The U.S. Patent and Trademark Office (USPTO) is assessing the possibility of introducing three new mechanisms to clean up the Trademark Register in an effort to purge it of “deadwood.” The practical effect of these potential changes is that trademark owners may soon face additional administrative burdens to maintain registered trademarks; registrations claiming overly broad goods and/or services and registrations that are no longer in use may be subjected to additional scrutiny and could be cancelled in whole or in part.
The first update will be to the standard declaration that an applicant typically signs under penalty of perjury when filing a trademark application. The form, traditionally presented as a block of text, has been revised as a separate series of clauses with check boxes next to each statement, requiring that the signatory check each box before submitting the form. The goal is to keep the form reader friendly, but the USPTO has also updated the language to address use (or intent to use) on every good or service claimed. Applicants will now need to verify that allegations and factual statements made in the application have evidentiary support.
The USPTO is in the process of drafting the second update, which will allow it to randomly audit up to 10% (or thousands) of trademark maintenance filings each year. Declarations are filed between the fifth and sixth year, and the ninth and tenth year, after registration to maintain the registration, and trademark owners must confirm the mark was in use in connection with all of the goods and/or services claimed. But, only one specimen (proving use) is required per class, even if many other goods or services are claimed in the registration. Traditionally, the USPTO can ask for additional proof in its examination, but the new rule would require the trademark owners selected as part of the audit to submit additional evidence that the mark is actually in use in connection with the goods and/or services identified in the registration. Marks determined to not actually be in use in connection with all or some of the goods and/or services identified in the registration would be subject to cancellation.
The third update to the rules remains unsettled, but the impending change will likely consist of expungement and non-use proceedings to facilitate the cancellation of registrations that have not been used or are not in use. Several options are under consideration, including: (1) giving the USPTO director authority to expunge partial or entire registrations if a mark was never used; (2) adding additional grounds for cancellation before the Trademark Trial and Appeal Board (TTAB), namely, the ability to challenge a registration, in whole or in part, three years after registration if a mark was never used; or (3) simplified processes for filing cancellation actions before the TTAB on the basis of abandonment or non-use.
If implemented, the above mechanisms are sure to improve the accuracy of the register, which in turn, may help limit brand owners’ costs in terms of clearance and expand brand owners’ options when it comes to choosing a mark. The expungement proceedings would also shift the burden of proof to registrants, potentially minimizing the cost and hassle of cancelling a mark.
On the other hand, brand owners should prepare for these changes by: (1) carefully reading declarations and making sure they understand the implications of filing intent to use applications; (2) retaining examples of use and keeping a document library in the event of an audit; and (3) recognizing that registrations can be forfeited through non-use, so brand owners are advised to routinely conduct internal audits to avoid the effects of a cancellation action in the U.S. as well as corresponding repercussions abroad (if a registrant’s international applications or registrations are based on U.S. rights).