Modernizing for the Millenium:The 1999 Amendments to the Trademark Law

As we practitioners prepare to trek across the bridge to the twenty-first century, several recent developments in American trademark law will help make our journey just a bit easier. The U.S. trademark system is being modernized so that this country's trademark owners may more readily protect their trademarks in the electronic global marketplace.

The many changes that United States trademark law has undergone and will undergo in the year 1999 result from two legislative enactments: the Trademark Amendments Act of 1999, and the Trademark Law Treaty Implementation Act. The former addressed several significant substantive issues and made a few technical corrections to the Lanham Act, while the latter is directed to some rather fundamental changes in the procedural aspects of trademark practice.

I. The Trademark Amendments Act of 1999

This Act (Public Law 106-43) comprises not so much a modernization effort as a clarification and, in some respects, a broadening of the trademark law. The 1999 Act took effect upon its signature by President Clinton on August 5, 1999. A copy of the Act may be found at http://thomas.loc.gov/. Its key provisions are as follows:

Dilution

Section 2 of the 1999 Act amends the Lanham Act to include dilution under Section 43(c) as a ground for opposition under Section 13(a), and as a ground for cancellation under Section 14. Dilution is not, however, a basis for ex parte refusal to register under Lanham Act Section 2. The 1999 Act states, rather cryptically, that this section applies "only to any application for registration filed on or after January 16, 1996."

Section 3 of the 1999 Act amends the Lanham Act to make it clear that injunctive relief (Sec. 34(a)) is available in a dilution action, but that monetary recovery (Section 35) and/or destruction of infringing articles (Section 36) will be available only if willfulness is proved.

Governmental Immunity

Section 4 of the 1999 Act eliminates the immunity of the federal government from suit for violation of the Lanham Act. It expands the definition of "any person" in Sections 32 and 45 to include the United States, its agencies, instrumentalities, and any entities or persons acting for it. Section 40 of the Lanham Act is re-written to expressly state the waiver of sovereign immunity by the United States.

Trade Dress Burden of Proof

Section 5 of the 1999 Act amends Section 43(a) to provide that, in a civil action for infringement of trade dress not registered on the principal register, the party that asserts trade dress protection has the burden to prove non-functionality.

II. The Trademark Law Treaty Implementation Act

The real modernization of American trademark law stems from the passage of the Trademark Law Treaty Implementation Act (Public Law 105-330)("TLTIA"), signed by President Clinton on October 30, 1998. TLTIA amends the Lanham Act to comport with the June 1998 ratification of the Trademark Law Treaty by the United States. The provisions of Title I of TLTIA take effect on October 30, 1999. A copy of this Act may be found at http://www.thomas.loc.gov.

A. The Trademark Law Treaty

The Trademark Law Treaty ("TLT") was signed in Geneva, Switzerland in October 1994, and is administered by WIPO. A copy of the Treaty may be found at http://www.wipo.org. The impetus for the TLT was the desire to lessen the difficulty and expense involved in protecting and maintaining trademarks globally. The goal of the Treaty is to harmonize certain procedures of national trademark offices and to establish "maximum" requirements that may be imposed for trademark applications (Article 3) and for the granting of filing dates (Article 5). The Treaty seeks to eliminate many formal requirements governing renewals, recordation of assignments, changes of names or addresses, powers of attorney, drawings, and signatures. Of particular interest is the elimination of the requirement for attestation, legalization, authentication, or other certification of any signature on a document (except for a surrender of registration). (Article 8). Parties to the Treaty include Australia, Japan, and the United Kingdom. [For an updated list of contracting parties, surf to http://www.wipo.org.]

Title I of the Trademark Law Treaty Implementation Act implements the provisions of the TLT. Titles II and III are unrelated to the TLT; they are directed to substantive changes in the U.S. law, and became effective on October 30, 1998, when the act was signed. Title II amends the Lanham Act to codify case law and PTO practice that refuses registration of matter that is de jure functional (Sections 2(e), 2(f), and 23(c) of the Lanham Act). It also provides that functionality is a ground for cancellation that may be raised more than five years after the registration date (Section 14(3)), and is a statutory defense in an infringement suit involving an incontestable registration (Section 33(b)). Title III deals with clarification of the grounds for cancellation of a certification mark (Section 14, last paragraph), and with the initiation of a study of possible protection for official insignia of Native American tribes.

