Sep 24 | 2012

Trimming the “Deadwood:” Should Evidence of Continued Trademark Use Be Required Sooner?

The U.S. Patent and Trademark Office (“PTO”) is seeking comments from the public on whether to pursue a change in trademark law to shorten the deadline for owners to demonstrate continued use (or excusable nonuse) of their marks.

Currently, trademark owners must file a sworn statement that their registered mark continues to be used  in commerce – or that there has been an excusable nonuse of the mark – between the fifth and sixth years after the date of registration. Failure to file this document, known as a Section 8 or 71 affidavit, means that the PTO will cancel the mark’s federal registration.

The PTO is considering whether to shorten this deadline to show use. Under the PTO’s current proposal, trademark owners would have to show use of their mark between the third and fourth years after the registration date (such a change in the law would require Congressional action, so the PTO is simply testing the waters with this idea).

The PTO’s thinking behind a shortened continued use time period is to clean up a register that has a tendency to get bogged down with “dead” marks.  It is not unusual for a business to discontinue use of a mark either due to business failures or changes in product marketing strategies.  Also, in the case of a foreign registrant, the mark may never have been used in the U.S., since foreign registrants are not required to demonstrate use in the U.S. prior to registration like U.S. owners are.

The accuracy of the register would arguably improve if the PTO could remove marks that are not in use earlier than after the current five year filing deadline. This in turn could save trademark applicants time and money in clearing and registering potential marks since the “deadwood” on the register creates obstacles and conflicts for legitimate marks to pass through to registration.

However, if the deadline shifts earlier, trademark owners will not be able to jointly file their Section 8 affidavit of use along with the optional Declaration of Incontestability – a Section 15 affidavit that can only be filed after a mark has been used continuously for five years. Filing the two together is a simple process and can save on attorney’s fees. On the other hand, staggering the Section 8 and Section 15 filings over a two-year-period might also allow start-ups and small businesses with tighter cash flows to more easily manage the costs of maintaining their registrations.

What do you think? The PTO has extended the comment deadline to October 22. Comments can be sent to

By Virginia Knapp Dorell, Law Clerk

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