May 24, 2017—The U.S. Patent and Trademark Office register contains a lot of dead weight. In order to obtain a trademark registration and maintain the registration, the owner must use the mark in U.S. interstate commerce (as always, with a few limited exceptions). What constitutes dead weight? Usually marks that are currently registered, but not actually used in commerce. These registrations could be identified in a preliminary clearance search by your attorney, causing you to choose a different name rather than the one you really want. The registration might be cited against your application, forcing you to choose whether you’d like to embark in a Petition for Cancellation of the registration, or just move on to a new name. If you or a client has ever found yourself in one of these positions, the USPTO is considering expanding the available options to remedy the situation and is seeking public comments.
There is a need for a streamlined procedure for cancellation of registrations for claims of non-use or abandonment. With the ease of online filing, the number of trademark registrations has risen significantly, issuing at a rate 4,500 per week. Beginning in 2015, the USPTO also began issuing to owners courtesy reminders informing them that the maintenance and renewal windows are now open. To be honest, it’s pretty easy to file a trademark application, obtain a registration, and maintain a registration. You can do it all electronically through the USPTO website.
Yet, it is also very easy to do it incorrectly, rendering that Certificate of Registration to be a worthless piece of paper – that’s where we attorneys add value. For example, an attorney can help determine whether a mark is actually used in commerce at the right time. The USPTO doesn’t have the time or resources to investigate whether a mark is in use, so the fact that the USPTO accepted a specimen does not provide any cover. To obtain the registrations, Applicants and registrants need only click a box acknowledging that the mark is in use, and provide a sample (aka, specimen) of how the mark is used in commerce. Even if the USPTO accepts the specimen and issues a Certificate of Registration, that registration could be cancelled if the mark was not used in commerce at the relevant date.
The risk of doing it incorrectly doesn’t stop third-parties from continuing to register marks that have questionable claims of “use in commerce.” There’s a vast array of individuals and entities with dead weight registrations. The first group that comes to mind are the registrations that you know aren’t used just based on looking at the registration. For example, the individual that claims to provide space travel services and owns dozens of registrations for various FUTURE trademarks in connection with a wide variety of goods and services, including space travel services and manufacture of space vehicles. As you might guess, the specimen that was accepted by the USPTO is, at best, questionable:
Then there are the “Golden Ticketers.” These are people and entities that seem to have a plan to later sell or license one of their many marks that, again, have questionable claims to use in commerce. These commonly happen when a well-known brand has a new product, or may need to rebrand, for example, the Washington Redskins. There are a number of trademark registrations for a various WASHINGTON ___ marks with dubious claims to use in commerce, like the WASHINGTON ARROWS, AMERICANS, FOUNDERS, NATIVES, PANDAS, MONUMENTS, VETERANS, RED-TAILED HAWKS, and the WASHINGTON FEDERALS. Most are registered in connection with “Providing a website featuring information relating to the sport of football.” And as you can tell from the owner’s website, it is technically in use:
It provides helpful information regarding the sport of football, including pertinent details like “The team with the most points at the end of the game wins.”
In light of this, the USPTO has good reason to implement a new method of challenging registrations for non-use. While I encourage everyone to read the Notice in full, here are the highlights:
- The new procedures are limited solely to claims of abandonment, or non-use for some or all of the goods/services at the time the declaration of use in commerce was filed (application date for a 1a application, or the Statement of Use for a 1b application)
- The Petitioner must include evidence supporting the claim of abandonment with the Petition
- Evidence might include a declaration detailing searches for use of the mark
- The Respondent must include evidence to rebut the claim in its answer
- If requested and upon a showing of good cause, the TTAB will grant very limited discovery
- The Respondent can also challenge the Petitioner’s standing and request limited discovery on this issue
- The proceeding is designed to move fast:
- Limited or no discovery
- Abbreviated schedule
- No oral hearing
- Only one extension request per party
- Estimated time from start to finish would be 70 days in the event of default, or 170 days for a contested Petition
- No counterclaims would be allowed
- After reviewing the Answer, the Petitioner could choose to convert the proceeding to a full cancellation (the Respondent does not have the option, though)
Overall, the proposed procedure could be a valuable tool, at least in those situations where non-use and abandonment are clear, or the mark has not been used for three years or more. However, where the period of non-use is less than three years, the petitioner would normally need to establish that the respondent had an intent not to resume use of the mark. The limited discovery granted by the TTAB would likely require some testimony on behalf of respondent with respect to intent to resume use. Regardless, if the TTAB implements the new rules, practitioners would have a cheaper, more time effective tool to clear the way for their client’s trademarks.
If you have any comments on the new rules, be sure to provide them ahead of the August 14, 2017 deadline to [email protected].