April 22, 2019

April 22, 2019

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USPTO Takes on Deadwood re: Trademark Registrations

For several years now, the U.S. Patent and Trademark Office (USPTO) has been concerned about the amount of "deadwood" on the U.S. trademark Register – registrations that remain in force, but cover marks that are not actually in use for all of the covered goods and services.

To determine the extent of this deadwood problem, the USPTO instituted a two-year study to assess the accuracy and integrity of the trademark Register in July of 2012. The USPTO randomly selected 500 registrations for which post registration Section 8 or 71 Declarations of Use were recently filed, and required the owner to submit proof of use for two additional goods/services per Class.

Over the duration of the study, the USPTO found that 35% of the registrations required deletion of at least some of the goods/services covered by the registrations based on lack of use. Another 16% of the registrations were cancelled all together.

The USPTO is now considering four options for increasing the accuracy of the Register, including: (1) creating a streamlined non-use expungement procedure, similar to that in use in Canada; (2) increasing the required specimens for filing Section 8/71 Declarations; (3) increasing the solemnity of the Declaration language; and (4) conducting random audits of Section 8/71 Declarations. The USPTO is seeking comments on the various options via email at TMPolicy@uspto.gov

© 2019 Sterne Kessler

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About this Author

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...

202-772-8688
Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm
Director

Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs.  Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.  She is sought out for her knowledge of design patents, brand development strategies and eliminating copycat consumer products from the marketplace to prevent the devaluation of IP rights

202-772-8660
Ivy Clarice Estoesta, Mechanical Design Attorney, Sterne Kessler Law Firm
Associate

Ms. Estoesta is an associate in the Mechanical and Design practice group at Sterne Kessler.  Ms. Estoesta’s practice focuses on trademarks, design patents, and copyrights.  Her legal experience, which began at the firm, and academic background provide her a multidimensional perspective in securing comprehensive IP rights for an array of clients in various industries, including pharmaceuticals, dietary food and beverages, footwear, electronic devices, and household cleaning products.

Ms. Estoesta joined the firm in 2006 as a legal assistant in...

202-772-8686
Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.

202-772-8632