TMCH -- false declarations of use, statistics from the USPTO
Hi folks, I was doing some research on false declarations of trademark "use", and came upon some startling statistics that are relevant to our TMCH discussions. The following link summarizes some of the important research conducted by the USPTO: http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=05be4815... "The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States." The same study was discussed in the following blog: http://www.thebrandprotectionblog.com/uspto-announces-new-trademark-use-audi... "...USPTO randomly audited 500 registrations with recently filed affidavits averring use. In addition to the usual specimen submitted for each class of goods or services, the USPTO asked registration owners to submit proof of use of their marks for two additional goods or services per class selected at random by the USPTO. During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration." The final report by the USPTO can be read in its entirety at: https://www.uspto.gov/sites/default/files/documents/Post_Registration_Proof_... (sorry it's not a PDF) This huge amount of fraudulently registered marks has caused them to make some proposals a couple of months ago, see: https://www.federalregister.gov/articles/2016/06/22/2016-14791/changes-in-re... "A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public." "The public relies on the register to determine whether a chosen mark is available for use or registration. Where a party's search of the register discloses a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, proceedings to cancel the registration or oppose the application of the disclosed mark, civil litigation to resolve a dispute over the mark, or changing plans to avoid use of the party's chosen mark. If a registered mark is not actually in use in the United States, or is not in use in connection with all the goods/services identified in the registration, these costs and burdens may be incurred unnecessarily. An accurate and reliable trademark register helps avoid such needless costs and burdens." Obviously, the exact same reasoning applies to the TMCH itself. In light of these truly startling statistics, I think we need to have much greater scrutiny of what marks get placed into the TMCH, despite claims of "use". Even specimens of use can be "gamed", as discussed at length in an article at: http://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-used... which had numerous examples of "sham" transactions, sporadic, casual, or de minimis uses. e.g.: "- a single shipment of one jar of salt from one corporate officer to another for no charge; - sale for $2.50 of 12 bank book holders, followed by instructions not to offer them to prospective customers; - sale of a few dollars’ worth of women’s sportswear to a cooperating company which immediately returned the goods to the seller;" The TMCH needs to be aware of how the system can be gamed, given the financial incentives to do so, as do we as this policy is reviewed. Perhaps a random audit of TMCH registered marks should be done. Perhaps they should all be in a public database, so that there can be greater scrutiny by the public compared to a private/secret database. If it turns out that 51% or 65% or 73% don't pass muster, it would have great implications for our work. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/
George, Although I'm sure it's inadvertent, you are very significantly misinterpreting what you are presenting. Your conclusions are not supported by these materials. I'm at a party so I can't respond in detail but will do so as soon as I can. Greg On Saturday, August 20, 2016, George Kirikos <icann@leap.com> wrote:
Hi folks,
I was doing some research on false declarations of trademark "use", and came upon some startling statistics that are relevant to our TMCH discussions.
The following link summarizes some of the important research conducted by the USPTO:
http://www.finnegan.com/resources/articles/articlesdetail.aspx?news= 05be4815-5b70-41c6-b521-055aee7946c2
"The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States."
The same study was discussed in the following blog:
http://www.thebrandprotectionblog.com/uspto-announces-new-trademark- use-audit-program-in-proposed-rule/
"...USPTO randomly audited 500 registrations with recently filed affidavits averring use. In addition to the usual specimen submitted for each class of goods or services, the USPTO asked registration owners to submit proof of use of their marks for two additional goods or services per class selected at random by the USPTO.
During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration."
The final report by the USPTO can be read in its entirety at:
https://www.uspto.gov/sites/default/files/documents/Post_ Registration_Proof_of_Use_Pilot_Final_Report%20.doc
(sorry it's not a PDF)
This huge amount of fraudulently registered marks has caused them to make some proposals a couple of months ago, see:
https://www.federalregister.gov/articles/2016/06/22/2016- 14791/changes-in-requirements-for-affidavits-or- declarations-of-use-continued-use-or-excusable-nonuse-in
"A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public."
"The public relies on the register to determine whether a chosen mark is available for use or registration. Where a party's search of the register discloses a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, proceedings to cancel the registration or oppose the application of the disclosed mark, civil litigation to resolve a dispute over the mark, or changing plans to avoid use of the party's chosen mark. If a registered mark is not actually in use in the United States, or is not in use in connection with all the goods/services identified in the registration, these costs and burdens may be incurred unnecessarily. An accurate and reliable trademark register helps avoid such needless costs and burdens."
Obviously, the exact same reasoning applies to the TMCH itself.
In light of these truly startling statistics, I think we need to have much greater scrutiny of what marks get placed into the TMCH, despite claims of "use". Even specimens of use can be "gamed", as discussed at length in an article at:
http://www.fr.com/news/dont-be-confused-about-whether- your-trademark-is-used/
which had numerous examples of "sham" transactions, sporadic, casual, or de minimis uses. e.g.:
"- a single shipment of one jar of salt from one corporate officer to another for no charge; - sale for $2.50 of 12 bank book holders, followed by instructions not to offer them to prospective customers; - sale of a few dollars’ worth of women’s sportswear to a cooperating company which immediately returned the goods to the seller;"
The TMCH needs to be aware of how the system can be gamed, given the financial incentives to do so, as do we as this policy is reviewed.
