United States - Trademark Law Treaty Implementation Act - Prosecution Changes Before the United States Patent and Trademark Office
The Trademark Law Treaty Implementation Act ("Act") became effective on October 30, 1999, rendering US trademark prosecution practice more consistent with other jurisdictions. The Act applies to all applications pending or filed on or after the effective date.
The Act significantly lessens the requirements for obtaining a filing date. An application need only contain the following to be granted a filing date:
Prior to the Act, an application had to include a stated basis for filing, dates of use and specimens for use-based applications, a statement of a bona fide intent to use the mark for applications based on intent to use and foreign registrations or applications, a claim of priority for convention applications, and a signed verified statement. While all of these are ultimately still required, an application will no longer be denied a filing date, if any one of them is omitted. Instead, any deficiency will be addressed during the subsequent examination of the application by an Examining Attorney.
Several other changes to prosecution practice have been implemented as well. For instance, the Trademark Office will only require that one specimen, as opposed to three, be submitted with use-based applications, Amendments to Allege Use and Statements of Use. Color marks will no longer be represented by lining schemes, but rather by written descriptions of the pertinent colors and where in the marks these colors appear. Statements as to the type of commerce or the method of use are no longer required. The standard for revival of abandoned applications has been changed from "undue delay" to "unintentional delay". Lastly, applications may now be filed on both the bases of use in commerce and intent to use.
In addition, verified documents filed with the Trademark Office need not be signed by an officer of an applicant corporation or company, but may instead be signed by a person who is "properly authorized to sign on behalf of the applicant". These include:
1) an officer of the applicant; or
2) a person with legal authority to bind the applicant; or
3) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; or
4) an attorney with actual or implied written or verbal power of attorney.
This expanded definition of who may sign on behalf of an applicant applies to applications, extension requests, Statements of Use and all other documents for which a verification is needed.
With regard to post-registration practice, the Act requires that registrants file both a Section 8 use affidavit and a Section 9 renewal application every tenth year from the date of registration, which can be met by a single filing. As with the previous practice regarding renewal filings, registrants must file the Sections 8 and 9 affidavits within one year prior to the expiration date of the registration or within a six-month grace period subsequent thereto, for a fee. Declaration of Use filings under Section 8 are still required between the fifth and sixth year anniversary of the date of registration but, in contrast to the previous rule, registrants will have a similar six-month grace and deficiency correction period, for an additional fee.
The US Trademark Office is expected to publish guidelines further clarifying its practice policies regarding the Act.