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Public Comments on Proposed Rule Change for Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases: Bruce Burdick

From: Bruce Burdick [mailto:burdlaw@gmail.com]
Sent: Wednesday, September 07, 2011 12:09 AM
To: TM FR Notices
Subject: Proposed Changes to 37 CFR Parts 2 & 7 - Additional proofs

Dear Commissioner for Trademarks:

I have been practicing trademarks as an intellectual property lawyer for 40 years, 20 years as a corporate patent lawyer and Chief Trademark Counsel for a multi-national and 20 years as the owner of a patent firm specializing in the representation of small inventors in both patent and trademark matters.  I have uniformly found that the official record as far as specimens in trademark file histories is too skimpy.  When we were dealing with paper and with expensive photography, this was perhaps justified, but no longer when nearly everyone has a cell phone with an excellent camera perfectly capable of taking decent jpg photos for specimen use.  I like the computerization of the Trademark Office and TEAS, TARR, TTABVUE, etc.  Filing additional digital pictures is so simple that requesting additional ones to complete the official record is a good idea to assure use matches Identification of Goods in applications and registrations.  In my view specimens should be sufficient to show use on each and every described good and service, as otherwise such use is not really proven. I would also like to see a date of use listed for each good and service (date of the photograph would often suffice) so priority of use is easier for the public to quickly check.  So as not to trip up applicants and registrants and generate traps for the unwary, the Examiners should allow liberal correction of the specimen records.  Applicants and their attorneys should be strongly advised by the Office to save and submit digital photos showing evidence of dates of use so that the record of such is kept for posterity, particularly in the event of later conflict, or should the trademark later become particularly famous such that the Office has museum accessible historical records for historical researchers.  The point should not be to open avenues of attack against registrations, but rather to close and preclude them so as to make registration file histories more self-sufficient and self-sustaining of validity and more complete for historical purposes.  This could, in fact, create a collection of significant value and a source of access fee revenue for the Office as media and collectors seek to authenticate records through research of the trademark register and associated file histories and specimens.

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Bruce Burdick
BURDICK LAW FIRM, 3656 Western Ave., Alton, IL 62002
beb@burdlaw.com   www.burdlaw.com 618-462-3450 Fax 618-208-1712
My email policy is posted at www.burdlaw.com/webwarn.htm

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Last Modified: 9/8/2011 12:16:23 PM