Thursday, December 18, 2014

Lies, Damn Lies and Trademark Lies

Some people lie. Shocking.

Some trademark applicants lie on their official government forms. Doubly shocking.

Trademark owners are required to establish use of their trademark on the goods or services indicated in their trademark filings. Proof of use of the trademark requires both a declaration confirming use in commerce plus an appropriate specimen for at least one of the designated goods or services in each class. These filings are signed pursuant to an official declaration or oath.

But during a two year period, from July 2012 to mid-October 2014, the federal trademark office conducted a pilot study to determine compliance with the use requirement. What the PTO learned is not pretty -- in about one-half of the registrations the trademark owners were not able to verify claimed use.

The PTO selected 500 registrations for this study. In about 16% of the selected registrations, the trademark owner failed to prove use of the mark on the indicated goods or services. The PTO cancelled these registrations. And in about 35% of the selected registrations, the trademark owner was not able to prove use on at least some of the listed goods or services, causing the PTO to delete the unsupported goods or services from the registrations.

The PTO reached this sorry conclusion: "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." The statistics for the falsely claimed trademark use are provided by the PTO:
Deletions/Cancellations/Acceptances to Date by Basis for Registration

Basis for Registration
Percentage of Registrations Selected for the Pilot Deleting Goods/Services Queried Under the Pilot
Percentage of Registrations Selected for the Pilot Receiving Notices of Cancellation
Percentage of Registrations Selected for the Pilot Receiving Notices of Acceptance (Including for a Narrowed Scope of Goods/Services)
Section 1(a)
Section 44(e)
Section 66(a)
Combined Section
1(a) and 44(e)

The concern here goes beyond the false statements contained in government filings. That is, of course, bad in and of itself for both legal and moral reasons. But the concern here, too, relates to the misuse of government filings to obtain a trademark monopoly grant, thereby depriving a genuine user of the right to register the same or similar trademark on similar goods or services.

We may all be aware of genuine trademark users who were unable to register their marks because someone obtained an active registration when, in fact, the registrant was NOT using the mark on its indicated goods or services.

The federal trademark office has established an e-mail address for public comments and suggestions for potential solutions to this problem: 

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