[council] NCUC statement on "use" requirement for Sunrise & URS
Mary.Wong at law.unh.edu
Mary.Wong at law.unh.edu
Sun Jun 19 09:51:15 UTC 2011
The following is a formal statement of the Non-Commercial Users Constituency (NCUC) in relation to the "use" requirement within the Trademark (TM) Clearinghouse and the URS. As with our earlier statement on the URS, we would greatly appreciate it being forwarded to the rest of the Board as soon as possible.
"NCUC supports the Board's response to the GAC in relation to the "use" requirement in the Trademark (TM) Clearinghouse and, for similar reasons that we articulate here, the URS. We note that all "marks that constitute intellectual property" (which expands the scope of the Clearinghouse from earlier drafts of the Applicant Guidebook) are eligible for participation in the TM Clearinghouse and the TM Claims Service.
A sunrise registration is a priority registration that privileges certain intellectual property owners. The Board's proposed use requirement is not particularly onerous, and needing to show a "specimen of current use" does not necessarily amount to the type of use that constitutes an actual use (rather than an "intent to use") in the course of trade under trademark law. Combined with a vague, broad and general expansion in the scope of marks that can now be in the TM Clearinghouse, removing the use requirement for sunrise would unnecessarily expand the risk that legitimate registrations could be blocked at the preliminary pre-launch stage and increase the possibility of abuse of the sunrise process while expanding the process rights of trademark owners.
Similarly, the requirement of use (which, as we noted above, is neither particularly onerous nor equivalent to "actual use" under substantive trademark law) should be retained for the URS. Besides the expanded risks that we explain above, removing the use requirement from the URS process would undermine the "slam dunk" nature of the types of claims that the URS is intended to deal with.
We therefore strongly urge the Board to retain the use requirement for participation in a sunrise process and the URS."
Mary W S Wong
Professor of Law
Chair, Graduate IP Programs
Director, Franklin Pierce Center for IP
UNIVERSITY OF NEW HAMPSHIRE SCHOOL OF LAWTwo White StreetConcord, NH 03301USAEmail: mary.wong at law.unh.eduPhone: 1-603-513-5143Webpage: http://www.law.unh.edu/marywong/index.phpSelected writings available on the Social Science Research Network (SSRN) at: http://ssrn.com/author=437584
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