USPTO Requests Comments on Proposal to Require Earlier Filing of First Section 8 Declaration

In an August 16, 2012, Notice (here) in the Federal Register (vol. 77, no. 159, page 49425), the USPTO is seeking public comments on a potential amendment to the Trademark Act that would change the first filing deadline for Affidavits or Declarations of Use or Excusable Nonuse under Sections 8 and 71 of the Trademark Act from between the fifth and sixth years after the registration date, or the six-month grace period that follows, to between the third and fourth years after the registration date, or the following six-month grace period. The deadline for written comments is October 15, 2012.


The purpose of the proposed amendment is to help ensure that registered marks are actually in use in commerce. "Reasons for adding the requirement included removing deadwood from the register, showing that a mark was still in use at the time it became incontestable, and [making U.S. law] correspond to English law."

In particular, the PTO requests comments on these questions:

(1) Is ‘‘deadwood’’ on the trademark register a concern of yours, and what impact do you believe it has?

(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.)

(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?
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