[Federal Register Volume 77, Number 159 (Thursday, August 16, 2012)]
[Notices]
[Pages 49425-49426]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2012-20130]
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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.
ACTION: Request for comments.
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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 October 15, 2012.
ADDRESSES: The USPTO prefers that comments be submitted via electronic
mail message to [email protected]. 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 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
[[Page 49426]]
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.)
(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?
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.
Dated: August 10, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2012-20130 Filed 8-15-12; 8:45 am]
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