7 October 2016Trademarks

USPTO offers ‘three-pronged’ approach to tackling trademark deadwood

The commissioner for trademarks at the US Patent and Trademark Office (USPTO) has offered a “three-pronged” approach to tackling the “deadwood” in the trademark database.

Mary Boney Denison’s blog was published yesterday, October 6, and addressed a number of changes which the office plans to make to the trademark register.

She said the USPTO is taking the “three-pronged” approach as a result of a recently conducted pilot programme.

The pilot programme was launched by the USPTO in 2012 to ensure the accuracy of its trademark registry.

It gathered data on whether registered marks were “actually being used” for the products and services listed on the registrations.

Denison said that “during the pilot, in 500 randomly-selected maintenance filings we required the registrant to submit proof of use for two additional items for each class listed on the registration.

“Although the registrant must submit one example of use per class in a maintenance filing, typically the registration will list multiple products or services for each class.”

As a result of the programme, the USPTO found that “in more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark for the goods or services queried”.

Under the first prong, the USPTO is increasing the readability of the registration declaration. It has reformatted the declaration to make it “more readable” for the signer.

By signing the registration declaration, the signee agrees that the mark is being used in commerce under section 1 of the Lanham Act.

Denison added that the USPTO is planning to “make the random audits of existing registrations permanent”.

A Notice of Proposed Rulemaking to make the random audits programme permanent was published in June and the public comment period was recently closed, with the USPTO now “drafting a final rule”.

Once the rule is implemented, “attorneys representing trademark registrants will be able to make registrants aware that, in order to maintain their registrations, they may be asked to submit and prove use on more than the one item of goods or services per class,” Denison added.

Finally, the USPTO is “considering proposing one or more new or revised procedures to cancel registrations for marks either no longer in use or never in use”.

The Trademark Public Advisory Committee met on April 28 to discuss the possibility of a new “expungement procedure” and “several streamlined” Trademark Trial and Appeal Board cancellation procedures, Denison said.

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