Public Comments on Amending the First Filing Deadline for Affidavits or Declarations of Use or Excusable Nonuse: Stephen D. Wilson
From: Wilson, Stephen D. [mailto:SWilson@preti.com]
Sent: Wednesday, August 22, 2012 2:42 PM
To: TM FR Notices
I am respectfully opposed to any amendment to shorten the deadline for filing a Section 8 Declaration.
(1) Is “deadwood” on the trademark register a concern of yours, and what impact do you believe it has?
“Deadwood” on the U.S. register is not a major concern, and any perceived benefit of cancelling more registrations is outweighed by the costs of implementing new trademark deadlines and filing requirements. Cancellation of a U.S. registration does not mean that the mark is no longer in use, so the mark could still be protected under state laws even without a live U.S. registration. Owners of inadvertently cancelled U.S. registrations may bring more infringement claims in state courts, which may be more difficult and expensive to defend than in federal courts. Anyone interested in a potential deadwood mark can simply contact the registrant (and conduct inexpensive internet research) to ask if the mark is still in use.
(2) Do you favor or oppose an amendment to shorten the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 as a means of ensuring the accuracy of the trademark register? (Please explain why.)
Oppose. Shortening the deadline will increase client costs, pitfalls, and confusion for trademark registrants, with little benefit. Most of our clients file combined Sections 8 & 15 declarations. A 5-year deadline is easy for clients to calculate and remember, and imposing an additional 3-4 year Section 8 filing window on top of the 5-6 year Section 15 filing window is going to result in more client confusion, as well as greater fees to prepare and file separate declarations at different times. Trademark docketing will become more time-consuming and expensive, and trademark docketing software programs will need to be updated.
(3) If you favor shortening the deadline, what time period do you believe would be most appropriate for the first filing deadline?
(4) Are you concerned that an amendment to the first Section 8 and 71 affidavit deadline would foreclose the ability to combine the filing with the filing of an Affidavit or Declaration of Incontestability under Section 15? What impact do you believe separating these filings would have?
Yes, this would result in greater cost and client confusion. The USPTO would also presumably face significantly more filings without an ability to file combined declarations.
Stephen D. Wilson | Attorney
Chair of Intellectual Property Practice Group