On September 8, 1999, the amended Trademark Rules of Practice under the TLTIA were published in the Federal Register. These new Rules take effect on October 30, 1999. They may be found, along with the PTO's commentary, at http://www.access.gpo.gov/su_docs/aces/aces140.html in "pdf" format.

B. Two Other Important Treaties, Briefly

Before we focus on the TLT and TLTIA, it may be helpful to review briefly two other important trademark-related treaties, the Paris Convention and the Madrid Protocol. The United States is, of course, a member of the former, but has not adhered to the latter.

The Paris Convention

The Paris Convention for the Protection of Industrial Property was signed in 1883, and deals with patents, trademarks, and unfair competition. Its members number more than one hundred thirty, and together constitute the "Paris Union."

With regard to trademarks, the keystone of the Paris Convention is the principle of "national treatment" - each member agrees to give citizens of another member state no less favorable treatment than it gives its own citizens. It also establishes certain minimum levels of protection, such as effective protection against unfair competition, and it provides for convention priority. The Paris Convention also created a legal entity under international law, which entity includes an Assembly of all member nations, an Executive Committee, and an International Bureau of The World International Property Organization (WIPO).

The Madrid Protocol

While the Paris Convention recognized the territoriality of trademarks - i.e., the concept that a mark exists only under the laws of a particular nation - the Madrid Protocol seeks to provide an international trademark registration system. Nationals of countries that are members can secure multinational protection for a trademark based upon an application filed in the home country, by designating those other member countries in which protection is sought. The trademark office in each designated country is then notified of the application, and has the right to refuse protection. The payment of a single fee and preparation of a single application, with resultant savings in legal fees (at least initially), is a main benefit of this scheme. The Madrid Protocol became effective in 1996, and has been ratified by a handful of countries.

In the early 1990's considerable interest in the Madrid Protocol was shown in the United States, but the issue has been rather dormant for some time. A bill was introduced in Congress in 1999 to implement the Madrid Protocol, but has not progressed. The status of this legislation may be monitored at http://thomas.loc.gov/. A principal stumbling block to U.S. acceptance of the Protocol is the concern about double counting of votes for international organizations such as the European Union and its individual members. A succinct discussion of the Madrid Protocol may be found at http://www.ladas.com/Madrid.html.

C. Implementation of The Trademark Law Treaty

As indicated, the TLT is intended to reduce the difficulty and expense that trademark owners endure in protecting and maintaining their trademark properties in a global market. Certain changes in U.S. procedures were necessary in order to comply with the treaty provisions.

The TLTIA effects changes in Sections 1, 8, 9, 10, 12, and 44 of the Lanham Act. These changes fall primarily into five areas:

(1) the application for registration and its verification;

(2) the revival of abandoned applications;

(3) post registration filings;

(4) PTO recordation of documents; and

(5) assignment of ITU applications.

This paper does not attempt to discuss every change made by the TLTIA, nor every new wrinkle in the regulations. Rather, it discusses some of the more interesting and/or substantive changes.

1. The application for registration and its verification.

Of the many changes brought about by TLTIA, the most fundamental may be in the minimum requirements for receiving an application filing date.

The TLTIA gives the Commissioner authority to set by regulation the requirements for receiving a filing date; in other words, there will no longer be any "statutory" filing date requirement that the Commissioner cannot change or waive.

Filing Date Requirements

The PTO is amending Trademark Rule 2.21 to require only the following elements for receipt of a filing date:

(1) the name of the applicant;

(2) a name and address for correspondence;

(3) a clear drawing of the mark;

(4) a list of the goods or services; and

(5) the filing fee for at least one class.

