[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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