USPTO tackling the “balaclava problem” (part 2)

In the previous blog article I described the “balaclava problem” and gave an example of a real-life trademark application presenting this problem.  In that blog article I described one of the two ways that the USPTO is trying to attack the “balaclava problem”.  In this blog article I describe a second way that the USPTO is trying to attack this problem.

As I discussed in the previous blog article, there are many US trademark applications and many US trademark registrations that list far too many items of goods and/or services.  In that previous article I gave an example of a real-life trademark application with 721 items of goods.  It strains credulity to imagine that an applicant or registrant really is offering 721 distinct items of clothing in interstate commerce.

The previous article describes how USPTO has added five averments to each trademark filing.  The averments are intended to try to embarrass or shame an applicant or registrant from filing for, or trying to renew, such a large number of items of goods if they are really not all being provided in interstate commerce.

This blog article describes a second line of attack in which the USPTO is trying to reduce the balaclava problem.  Today, USPTO published a Federal Register notice promulgating a set of new rules.  The new rules, which you can see here, will take effect on February 17, 2017.

The notice reminds the reader of a pilot program in which the USPTO randomly selected some trademark filings in which filers were submitting specimens of use in an effort to renew a trademark registration.  Normally the filer is only required to provide a “specimen of use” directed to a single one of the items of goods or services in a given trademark class.  But according to this pilot program, if a filing were among of the randomly selected filings, the USPTO would ask the filer to “back up” the attempted renewal with additional specimens of use directed to other items in each class.

In the pilot program, in about 51% of the registrations selected for the pilot, the filer failed to provide the requested additional specimens of use.  In about two-thirds of those cases the filer backed down and canceled some items of goods or services that had been previously (supposedly) been in use in interstate commerce.  In the remaining one-third of those cases, the filer failed to respond and the result was a cancellation of the registration.

Today’s Federal Register notice implements that pilot program as an ongoing practice.  Going forward, the post-registration branch will randomly select around 10% of renewal cases containing two or more classes.  In the randomly selected cases, the filer will be asked (just as in the pilot program) to back up the renewal with additional specimens of use.  Likely as not, this will have results similar to those that were seen in the pilot program.  Some filers, having had their renewals flagged for this program, will voluntarily cancel some goods and/or services.  Other filers will fail to respond and the result will be a cancellation of the entire registration.

What’s more, the mere existence of this ongoing program will, it is hoped, prompt some filers to be more thorough when preparing a renewal in the first place, and some of those filers will cancel some items of goods or services just to avoid the risk of having to cancel the items in such an audit.

One can only hope that the behavior modification will have its effects not only upon those filing renewals, but might also have its effects upon the filers of new trademark applications.  Maybe some applicants will go to the trouble to strike some items of goods or services from new applications as filed, prompted by the realization that six years later (at renewal time) the items would have to be canceled anyway.

4 Replies to “USPTO tackling the “balaclava problem” (part 2)”

  1. I was hoping that more than 10% will be selected. I don’t think that those odds are enough to change behavior — particularly when the registrant can still respond by deleting goods without penalty.

  2. I am curious as to why the focus is on post-registration and not on pre-issuance. It seems to me it might make sense to put a little more pressure on proper initial filing rather than waiting to catch it years later – at least in cases where two or three very distinct goods are contained in a single class and only require a single initial specimen.

    1. See the first initiative. The filer of a new application will be required to attest to five statements. This might dissuade some filers from listing too many items.

  3. How does this work when you use the mark on some items in a class and you intend to use it on some others? Is intent an excuse for not currently using the mark? The five averments do not seem to be taking into account some of what happens in real life.

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