On April 26, 2010, the United States Patent and Trademark Office (USPTO) and the George Washington University Law School hosted a roundtable discussion on the topic of "The Future of the Use-Based Register." Panelists and audience members explored the implications of the growing length of identifications of goods and services in U.S. trademark registrations and how accurately such identifications reflect actual use or intent-to-use, following the decision of the Court of Appeals for the Federal Circuit in In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009). A "brainstorming" session at the conclusion of the roundtable resulted in a list of suggestions for how to improve the accuracy of identified of goods and services, both during examination prior to registration and also post registration.
The suggestions from the brainstorming session are presented here, followed by the USPTO's general assessment of each suggestion's potential effectiveness to increase the accuracy of identifications and USPTO comments on the suggestion. The effectiveness assessment ratings are "highly effective," "moderately effective," "minimally effective," and "counter-effective" (where the USPTO believes the suggestion would bring about unintended adverse consequences). The USPTO's effectiveness assessment factors in the scope of the suggestion, and therefore gives a lower assessment to an otherwise effective suggestion that is limited, for example, only to use-based filers without reaching filers under Sections 44 or 66(a). Similarly, a suggestion that addresses attorney behavior but does not reach non-attorney behavior may receive a lower assessment, given the limited scope of the suggestion.
Please send your feedback related to these suggestions, or any additional suggestions, to TMFeedback@uspto.gov, with the subject line "Accuracy of identification of goods and services."
Suggestions from the Bose Roundtable for How to Improve the Accuracy of Identifications of Goods and Services
During Examination Prior to Registration
1. Current Office practice is to require one specimen for each overall class of goods and/or services recited in an application for registration under Section 1(a) of the Trademark Act (use in commerce), or at the time of submission of an Allegation of Use. Examples of acceptable specimens include a photo of goods bearing the mark, tag, label, or container for the goods, or an advertisement for services. The following suggestions are changes to the current practice:
A. Suggestion: Request a specimen for each item of goods and/or services in the identification.
USPTO assessment: Moderately effective
B. Suggestion: Request a specimen for each item of goods and/or services in the identification, and require that the specimen be a photo of the goods showing the mark used directly therewith or an actual advertisement for the services.
USPTO assessment: Moderately effective
C. Suggestion: Request a photo specimen for each item of goods and/or services, but do so on a random basis.
USPTO assessment: Minimally effective
USPTO comment: All of these suggestions may be possible under the current law. Requiring a specimen for each item of goods and/or services will only affect applicants who initially file a use-based application or who file an Allegation of Use for an intent-to-use-based application. It will not affect applicants who file based on a foreign registration under Section 44 or Madrid Protocol applicants under Section 66(a). Therefore, each of these suggestions will require more work primarily for domestic applicants.
2. Suggestion: Increase the solemnity of the declaration. For example, require the applicant to check a box stating that they understand the seriousness of the oath, or take some other extra step to confirm their understanding of the oath or declaration.
USPTO assessment: Moderately effective
USPTO comment: This suggestion would require changes in the electronic forms.
3. Suggestion: Revise the forms to add pop-up warnings about the ramifications of untruthful statements or about the seriousness of the oath.
USPTO assessment: Moderately effective
USPTO comment: This suggestion would require changes in the electronic forms.
4. Suggestion: Provide the USPTO's Office of Enrollment and Discipline more enforcement powers against attorneys who act unethically in matters before the Office.
USPTO assessment: Minimally effective
USPTO comment: This suggestion would likely require legislative and regulatory changes, and it would not address the behavior of clients or pro se applicants.
5. Suggestion: Add fees for identifications that exceed a certain number of words or characters.
USPTO assessment: Counter-effective
USPTO comment: Changes in the initial application fees would require legislative and regulatory changes. Furthermore, adding fees for identifications that exceed a certain number of words or characters may drive applicants to "wordsmith" identifications rather than supply accurate identifications, possibly leading to less accuracy.
6. Suggestion: Provide a partial refund of the application fee for withdrawal of goods and/or services that are not in use during the application phase.
USPTO assessment: Counter-effective
USPTO comment: This suggestion may discourage accuracy by encouraging the filing of multiple-item identifications in order to receive a refund. Moreover, to the extent examination as to those goods and/or services already occurred, a refund may not be appropriate.
