12 Oct Ruling enforces international trademark electronic filing requirements
Businesses could lose important trademark rights by failing to meet the technical filing requirements of the U.S. Patent and Trademark Office and the Trademark Trial and Appeal Board, as demonstrated by an international case of earlier this year.
In the case, In re Borlind Gesellschaft for kosmetische Erzeugnisse mbH, the Trademark Trial and Appeal Board (TTAB) denied a request for an extension of time to oppose an international, or Madrid Protocol, trademark application because it was not filed electronically.
The Madrid Protocol allows the owner of a trademark application or registration in any of the member countries to request an extension of trademark protection to any of the other member countries by filing one application in the owner’s home country and designating any other countries of interest.
The protocol offers significant cost savings to applicants because the prosecution and the renewal of a trademark filed throughout the world can be managed through the international application. The U.S. implemented the Madrid Protocol through the Madrid Protocol Implementation Act (MPIA) on Nov. 2, 2003, and now U.S. businesses can take advantage of the system.
The Patent and Trademark Office (PTO) amended its Trademark Rules of Practice in September 2003 to make U.S. trademark practice compatible with the Madrid Protocol. One change involved the method of filing oppositions and requests for extensions of time to oppose. Under the old rules, a party interested in opposing or filing an extension of time to oppose could either file electronically with the TTAB’s relatively new electronic filing system (or ESTTA) or mail a paper request to the TTAB. Either way, the request had to be made within 30 days of the date of publication of the application to be opposed.
Because of various reporting requirements for applications filed under the Madrid Protocol requesting protection in the United States, the PTO had to change the rules for filing oppositions or requests for extensions of time to file oppositions to Madrid Protocol applications and require that they be filed electronically via ESTTA. Electronic filings can be processed almost immediately by the PTO, whereas paper filings can take weeks or even months to be collected and reviewed.
In re Borlind illustrates that the TTAB has no leniency regarding the electronic filing requirement. In that case, the potential opposer filed a paper request for an extension of time to oppose a Madrid Protocol application and sent the request by mail prior to the 30-day deadline. However, the TTAB denied the request for an extension of time because it was not filed electronically.
The TTAB’s opinion stated, “[w]hile this may seem at first glance to be a harsh result, the requirement for mandatory ESTTA filing enables the board to fulfill its obligations under the Madrid Protocol and the MPIA.”
The board also commented on the fact that although the World Intellectual Property Organization (WIPO) is not given notice of extensions of time to oppose, “[a] delay in acting on an extension can also defeat a potential opposer’s right to oppose. This is because a notice of opposition may not be instituted until all necessary prior extensions have been received and granted.” Thus, the board concluded that it had no choice but to enforce the strict requirement of electronic filing.
The result of a failure to file an opposition or request for extension of time to oppose electronically is the loss of the chance to file an opposition. A petition to cancel can be filed once the subject application achieves registration, but that can take up to three years after the date of publication, leaving the potential opposer without any recourse through the PTO during that time.
As the PTO moves toward an all-electronic filing system, trademark practitioners and applicants will continue to be challenged with the task of keeping up with the resulting changes to PTO rules. Significantly, despite the result in In re Borlind, issued in January, there have been at least three subsequent TTAB decisions where the board has had to deny requests for extension of time to oppose Madrid Protocol applications because the potential opposer had failed to use the electronic filing system.
In re Borlind ultimately demonstrates the need to be thoroughly familiar with the TTAB’s and the PTO’s electronic filing procedures to avoid the loss of important rights and benefits.