It is axiomatic in the United States that use is a prerequisite for trademark rights. With respect to some limited exceptions, use is required to obtain rights at common law and to secure federal registration on the Principal Register. Fundamentally, if there is not use, there is ordinarily less opportunity for goodwill to develop or for a likelihood of confusion to arise.
In 2012, the USPTO sent a request for comments on a proposal to shorten the filing time for section 8 affidavits of use. Section 8 affidavits attesting to use are required after five years of registration. Part of the rationale for Section 8 affidavits is a policy of removing marks that have not been used from the Principal Register (or without excusable non-use). This reduces the costs of trademark clearance performed by parties seeking to register new marks. The 2012 proposal from the USPTO was to shorten the filing time from five years to the third year after registration. Importantly, the USPTO noted that most small business fail within two years.
In response to request for comments, the influential Marques trademark organization recognized that trademark deadwood can be a problem. However, Marques also noted that shortening the time period would increase the workload of attorneys and opposed the proposal. Ultimately, the proposal was not adopted.
|Supported by some evidence--Nice!|
Notably, this proposal is supported by a study (described in the 2016 proposed rules) conducted by the USPTO. The study randomly chose 500 registrations that needed Section 8 or Section 71 affidavits. The USPTO required additional documentation from the owners of those registrations. The USPTO discovered that 51% of the owners of those registrations failed to submit verifiable proof of use for the good/services initially claimed. Thirty-five percent of the 51% requested that some goods/services be deleted and 16% were cancelled. The USPTO does note that 422 applications were issued either Section 8 or Section 71 affidavits, including a number of registrations wherein some goods/services initially claimed were deleted.
Interestingly, this proposal could lead to additional evidence to support shortening the time for filing of Section 8 and Section 71 affidavits. An increase in the burden to maintain their marks may disadvantage small businesses. However, if a business survives to its fifth year, it may have accumulated enough resources to deal with the additional burden. In your experience, is there a trademark deadwood problem in the United States? [Katpat to John L. Welch's TTAB Blog]