The following elements will no longer be required for receiving a filing date: a signature; a stated filing basis; an allegation of the applicant. s use or bona fide intention to use the mark in commerce; a specimen and dates of use in a Section 1(a) application; a claim of priority in an application based on Section 44(d); and a certified copy of the foreign registration in a Section 44(e) application. Instead, these elements will be required subsequently during examination.

Needless to say, these changes to the filing date requirements should reduce the mental strain on the typical U.S. practitioner. No longer must one worry about being denied a filing date because of some minor oversight, like failing to state a basis for registration, or failing to include a signature.

It seems likely that, in most cases, practitioners will continue to file, at the outset, complete applications that contain all of the elements that will ultimately be required. Otherwise, substantive examination of an application may be delayed until the required information or element is provided, perhaps in response to a non-substantive first office action.

However, one can certainly envision situations that call for an immediate filing that is less than a complete application. For example, when faced with a priority deadline (perhaps because of a last-minute request from a foreign client or associate), one might file a minimal application to preserve the priority date. Or a practitioner may not be sure of the dates of use, or may not have a proper specimen, or may not want to wait for further information requested of a client, and so may choose to file immediately to secure as early a filing date as possible.

Requirements for a "Complete Application"

The Lanham Act has been amended to distinguish between the application and the declaration of use and/or intent to use for purposes of the signature requirement ("the verified statement"). The TLTIA amends Section 1 of the Lanham Act to state that a trademark owner may request registration by paying the required fee and by filing "an application and a verified statement." [emphasis supplied].

U.S. law presently requires verification of all of the elements of the application. However, Article 3 of the Trademark Law Treaty permits verification only of the Applicant's use or intention to use the mark. The TLTIA amends the Lanham Act to comport with the Treaty.

The Application

New Rule 2.32 sets forth the requirements for a "complete application."[1] The required elements comprise most of the elements required under current law. The application must be in English and must include:

(1) a request for registration:

(2) the name of the applicant;

(3) the citizenship of the applicant, or if the application is a juristic person, the jurisdiction under the laws of which the applicant is organized, and if a partnership, the names and citizenship of the general partners;

(4) the address of the applicant;

(5) one or more bases for registration (including dates of use, where appropriate);

(6) a list of goods and/or services;

(7) the international class(es), if known;

(8) a verified statement;

(9) a clear drawing;

(10) the appropriate fee.

No longer required, however, is a specification of the type of commerce in which a mark is used, whether in an application, a statement of use, a Section 8 declaration of continued use, or a Section 15 incontestability declaration. The Office will assume that an applicant who states that the mark is in use "in commerce" is stating that the mark is in use in a type of commerce that Congress can regulate. See New Rule 2.34(c). Also no longer required, in compliance with the TLT, is a statement of the "manner of use" of the mark.

If the applicant wishes to claim color as a distinctive feature of the mark, it must include a statement to that effect as well as the name of each color and an indication of the parts of the mark that are in that color. The color lining chart of Rule 2.52(e) will be deleted from the regulations; however, drawings using the color linings will still be accepted by the PTO until further notice. If a drawing is filed in color, the PTO will no longer deny a filing date. See new Rule 2.52. The PTO anticipates publishing and issuing marks in color in the future.

The Verified Statement

In a use-based application

For a use application, amended Section 1(a)(3) of the Lanham Act provides that "[t]he statement" shall be verified[2] by the applicant and specify that:

(A) the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be [sic] the owner of the mark sought to be registered;

(B) to the best of the verifier's knowledge and belief, the facts recited in the application are accurate;

(C) the mark is in use in commerce; and

(D) to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive . . . .

It is noteworthy that the Lanham Act requires verification that "the facts recited in the application are accurate." This seems to violate the TLT's prohibition of requiring verification of anything other than the averment of use or intent-to-use.[3]

The Commissioner is empowered by the Lanham Act to promulgate rules prescribing the requirements for an application. The new PTO regulations re-state the listed statutory requirements for a use application in slightly different language, and further require in the verified statement, an averment that "the specimen shows the mark as used on or in connection with the goods or services." New Rule 2.33(b)(1). This new rule also requires that the applicant verify "that the facts set forth in the application are true," despite the aforementioned TLT prohibition against such a requirement.

