On August 16, 2012, The USPTO published a notice in the Federal Register, requesting comments on a proposal to change the statutory filing period for the initial Section 8 and 71 affidavits. The deadline for comments is October 15, 2012.
Under the proposed revised rule, owners of U.S. trademark registrations or Extensions of Protection under the Madrid Protocol would have to submit evidence of use of a mark in commerce (for Paris Convention or Madrid Protocol registrations, this would be the very first evidence of use) between the third and fourth anniversary of the U.S. registration date. Currently these affidavits are due between the fifth and sixth anniversary date of the registration. The proposal, therefore, moves the filing deadlines forward by two years.
The proposed amended deadlines will require owners of registrations to provide evidence of use and to limit their registrations to only those goods on which the mark is actually in use at an earlier point in time than is currently required. One of the stated goals of the USPTO being the removal of “deadwood” registrations from the Register, this proposal would accelerate the process of removing trademark registrations of marks which are no longer in use.
The current filing situation is of particular concern with respect to registrations issued under Sections 44 and 66 of the Trademark Act, which are owned by registrants located in countries other then the U.S. These trademark owners have the distinct advantage of being able to obtain registrations in the U.S. without having to prove use of their marks in commerce. Currently, registrants do not need to prove use in commerce until the Section 8 or 71 affidavit is due (six years after the registration issues). The lack of a requirement to prove use has led to the common practice of obtaining registrations covering sometimes extremely long lists of goods and services (because the U.S. registration is based on foreign registrations for which no use is required). The proposed amendments would ameliorate the problem of having a large number of registrations with extremely long descriptions of goods and services (which makes searching trademarks that much more difficult) by requiring all registrants to limit the scope of their registrations to only those goods on which the mark is actually in use at an earlier point in time.
The proposal also has the effect of bringing the procedural requirements in line with Trademark Act Section 45, which creates a presumption that a mark has been abandoned when there has been no use for three consecutive years. What trademark owners often forget is that registrations under Section 44 and 66 are already vulnerable to cancellation after three years of nonuse. It is also likely that the proposal, if it becomes law, would have the effect of decreasing the number of cancellation actions based on abandonment.
One of the disadvantages of the proposal is that the Section 8 and 71 affidavits would no longer be filed at the same time as the Section 15 affidavit of incontestability, thus adding another filing deadline to the docketing systems of most trademark lawyers and owners, along with burdening trademark owners with additional costs. It has been pointed out to this blogger that creating an additional filing deadline might lead to inadvertent failures to file Section 15 affidavits. The proposal will also have to be carefully analyzed to assure that there are no adverse effects on treaty obligations of the United States, especially the Madrid Protocol and GATT/TRIPS.
The USPTO has asked for comments regarding the proposal to address four specific questions:
(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.)
(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 with the filing of an Affidavit or Declaration of Incontestability under Section 15? What impact do you believe separating these filings would have?
This blogger will be fascinated to see how this one plays out.
A big “thank you” and hat tip to colleague and friend Alina S. Morris, who first alerted the Transatlantic Trademark Lawyer to this issue.