The Trademark “Chaff” Quandary: PTO Report On Post-Registration Proof of Use

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact

Mag GlassAs any IP lawyer will readily admit, trademark practice before the United States Patent & Trademark Office (PTO) comes with its fair share of annoyances: inconsistent treatment of similar applications, unreasonably stringent identification requirements, and so forth. Another difficulty lies in what appears to be a large number of registrations subsisting on the federal register, past their initial maintenance filings, despite a high likelihood that such marks are no longer used, or have never been used, in connection with some or all of their identified goods and services.

Many of these problematic registrations have their roots in applications based on incoming foreign filings, which are exempt from proof of use requirements prior to registration. Although all such applications require a bona fide intent to use the mark in U.S. commerce in connection with all of the identified goods and services, as a practical matter some foreign applicants use this opportunity to “reserve” a trademark for vast swaths of goods and services (indeed, such a practice is common in many first-to-register jurisdictions).

Some trademark practitioners have expressed concerns that these broad registrations have a chilling effect on business innovation, littering the federal register with trademark “chaff” that prevents new, bona fide market entrants from registering their own marks.  In response to these concerns, and to assess the quality of its operations more generally, the PTO is conducting a pilot study related to post-registration proof of use.

The Pilot Program

Under current PTO practice, all registrants must submit a declaration of continued use between the fifth and sixth year after federal trademark registration. This submission typically requires a simple affidavit and a single specimen of use per class of goods or services, even if a given class recites a list of multiple goods or services.

Under the pilot study, the PTO has required more.  The PTO selected 500 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.” Each registrant was asked to submit proof of use for two additional goods/services per class, in addition to the proof that had already been submitted.  If a registrant was unable to do so, the registration was subject to additional scrutiny and proof of use requirements.

The Results

With the study complete for 470 of the 500 registrations (94%), the program has revealed interesting results. In about half of the registrations, the registrants failed to pass the threshold proof of use requirements, resulting in either deletion of certain goods/services from the registration (34%) or cancellation of the entire registration (16%).  The PTO also separated the results by initial filing basis, as follows:

Basis for Registration % of Registrations with Goods/Services Deleted  % of Registrations Receiving Notices of Cancellation
Section 1(a) (Use-Based) 27% 17%
Section 44(e) (Direct Foreign Filings) 56% 7%
Section 66(a) (Madrid-Based Filings) 61% 18%
Combined Section 1(a) and 44(e) 63% 13%

The results appear to confirm the common understanding among U.S. practitioners that incoming direct foreign filings (Section 44(e)) and Madrid-based foreign filings (Section 66(a)) are more likely to have goods and services on which the mark isn’t used, resulting in either deletion of those goods or cancellation of the registrations.  It is notable, however, that 44% of the use-based (Section 1(a)) filings were flawed in some respect, including 17% that were canceled entirely, indicating that post-registration issues are far from endemic to  registrations based on foreign filings.

Possible Solutions

In a prior roundtable discussion held by the PTO and George Washington University Law School, attendees proposed several potential solutions to mitigate the “chaff registration” issue, including:

  • Creating a streamlined non-use “expungement” procedure that would be less involved than a typical cancellation action.
  • Requiring specimens for all goods/services in maintenance filings.
  • Increasing the “solemnity” of the declaration accompanying a maintenance filing, making registrants think twice before claiming use.
  • Conducting random audits of maintenance filings, in a manner similar to the pilot study itself.

A streamlined non-use procedure is an interesting proposal — as the PTO report notes, such a proceeding is used in Canadian trademark practice.  Requiring specimens for all goods/services, however, may not be feasible given the PTO’s already limited resources, and could unduly burden both trademark registrants and practitioners — as a practical matter, random audits seem more viable. And I’m not convinced that increasing the solemnity of the continued use declaration would have any measurable effect.

A parallel issue that has been discussed among trademark practitioners is the quality of post-registration review more generally — unlike pre-registration proof of use, maintenance filings typically aren’t reviewed by attorneys, which may result in somewhat lenient proof of use analyses.  The 44% of use-based registrations that were flawed, including the 17% that were canceled entirely, suggests that there is significant room for improvement here.  The USPTO plans to hold another roundtable to discuss these issues, and in the meantime welcomes comments or additional proposals via e-mail at TMPolicy@uspto.gov.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact
more
less

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!