Cleaning out my trademark registry
The USPTO is attempting to better enforce its existing rules for affidavits and declarations of use. David Sherman of Katten Muchin Rosenman explains what this means for owners of US trademarks

The US Patent and Trademark Office (USPTO) proposed a rule change on 21 June that would require trademark owners to submit additional information and documentation in order to maintain federal trademark registrations.

The proposal signals the USPTO’s desire to act on the findings of a two-year pilot programme that it began in 2012, in which 500 randomly selected trademark registrants who filed affidavits attesting to use of their registered mark were required to submit additional proof that their marks were in use. According to the USPTO, 51 percent of these registrants failed to provide the requested proof, and of these registrants, 35 percent requested that some goods or services identified in their registration be deleted because they were not actually in use, and the remaining 16 percent failed to respond and consequently had their registrations cancelled. Ultimately, 84 percent of the registrants’ affidavits were accepted (and their registrations maintained), either in whole or in part after unused goods or services were deleted.

The proposal, ‘Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases’, was published in the Federal Register on 22 June 2016.

The USPTO’s stated objective of the proposal is to “assess and promote the accuracy and integrity of the trademark register by verifying that marks are in use for the goods/services identified in the registration”. To accomplish this, the proposal seeks to amend the USPTO’s rules regarding the examination of affidavits or declarations of continued use, or excusable non-use filed pursuant to Section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable non-use filed pursuant to Section 71 of the same act.

Currently, the owner of a federal trademark registration is only required to submit one specimen of use per class to maintain its registration in that class, even where the description of goods or services in the class identifies multiples goods or services.

Under the proposed amendments, the USPTO could require trademark owners to submit additional “information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in the US for all the goods/services identified in the registrations, unless excusable non-use is claimed in whole or in part”.

By requiring additional specimens and documentation, the proposal seeks to enhance the USPTO’s ability to “clear the register of deadwood by cancelling, in whole or in part, registrations for marks that are not in use for all or some of the goods/services identified in the registration”.

The USPTO anticipates it would conduct random audits of up to 10 percent of the combined total of section 8 and section 71 affidavits filed in which a mark is registered for more than one good or service per class. In the event of any deficiency, it would likely issue an office action and, consistent with current practice, allow the trademark owner six months to respond.

The USPTO has stated that the proposed rule changes “will benefit the public by facilitating the USPTO’s ability to assess and promote the integrity of the trademark register by encouraging accuracy in the identification of goods/services for which use or continued use is claimed”.

Accuracy is important, the USPTO says, because the public relies on the USPTO’s records when searching and determining if a proposed mark is available for use and registration. For example, if a search of the USPTO’s records reveals an existing registered mark upon which a new mark might infringe, the searching party may decide to avoid adoption of the new mark and choose another mark, it may seek to cancel or oppose the existing mark, or litigation may ensue if a dispute arises with the existing mark’s owner.

By cleaning up the register to include only marks that are actually used, the proposal seeks to reduce the costs and burdens associated with each of these potential scenarios. If adopted, the proposed amendments would provide long-wanted relief to anyone who has attempted to clear a trademark only to encounter third-party registrations reciting long, rambling and suspect descriptions of goods and services, for which there is no evident use in the marketplace.

Trademark applicants may encounter fewer impediments during searches, may be more likely to file new applications (with more accurate identifications of goods and services), and may encounter less resistance from the USPTO and third parties during the prosecution of trademark applications.

Trademark owners may be less likely to overstate the extent of their rights and thus, less aggressive in taking enforcement action against third parties. The number of cancellation and opposition proceedings may decline, the number of settlements may increase, and costly litigation may be preemptively avoided.

Despite these benefits, the USPTO’s proposal would not be without costs. Although the USPTO has stated that it “does not anticipate the proposed rules to have a disproportionate impact upon any particular class of small or large entities”, the proposed amendments would likely have the greatest impact on trademark owners who own numerous registrations covering multiple classes and multiple goods or services within each class. Although the proposed amendments would not change the type of specimens that the USPTO would accept (for example, a photograph showing a mark used on a product would still suffice), they would increase the amount of evidence a trademark owner must submit to maintain its registration. As a result, some trademark owners could be required to make numerous additional submissions to maintain their rights.

By allowing the USPTO to require specimens for each of the goods or services identified in its registration (and not just one per class), the proposal would also implicitly require trademark owners to maintain specimens of use for all such goods or services or risk losing coverage, even though, as the USPTO says: “The proposed rules impose no new recordkeeping requirements on trademark registrants.” Trademark owners may incur not only additional costs responding to office actions and submission requests, but they may also suffer additional USPTO delays in the processing of submissions.

While critics may voice displeasure over the impact of these potential changes, the proposed amendments represent an attempt by the USPTO to better enforce its existing rules regarding affidavits and declarations of use.

As the USPTO works towards adoption of its proposal, it has invited the public to send comments, including suggestions of how to reduce the potential burdens associated with the proposal, by 22 August. Trademark owners are encouraged to send comments and may benefit from any corresponding changes to the USPTO’s proposal.
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