The PTO has reduced the number of specimens required in a use application from three to one. New Rule 2.34(a)(1)(iv). For an electronically transmitted application, the specimen, not surprisingly, must be submitted as a digitized image. New Rule 2.56(d)(4). Specimens should be flat and not larger that 8.5 inches by 11.69 inches. If a specimen exceeds this size ("a bulky specimen"), the applicant may substitute a suitable photograph or facsimile. If the applicant submits a bulky specimen, the PTO will create a facsimile specimen of proper size, and will destroy the submitted specimen. In the absence of non-bulky alternatives, the PTO may accept an audio or video cassette tape recording, CD-ROM, or other appropriate medium. New Rule 2.56(d)(1)-(3).

In an intent-to-use or Section 44 application

For an intent-to-use application or an application under Section 44, the statement must, according to amended Section 1(b)(3) of the Lanham Act, be verified by the applicant, and specify:

(A) that the person making the verification believes that he or she, or the juristic person in whose behalf he or she makes the verification, to be [sic] entitled to use the mark in commerce;

(B) the applicant's bona fide intention to use the mark in commerce;

(C) that, to the best of the verifier's knowledge and belief, the facts recited in the application are accurate; and

(D) that, to the best of the verifier's knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive.

New Rule 2.33 recites these requirements in slightly different terms, and mistakenly omits the words "in commerce" after the phrase "applicant is entitled to use the mark." Again, this Rule requires that the applicant verify "that the facts set forth in the application are true," in spite of the aforementioned TLT prohibition against such a requirement.

As indicated, in an application based on registration of a mark in a foreign applicant's country of origin (Section 44(e) of the Lanham Act), or based on an earlier-filed foreign priority application (Section 44(d)), the applicant must file a verified statement that it has a bona fide intention to use the mark in commerce in connection with the goods or services listed in the application.

In all three situations (ITU, Section 44(e), and Section 44(d)), if the verified statement does not accompany the original application, the later-filed verified statement must allege that the applicant had a bona fide intention to use the mark in commerce as of the filing date of the application. New Rule 2.34.

Multiple bases for filing and changing bases

In a marked change from present practice, new Rule 2.34 permits an applicant to claim any or all of the four filing bases for the different goods and/or services in a single application. Rule 2.86(c), which prohibits an applicant from claiming use and intent-to-use in a single, multi-class application, will be deleted. Of course, an applicant may not claim a basis under both Sections 1(a) and 1(b) for the same goods or services in the same application. New Rules 2.34(b)(1) and 2.86(a)(3).

New Rule 2.35 provides for adding, deleting, or substituting bases under most conditions. For example, a use-based application may be amended to substitute an intent-to-use basis. Of course, neither the identification of goods nor the recitation of services may be broadened by amendment.

Who may sign the verified statement

In new Trademark Rule 2.33, the PTO has significantly relaxed the signature requirement with regard to the verified statement. The statement may be signed by a person with legal authority to bind the applicant, by a person with firsthand knowledge of the facts and with actual or implied authority, or by an attorney[4] who has an actual or implied written or verbal power of attorney from the applicant. [This relaxed signature requirement also applies to Section 8 declarations (Amended Rule 2.161), and to statements of use, amendments to allege use, and requests for extension of time to file a statement of use (Amended Rules 2.76, 2.88, and 2.89 [as corrected by the PTO in the September 22, 1999 Federal Register]). The PTO correction to the latter three rules may be found at the PTO website, www.uspto.gov.]

Thus as of October 30, 1999, an attorney will be permitted to sign the verified statement on behalf of his or her client. Most attorneys will undoubtedly move cautiously to embrace this new provision. When a client signs an application, there is presumably no room for later argument about whether the filing was authorized by the client. Furthermore, an attorney who signs a verified statement may find himself or herself in the role of fact witness in some later legal proceeding involving the mark, with possible resulting complications, including disqualification as an attorney in the proceeding. Waiver of the attorney-client privilege could also prove to be a problem.

