Winter is Coming – and the PTO Will Be Pruning the Deadwood Out of Trademark Registrations

The U.S. Patent and Trademark Office has a new random audit procedure for trademarks aimed at removing deadwood from the Register.

Trademark owners seeking to register marks in the U.S. Patent and Trademark Office (PTO) often claim a broad array of goods and services based on optimistic marketing or business plans, or in the hope that a broader goods and services description will keep competitors from using their mark. Some trademark owners never fulfill their optimistic plans, are unable to show trademark use, and consequently do not receive a registration. Others can only show use of their registered trademarks on some of their goods and services, despite signing an affidavit that all listed goods and services are in use under the mark. The Section 8 Affidavit requires trademark owners to show continued use of the mark between the fifth and sixth year of registration and requires that any goods and services no longer provided under the registered mark must be deleted from the record. Ignore this requirement and you had better hope the Hound can hold off the White Walkers.

The random audit is the result of a multi-year pilot program launched in 2012 to assess the accuracy and integrity of the Trademark Register as to actual use of marks with the goods/services listed in the registry.

Under the pilot, 500 trademark registrations with six-year Section 8 or Section 71 Declaration of Use filings were randomly selected for additional proof of use. In the pilot investigation:

  • Fifty percent of registrations were unable to verify previously claimed use
  • Thirty-five percent of registration owners deleted goods/services for non-use
  • Sixteen percent failed to respond to pilot office actions and were cancelled

The pilot ended, but the dismal showing indicated a need for ongoing measures to encourage registration owners to file accurate declarations of use.

Under the new rules, trademark owners will need to heed the motto of the House of Stark. As the meaning behind the words “Winter is Coming” is one of warning and constant vigilance, so the trademark owner should make sure now that goods and services are accurately identified in a registration.

The U.S. PTO will conduct random audits of Section 8 Affidavits and Declarations of Continued Use or Excusable Non-Use, where the mark in question is registered for more than one good or service in a single class. Trademark owners selected for an audit may be required to provide additional proof of use of their marks in commerce. Further, marks should be used as originally registered because a modified mark is not entitled to the same protections as the original mark. No new spaces, hyphens, or font changes.

For additional information on maintaining the registration of your trademarks or on how the new rules may affect your registrations, please contact Micheline Johnson or any member of the Firm’s Trademark and Branding Group.

Micheline Johnson

Micheline Johnson

Of Counsel at Baker Donelson
Micheline Johnson is co-chair of Baker Donelson's Trademark and Branding Group. She is a registered patent and trademark attorney and concentrates her practice in intellectual property. Contact her at mjohnson@bakerdonelson.com.
Micheline Johnson