Clearing the Brush: The Best Solution for the USPTO’s Continued “Deadwood” Problem

– Leonard Robert Seifter III

In 2012, the USPTO began a 2-year study which audited a random selection of Section 8 or 71 filings to determine whether the registered marks were being validly used in commerce. This study led to estimates that half of the US Federal Trademark Registry is made up of illegitimate or partially illegitimate marks, also known as ‘deadwood’. Deadwood leads to desirous parties being prevented from using marks in categories that, while registered, are not currently being used. If a party wishes to challenge this lack of use, it will cost the blameless party a lot of money. This note argues that the deadwood problem would be effectively addressed if the USPTO required more specimens throughout and specifically earlier on in the registration and declaration of continued use processes. The author thinks the solution is for the USPTO to require applicants prove use of their marks in all claimed good or service areas both during the initial Section 1(a) use in commerce application process, as well as during the Section 8 declaration of continued use process. Subsequent to the publishing of this note, the USPTO has put measures into action which attempt to resolve the deadwood issue. Effective March 21, 2017, the “Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases” allow the USPTO to require additional evidence of use to verify that a trademark is indeed in use for all of the goods or services listed in the registration. On May 16, 2017, the USPTO issued a “Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and Nonuse” notice of proposed rule making that proposes a ‘Streamlined Proceeding’ for cancellation of abandoned or unused marks. This note evaluates the posed solutions to the Registry’s deadwood problem from the USPTO’s 2014 study report- including those solutions which have been implemented in recent years- and proposes a more comprehensive alternative solution.

Abstract Written by Karen E. Hays, 2018