Power of Attorney and Appointment of Domestic Representative

New Rule 2.17(c) codifies present practice in stating that, to be recognized as a representative in a trademark case, an attorney may file a power of attorney, appear in person, or sign a paper that is filed with the Office on behalf of an applicant or registrant. In accord with the TLT, a written power of attorney may relate to more than one application or registration, or to all existing and future applications and registrations of a party. New Rule 2.17(d). Correspondence from the PTO will be sent to the attorney of record, or if none, to the applicant or a party to a proceeding. Rule 2.18.

As to the appointment of a domestic representative, the requirement of Lanham Act Section 1(e) remains unchanged. If an applicant is not domiciled in the United States, the applicant must designate some person residing in the United States upon whom may be served notices or process in proceedings affecting a mark. As in current practice, if the appointment does not accompany the application, it will be required later. The domestic representative may be someone other than the attorney of record. See Rule 2.24.

* * * * * * * *

To reiterate, the TLTIA provisions and the new regulations apply to all applications pending on, or filed on or after, October 30, 1999.

2. The Revival of Abandoned Applications

Under current law (Section 12(b)), the Commissioner may revive abandoned applications only upon a showing of unavoidable delay. For intent-to-use applications, the failure to timely file a verified statement of use "shall result in abandonment." (Section 1(d)(4)).

The TLTIA amends the Lanham Act to provide a much more lenient standard for revival, namely "unintentional" instead of unavoidable. This change parallels the unintentional standard available to patent applicants. The unintentional delay standard applies only to a delay in responding to an Office Action, or in filing a statement of use or a request for an extension of time to file a statement of use. Section 12(b) is amended to substitute the word "unintentional" for "unavoidable," and, in the case of intent-to-use applications, Section 1(d)(4) is re-written to provide for revival if the delay in responding was unintentional (as long as the period for filing the statement of use is not extended beyond the statutory maximum period of 36 months from the date of the notice of allowance).

The petition to revive must be filed (1) within two months of the mailing date of the notice of abandonment or (2) within two months of actual knowledge of the abandonment, if the applicant did not receive the notice of abandonment and the applicant was diligent in checking the status of the application. To be considered diligent, an applicant must check the status of the application within one year of the last filing or the last receipt of a notice from the Office for which further action by the Office is expected. The petition must be signed by someone with firsthand knowledge of the facts, but it need not be verified or supported by a declaration. New Rule 2.66.

3. Post-Registration Filings

The renewal and Section 8 procedures are made slightly more complicated under TLTIA, but additional time is made available to effect these filings, and most deficiencies in the filings may be corrected.

Renewals

Under the TLT, a contracting party may not require a showing of use of a mark as part of a request for renewal. (See TLT, Article 13(4)(iii)). Of course, this prohibition is in direct conflict with current U.S. law. In this country, we are concerned with "deadwood" clogging the register, and therefore current U.S. law requires proof of continued use at the time of each renewal. If such proof is not provided, the mark is removed from the register.

The TLT does not prohibit a requirement for a periodic filing of a declaration and/or evidence of use in connection with a registration, so long as it is not part of the requirements for renewal.[5] Therefore, the TLTIA complies with the TLT by removing from Section 9 any requirement of proof of use in the renewal application. In turn, the TLTIA adds to Section 8 a requirement that an Affidavit or Declaration of Use be filed not only during the sixth year of life of a registration, but also during its tenth year, and every ten years thereafter.

Thus a registration owner will be required to file, at ten-year intervals, both a renewal application and a Declaration or Affidavit Under Section 8, in order to keep the registration in force.

Under current law, a renewal application may be filed within the period beginning six months prior to the expiration date of the registration, or within a three-month grace period after that date (with payment of an additional fee). Under the amended law, the renewal application may be filed within one year prior to the expiration date, or within a six-month grace period after that date (with payment of a $100 "grace period surcharge" per class).

A complete renewal application must include (1) a request for renewal signed by the registrant or the registrant's representative; (2) the prescribed fee; (3) any grace period surcharge; (4) an appointment of domestic representative, where appropriate; and (5) a list of the particular goods or services to be renewed, if less than all. New Rule 2.183.

