According to intellectual property law, a trademark owner is required to regularly provide evidence of the “use of the mark” in connection with a bona fide offering for sale of goods or services.
Too often, however, registered marks are no longer used or have never been used in connection with the goods or services they identified on their registration.
As a result, companies looking to name new goods and services may find that their options are limited by the presence of these dusty “shelf” marks. The unused marks provide no real value to the original registrants, yet prevent other companies from using a form of intellectual property that could benefit their products or services.
To deal with this issue – or at least investigate its extent – the US Patent and Trademark Office (USPTO) is conducting a pilot study on “Post Registration Proof of Use.”
Under US trademark practice, registrants must submit a “declaration of continued use” between the fifth and sixth years after a federal trademark is registered. This is a simple filing involving an affidavit and a single specimen of the mark being used on goods or services.
In the pilot study, the USPTO selected 500 trademark registrations at random, “to assess the accuracy and integrity of the trademark register as to the actual use of the mark with the goods and/or services identified in the registration.”
The USPTO asked each registrant to submit proof of actual use of the mark for two additional goods or services per class. If registrants were unable to do so, the USPTO subjected the registration to additional proof-of-use requirements.
The study revealed that, with 94% of the test group responding, about half the registrations failed to meet the initial proof-of-use requirements.
The result was that the USPTO deleted certain goods or services from the failed registrations, or cancelled the entire registrations.
Attorney Laura Lloyd, Ph.D. says,
It is important to list the description of goods and services correctly on a trademark application to prevent the possibility of cancellation of the trademark in the future.
The eye-opening results of this pilot study led the USPTO to note with approval four suggestions for reform discussed at a recent roundtable discussion at George Washington University Law School on “The Future of the Use-Based [Trademark] Register.”
These suggestions included:
- A streamlined non-use expungement process;
- Requiring specimens for all listed goods and/or services;
- Increasing the “solemnity” of the declaration regarding use; and
- Conducting random audits of declarations.
The USPTO is inviting comments on this issue and potential solutions. Comments may be sent to TMPolicy@uspto.gov.
Even before the USPTO makes changes, if a foreign-based trademark application with a broad description of goods is blocking a US trademark registration, the US applicant can challenge the prior mark via the cancellation process.
If you have questions about “use” requirements for trademarks, or challenging prior marks, contact our office for a free initial consultation.
Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
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Photo Attribution: “Seal of the United States Patent and Trademark Office” by US Government is in the public domain.