More on IP Translator, Class Headings and US Practice

What you will get from the USPTO if you file an Application with Class Headings

I am slowly becoming convinced that the IP Translator decision may turn out to mean full employment and lucrative business opportunities for US trademark lawyers.

Right after I published yesterday’s posting, I had an office action to review. The office action deals with an application filed under the Madrid Protocol and the owner is a German company. The office action (which includes a large number of classes) has a number of fine examples of what will happen if an application filed with class headings in the goods and services description is examined by the USPTO.

With respect to each class heading, you will get something like this:

“The wording “Hand tools and implements (hand-operated); cutlery; side arms; razors” in the identification of goods is indefinite and must be clarified because it consists primarily of the class heading for International Class 008. See TMEP §§1401.08, 1402.01 et seq., 1402.07(a). Applicant must amend this language to identify goods that fall within the ordinary meaning of the words specified in the class heading and fall within International Class 008. See TMEP §§1402.06(a), (b), 1402.07(a).”

The only acceptable response is to amend the application by inserting, after the class heading, a list of all of the goods or services the applicant intends to use the mark on in the US, starting with the word “namely” (the USPTO will also make you remove all of the parentheses in a description). Applicants should not be tempted, however, to amend the description with the entire alphabetical list of goods for that class. Remember, the rules regarding declarations made before the USPTO, which are given under penalty of perjury, apply! The applicant must have a bona-fide intent to use the mark on ALL of the goods or services listed in the application, including the list of goods that is amended to the class heading description in response to the office action.

I believe that the temptation to now use class headings in Europe will just be too great for many applicants to ignore. As for extending those applications and/or registrations to the US, please do. It only means more work for my colleagues and me here in the US.

The IP Translator Decision – My 2 Cents…

On June 19, 2012, the European Court of Justice (“ECOJ”) handed down a decision in what has been christened the IP Translator Case (decision here).  The case concerns a dispute between The Chartered Institute of Patent Attorneys and the Registrar of Trade Marks (of OHIM, the registrar of community trademarks) concerning the latter’s refusal to register the mark IP TRANSLATOR.

It seems everyone is writing about this decision, so obviously I couldn’t resist adding my 2 cents, though I seem to be a bit late to the party (I simply have not had time to write this post until now).  However, I have had the benefit of looking at what other commentators have had to say.

Because I have not seen any postings addressing the issue, I want to look at it from the angle of what this means for European trademark owners intending to register their marks in the United States (assuming they avail themselves of the opportunities made available to them by this ruling).

The facts and background are really not of great importance to this posting, but the decision certainly is.  The important rulings can be found in paragraph 64 of the decision:

–        Directive 2008/95 must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark;

–        Directive 2008/95 must be interpreted as meaning that it does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise;

–        an applicant for a national trade mark who uses all the general indications of a particular class heading of the Nice Classification to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

So, what does this mean in the context of U.S. applications?  Short answer: absolutely nothing, but there are some important issues to keep in mind.

As most practitioners know, the USPTO has very stringent rules for specificity in a description of goods or recitation of services.  As anyone who has filed a U.S. application under Sections 44 or 66 of the Lanham Act knows, you usually can’t get away with the broad descriptions common in European trademark registrations.  As a matter of fact, an office action issued by the USPTO requiring greater specificity is an almost unavoidable by-product of an application filed in the U.S., be it based on a home registration (Section 44) or as an extension of an International Registration (Section 66).

Let’s be clear about this: NOTHING in the IP TRANSLATOR decision affects the USPTO’s specificity requirements.  If an owner uses the mechanisms available under Sections 44 or 66 of the Lanham Act and the application or registration that is the basis of the US application includes class headings, the applicant will still have to comply with the USPTO’s specificity requirements.

Here is where I see the potential for major problems, arising out of another policy of the USPTO, namely Trademark Rules of Practice 2.85, which provides in pertinent parts:

(d) Section 66(a) applications and registered extensions of protection. In an application under section 66(a) of the Act or registered extension of protection, the classification cannot be changed from the classification assigned by the International Bureau of the World Intellectual Property Organization, unless the International Bureau corrects the classification. Classes cannot be added, and goods or services cannot be transferred from one class to another in a multiple-class application.

(f) Classification schedules shall not limit or extend the applicant’s rights, except that in a section 66(a) application, the scope of the identification of goods or services for purposes of permissible amendments (see § 2.71(a)) is limited by the class, pursuant to § 2.85(d).

The effect of this rule is that, if an application includes a non-specific description of goods/services in a particular class and, upon submission by the applicant (in response to an office action) of a description that satisfies the specificity requirements of the USPTO, the USPTO finds that any of the goods/services have, in the view of the USPTO, been misclassified, said goods/services must be deleted from the application.  This may not be much of an issue if the deleted goods or services are not at the core of the applicant’s business.  But, if they are, the applicant is left with what is essentially a worthless registration (at least in the United States).

Another issue to be considered is that, when an applicant files an application for extension of protection of an international registration to the United States, the applicant is required to make a declaration that there is a “bona-fide intent to use” the mark on all of the goods and services listed in the application.  Accordingly, even though recent decisions have significantly eroded the ability to successfully prosecute oppositions or cancellation actions on the basis of fraud, unless the applicant has a bona-fide intent to use the mark on every single one of the potentially thousands of goods or services covered by a class heading, by filing an application with just class headings in the US, that applicant is proffering a false declaration, with all of the various consequences that entails under the USPTO’s rules and regulations, applicable case law and, yes, even criminal law.