Amended Section 9 allows for correction of a deficient renewal application, but a "deficiency surcharge" ($100) may be required, depending on when the corrected application is filed: if filed during the one-year period prior to the expiration date, then no surcharge is required; if filed after the expiration date, a deficiency surcharge may be required. For details, see new Rule 2.185. TLTIA does not define deficiency, nor place any limits on the type of error that may be cured. However, the failure to file a renewal application within the statutory time periods is not curable. New Rule 2.185. The period for correcting the deficiency will be prescribed by the PTO in the notice of deficiency.

These new renewal provisions apply to registrations whose expiration date is on or after October 30, 1999, and whose application for renewal is filed in the PTO on or after that date. It may be wise to delay filing renewal papers until after October 30, 1999, where possible, to gain the advantage of the new provisions for correcting deficiencies.

Section 8 Declarations of Continued Use

As indicated, the provisions of the TLTIA require the declaration of continued use not only at the sixth anniversary of a registration, but also at its tenth anniversary, and at each successive tenth anniversary. Verification of the continued use (or excusable non-use) of the mark in question is no longer required in the Section 9 renewal application, but rather is required in a separate Section 8 Declaration.

Currently, a Section 8 Declaration is to be filed during the one-year period between the fifth and sixth anniversary dates of the registration. The amended law allows the filing of the Section 8 Declaration during that one-year period, or within six months after the sixth anniversary date (with payment of a $100 "grace period surcharge" per class). The tenth-year Section 8 Declaration may be filed during the one-year period before the tenth anniversary date, or within the six-month period after that date (with payment of a "grace period surcharge"). Subsequent Section 8 Declarations are similarly required every ten years thereafter.

Again, the amended Act allows for the correction of deficient filings after the statutory period expires. Depending on when the corrected filing is made, a $100 "deficiency surcharge" may be required. If the corrected papers are filed during the year before the anniversary date, no deficiency surcharge is required; if filed after the anniversary date, a surcharge may be due. See new Rule 2.164. The period for correcting the deficiency will be prescribed by the PTO in the notice of deficiency. The Section 8 Declaration must be filed by the owner of the registration, and must be filed within the time periods set forth in Section 8 of the Act. An error in either regard is not a deficiency that can be cured. See New Rule 2.164(b).

The TLTIA applies to Section 8 Declarations for registrations whose sixth or tenth year anniversaries fall on or after October 30, 1999, if the Declaration is filed on or after October 30, 1999. Again, it may be wise to delay filing a Section 8 Declaration until after October 30, 1999, where possible, to gain the advantage of the new provisions for correcting deficiencies.

TLTIA amends Sections 8 and 9 of the Lanham Act to make it clear that an appointment of domestic representative is required with post-registration filings if the registrant is not domiciled in this country.

It is expected that the Section 8 Declaration and the Section 9 Application for Renewal will be filed simultaneously. The PTO will accept a combined "Sections 8 and 9" form, so that both filings may be made in a single document.

Certain Twenty-Year Registrations

Since November 16, 1989 [the effective date of the Trademark Law Revision Act of 1988], trademark registrations have been issued and/or renewed for ten-year terms. However, many registrations presently exist that are enjoying a twenty-year term -- because they were issued prior to November 16, 1989, or are in a renewal term that began prior to that date.

Section 8, as amended by the TLTIA, affects registrations whose sixth or tenth anniversary falls on or after October 30, 1999. Registrations that issued or were renewed prior to October 30, 1989 will not be subject to the 10-year Section 8 requirement, because their tenth anniversary dates will fall before the effective date of TLTIA.

But what about registrations issued for a twenty-year term during the period October 30, 1989 to November 16, 1989, or registrations renewed for twenty-years when their expiration dates fell in that period? Those registrations[6] will have a tenth-anniversary falling after October 30, 1999, the effective date of TLTIA. Will a tenth-year Section 8 Declaration be required for these registrations? The PTO says no. In its comments on the Final Rules issued on September 8, 1999, the PTO states that the new tenth-year Section 8 requirement does not apply to a registration issued or renewed for a twenty-year term until a renewal application is due.[7] See the PTO's commentary on the amended Rules of Practice, at page 48900 of the September 8, 1999 Federal Register.

