Blog December 2, 2020
Let's Eliminate 'Ongoing Efforts' Requirement For Trademarks
- Person title
As reported recently in Law360, there has been a rash of recent rulings from the Trademark Trial and Appeal Board holding that the lack of documentary evidence of a bona fide intent to use a mark may be used as evidence of lack of such an intent. It may be only a matter of time before the TTAB takes a similar position in cancellation actions regarding proof of a then-applicant's "ongoing efforts" to use a mark during the notice of allowance period under Trademark Rule 2.89(d) and holds that the absence of documentary evidence of such ongoing efforts is evidence of a lack of continued bona fide intent to use the mark.
Such a ruling would introduce an undesirable level of complexity and uncertainty in trademark applications, as applicants and their attorneys would be constantly wondering exactly what was required to meet the "ongoing efforts" requirement. Such a ruling would also place a permanent cloud over registrations based on an intent to use the mark that included a statement of "ongoing efforts" where the trademark owner may not have made sufficient "progress" towards use of the mark for that particular statement of use extension request. Maintaining the requirement to demonstrate "ongoing efforts" to use the mark every six months during the notice of allowance period maintains the charade that applicants and their attorneys know what is required of them and are meeting the standard.
This article first appeared on law360.com on May 21, 2014, and can be read in its entirety here.
Keith Barritt in the Washington, DC, office of Fish & Richardson. His practice is primarily focused on all aspects of trademark law, including prosecution and inter partes proceedings before the United States Patent and Trademark Office, Internet domain name issues, and trademark selection and enforcement, as well as all aspects of medical device regulation by the U.S. Food and Drug Administration, including obtaining marketing authorization for medical devices, use of new devices for investigational purposes, and import and export issues.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Blog December 9, 2019
Blog July 26, 2019
Heightened Scrutiny of Specimens of Use at U.S. Trademark Office
Blog July 3, 2019
Legal Alert: New Rule Requires Foreign-Domiciled Trademark Applicants, Registrants, and Parties at TTAB to Be Represented by U.S. Attorney
Blog April 2, 2018
USPTO Pilot Program Regarding Specimen Authenticity
Blog July 5, 2017
U.S. Trademark Office Clarifies Filing Deadlines for Resurrecting Dead Applications and Registrations
Blog June 8, 2017
Even GOOGLE Can Google After All
Blog May 19, 2017
What Does The "In" in "Incontestable" Mean?
Blog February 7, 2017
U.S. Trademark Office Sharpens Machete for Pruning Deadwood
Blog February 3, 2017
FDA Final Guidance on Nonproprietary Names of Biological Products
Blog March 28, 2023
U.S. Copyright Office Cancels Registration for AI-Generated Art, Issues AI-Related Registration Guidance
Article March 16, 2023
Attorneys Kristen McCallion and Darra Loganzo Co-Author World Trademark Review Article "Could AI Require Platforms to Do More to Prevent Infringement?"
Blog February 10, 2023
Need-to-Knows of the New Copyright Claims Board for Small-Value Copyright Claims
Blog December 12, 2022
Legal Alert: USPTO Updates Deadline to Respond to Trademark Office Actions
Article August 22, 2022
Principal Vivian Cheng Featured in Law.com Q&A Series "How I Made Partner"
Article June 16, 2022
Principal Cynthia Walden and Associate Sarah Kelleher Author World Intellectual Property Review Article "Selling the Intangible in Fashion: What Does It...
Blog March 8, 2022
The Basics of TTAB Cancellations
Blog November 9, 2021
The Basics of TTAB Oppositions
Blog October 5, 2021
ITC Monthly Wrap-Up: September 2021
Article July 23, 2021