The U.S. Patent and Trademark Office (“USPTO”) is considering moving up the initial period for filing an Affidavit/Declaration of Use or Excusable Nonuse under Section 8 and Section 71 of the Trademark Act.

The new deadline would fall between the third and fourth anniversaries of a trademark registration (or in a subsequent six month grace period) rather than between the fifth and sixth year anniversaries (plus six month grace period).

The purpose of the declaration of use requirement is to remove deadwood from the Register—registrations for marks no longer in use. The concept for the earlier filing period is premised, in part, on research indicating a higher percentage of new businesses fail during the first two years of their existence than in the three years that follow.

Comments are requested by October 15, 2012. See the complete USPTO Notice of Inquiry

Among the points that trademark registrants and practitioners might want to consider:

  1. The impact on businesses to have to incur the expenses of the use declaration two years earlier in the life of the registration, and to lose some of the economies that ensue from being able to combine the use declaration with the declaration for incontestability under Section 15 of the Trademark Act;
  2. The impact on current docketing programs and protocols being used by registrants;
  3. The impact on foreign entities owning U.S. registrations under Section 44(e) or Section 66(a) of the Trademark Act who will now need to prove use or excusable non-use, two years earlier in the life of their registrations; and
  4. The impact on International Registrations dependent on the viability of a basic national U.S. registration for five years from the date of issuance of the International Registration.

Source: Fed. Reg. 49425, Vol. 77, No. 159 (Aug. 16, 2012)

This article was prepared by J. Paul Williamson ( / 202 662 4545), Tara M. Vold ( / 202 662 4657) and Tracy S. DeMarco ( / 202 662 4653)in Fulbright’s Intellectual Property and Technology Practice.