Jan 31 | 2013

“Deadwood” Proposal Dead at USPTO

You may recall our last blog post titled “Trimming the ‘Deadwood:’ Should Evidence of Continued Trademark Use Be Required Sooner?”  This earlier post explained that the U.S. Patent and Trademark Office (PTO) sought public comment on whether it should shorten the post-registration deadline for trademark owners to show use (or excusable nonuse) of their marks.  Based on the comments it received, the PTO has decided not to make any changes at this time, which leaves the current deadline in place for filing between the fifth and sixth year after a mark registers.

Proponents of shortening the post-registration evidentiary timeline suggested that the move would trim the “deadwood” off of the Principal Register. Some feel that “deadwood” – unused marks – can be bumps on the road to registration for a new mark, since these “dead” marks can be cited by the PTO against attempted registration by a “live” applicant. However, some raised concerns about whether the change would have required burdensome adjustments to docketing systems that firms use to keep track of trademark maintenance deadlines or would have impacted U.S. treaty obligations.

The PTO’s explanation for maintaining the status quo was, in part, as follows:

“…although many commenters expressed concern regarding registrations that are no longer in use in connection with some or all of the goods/services listed, the predominant sentiment was that the deadline should not be shortened.  Several commenters also noted that further research and data were necessary to support a legislative change to the deadline.  To that end, the USPTO notes that it is currently conducting a post-registration pilot program to gather information regarding the accuracy of identification of goods/services for registered marks.”  (77 FR 30197 (May 22, 2012))

Given the possible ramifications that commenters noted and the divergence of opinions on the subject, it makes sense for the PTO to study the issue further. While the goal of increasing the accuracy of the Principal Register is commendable, it doesn’t appear – at least at first blush – as though the positives outweigh the potential negatives in making the suggested change.

© 2013 Dunner Law PLLC

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