Richard J. Greenstone

Attorney at Law

Law Bytes, Volume 2 Number 1

The Trademark Law Revision Act of 1988 and Intent to Use Provisions

Every computer software and hardware company should make itself aware of the Trademark Law Revision Act of 1988, implemented on November 16, 1989. This revision contains the most significant amendments to the Lanham Act since its enactment in 1947. The changes drastically effect procedures for obtaining federal trademark registration giving American business a competitive edge within the world market.

The most profound of these changes is the "intent to use" provisions which allow applicants to apply for federal trademark registration without having used the mark in interstate commerce. This means that while your business develops software or hardware, it may begin the process of protection for the trademark by filing an application with the Patent and Trademark Office (PTO). The new law allows an applicant with a bona fide intention to use a mark to file an application and have that application examined by the PTO to determine registrability. Under previous law the applicant had to actually use the mark in commerce between the several states prior to filing the application. The new law remains consistent with the old act in that the registration will not issue until after the applicant uses the mark in commerce.

How does an "intent to use" application differ from an application based upon use in commerce? The primary difference between the two types of applications is the claim the applicant makes regarding actual use. Before the revision of the Lanham Act, an applicant was not permitted to file an application until after actual use between two or more states had occurred. In other words, protection did not begin until, in some instances, it was exposed to potential competitors. The "intent to use" provision now enables the applicant to protect its trademark during the developmental stages, before exposure to the public.

Under the new law, the date of filing an "intent to use" application constitutes nationwide constructive notice against all entities except those who have (1) actually used the mark prior to the filing date, (2) previously filed a U.S. trademark application, or (3) priority based on section 44 (foreign applications).

The "intent to use" applications will be examined for substantive and procedural errors by PTO examining attorneys upon receipt just like applications based on actual use in commerce and then published for opposition in the Official Gazette.

After the mark clears the opposition process the PTO will issue a Notice of Allowance. Within six months of the Notice of Allowance, the applicant must submit specimens, a verified statement claiming use of the mark in commerce including the date of first use, designation of the goods or services specified in the Notice of Allowance and the mode or manner of use, and an additional fee of $100.00. The Trademark Examining Attorney will then resume examination of the applica tion. If all is in order, a Certificate of Registration will issue for the goods or services recited in the statement of use on which the mark is used. A Notice of Registration will then be published in the Official Gazette. There is no second opposition process.

If the applicant fails to use the mark in commerce within the six month period following the issuance of the Notice of Allowance, he may make a written request for a six month extension for filing the statement of use. The first extension is granted as a matter of right. The PTO may grant further extensions upon showing of good cause in increments of six-month periods not aggregating more than 24 months. Failure to timely file a request for an extension of time will result in abandonment of the application.

To make sure the examining attorney deems your mark registrable (on all issues not directly or indirectly related to use), it is a good idea to contact an attorney who specializes in the field of trademark law. The area is confusing and the chances of an Examining Attorney deeming the mark registrable, and allowing the mark to be published in the Official Gazette, significantly diminish.

The Trademark Law Revision Act of1988 addresses concerns of the business community and updates the status of trademark law in conformance with the world at large. The Act does change the structure of trademark law. This article briefly outlines such changes, but they are too extensive to address all of them in Law Bytes. For further information contact this office or your trademark attorney.

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