7. Suggestion: For applications filed based on a statement of bona fide intent-to-use (Sections 1(b), 44(d), 44(e), and 66(a)), require some proof of bona fide intent-to-use.
USPTO assessment: Moderately effective
USPTO comment: Regulatory changes and extensive training of examining attorneys may be necessary to implement this type of change.
8. Suggestion: Require proof of a continued bona fide intention to use the mark in commerce needed before granting extensions of time to file a statement of use.
USPTO assessment: Moderately effective
USPTO comment: Regulatory changes and extensive training of ITU staff may be necessary to implement this type of change.
9. Suggestion: Require the division of large classes into separate applications.
USPTO assessment: Counter-effective
USPTO comment: Regulatory and USPTO electronic systems changes would be necessary to implement this suggestion. There may also be implications for our treaty obligations. Furthermore, this approach may simply shift the "problem" from one application to many applications.
10. Suggestion: Create a "best practices" checklist for practitioners; i.e., a form that practitioners would send to clients requiring that the clients specifically "sign off" on each item of goods and/or services in the proposed identification.
USPTO assessment: Minimally effective
USPTO comment: Use of the suggested form would be purely voluntary.
11. Suggestion: Change the electronic form to require a separate averment of use or bona fide intent-to-use for each item of goods and services in the application.
USPTO assessment: Moderately effective
USPTO comment: This suggestion would require a change in the electronic forms and would, in some cases, require additional time and effort to fill out the form. Because extensions of protection under the Madrid Protocol are submitted through the International Bureau, this probably could not be applied to Madrid-based applications.
Post Registration
1. Suggestion: Create a truncated non-use expungement procedure (analogous to the Canadian expungement proceedings under Section 45 of the Trade-marks Act). For example, a party that believes a registrant is not using its mark on the goods and/or services in its registration could file a request with the USPTO to require that the registrant prove use of its mark for all listed goods and/or services. The USPTO would request that the registrant submit a declaration/affidavit and specimens of use for all listed goods and/or services. If the registrant complies, that ends the procedure. Otherwise, any goods or services for which registrant has not provided a specimen and supporting declaration/affidavit would be deleted from the registration.
USPTO assessment: Moderately effective
USPTO comment: Creating this procedure would require legislative and regulatory changes.
2. Suggestion: Require specimens for every item of goods and/or services listed in the registration when the first Section 8 declaration is filed.
USPTO assessment: Moderately effective
USPTO comment: Regulatory changes may be necessary to implement this suggestion.
3. Suggestion: Require specimens for every item of goods and/or services listed in the registration when the first Section 8 declaration is filed, and mandate that the specimen must be a photo showing use of the mark in conjunction with the claimed goods and/or an advertisement for the services.
USPTO assessment: Highly effective
USPTO comment: Regulatory changes may be necessary to implement this suggestion.
4. Suggestion: Require statements accompanying Section 8 declarations to detail steps taken to verify use.
USPTO assessment: Moderately effective
USPTO comment: Regulatory changes may be necessary to implement this suggestion.
5. Suggestion: Conduct random audits of Section 8 filings. If proof of actual use of the mark cannot be supplied for all the listed goods and/or services in the registration, then the practitioner would be reported to the USPTO's Office of Enrollment and Discipline.
USPTO assessment: Minimally effective
USPTO comment: Regulatory changes may be necessary to implement this suggestion. It would not address the behavior of clients (i.e., the trademark owner) or pro se registrants.
6. Suggestion: Provide more information to the trademark bar about the option of filing a Section 7 for the purpose of voluntarily deleting goods and/or services from a registration for which the mark is no longer being used. Also, raise general awareness of the obligation to update registrations when appropriate.
USPTO assessment: Minimally effective
USPTO comment: Such an educational campaign could be undertaken by the USPTO or the outside bar.
7. Suggestion: Raise awareness of Section 18 of the Trademark Act and the ability of the TTAB to limit identifications of goods and services.
USPTO assessment: Minimally effective
USPTO comment: Such an educational campaign could be undertaken by the USPTO or the outside bar.