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Blog

PTO Report: Half of Section 8 Filings Overstate Goods/Services

July 24, 2014

Blog

PTO Report: Half of Section 8 Filings Overstate Goods/Services

July 24, 2014

Back to Fish's Trademark and Copyright Blog

 

The USPTO has released a preliminary report on the results of its recent pilot program to assess the accuracy of post-registration maintenance filings. Under the program, a representative sampling of Section 8 or 71 filings for marks claiming multiple goods or services would undergo special examination, requiring the registrant to submit additional specimens or other proof of use for two additional goods or services per class. Failure to produce the additional proof would result in the registration being either narrowed or cancelled altogether.

As of June 30, 2014, the program was 94% complete, and the PTO reported that in fully 50% of the cases, the registrant was unable to produce the additional proofs of use. In 34% of cases, the registrant was forced to accept a narrowing of the registration to delete the goods/services for which use could not be shown; in 16% of cases, the registrant failed entirely to respond to the examiner’s request, resulting in cancellation of the registration outright.

Not surprisingly, the rate of deletions and cancellations was higher among foreign marks registered under international treaties, were proof of use is not required prior to registration and overbroad goods/services description are the norm. But even registrations based on use in U.S. commerce ran into issues ended up being restricted or cancelled 44% of the time.

These statistics should serve as a reminder to trademark owners and their counsel that maintenance and renewal filings should not be merely rubberstamped: they should be carefully reviewed to make sure the goods and services claimed match up with the owner’s current business, with deletions made where needed (and possibly new applications filed if the array of products or services has grown). They also call into question the integrity of the federal register, to the extent that they indicate that half of registrations may overstate the goods and services actually offered.

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trademark
USPTO

Blog Authors

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Robert M. O'Connell, Jr. | Of Counsel

Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and...

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