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Public Comments on Amending the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse: Fred W. Hathaway

From: Hathaway, Fred [mailto:fred.hathaway@bipc.com]
Sent: Monday, October 08, 2012 3:32 PM
To: TM FR Notices
Subject: Request for Comments Regarding Amending the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse

I believe a proposal to move the first Section 8 filing to four years is worth further consideration but only if the proposal also includes amendments regarding Section 15 to compensate for the inefficiencies that would be created by separating the Sections 8 and 15 filings.

Deadwood on the register is of some concern among mark owners and always will be to some degree.  The issue was materially addressed by the 1989 amendments and the reduction of the registration term from 20 years to ten.  The corresponding increase of the non-use presumption of abandonment period from two years to three somewhat undercut that but not significantly. 

To the extent the deadwood issue is still present after the 1989 amendments, it is somewhat mitigated by service providers with access to technology and resources such that the use or non-use of a registered mark can be determined more accurately, quickly and efficiently than in the past.  If the investigation shows prolonged non-use and if a cancellation proceeding is required it will often be decided by default and for reasonable fees. 

In my experience, virtually all Section 15 filings are made in combination with the six-year Section 8 filing.  Thus, moving up the first maintenance filing from six years to four would create material logistical and cost issues for registrants; in almost all cases there would be three filings in the first ten years as opposed to two. 

One alternative that might be considered would be to do away with Section 15 filings completely (still leaving intact the statutory five year benefits in Section 14).  Instead, litigants would be allowed to prove the simple Section 15 elements with slight modifications (no pending proceeding (other than the present one) or adverse decision; five years of continuous use – preferably made the most recent five years leading up to the proceeding) in TTAB or court proceedings in order to secure the Section 15 benefits.  The benefits of Section 15 primarily come to bear in litigation anyway and any present deterrent effect on others of a registration showing that a Section 15 filing has been made is minimal. 

Respectfully submitted,

Fred W. Hathaway

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Last Modified: 10/12/2012 6:25:04 AM