How the New Trademark Law Treaty Act of 1998 Will Effect Federal Trademark Registrations

Summer/Fall 1999

The Trademark Law Treaty Implementation Act (TLTIA), Pub. L. 105–330, 112 Stat. 3064 (Oct. 30, 1998), amended several  sections of the Lanham Act to conform the application and renewal  procedure to the requirements of the Trademark Law Treaty, which was designed to  simplify and harmonize worldwide registration formalities.  Generally speaking, the amendments to the Lanham Act will have very little substantive impact, however their will be a number of format and procedural changes that should be noted.  For example, currently between the 5th and 6th year following registration of a mark, a Section 8 (Affidavit of Continued Use) must be filed.  If a Registrant fails to file the affidavit by the deadline, the registration is canceled.  However, with the implementation of TLTIA, Registrants are given a six month grace period with the payment of an additional fee.  Additionally, registrants will now have a six month deficiency period to correct many potential deficiencies in the Affidavit (although not all).  Of course, the deficiency period also requires payment of an additional fee as do most filings with the U.S. Patent & Trademark Office.

The TLTIA also amended Section 9 of the Lanham Act which formerly required a statement of continuing use of the trademark to remove this requirement and thereby conform to international trademark standards.  However, the deleted Section 9 requirement was added to Section 8 to now require not only the filing of a Renewal Application under Section 9 every ten years, but also a Section 8 Affidavit of Continuing Use every ten years, effectively circumventing the Trademark Law Treaty’s prohibition against requiring an affidavit of continuing use as a condition of renewal of registrations.

The treaty is mainly geared towards harmonizing many registration formalities, and eliminating a number of government requirements for trademark registration, thereby reducing the procedural burdens on trademark owners.  The treaty primarily focuses on procedural and administrative requirements.  However, some substantive provisions were also included.  Since many nations have differing procedures for registration and recordation of changes in trademark registration, it is commonly believed that harmonizing procedures between nations will reduce expenses and help facilitate world trade.  Although, this may be the intent, our experiences have shown that expenses associated with foreign trademark prosecution by U.S. entities continue to be extremely high and even with harmonization of governmental rules and regulations, these costs may continue to dissuade small to mid-size businesses from undertaking the trademark registration process in foreign countries.