How Facts Can Ruin a Good Story

Although I haven't taught trademark law in some time, and actually don't have plans to do so again any time soon, I keep half an eye on some trademark blogs and mailing lists. And this tale, from a posting on an INTA-sponsored mailing list really caught my eye:

I had hoped that when the U.S. finally agreed to the Madrid Protocol that we were taking some steps toward a global trademark practice (and respect for the rest of the world), but the USPTO seems intent on its old “do it our way” mentality. As an American who is generally proud of what I consider the best trademark office in the world, I am dismayed by some lapses of global thinking:

Exhibit A is the ridiculous requirement to translate foreign entities into a corresponding U.S. entity. Why can't we respect the corporate forms of other nations? Would it do some harm to U.S. trademark practice to list a trademark owner as a GmbH or an S.A. or an Srl? This is certainly more accurate than trying to fit these square pegs into the round holes of U.S. entity forms.

…earlier this year I had an Office Action where the applicant was from Calcutta, India and listed its entity type as an Indian corporation. The Examiner required that I specify whether the applicant was an American Indian tribe, and if so to name the tribe. When I complained to the Examiner's senior attorney that this was just ignorant to ask of a Calcutta firm (and embarrassing to have to explain to them), the senior attorney defended the Examiner and praised his care for precision in raising this issue.

I think we have a way to go in welcoming foreign applicants.

But the great thing about practitioner mailing lists, is that in addition to providing great little horror stories, they also keep you up to date. In the very next posting, I learned that such stories may be a thing of the past:

The newly revised TMEP eliminates this requirement. See TMEP 803.03(i).

And indeed the new TMEP 803.03 appears to do just that, as this partial quote from paragraph (i) demonstrates,

A statement of the accepted foreign designation (or an abbreviation therefor) of the legal entity of a foreign applicant is sufficient. The applicant may specify the legal entity by indicating the entity that would be its equivalent in the United States, but is not required to do so. The examining attorney should inquire further into the specific nature of a foreign legal entity if it is not clear that it is in fact a designation of legal entity in the particular country. The examining attorney may request a description of the nature of the foreign entity, if necessary.

Which is good news, but ruins a good story.

It also reinforces a general belief of mine: although it too has its quirks (see, e.g. dilution!), and its extremists (see, e.g. ICANN on domain names) both the Lanham Act specifically and trademark law generally tend to be among the more sensible bodies of law.

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