Therefore, the following is my advice to European applicants tempted to avail themselves of this apparent new advantage: DON’T DO IT if the intent is to use the Community Trademark either as a basis of filing in the US under Section 44 (because of the false declaration issue) or Section 66 (because of both the potential of having core goods deleted from the application and the false declaration issue).

Now, to some readers the possibility of getting into trouble in the US over these issues might seem remote, and with respect to criminal liability for giving a false declaration they certainly are (I’ve never heard of a prosecution in such a case).  But why tempt fate?  The fact is that it might be easier and safer just to file a national application in the US, where reclassification is possible and where a qualified US attorney can advise beforehand regarding the requirement of having a bona-fide intent to use the mark on all of the goods/services listed in the application.

Finally, I can’t say that I can welcome the decision in this case.  While I believe that the USPTO’s specificity requirements sometimes, maybe even often, go too far, I also think that a requirement for some specificity is a good thing.  It is my belief that opening up the possibility of using class headings in CTM applications invites applicants to file overly broad applications and invites unnecessary disputes between owners, because it will not be possible to ascertain from the registry what a mark is actually intended to be used on.  Therefore, it is my view that the ECOJ’s decision in this matter was ill advised.

Is the Jig up? USPTO Revises Rules Regarding Specimens of Use and Initiates Pilot Project

Many European owners base their U.S. trademark applications either on §44 (home registration) or §66 (Madrid Protocol Extension of Protection) of the Lanham Act.  By doing this, they gain the useful advantage of not having to prove use in commerce before obtaining their registration.  Unfortunately, in doing so they often disregard the requirement of having to have a “bona-fide intent to use” and consequently stuff their applications with all manner of goods and services, many of which have exactly nothing to do with what the applicant will actually use the mark on in the U.S.  I call this the “everything including the kitchen sink” approach.  Now, it appears, the USPTO is about to crack down on this practice.

Effective June 22, 2012, The U.S. Patent and Trademark Office (“USPTO”) has changed the rules and, depending on how Examiner’s use their new powers, these rules changes could have a dramatic effect.  Here is my slightly edited version of the USPTO’s summary of the new rules:

“In order to help assess and ensure the accuracy of the trademark register, the USPTO is revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to allow the USPTO to: Upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark. These revisions aim to ensure the ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration, and thereby reduce costs and burdens on the public.” (Emphasis mine)

The entire notice can be found in the May 22, 2012, Federal Register.

In summary, for owner’s of registrations obtained pursuant to §44 or §66, the post-registration examiners at the USPTO can make the owner prove that they are actually using the mark on all of the goods and services listed in the registration, if they have doubts about the actual extent of the use of the mark being maintained or renewed.  For those filing use-based or intent-to-use applications, that requirement may come during the initial application process.

The issue of overly broad descriptions is not new, of course.  I have been preaching, cajoling, whining and arguing for years with my (mostly European) clients regarding what it means to have to prove use of a mark in the United States.  There have been endless conversations and arguments concerning the requirements for the submission of a declaration of use and how those requirements, rules and regulations are to be interpreted.  I have felt strongly about this subject for a long time and even co-authored an article outlining the consequences of filing incorrect affidavits of use (GRUR Int, Issue 3/2011, p. 225), Well, after many years of fruitless arguments it seems my clients are about to be faced with situations where they are going to have to really, I mean REALLY, prove that the are using the mark on all of the goods and services named in the registration, when it comes time to file an affidavit of use.

As my esteemed fellow blogger and colleague John Welch points out here, Examining Attorneys have had the power to request additional information all along under Rule 2.61(b).  It can be expected, however, that this new rule will embolden Examiners to aggressively seek additional information and specimens and I suspect (as it seems John does) that they have been told to use their power liberally.  This does not bode well for my clients, but I’m not at all upset about it.  After all, what the USPTO is doing here is really nothing other than enforcement of the already existing principle that governs trademark registration ownership in the US: use it or lose it!

Let me be clear about this: I’m behind the USPTO’s initiative.  I believe that the final results will be better for everyone. It will help clean the registry of deadwood and it will make applicants, especially those who initially adopt the “everything including the kitchen sink” approach, reconsider their description of goods and services, at the very latest when the time comes to file the affidavit of use required by §8 or §71 of Lanham Act, depending on the original filing basis.

The only negative is that I may have to explain to my clients how it came about that they suddenly have to submit additional specimens or get out a really big red pen and start deleting all of the chaff.   But they’ll get used to it…  I hope.


It has taken me a while, but I’ve decided that I have enough things to say about trademark law that it is time to join the blogosphere.

As the title suggests, this blog will focus on issues that concern trademark owners and their attorneys in transatlantic commerce.  Primarily, I will delve into issues that concern Europeans who seek trademark protection in North America (with my primary focus on the US but also touching on Canada – I may need a guest blogger for that part).  I will also delve into issues of concern for US trademark owners seeking protection in Europe.

One of the decisions I have had to make is what language to use.  For those who don’t know me, I represent many clients from the German speaking part of Europe and German is my first language, so it might have been logical for me to write a German language blog.  However, in the interest of appealing to as broad an audience as possible and because most Germans, Swiss and Austrian readers of this blog will be at least conversant in it, I picked English.

In the interest of keeping you guessing, I will also take the liberty of posting some off-topic pieces once in a while.  I suspect they will mostly have to do with my passion for flying.  We’ll see what strikes my fancy.

I hope you enjoy the blog and that it may be of some use to someone.  Please don’t forget to read the disclaimer, just so there are no misunderstandings.  While it will be difficult for a lawyer, I will try to keep the tone of this blog and its posts colloquial.

My first “real” posting is in the works and should follow tomorrow or maybe even later today, depending on other projects.

Comments, criticisms and suggestions are of course welcome.