Message from the USPTO: Use it or lose it.

 

A pilot program launched in 2012 by the United States Patent and Trademark Office (USPTO), suggests that many trademarks registered may not actually be used.  Per remarks by the Trademark Commission regarding the pilot program,  more than half of the trademark registrations selected in the pilot program were unable to verify the actual use of the mark for the goods or services queried.

To date, in just over half of the registrations selected for the pilot, the trademark owners failed to meet the requirement to verify the previously claimed use on particular goods and/or services.  173 of the registrations, or 35%, involved deletions of the goods and/or services queried under the pilot.  In another 80 registrations, or 16%, the trademark owners failed to respond to the requirements of the pilot and any other issues raised during examination of the underlying maintenance filing, resulting in cancellation of the registration.  Accordingly, of the 500 registrations selected for the pilot, to date a total of 253 registrations, or 51%, were unable to verify the previously claimed use in their Section 8 or 71 Declarations.  Post Registration Proof of Use Pilot Status Report

The Trademark Commissioners on the blog remarked:

When selecting a mark for a new product or service, a business will search the USPTO database of registered marks to determine wfree-knock-out-searchhether a particular mark is
available. Registered trademarks that are not actually in use in commerce unnecessarily block someone else from registering the mark.

The gap between the use of trademarks and registrations detracts from the validity of the trademarks registration status and dilutes the trademarks processes.

Renewal filing requirements are meant to preclude this exact problem.  5 years from initially registering a trademarks and every 10 years thereafter, trademark owners are required to submit use samples [referred to as specimens] to the USPTO.

In response to the widespread issue of false renewal trademarks, the USPTO has changed the renewal process.  As part of the renewing trademarks every 5 and 10 years, trademark owners have always been required to sign a sworn declaration saying that the mark is being used.  The USPTO has made the sworn declaration easier to read and more blatant.

Old Attestation

old-uspto

 

New Attestation

new-uspto

To the further address this issue, the USPTO is looking at instituting a new ‘Expungement’ status for trademarks that have never been used and streamlining procedures to delete trademarks that has been abandoned or that use-requirements were not met.

Based on the pilot program findings, the USPTO has announced its intention to continue random on-going checks of registered trademarks.

 

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