Clearing the Brush: the Best Solution for the Uspto's Continued "deadwood" Problem

• Jurisdiction: United States,Federal
• Citation: Vol. 23 No. 1
• Publication year: 2015

Clearing the Brush: The Best Solution for the Uspto's Continued "Deadwood" Problem

Leonard Robert Seifter III

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CLEARING THE BRUSH: THE BEST SOLUTION FOR THE USPTO'S CONTINUED "DEADWOOD" PROBLEM

Leonard Robert Seifter III^*

Table of Contents

I. Introduction..........................................................................................145

II. Background.............................................................................................147

A. EXAMINING THE ISSUE OF DEADWOOD......................................... 147

1. The Consequences of Deadwood.........................................................149

B. EXAMINING THE CURRENT TRADEMARK REGISTRATION PROCESS.................................................................................................151

1. Section 1(a) Use in Commerce Application Requirements..................151
2. Section 8 Declaration of Continued Use............................................152

C. EXAMINING THE DEPTH OF THE DEADWOOD PROBLEM IN THE FEDERAL REGISTRY....................................................................153
D. THE USPTO'S POTENTIAL SOLUTIONS TO THE ISSUES PRESENTED BY THE PILOT PROGRAM............................................. 155

III. Analysis......................................................................................................157

A. ANALYZING THE CURRENT STATE OF THE LAW............................ 157

1. The Section 1(a) Application's Tow Evidentiary Burden...................158
2. A Similar Low Evidentiary Burden for Section 8 Declaration of Continued Use Affidavits..................................................................159

B. PROPOSED SOLUTION: THE COMPREHENSIVE SPECIMENS SOLUTION.............................................................................................160
C. CRITICAL ANALYSIS OF THE COSTS OF IMPLEMENTING THE COMPREHENSIVE SPECIMENS SOLUTION....................................... 161
D. ANALYSIS OF THE OTHER SOLUTIONS BEING CONSIDERED BY THE USPTO......................................................................................163

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1. Establishment of Expungement Proceedings Similar to Canada.........163
2. Increase the Solemnity of the Oath of Declaration of Continued Use...................................................................................................165
3. Conduct Random Audits of Statements Accompanying Section 8 Declarations......................................................................................166

IV. Conclusion...............................................................................................167

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I. Introduction

Due in large part to its common law roots, the United States requires that trademark registrants actually use the marks for which they seek legal protection.¹ When a trademark falls out of use in commerce, that mark can be stripped of its federal protection.² However, in the absence of a perfect monitoring system, it is possible that marks that are not actually being used by their owners can continue to receive federal protection. Marks that receive federal protection but are not actually being used in commerce are known as "deadwood."³ Deadwood also occurs when the owner uses the mark for some of its registered goods and services, but not for all.⁴

The presence of deadwood in the Federal Trademark Registry creates inaccuracies that harm the public. When an owner does not use his mark for all of the goods or services categories for which it is registered, parties wishing to use similar marks in those same categories are prevented from doing so. The desired mark's unavailability can cause a party to incur a litany of costs, including costs to investigate the commercial use of the original mark, litigation to resolve a mark dispute, and investment of time and money to create a second-choice mark if necessary.⁵

The United States has historically taken steps to minimize the amount of deadwood in the Federal Registry. When it passed the Trademark Law Revision Act of 1988, Congress stated its goal to reduce the amount of deadwood in the Federal Registry.⁶ Congress achieved this by shortening the registration period for a trademark from twenty years to ten.⁷ More recently, the Federal Circuit's decision in In re Bose Corp. has motivated the USPTO to improve the Federal Registry's accuracy.⁸ Bose clarified the high standard for fraud in trademark cases.⁹ In May 2012, the USPTO announced the implementation of a two-year pilot program, which would assess the accuracy