Perhaps a random audit of TMCH registered marks should be done. Perhaps they should all be in a public database, so that there can be greater scrutiny by the public compared to a private/secret database. If it turns out that 51% or 65% or 73% don't pass muster, it would have great implications for our work.
Sincerely,
George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org <javascript:;> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
While we have not yet initiated our full WG discussion of the TMCH we shall be doing so in a few weeks. While I have not yet hard the opportunity to fully review the referenced materials, they would seem important in the context of sunrise registrations – to assure that TM holders with legitimate use do not have their registration rights usurped with those who have registered identical marks without actual use. So thanks George for providing the links (albeit a tad prematurely) and thanks in advance to Greg for any further light you can shed on the matter. Best to all, Philip Philip S. Corwin, Founding Principal Virtualaw LLC 1155 F Street, NW Suite 1050 Washington, DC 20004 202-559-8597/Direct 202-559-8750/Fax 202-255-6172/Cell Twitter: @VlawDC "Luck is the residue of design" -- Branch Rickey From: gnso-rpm-wg-bounces@icann.org [mailto:gnso-rpm-wg-bounces@icann.org] On Behalf Of Greg Shatan Sent: Saturday, August 20, 2016 8:56 PM To: George Kirikos Cc: gnso-rpm-wg@icann.org Subject: Re: [gnso-rpm-wg] TMCH -- false declarations of use, statistics from the USPTO George, Although I'm sure it's inadvertent, you are very significantly misinterpreting what you are presenting. Your conclusions are not supported by these materials. I'm at a party so I can't respond in detail but will do so as soon as I can. Greg On Saturday, August 20, 2016, George Kirikos <icann@leap.com<mailto:icann@leap.com>> wrote: Hi folks, I was doing some research on false declarations of trademark "use", and came upon some startling statistics that are relevant to our TMCH discussions. The following link summarizes some of the important research conducted by the USPTO: http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=05be4815... "The results of the pilot program indicate that a substantial majority of foreign registrants, 73% under the Madrid Protocol and 65% under the Paris Convention, have submitted false declarations of use and have therefore received trademark protection to which they are not entitled in the United States." The same study was discussed in the following blog: http://www.thebrandprotectionblog.com/uspto-announces-new-trademark-use-audi... "...USPTO randomly audited 500 registrations with recently filed affidavits averring use. In addition to the usual specimen submitted for each class of goods or services, the USPTO asked registration owners to submit proof of use of their marks for two additional goods or services per class selected at random by the USPTO. During the two-year pilot program, the USPTO found that 51% of the audited registration owners were unable to satisfy these additional proof requirements. The USPTO cancelled 16% of the audited registrations in their entirety because the registration owners failed to respond to the request for additional proof or any other issues raised during the examination of the original affidavit. In addition, 35% of the audited registration owners requested that some of the goods or services be deleted from their registration." The final report by the USPTO can be read in its entirety at: https://www.uspto.gov/sites/default/files/documents/Post_Registration_Proof_... (sorry it's not a PDF) This huge amount of fraudulently registered marks has caused them to make some proposals a couple of months ago, see: https://www.federalregister.gov/articles/2016/06/22/2016-14791/changes-in-re... "A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public." "The public relies on the register to determine whether a chosen mark is available for use or registration. Where a party's search of the register discloses a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, proceedings to cancel the registration or oppose the application of the disclosed mark, civil litigation to resolve a dispute over the mark, or changing plans to avoid use of the party's chosen mark. If a registered mark is not actually in use in the United States, or is not in use in connection with all the goods/services identified in the registration, these costs and burdens may be incurred unnecessarily. An accurate and reliable trademark register helps avoid such needless costs and burdens." Obviously, the exact same reasoning applies to the TMCH itself. In light of these truly startling statistics, I think we need to have much greater scrutiny of what marks get placed into the TMCH, despite claims of "use". Even specimens of use can be "gamed", as discussed at length in an article at: http://www.fr.com/news/dont-be-confused-about-whether-your-trademark-is-used... which had numerous examples of "sham" transactions, sporadic, casual, or de minimis uses. e.g.: "- a single shipment of one jar of salt from one corporate officer to another for no charge; - sale for $2.50 of 12 bank book holders, followed by instructions not to offer them to prospective customers; - sale of a few dollars’ worth of women’s sportswear to a cooperating company which immediately returned the goods to the seller;" The TMCH needs to be aware of how the system can be gamed, given the financial incentives to do so, as do we as this policy is reviewed. Perhaps a random audit of TMCH registered marks should be done. Perhaps they should all be in a public database, so that there can be greater scrutiny by the public compared to a private/secret database. If it turns out that 51% or 65% or 73% don't pass muster, it would have great implications for our work. Sincerely, George Kirikos 416-588-0269 http://www.leap.com/ _______________________________________________ gnso-rpm-wg mailing list gnso-rpm-wg@icann.org<javascript:;> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg ________________________________ No virus found in this message. Checked by AVG - www.avg.com<http://www.avg.com> Version: 2016.0.7752 / Virus Database: 4633/12811 - Release Date: 08/15/16
participants (3)
-
George Kirikos -
Greg Shatan -
Phil Corwin