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USTPO seeks input on two trademark issues

Posted by ipelton on: September 7th, 2012

The USPTO recently issued two requests for comments from the public:

Possibility of lowering some trademark filing fees:

The USPTO seeks public comment on the possibility of adjusting trademark application fees so as to lower the fees for all applicants willing to file and communicate electronically with the USPTO . The efficiencies achieved by trademark electronic filing and communications have put the USPTO in a position to potentially reduce the overall collection of trademark application fees, and the Office wishes to adjust the fees in a way that further promotes efficiency both for users and the USPTO. Comments are also being sought on the possibility of increasing fees on applications based on paper, currently only 1% of trademark applications, given that these applications are more costly and burdensome for the USPTO to process. A Notice of Inquiry has been published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20127.pdf. Responses are due by October 15, 2012.

Possibility of moving up the deadline for filing a evidence of continued use (or excusable nonuse) of a registered trademark. [Current deadline is 6 years after the registration date.]

The USPTO seeks public comment on the possibility of amending federal law to shorten by two years the first filing deadline to demonstrate either use or excusable nonuse of a registered trademark. Although any such change would require a legislative amendment of the Trademark Act, and thus is beyond the authority of the agency, the USPTO wishes to collect public comment that might assist in the consideration of such an amendment, or another alternative. The goal would be to remove marks no longer in use, known as “deadwood,” from the register sooner.” Under this proposal, Sections 8 and 71 of the Trademark Act would be amended, requiring a trademark owner to file the first Affidavit of Declarations of Use or Excusable Nonuse within three to four years after the registration date, or the six-month grace period that follows. Under current law, owners must file their first Affidavit between five and six years after the registration date, or the six-month grace period that follows. A request for comments has published in the Federal Register, www.gpo.gov/fdsys/pkg/FR-2012-08-16/pdf/2012-20130.pdf, and responses are due by October 15, 2012.

The USPTO reads all of the comments. And in their final rule making process, they often address and comment on many of the suggestions, including those that they did not agree with or follow.

I previous requests for comments, the public response has often been underwhelming. Small businesses, trademark attorneys, and brand owners are all encouraged to submit their thoughts.  Check back here in a few weeks to see my comments on these issues.