USPTO Survey Reveals A Large Number of Illegitimate Trademark Registrations

By Josh Gerben, Esq.

Trademark applicants who are under the impression that it’s OK to file a trademark for a broad range of goods or services, even if you’re not actually doing business with all of those offerings: beware. The United States Patent & Trademark Office recently completed a survey of 500 randomly selected registered trademarks in order to verify their claims of use of a mark, and a full half of these queries – 250 – resulted in class deletions or mark cancellations, either because registrants responded but could not produce the necessary verification, or due to lack of response. Let’s step back and look at how these illegitimate registrations can occur within the framework of the trademark application process, and then we’ll look a bit more at the survey and the intent of the USPTO, and what the implications are.

When you’re filing a trademark application, you need to make sure that the name you choose to register is not in use already within your industry or line of business, or in an industry where confusion may be likely to occur. Once your application is successfully registered, those same protections apply to you: a future applicant may not register a trademark or use a name similar to yours, for products or industries where confusion is likely. That built-in protection is one of the great benefits of a registered trademark.

In the course of completing your trademark application, you’ll need to classify your product or service according to the USPTO’s system. Your application fee includes one class, but you can add more, whether it’s because your product can fit into more than one class, or you intend to use the mark on several different types of products, as with a full line of clothing.  Within each class, you can list as many goods as you want so long as they are properly identified within that class.  That being said, within each class, the USPTO only requires you to provide an example of one single usage of the mark. If that usage is approved, your application is approved for the entire class and all the goods contained within that class. The USPTO trademark application process is one of the most strict in the world, but that’s an out-of-character loophole that the USPTO survey revealed a number of applicants have taken advantage of.

More about that survey: the randomly selected trademark owners were required to prove that in addition to the one example of usage per class which they provided, that they provide examples for at least two other goods/services mentioned within that same class.  As mentioned above, half of the respondents could not or did not produce the necessary evidence. So what happened to them? According to the USPTO, 34% – 172 of the respondents – voluntarily deleted classes of product or service from their registration, since they couldn’t come up with proof. A further 16% – 78 trademark owners – had their marks completely cancelled – across all classes – because they never responded at all, an implicit statement of guilt in the eyes of the USPTO.

Why was the USPTO interested in finding out about these illegitimacies? It’s likely a first step to figuring out how to address them on a larger scale, since this “trademark hoarding” blocks the way for other businesses to register legitimate new marks.

As a trademark applicant, what does this mean to you? There are a few implications. Let’s look at them.

First, it shows that the USPTO is committing to the accuracy of trademark applications seriously, and further, will not be overlooking the “use in commerce” requirement of a mark. As a trademark applicant, that means that you should register only for goods or services that you’re already selling, or that you intend to use within the next few years (if you are filing an intent-to-use application).  Adding extraneous listings of goods and services to your application could lead to the eventual cancellation of a trademark registration (or outright refusal of our trademark application).

Next, it underscores the importance of coming up with a unique name for your business. If you’re registering a trademark with a very unique name, there is a lower chance of running into someone blocking your registration with an application or registration that is overreaching.

Finally, if you’re committed to registering a certain mark and you suspect that it’s classified illegitimately and too broadly by a third party – that is, the trademark owner registered it in a class in which they do not actually offer that product or service, you may challenge it with the USPTO by filing a Petition to Cancel with the Trademark Trial and Appeal Board (TTAB). This can be time consuming and costly, however, it is a channel that many brand owners use to help secure their trademarks.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.