Mike Atkins points to this Inside Counsel article on the TTAB’s crackdown on overly broad — and thus fraudulent — statements of use in registrations and renewal applications. Hallelujah, I say. If a trademark registration in the US is to be worth the paper it’s written on, it should cover only those goods and services on which the trademark owner can show actual use. But while everyone is worrying about audits and ensuring they’re not caught on the next renewal, how do we prevent the problem in the future?
Well, how about filing the original application only for those goods or services the mark is being used with? Sounds crazy, no? Alternatively, file your ITU applications broadly — but when the time comes to file a statement of use, how about knocking out those items on which the mark isn’t being used? It could work! Similarly, when it comes time for the 8 & 15 or renewal filings, don’t just ask the client if the mark is in use, give them a checklist to tick off each item or service, and advise them of the risk involved for saying something’s in use when it’s not. This is not magic here.
But still, how did we get to this point? My guess is that somewhere along the way US trademark practitioners started filing unreasonably broad identifications in their US clients’ applications, maybe because of section 44 envy (oh, those class headings!), and because they could tell their clients that gave them “broader coverage.” But that long laundry list isn’t better (and from my past experience, who really needed to include athletic supporters among the promotional items bearing a media company’s mark anyway?) if you actually need to enforce one of those registrations against a competitor — who turns around with a counterclaim for cancellation and fraud.
What I think has changed over the past few years that others haven’t yet raised is that the Internet has made it extremely simple to verify the bona fides of a particular registration. If my client’s application is being held up by an older registration with a laundry list of goods, I’m almost guaranteed the ability to track down an item listed in the registration that’s no longer being sold, contact that registrant or its lawyer, and advise them of their registration’s vulnerability, and get a consent for my client’s application. But that’s fine, in my book. Nothing wrong with keeping us honest, especially where there are declarations under oath involved, right?
I always say that a trademark registration is not your corporate mission statement; neither is its purpose to reflect the full product line to which your company aspires. It is a snapshot of a particular state of the world at a certain time. If there is a purge and certain party members fall out of favor, do yourself a favor and purge those members from the list of goods.
(I think I need some metaphor therapy, stat!)
Next stop in the ranting express: Registrations for promotional items. Betcha can’t wait!