[council] NCUC statement on "use" requirement for Sunrise & URS

[<Mary.Wong@xxxxxxxxxxx>]

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.
 
Thank you.
 
"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."
 
Best regards,
Mary
 
 
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@xxxxxxx.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