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The USPTO’s Efforts To Improve Accuracy Of The Trademark Register

The United States Patent & Trademark Office (“USPTO”) has continued its efforts to rid the Trademark Register of marks that are not in use. This would include marks that have been abandoned or were not in use as of the filing date of the trademark application, or at the time of the filing of the Statement of Use or Allegation of Use (“non-use”). The USPTO has proposed streamlining the procedures that eliminate registrations not in use, by creating an expedited cancellation procedure that could be initiated at the Trademark Trial and Appeal Board (“TTAB” or the “Board”).

The streamlined cancellation proceeding would require that the party initiating the procedure have proof of standing and abandonment or non-use. The USPTO intends to reduce the fee to file this expedited cancellation proceeding. This streamlined process will limit discovery, eliminate hearings before the TTAB, and shorten the trial schedule. The Board intends to issue decisions in an expedited time frame as well. If there is a default judgment, the proceedings could be completed in as little time as 70 days. While the full-blown streamlined process could take approximately 170 days.

The USPTO has reached out to the intellectual property community for feedback and comments. There appears to be support for this proposed streamlined cancellation procedure. This process could certainly benefit parties that have evidence that a mark is not in use, and yet do not have a limitless budget to accommodate the high costs of inordinately lengthy cancellation proceedings. In addition, it will address depletion of marks, and aim to improve the congestion of the Trademark Register. There were comments indicating concern that the response time of 40 days may be too short, since the respondent would have to produce evidence of use on the list of goods and services identified in the registration. The balance here will require ensuring that the proposed procedure remain expedited compared to the current cancellation proceeding, while still ensuring the respondent receives due process and a fair opportunity to respond to the allegations.

Other comments raised questions about whether there would be a mechanism to convert the expedited cancellation to a full cancellation action, whether the respondent could voluntarily surrender the registration without prejudice, and whether the respondent could delete certain goods or services from the registration and still maintain it. In addition, there seems to be a concern for abuse within the new expedited system, and that perhaps lowering the fee would make the process more accessible to serial abusers. It was suggested that there should be rules to deter bad faith.

The USPTO has made another recent effort to eliminate registrations not in use, and this involves a pilot program that makes it easier to report improper specimens that have been altered or fabricated. This procedure provides a mechanism to protest specimens that were submitted to the USPTO, but are not in actual use. All protests can be submitted to TMspecimenprotest@uspto.gov. The email must include objective evidence of third-party use of the identical image without the trademark in question (for example, a digital copy of a photo from a print advertisement and the name of the publication) or the prior registration numbers or serial numbers of the applications where identical images of objects or mock-ups of websites all bearing different marks have been submitted to the USPTO. To learn about what constitutes a proper specimen for submission to a trademark prosecution, see our web page entitled, Acceptable Trademark Specimens.

If you are reporting a duplicate specimen then the subject line of the email should indicate “duplicative specimen”. Lastly, if you are interested in the outcome of the matter, you can follow the status of the application on TSDR @ www.uspto.gov. Emails will be accepted prior to publication or on the 30th day after publication of the subject application. These new programs demonstrate that the USPTO is aware that there could be a significant amount of applications and/or registrations on the Trademark Register that do not legally belong on the Register. Hopefully, with the collaboration of the intellectual property community, numerous registrations and applications will be removed. If you have questions about either of these streamlined programs, please feel free to contact our office with your inquiries.