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Public Comments on Amending the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse: Oliff & Berridge, PLC

From: Wasikowski, Jeffrey E. [mailto:jwasikowski@oliff.com]
Sent: Tuesday, October 09, 2012 4:11 PM
To: TM FR Notices
Cc: Trademark Group
Subject: Comments Regarding Amending the First Filings Deadline for Affidavits or Declarations of Use or Excusable Non-Use

The following comments are provided by the law firm of Oliff & Berridge, PLC in response to the Request for Comments on the proposed amendment to the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse, published at 77 Fed. Reg. 49425.

Oliff & Berridge appreciates the opportunity to have its position considered by the USPTO.  Oliff & Berridge is an intellectual property law firm that represents hundreds of domestic and foreign trademark applicants.  The following comments reflect its experience with such applicants, but are not intended to represent the position of any one or group of such applicants.

Oliff & Berridge strongly opposes the USPTO's proposal to amend the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 or 71 to require such Declarations to be filed between the third and fourth years after the registration date.  Many of our clients filing their first Section 8 or 71 Declaration of Continued Use also simultaneously file a Declaration of Incontestability under Section 15.  The USPTO's proposal to change that first Declaration of Use filing date to between the third and fourth year after registration eliminates this convenience and imposes a significant additional cost burden on clients interested in filing a Section 15 Declaration.  The current U.S. trademark system already imposes significant additional burdens on applicants above and beyond most other countries and the USPTO's proposed amendment will further stifle investment by both foreign and domestic applicants and create unnecessary financial burdens for applicants to maintain their trademark registrations.

In addition, business failure is not the only, or even necessarily predominant, reason that use stops for registered trademarks.  Product life cycles and trademark life cycles also results in non-use.  Some foreign entities will only begin use once a registration is in place.  The current system balances the initial ten years of life of a trademark registration to keep deadwood from remaining on the register more than five years.  The proposed system would add years of life to the registration of a trademark whose use stopped just after five years. 

The "deadwood" problem identified by the USPTO could be addressed more effectively by creating a simplified and streamlined cancellation procedure that allows interested parties to quickly and easily challenge the validity of registrations on abandonment grounds.  The high cost and long duration of the USPTO's current cancellation proceedings discourage interested parties from challenging "deadwood" registrations.  The USPTO should offer a quick and easy means for interested parties to challenge registrations (or portions thereof) on abandonment grounds and provide the trademark owner the opportunity to respond to any such challenge by submitting a Declaration of Use and specimens to defend the validity of the registration.  In other countries (e.g., France), such a straightforward cancellation procedure offers interested parties an effective and inexpensive means to clear out "deadwood" registrations.  Unlike the USPTO's proposal, which addresses the "deadwood" problem by imposing a financial burden on all trademark owners while leaving substantial deadwood in place longer than would otherwise have been the case, a simplified cancellation proceeding could achieve the same goal promptly while imposing additional costs only on interested parties.

Thank you for the opportunity to present comments on the proposed collection.

Respectfully submitted,

/William P. Berridge/

Oliff & Berridge, PLC

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Oliff & Berridge, PLC, 277 S. Washington St., Suite 500, Alexandria, Virginia 22314, (703) 836-6400, email@oliff.com

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Last Modified: 10/12/2012 6:14:34 AM