USPTO Takes on Deadwood

For several years now, the U.S. Patent and Trademark Office (USPTO) has been concerned about the amount of “deadwood” on the U.S. trademark Register – registrations that remain in force, but cover marks that are not actually in use for all of the covered goods and services.

To determine the extent of this deadwood problem, the USPTO instituted a two-year study to assess the accuracy and integrity of the trademark Register in July of 2012. The USPTO randomly selected 500 registrations for which post registration Section 8 or 71 Declarations of Use were recently filed, and required the owner to submit proof of use for two additional goods/services per Class.

Over the duration of the study, the USPTO found that 35% of the registrations required deletion of at least some of the goods/services covered by the registrations based on lack of use. Another 16% of the registrations were cancelled all together.

The USPTO is now considering four options for increasing the accuracy of the Register, including: (1) creating a streamlined non-use expungement procedure, similar to that in use in Canada; (2) increasing the required specimens for filing Section 8/71 Declarations; (3) increasing the solemnity of the Declaration language; and (4) conducting random audits of Section 8/71 Declarations. The USPTO is seeking comments on the various options via email at TMPolicy@uspto.gov.

This article appeared in the December 2014 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.