In a pilot program that concluded in February, the USPTO looked at 500 randomly selected registrations with Section 8 or Section 71 declarations and requested from each brand owner proof of use for two additional goods or services per class, in addition to the specimens provided in the maintenance filings.
If the trademark holder fails to provide the requested specimens or ignores the request, those uses are deleted from the registry. In some cases, the trademark holder requested the removal of certain classes.
According to Mary Denison, Commissioner for Trademarks, the concern is that there is too much “dead wood” on the registry that is not actually in use. These concerns turned out to be well founded. “The results were not good, but enlightening,” she says.
Among the registrations in the pilot, 27% of registrations based on Section 1(a) of the Lanham Act (direct filings) had at least one good or service deleted from the registration. Meanwhile, around 60% of Section 44(e) and 66(a) (registrations based on valid foreign registrations) registrations had at least one good or service deleted.
These numbers indicate that there is a large amount of registrations for unused classes. Though some brand owners characterize it as a problem with foreign rights holders, Denison points out that domestic registrants could improve as well.
Given the results of the pilot program, she says that the USPTO is looking at ways to address the problem. Some ideas being considered include requiring specimens for every class of goods, increasing the solemnity of the declarations of use and conducting more random audits of applications and extensions, essentially extending the pilot program.
Denison and her team are weighing the pros and cons of these suggestions. For example, she notes that it can be quite hard to get specimens for every use. Similarly, she sounds unsure that increasing the solemnity of the use declarations will be enough, as the language is quite stringent already.
The USPTO’s colleagues to the north may also have a solution. Canada’s Section 45 expungement proceedings allow for third parties to file to expunge a registration if it has not been used for three years without justification. Having similar proceedings would allow the USPTO to harness the efforts of interested parties to help clean out the registry.
“We have had some stakeholder roundtables and heard from some Canadian practitioners on this program,” Denison explains. There will be issues to consider such as whether the third parties would be allowed to initiate proceedings anonymously.
She also points out that the USPTO may choose to implement several of these plans, though some, such as implementing third party expungement proceedings, will require legislative action.
Many other initiatives
The USPTO also has several other initiatives designed to improve performance and address issues. For example, it has begun sending out email renewal notices directly to filers. This program was in response to the increasing number of unpresented filers (about 30% of all filers) who do not have docketing assistance.
Also earlier this year, the USPTO reduced the filing fees for TEAS Plus to $225 per class and introduced TEAS Reduced Fee ($275 per class), which is similar to TEAS Plus but has fewer requirements, such as not requiring the goods and services to be selected from the Office’s Trademark ID Manual. While the more expensive regular TEAS filings are still available, the reduced fees are designed to encourage more electronic communications (both TEAS Plus and TEAS RF have more stringent requirements for electronics communications).
The USPTO will have a presence at the Annual Meeting as well. On Monday, the USPTO along with the JPO, Korean IP Office, OHIM and China’s State Administration for Industry and Commerce will host the TM5 Users’ Meeting at 1:30 pm (see box). The speakers will field questions from bar associations, as well as provide updates on TM5 projects.
TM5 Users Meeting tomorrow
The Trademark 5 (TM5) is a forum comprising the five largest trademark offices in the world: the Japan Patent Office, the Korean Intellectual Property Office, the Office for Harmonization in the Internal Market of the European Union, the State Administration for Industry and Commerce of the People’s Republic of China, and United States Patent and Trademark Office. Through this framework, the TM5 partners exchange information on practices and conduct joint projects, which are aimed at harmonizing and improving trademark practices.
The TM5 partners will be conducting a User Session that will be open to INTA Annual Meeting registrants from 1:30 to 3:30 pm on Monday, May 4 in Room 1AB of the San Diego Convention Center. During this session, the TM5 partners will present updates from their respective offices. Additionally, the TM5 partners will discuss the progress they have made on their various joint projects. These projects include the following:
• the Image Search Project;
• the continuation/expansion of the Bad Faith Project;
• the Improve Convenience of the Madrid Protocol by Enriching Information Project;
• the TM5 Website Project;
• the Comparative Analysis on Examination Results Project;
• the Common Statistical Indicators Project;
• the Taxonomy and TMClass Link Project;
• the User-friendly Access to Trademark Information Project (otherwise known as TMView);
• the Common Status Descriptors Project;
• the ID List Project; and
• the Indexing of Non-Traditional Marks Project.
More information about the TM5 projects and the TM5 generally may be viewed on the TM5 website, tmfive.org.
The TM5 partners encourage all INTA Annual Meeting registrants to attend the TM5 user session tomorrow.