Deadwood Trademark

Introduction

The purpose of a trademark is to identify a manufacturer or trader’s goods as their own so that he or she may later profit from the reputation for those items that may have been established by superior skill, diligence, and entrepreneurship. An authentic trademark assures the buyer of the origin and calibre of the item he is purchasing. The owner of a registered trademark may file a lawsuit for an unregistered trademark if there is a trademark infringement. Without usage, the mark may no longer be distinctive.

Deadwood Trademark[Image Source: Shutterstock]

MAIN BLOG

In the United States, the rights to a particular trademark are axiomatically related to its usage. The law is not interested in preserving your trademark if you are not putting it on your products or in some other way that is visible to the public, even if you create a fantastic new logo for your company. The owner of a trademark used in commerce may request registration of its trademark, according to the U.S. Trademark Act’s (also known as the Lanham Act) first line.

Before registering, a trademark must be used demonstrably (though an application can be filed before the trademark is used, based on an intent to use the trademark). However, the USPTO is only able to monitor continuing trademark use and verify the accuracy of the proof of use that petitioners submit. As a result, there are many “deadwood” registered trademarks in the trademark registry that are not being utilised in commerce.

Deadwood registrations are those that have been granted even if they are not being utilised or are not being used on all of the products or services included in the registration but which nevertheless prevent others from acquiring registration protection for comparable goods or services. This is a problem in particular when there are lengthy gaps between needed demonstrations of continuous use.

However, there is a more harmful source of dead wood. The USPTO listed a variety of non-market reasons in a study from 2021, including government requirements and incentives granted to Chinese businesses for submitting intellectual property, as being the main drivers of “suspect” trademark applications from China. Additionally, trademark law is used by bad faith actors like squatters and counterfeiters to enhance their criminal enterprises. The best course of action for brands to handle the annoying registrations that come from these actions may be expungement and re-examination processes.

A study was conducted by the USPTO in the year 2016, the study randomly chooses 500 registrations that needed section 8 as well as 71 affidavit and some additional documents. It was discovered that 51% of the owners were not able to disclose the verifiable proof/documents of the use for the goods/services initially clamed. Out of 51% request, 35% were deleted and rest were cancelled.

To access and promote the accuracy and integrity of the U.S. Trademark Register. They come up with the Trademark Modernization Act of 2020 (“TMA”) (enacted on December 20, 2020) demonstrates that as of September 2018, Over the last six years, the number of applications from China filed with the USPTO surged by more than 1100%. Investigations show that many of these applications include fabricated proofs of usage, phoney specimens, and/or photoshopped images to support the registration.

CONCLUSION

The trademark registry contains a large number of registered trademarks that are “deadwood,” or not being used in commerce. Due to this, demands have been made to have the “deadwood” on the register removed. The TMA provides new tools to clear from the Trademark Register such fraudulent registrations. Three of these new tools are highlighted below.

Author: Vikrant Singra, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

Leave a Reply

Categories

Archives

  • October 2024
  • September 2024
  • August 2024
  • July 2024
  • June 2024
  • May 2024
  • April 2024
  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010