4. PTO Recordation of Documents

Section 107 of TLTIA makes several changes pertaining to the recordation of documents by the PTO. These changes apply to all requests to record filed with the PTO on or after October 30, 1999.

Presently, the PTO will record only an original document or a true copy of an original. Section 107 of TLTIA amends the Lanham Act to ease this requirement.

The Trademark Law Treaty prohibits the requirement of a statement or proof of transfer in order to record an assignment of a trademark registration. The TLTIA therefore amends the language of Section 10 of the Lanham Act to delete the clause regarding the maintenance of a "record of assignments" and to replace it with a requirement that the PTO maintain a "record of information on assignments." The Commissioner is authorized to determine what information regarding assignments will be maintained by the PTO.

New Trademark Rule 3.25 states that, in addition to the original document affecting title, the PTO will accept for recordation a copy of the document, or a copy of an extract from the document evidencing the effect on title, or a statement signed by both parties explaining how the transfer affects title. Each document submitted for recording must include a cover sheet as specified in new Rule 3.31. The cover sheet must contain the name of the conveying party, the name and address of the receiving party, a description of the interest conveyed or transaction involved, and identification of the trademark registrations and applications involved. (New Rule 3.31).

In cases or merger or other circumstances, more formal documentation may still be required. As for a name change, only a legible cover sheet is required.

5. Assignment of ITU applications

The TLTIA amends Section 10 of the Lanham Act to provide that an intent-to-use application may be assigned to an entity other than the successor to the business, after the submission of an amendment to allege use under Section 1(c). This corrects an oversight in the current law, which provides for assignment of an ITU application only after the filing of the statement of use under Section 1(d).

III. Electronic Filing

Those who have visited the PTO website at www.uspto.gov are probably aware that it is presently possible to file a trademark application electronically. According to the PTO, ten percent of new applications are filed electronically,[8] and a dramatic increase is expected in the near future. The PTO electronic filing system is called the Trademark Electronic Application System ("TEAS"). The application may be filled out and "checked for completeness" while on-line, and then may be submitted electronically (e-TEAS) or may be printed out (prinTEAS) for filing by mail.

For an application submitted electronically, payment of the filing fee is made by credit card or PTO deposit account. If the mark is used in a stylized or a design/logo form, a digitized image of the mark may be attached to the electronic application. Any specimen of use is submitted as a digitized image. Of course, the application is not "signed" in the sense of a traditional paper document. To verify the contents of the application, the appropriate person must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. According to the PTO, acceptable "signatures" could include: /john doe/; /harry123/; and /123-4567/. Under e-TEAS, the proper "signatory" must actually key in the combination of characters preceded and followed by the "/" symbol that applicant has adopted as its "signature."

Once the properly-completed application is transmitted electronically, the user receives an on-screen acknowledgement of the filing, including the serial number accorded the application. An e-mail confirmation is also promptly sent by the PTO, setting forth the serial number and a summary of the application contents.

The writer is informed that, as of October 30, 1999, the electronic filing procedure will be modified. The on-line form will include "blanks" corresponding to all information required for a complete application. If the user fails to fill in one of these "blanks," the system will issue an error prompt requesting the missing information. That error prompt may be overridden, however, as to elements other than the minimum elements required for receipt of a filing date. In other words, the PTO will seek to obtain as much information as possible in the initial application. If one of the filing-date requirements is not met, the application will not be accepted and the user will receive an error message.

Rule 1.1(a)(2)(v) is being amended to state that an application may be transmitted electronically, but only on the PTO. s electronic form. New Rule 1.4(d)(1)(iii) sets forth the same electronic signature method as currently used in TEAS. In addition, this Rule requires the electronic applicant ("e-applicant") to print, sign and date in permanent ink, and maintain a paper copy of the electronic submission.