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of the trademark registry.¹⁰ The program allowed the Director of the USPTO to select a random sample of trademark owners filing "Section 8 or 71 Declarations of Continued Use" affidavits to submit evidence beyond what is normally required to prove actual use of their mark in commerce.¹¹ Applicants who were unable or unwilling to meet the higher evidentiary burden would have their registrations revoked.¹² In June of 2014, the results of the pilot program were summarized for the public in a report compiled by the USPTO.¹³ The report revealed that of the 500 applicants chosen to participate in the program, 250 of them, or 50%, were not able to meet the evidentiary requirements to retain their federal registration.¹⁴ This study has led to speculation that approximately half of the Federal Trademark Registry is made up of partially illegitimate marks—that is, deadwood.¹⁵ The report strongly inferred that the USPTO plans to take action to correct the issue, outlining four possible solutions to the problem that had previously been discussed at a 2010 roundtable discussion at the George Washington University Law School.¹⁶

To increase the accuracy of the Federal Trademark Registry, the USPTO must act on the issues the pilot program brought to light. This Note argues that the USPTO can best reduce the amount of deadwood in the Federal Registry by requiring specimens for all goods and/or services listed in the registration when a mark owner submits both the initial Section 1(a) application and the first Section 8 or 71 Declaration of Continued Use affidavit. Although the pilot program only addressed Section 8 or 71 Declaration of Continued Use affidavits and not a mark owner's initial Section 1(a) application, this Note

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recommends requiring additional specimens earlier in the registration process in order to prevent deadwood from entering the Registry in the first place.¹⁷

This Note will examine the issues the pilot program has brought to the USPTO's attention and the possible solutions to these problems. Part II examines the concept of deadwood and why it is an issue. Additionally, Part II discusses the current process by which marks receive and maintain federal protection, and the USPTO's motivation for conducting a pilot program to assess the Federal Registry's accuracy. Finally, Part II examines the results of the pilot program and USPTO's proposed solutions. Part III examines the adequacy of the current state of the law. Additionally, Part III argues that the USPTO should require all mark owners to submit specimens demonstrating proof of use for all goods and services in both their initial Section 1(a) application and Section 8 or 71 Declaration of Continued Use affidavits. Part III also examines the inadequacy of the other solutions being considered by the USPTO. Finally, Part III critically analyzes the proposed solution and discusses why many in the legal community are wary of any changes to the current registration system.

II. Background

A. EXAMINING THE ISSUE OF DEADWOOD

The term 'deadwood' commonly refers to "registered marks that are not in use in the country for which . . . registration has been issued, or registered marks that are in use but only for some of the goods and services covered by the registrations."¹⁸ In other words, deadwood is an unused mark that still receives legal protection.¹⁹ A mark can become deadwood regardless of the registrant's initial intent. For example, a registrant may receive protection for a mark that was originally in use but then fell out of use when the registrant went out of business. Although that particular registrant had no intent to deceive the USPTO, the mark still became deadwood. Alternatively, a more nefarious registrant may claim on his application that he uses a mark for several goods or

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services, when in reality he only uses the mark in one of those areas.²⁰ Registrants in either situation may lack an incentive to notify the USPTO that they are not using the mark in commerce as originally claimed, which contributes to a high rate of deadwood in the Federal Registry. A registrant who goes out of business may not be concerned with informing the USPTO about the now non-use of his mark. The nefarious user would not want to notify the USPTO of the non-use because he likely wants to protect his right to use the mark in all the areas claimed sometime in the unknown future.

Deadwood poses a particular problem in countries where actual use of the mark in commerce is a legal prerequisite.²¹ In the United States, use in the marketplace precedes federal registration with limited exceptions.²² As long as they are being used, trademarks still receive common law protection even if they are not federally registered.²³ However, federal registration provides the owner a federal cause of action as to his mark and a legal presumption of the mark's ownership as against all others,²⁴ which makes federal registration valuable. Without use in commerce,²⁵ a mark owner cannot receive federal protection, and therefore should be denied that national presumption of ownership against others who want to use similar marks for the same goods or services. The owners of deadwood marks illegitimately receive a presumption of ownership against others who would potentially want to use the same or similar mark. This illegitimate presumption adversely affects those who have expended...