Category: Trademarks

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Daylight saving time and WIPO

Keep in mind that Switzerland will turn off daylight saving time today.  Those who are filing documents at the International Bureau — documents that need a same-day filing date — should check to make sure they know what time it is in Switzerland as of today.

For US filers, keep in mind that the US will not turn off DST today.  The US will turn off DST a week from now.

US filers who are getting ready to file a document at the IB should thus pay close attention during this next week to what time it is in Switzerland.

The practical effect for most US filers is that for the next week, you get an extra hour to e-file.  For example if you are in the Mountain Time Zone, normally you rush to file by 4PM if need a same-day filing date at the IB.  But for the next week you can file as late as 5PM and you will still get a same-day filing date at the IB.

Those who are e-filing in ePCT can readily check any time to see what time it is in Geneva, because at the top of any ePCT user screen it says what time it is in Geneva.  Here is a screen shot.  For example right now it is 4:44 AM Mountain Time and as you can see it is 11:44 AM in Geneva.

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Another fax bites the dust

More and more fax machines and fax numbers are biting the dust.  Here are the most recent announcements (see October 2018 PCT Newsletter):

  • The Intellectual Property Office of New Zealand has just announced that it has discontinued use of its fax machine.
  • The Industrial Property Office of Slovakia has announced that with effect from January 14, 2019, it will discontinue the use of its fax machine.

These follow previous announcements from some months ago, for example:

  • On April 1, 2018, WIPO disconnected its fax machine for Madrid-related communications.
  • Oppedahl Patent Law Firm LLC stopped posting a fax number on July 21, 2018.
  • Some months ago WIPO announced that it is considering discontinuing its fax machines for PCT-related communications from the end of 2018.
  • Some month ago WIPO proposed to discontinue the use of facsimile communications for Hague Agreement communications from January 1, 2019.
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Are you a user of Madrid Protocol? Will you be in Washington on October 27?

Are you a user of the Madrid Protocol? Will you be in Washington, DC on Saturday, October 27?

If so, then please consider helping the World Intellectual Property Organization (WIPO) — and yourself — by attending a focus group of US users of the Madrid system at 7AM on that day at the Washington Marriott Wardman Park hotel in Washington, DC.  Although WIPO’s focus group will be held in conjunction with the AIPLA Annual Meeting, you do not need to be registered for the Annual Meeting to participate in the focus group.
Continue reading “Are you a user of Madrid Protocol? Will you be in Washington on October 27?”

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Malawi joins Madrid Protocol

click to enlarge
On September 25, 2018, the Government of Malawi deposited its instrument of accession to the Madrid Protocol with WIPO’s Director General, making Malawi the 102nd member of the Madrid System, which now covers 118 countries. The Protocol will enter into force for Malawi on December 25, 2018.

Starting from December 25, a trademark owner in Malawi can file a Madrid Protocol application to pursue protection in one or more Offices outside of Malawi.  And starting from that date, a trademark owner outside of Malawi can file a Subsequent Designation to Malawi (or can file a new Madrid Protocol application designating Malawi).

It is recalled that the Patent Cooperation Treaty entered into force on January 24, 1978, initially with 18 contracting states.  But perhaps not all readers appreciate that Malawi was one of those initial 18 contracting states for the PCT!  Saying this differently, Malawi was more trendy, modern, and up-to-date about the PCT than most of the 152 present-day members of the PCT.  Nobody joined PCT sooner than Malawi!

The two-letter code for Malawi is “MW”.

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Should USPTO ban non-electronic trademark filings?

When I was first in practice, many years ago, the only way to file a trademark application was on paper.  Another way to say this is that the rate of e-filing was zero percent.

The US Trademark Office introduced trademark e-filing on March 20, 2000.  The first-ever electronic US trademark application was filed at 10:30 AM on that day.  Later that day, I launched the E-Trademarks listserv, an online community that continues to be very active now in 2018.

I did not have an opportunity to e-file a US trademark application for the first time until ten days later, on March 30, 2000.

Interestingly, in those early days the way that an electronically filed US trademark application got examined was that somebody at the Trademark Office printed it out on paper, and then the printout was injected into the workflow as if it had been paper-filed.  It took almost a year for the Trademark Office to implement electronic workflow for the Examining Attorneys.

By now in 2018 the rate of e-filing, depending on your metric, is something in excess of 99%.  But it seems that 99% is not good enough for the Trademark Office.  The Trademark Office would like to eliminate that last 1%, as may be seen in the Federal Register notice of May 30, 2018.  The Trademark Office proposes to mandate that only e-filing be used for trademark filings, thus eliminating the option of paper filing except in certain narrow situations.

When I was first in practice, pretty much the only way that a group of trademark practitioners could make their view heard in a rulemaking proceeding was through a professional or industry association such as INTA or AIPLA.  In recent years, however, the E-Trademarks listserv has submitted comments.  You can see comments that the listserv submitted in 2016.  And just yesterday the E-Trademarks listserv submitted comments in the present rulemaking.  You can see the comments here.