Let's Eliminate 'Ongoing Efforts' Requirement For Trademarks

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.