(490) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Docket No. PTO-T-2012-0031
Request for Comments Regarding Amending the
First Filing Deadline for Affidavits or
Declarations of Use or Excusable Nonuse
AGENCY: United States Patent and Trademark Office, Commerce
ACTIONS: Request for comments.
SUMMARY: To further ensure the accuracy of the trademark register, the
United States Patent and Trademark Office ("USPTO") is seeking public
comment on a potential legislative change to amend the first filing
deadline for Affidavits or Declarations of Use or Excusable Nonuse under
Sections 8 and 71 of the Trademark Act from between the fifth and sixth
years after the registration date, or the six-month grace period that
follows, to between the third and fourth years after the registration date,
or the six-month grace period that follows. The change would require
Congress to amend the Trademark Act, and the USPTO is interested in
receiving public input on whether and why such an amendment is or is not
favored.
DATES: Written comments must be received on or before [60 days from the
date of publication in the Federal Register].
ADDRESSES: The USPTO prefers that comments be submitted via electronic
mail message to TMFRNotices@uspto.gov. Written comments may also be
submitted by mail to Commissioner for Trademarks, P.O. Box 1451, Alexandria,
VA 22313-1451, attention Cynthia C. Lynch; by hand delivery to the
Trademark Assistance Center, Concourse Level, James Madison Building-East
Wing, 600 Dulany Street, Alexandria, Virginia, attention Cynthia C. Lynch;
or by electronic mail message via the Federal eRulemaking Portal. See the
Federal eRulemaking Portal Web site (http://www.regulations.gov) for
additional instructions on providing comments via the Federal eRulemaking
Portal. All comments submitted directly to the Office or provided on the
Federal eRulemaking Portal should include the docket number
(PTO-T-2012-0031). The comments will be available for public inspection on
the USPTO's Web site at http://www.uspto.gov, and will also be available at
the Office of the Commissioner for Trademarks, Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia. Because comments will be made
available for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included.
FOR FURTHER INFORMATION CONTACT: Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, at (571) 272-8742.
SUPPLEMENTARY INFORMATION
A Section 8 or 71 affidavit of continued use is a sworn statement that
the mark is in use in commerce, filed by the owner of a registration. If
the owner is claiming excusable nonuse of the mark, a Section 8 or 71
affidavit of excusable nonuse may be filed. The purpose of the Section 8
or 71 affidavit is to ensure the accuracy of the trademark register by
removing "deadwood," or marks no longer in use, from the register.
In the interest of ensuring that registered marks are actually in use in
commerce, the USPTO is exploring whether or not there would be a benefit in
shortening the first filing deadline for Affidavits or Declarations of Use
or Excusable Nonuse under Sections 8 and 71 of the Trademark Act (15 U.S.C.
1058, 1141k). Therefore, the USPTO is providing the public, including user
groups, with an opportunity to comment on the idea of a statutory change to
shorten the first filing deadline from between the fifth and sixth years
after the registration date, or the six-month grace period that follows, to
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between the third and fourth years after the registration date, or the
six-month grace period that follows. Such a change would necessitate a
legislative amendment of the Trademark Act, and thus is beyond the
authority of the USPTO, but the USPTO wishes to collect public comment that
might assist in the consideration of such an amendment, or another
alternative.
The accuracy of the trademark register as a reflection of marks that are
actually in use in the United States for the goods/services identified in
the registration serves an important purpose for the public. Members of
the public rely on the register to clear trademarks that they may wish to
adopt or are already using. When a party searching the register uncovers
a similar mark, registered for goods or services that may be related to the
searching party's goods or services, that party may incur a variety of
resulting costs and burdens in assessing and addressing potential consumer
confusion. Such costs and burdens may include changing its mark,
investigative costs to determine the nature and extent of use of the
similar mark and to assess whether any conflict exists, or cancellation
proceedings or other litigation to resolve a dispute over the mark. If a
registered mark is not actually in use in the United States, or is not in
use on all the goods/services recited in the registration, these costs and
burdens may be incurred unnecessarily. Thus, improving the accuracy and
reliability of the trademark register helps reduce such costs and burdens,
and thereby benefits the public.
The current requirement to file an affidavit of use or excusable nonuse
during the fifth year after registration developed in 1939. Reasons for
adding the requirement included removing deadwood from the register,
showing that a mark was still in use at the time it became incontestable,
and to correspond to English law. See Trade-Marks: Hearings on H.R. 4744
Before the Subcomm. on Trademarks of the H. Comm. on Patents, 76th Cong.
72-74 (1939).
For marks registered under Section 44(e) (15 U.S.C. 1126(e)) or Section
66(a) (15 U.S.C. 1141f(a)) of the Trademark Act, no specimen of use in
commerce in the United States is required prior to registration. In
addition, recent research indicates that a significantly higher percentage
of businesses fail during the first two years after their establishment
than during the three years that follow. See SBA Office of Advocacy,
Frequently Asked Questions (Jan. 2011), http://www.sba.gov/sites/default/
files/sbfaq.pdf. Thus, use of marks registered by such failed businesses
may have ceased long before the first Section 8 or 71 affidavit is
currently required to be filed. Therefore, the proposed amendment would
help ensure the accuracy of the trademark register by more promptly
cancelling marks that are not in use.
The USPTO notes that shortening the first filing deadline for Affidavits
or Declarations of Use or Excusable Nonuse under Sections 8 and 71 would
foreclose the ability that currently exists to combine the filing of an
Affidavit or Declaration of Incontestability under Section 15 of the
Trademark Act with the first-filed Section 8 or 71 affidavit (see 15 U.S.C.
1065). However, the Section 15 affidavit is optional, and it is often
filed independently of the Section 8 or 71 affidavit. Moreover, any
impact on the ability to file it in combination with a Section 8 or 71
affidavit should be considered within the context of a more accurate
register, where deadwood is removed several years sooner.
Please consider responding to the following questions in your comments:
(1) Is "deadwood" on the trademark register a concern of yours, and what
impact do you believe it has?
(2) Do you favor or oppose an amendment to shorten the first filing
deadline for Affidavits or Declarations of Use or Excusable Nonuse under
Sections 8 and 71 as a means of ensuring the accuracy of the trademark
register? (Please explain why.)
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(3) If you favor shortening the deadline, what time period do you
believe would be most appropriate for the first filing deadline?
(4) Are you concerned that an amendment to the first Section 8 and 71
affidavit deadline would foreclose the ability to combine the filing withe
the filing of an Affidavit or Declaration of Incontestability under Section
15? What impact do you believe separating these filings would have?
While the USPTO welcomes and values all comments from the public in
response to this request, these comments do not bind the USPTO to any
further actions related to the comments. Persons submitting written
comments should note that the USPTO will not provide "comment and response"
analysis, since notice and opportunity for public comment are not required
for this notice under 5 U.S.C. 553(b) or any other law.
August 10, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1382 TMOG 261]