Trademark registrations at the federal level in the U.S. are processed and administered by the U.S. Patent and Trademark Office (“USPTO”). Mostly, the USPTO is for domestic persons and corporate entities who want to register domestic trademarks. However, the USPTO is also the agency responsible for registering international trademarks owned or held by persons/companies seeking to use their trademarks in the United States. The process of registering foreign-registered trademarks is simplified by U.S. trademarks and by international treaties. There are actually two categories for foreign trademarks. In this article, the experienced Michigan trademark attorneys at Revision Legal discuss registration under § 66(a).
Section 66(a) applicants can use the standard applications form. However, under the question of which “basis” is being used, the applicants should check the box for Section 66(a). Section 66(a) applications are for those that already have a registration for the foreign trademark through the World Intellectual Property Organization (“WIPO”), which is located in Geneva, Switzerland. Technically, a Section 66(a) application is a “request to extend protection” of the foreign registered trademark to the U.S. A request to extend protection can also be filed through the International Bureau of WIPO (in which case the International Bureau will transmit the request to the USPTO).
A Section 66(a) application must meet the legal requirements for registration of a trademark in the U.S. and will be examined by the USPTO in the same manner as other applications. A Section 66(a) application is also subject to the standard publication rules in the Official Gazette and can be challenged in an opposition proceeding before the Trademark Trial and Appeal Board.
The key exception to the standard requirements is that the international trademarks under do not have to be currently used in the U.S. However, the application must state a legitimate intent to use the trademark in U.S. interstate commerce. Within a couple of years, the applicant will need to file Use Affidavits or Excusable Nonuse Affidavits with the USPTO to maintain the registered extension of protection. Registered Section 66(a) trademarks are placed on the Principal Registry.
There are some well-known common problems that Section 66(a) applications face. These problems are generally a function of the differences in how trademarks are registered and used in different countries around the world. One common problem relates to the trademark Class and subclasses chosen for association with the trademark. In the U.S., trademarks must be associated with certain trademark Classes, like Class 016 for paper goods. Further, the trademark must be used with each Class. This is not the case in many other countries. As a consequence, a Section 66(a) application might list many Classes, but the trademark might only be used with a small number of the Classes identified. Identification of too many Classes can cause rejection by the USPTO and can cause significant problems with maintaining a Section 66(a) registration. Some other common problems include:
- Failure to accurately and fully describe a design trademark
- Language uncertainties — for example, how does the word or character function as a trademark?
- Uncertainty with respect to the type of entity of the applicant — relates to how corporate entities are different from country to country
- Improper disclaimers
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