New Rule 1.6(a)(4) states that trademark-related correspondence transmitted electronically will be stamped with the date on which the PTO receives the transmission. This is consistent with the treatment of correspondence filed as Express Mail, and is in contrast to the treatment of documents transmitted by facsimile, which are stamped with the date of receipt, unless that date is a Saturday, Sunday, or federal holiday within the District of Columbia, in which case the date stamped will be the next day that is not a Saturday, Sunday, or federal holiday. See current Rules 1.6(a)(3) and 1.10(a).

With the TLTIA changes to the minimum filing requirements, electronic filing may be even more attractive, since a signature is not required for filing date purposes, nor are a number of other elements of the complete application. An intent-to-use application for a block-letter mark will be particularly easy to file electronically. With just a few keystrokes and a credit card, any yahoo will be able to file a trademark application in a matter of minutes. Will this result in less work or more for the trademark practitioner? My guess is more.

Finis

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[1] There is inconsistency in the use of the term "application" in the Lanham Act, in the House Report on TLTIA, and in the newly-promulgated Trademark Rules. Section 1 of the Lanham Act calls for the filing of "an application and a verified statement." [emphasis supplied]. The House Report speaks in terms of the "written application" and the verified statement. New Rule 2.33 states that the application "must include" a statement that is verified. In the heading for new Rule 2.32, the PTO uses the term "complete application," which includes the verified statement.
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[2] The "verified statement" is a statement that is signed and verified (sworn to) or supported by a declaration under Rule 2.20 by a person properly authorized to sign on behalf of the applicant. New Rule 2.33.
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[3] The House Report explains the new language of Section 1(a)(3)(B) as follows: "Rather than requiring in the verified statement a repetition of statements in the written application identifying goods and, in a section 1(a) application, dates of use, the revision requires a statement that to the best of the applicant. s knowledge and belief, the facts recited in the application are accurate." (p. 12).
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[4] Rule 10.1(c) defines the term "attorney" as follows: "Attorney or lawyer means an individual who is a member in good standing of the bar of any United States court or the highest court of any State. A "non-lawyer" is a person who is not an attorney or lawyer." (" Non-attorney" is not defined.)
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[5] As justification for this reading of the Treaty, the House Report on the TLTIA observes that Article 13(1)(b) of the Treaty, which concerns renewal fees, recognizes that "[f]ees associated with the furnishing of a declaration and/or evidence of use shall not be regarded . . . as payments required for the maintenance of the registration." But see TLT Article 13(4)(iii), which seems to point in the other direction. The House Report [No. 105-194] may be found at http://thomas.loc.gov/.
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[6] As to registrations that issued during this short period, a review of the PTO database indicates that some 1,700 registrations are involved. They issued on Tuesdays: October 31, November 7, or November 14, 1989. The number of renewed registrations is more difficult to determine, since some registrations whose expiration dates fell within this period were renewed for only ten years because the renewal papers were filed or processed after the expiration date. There appear to be about one hundred registrations falling in this twenty-year renewal category.
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[7] The writer was told by a PTO employee that the PTO contemplated requiring a tenth-year declaration for these registrations. It was considering mailing a special notice to the registrants affected. However, the PTO instead chose to interpret the statute so as to avoid this requirement. The writer finds this interpretation rather dubious, in view of the express language of amended Section 8(a), which states that a Section 8 declaration is required "for all registrations, at the end of each successive 10-year period following the date of registration." See also, Section 109 of TLTIA. New Rule 2.160(a)(2) parallels the statute: "For all registrations, within the year before the end of every ten-year period after the date of registration." Perhaps it would be wise to file the tenth-year declaration anyway, out of an abundance of caution.
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[8] As of September 12, 1999, nearly 19,000 applications had been filed electronically in the first 49 weeks of fiscal 1999. Of those applications, about half were filed by corporations and forty-percent by individuals. The "attorney" portion of the electronic form was completed in about ten-percent of all cases. About six hundred of the electronic applications were filed by foreign entities, half of those from either Switzerland or Canada. The leading corporate filer by far was Mattel, Inc. with 451 applications.
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