The USPTO recently issued a request for public comments regarding possible amendment of the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under §§ 8 and 71 of the Trademark Act to between the third and fourth years after registration, or the six-month grace period that follows.
The request essentially is asking, when is the optimum to require proof of such use? The current time is between the 5th and 6th anniversary of registration. Our firm – largely through the efforts of Associate Mark L. Donahey – uses statistical data and analysis to determine whether the proposed shorter time frame would help to rid the USPTO register of “deadwood” – those registrations that are still active but which are no longer in use.
As you can see from our analysis below, it turns out that the proposed time frame – between the third and fourth anniversary of registration, and the subsequent 6 month grace period – would benefit the trademark register and its users by ridding the register of a substantial amount of deadwood. Less deadwood makes clearing marks easier and less expensive. It makes registering marks easier and less expensive. It reduces the number of cancellation filings, presumably, on grounds of abandonment. In short, it benefits the trademark system as a whole in many ways.
To our knowledge, this is the only comment on the issue that uses a statistical analysis of the USPTO’s data. Others can speculate as to the benefits or costs of any proposed change in the deadline, but they may with to re-evaluate or supplement their comments based on the data in our comment.
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We welcome your thoughts or comments regarding the data and the analysis.