41(e) regarding geographic indications, 2.56(d)(3) regarding forms of acceptable specimens in the absence of non-bulky alternatives, and 2.99(i) regarding the filing of a statement of use in a concurrent use application.

The deadline to submit comments to the USPTO was May 21, and it appears that the USPTO proposed amendments to the rules related to collective and certification marks will likely be adopted with minimal revisions.

Final Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases

On June 21, 2014, it will be two years since the USPTO’s changes in requirements for specimens and post-registration filings went into effect. Those revisions aimed to make the United States trademark register an accurate reflection of marks that are actually in use in the United States for the goods and/or services identified in a U.S. registration.  The USPTO achieved this by enhancing the authority of trademark examining attorneys with respect to specimen requirements and implementing a two-year pilot program to assess the integrity of the U.S trademark register.

The current authority of examining attorneys

Under the amended U.S. Trademark Rules of Practice (37 CFR Parts 2 and 7), examining attorneys have the authority to require registrants to submit additional specimens, information, exhibits and affidavits or declarations to examine a post registration affidavit or declaration of continued use or an amendment to a registered mark.  Examining attorneys also have the authority to require applicants to submit more than one specimen in connection with a use-based trademark application or an allegation of use.

The pilot program

The two-year pilot program randomly selects 500 trademark registrations for which Section 8 or 71 affidavits are being filed and issuing a post-registration Office action requiring proof of use of the mark on two additional goods/services per class.  Additional specimens filed in response to this request are reviewed according to the examination standards for use in commerce.  Owners of the registrations selected have the usual post registration response period to the Office action—i.e., six months of the issuance date of the Office action, or before the end of the relevant filing period for the Section 8 or 71 affidavit, whichever is later.  Owners also are not required to pay additional fees or surcharges in response to the post-registration Office action requiring additional information or proof of use, since this request is not considered a deficiency under the program.

If the owner files a response that satisfies the examining attorney’s request, the registration in whole will be unaffected.  In contrast, if the owner of the registration files a response that fails to include the required evidence or specimens, the Section 8 or 71 affidavit is deemed unacceptable as to the goods or services to which the requirement pertained, and those goods or services are deleted from the registration. If no response to the Office action is filed within the response period, the registration in whole is cancelled.

The future of trademark specimens

The examining attorney’s authority to ask randomly for additional information or specimens under the pilot program will sunset on June 21, 2014. However, the examining attorney will continue to maintain its authority to request additional specimens and information when either is deemed reasonably necessary for examination of a particular Section 8 or 71 affidavit, use-based trademark application, allegation of use, and a Section 7 amendment to a registration.  Thus, trademark practitioners and trademark owners appearing pro se before the USPTO should continue to be mindful of accurately identifying which goods and/or services are used in commerce with a mark when filing affidavits or declarations in an application or registration.