USPTO Decides Not To Change Deadlines for Sections 8 and 71 Declarations

Further to my posting of August 17, 2012, the USPTO has now decided that it will not, at this time at least, pursue the issue of changing the filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act.  The USPTO’s notice in this regard reads as follows:

“On August 16, 2012, the USPTO published a notice inviting the public to submit written comments 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 (77 FR 49425 (August 16, 2012)).  A review of the comments submitted reveals that although many commenters expressed concern regarding registrations that are no longer in use in connection with some or all of the goods/services listed, the predominant sentiment was that the deadline should not be shortened.  Several commenters also noted that further research and data were necessary to support a legislative change to the deadline.  To that end, the USPTO notes that it is currently conducting a post-registration pilot program to gather information regarding the accuracy of identifications of goods/services for registered marks.  (77 FR 30197 (May 22, 2012)).”  See also here.

I’m not sure whether this kills the initiative or just postpones it, but I’m glad to note that the USPTO’s pilot program (previous blog post here) to assess the accuracy of the register will continue.  Under the pilot program, the USPTO may, upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark.

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