Scott D. Locke, AIPLA Quarterly Journal “A Proposal to Declutter the Trademark Register”

Both the number of trademarks on the United States Trademark Register and the proportion of trademarks that are filed by foreign applicants are growing. The United States Patent and Trademark Office has concluded that too many of these foreign applicants receive and maintain registrations without fully complying with United States trademark law. This occurs particularly with the requirements of having a genuine intent to use their trademarks with all goods and services recited in their applications and subsequently using their trademarks with all of those goods and services. These improper actions have led to the Trademark Register being cluttered with inaccurate information that detracts from its integrity, which in turn impedes businesses that operate in the United States relying on the information contained therein.

This Article proposes a legislative solution that would require foreign registrants who have made use of Madrid Protocol filings or Paris Convention filings without simultaneously demonstrating use of their marks prior to issuance, to show use within three years of registration. This framework adds no burden to United States registrants, while placing a small additional burden on foreign applicants that is no greater than United States applicants face during prosecution of their own applications. Foreign trademark owners unable to make the requisite showing would find their registrations canceled midway between registration and the current six-year deadline that all registrants face for demonstrating use. Similarly, when making the filing, they would be required to aver actual use for all of their recited goods and services or delete those for which there is no use. This acceleration of removal of improperly maintained and narrowing of overbroad registrations would declutter the Trademark Register and increase its integrity.

To read the full article click here: A Proposal to Declutter the Trademark Register – AIPLA Quarterly Journal.

Both the number of trademarks on the United States Trademark Register and the proportion of trademarks that are filed by foreign applicants are growing. The United States Patent and Trademark Office has concluded that too many of these foreign applicants receive and maintain registrations without fully complying with United States trademark law. This occurs particularly with the requirements of having a genuine intent to use their trademarks with all goods and services recited in their applications and subsequently using their trademarks with all of those goods and services. These improper actions have led to the Trademark Register being cluttered with inaccurate information that detracts from its integrity, which in turn impedes businesses that operate in the United States relying on the information contained therein.

This Article proposes a legislative solution that would require foreign registrants who have made use of Madrid Protocol filings or Paris Convention filings without simultaneously demonstrating use of their marks prior to issuance, to show use within three years of registration. This framework adds no burden to United States registrants, while placing a small additional burden on foreign applicants that is no greater than United States applicants face during prosecution of their own applications. Foreign trademark owners unable to make the requisite showing would find their registrations canceled midway between registration and the current six-year deadline that all registrants face for demonstrating use. Similarly, when making the filing, they would be required to aver actual use for all of their recited goods and services or delete those for which there is no use. This acceleration of removal of improperly maintained and narrowing of overbroad registrations would declutter the Trademark Register and increase its integrity.

To read the full article click here: A Proposal to Declutter the Trademark Register – AIPLA Quarterly Journal.