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.

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