Changes to Trademark Law

Communication received from a representative of the USPTO:

The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010 (Pub. Law No. 111-146, 124 Stat. 66 (2010)). In addition to making small technical and conforming corrections in Sections 7, 15 and 21 of the Lanham Act, 15 U.S.C. §§ 1057, 1065 and 1071, the legislation makes more significant changes to Sections 8 and 71, 15 U.S.C. §§1058 and 1141k, regarding filing affidavits of continued use or excusable nonuse to maintain a registration. With respect to all post registration maintenance filings required under the Lanham Act, owners may correct deficiencies in such submissions outside of the statutory period for filing, upon payment of a deficiency surcharge. Such deficiencies now specifically include when the affidavit was not filed in the name of the owner of the registration. In addition, owners of U.S. registrations under the Madrid Protocol now have the benefit of six-month grace periods immediately following the statutory time periods. Previously, no grace period existed at the end of the six-year period following the date of registration in the U.S. and only a three-month grace period existed following the expiration of each successive 10-year period following registration. The newly enacted grace periods match those given to other trademark registrants.

For answers to frequently asked questions regarding declarations of continued use or excusable nonuse, please see the Trademark Processes section of the USPTO’s Web site, “Maintain/Renew a Registration.” The Trademark Technical and Conforming Amendment Act of 2010 became effective on March 17, 2010 (Pub. Law No. 111-146, 124 Stat. 66 (2010)). In addition to making small technical and conforming corrections in Sections 7, 15 and 21 of the Lanham Act, 15 U.S.C. §§ 1057, 1065 and 1071, the legislation makes more significant changes to Sections 8 and 71, 15 U.S.C. §§1058 and 1141k, regarding filing affidavits of continued use or excusable nonuse to maintain a registration. With respect to all post registration maintenance filings required under the Lanham Act, owners may correct deficiencies in such submissions outside of the statutory period for filing, upon payment of a deficiency surcharge. Such deficiencies now specifically include when the affidavit was not filed in the name of the owner of the registration. In addition, owners of U.S. registrations under the Madrid Protocol now have the benefit of six-month grace periods immediately following the statutory time periods. Previously, no grace period existed at the end of the six-year period following the date of registration in the U.S. and only a three-month grace period existed following the expiration of each successive 10-year period following registration. The newly enacted grace periods match those given to other trademark registrants. For answers to frequently asked questions regarding declarations of continued use or excusable nonuse, please see the Trademark Processes section of the USPTO’s Web site, “Maintain/Renew a Registration.” www.uspto.gov/trademarks/process/maintain/prfaq.jsp.

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