NEWS Flash! If you don’t use your registered trademark you WILL lose it.
Back in July of 2012, the USPTO implemented a pilot program called, Proof of Use. The USPTO (Trademark Office) randomly selected 500 registrations where Section 8 and Section 71 Declarations of Use were filed. The results of the program were stunning and should serve as a wake-up call to all trademark registrants. Several of those were cancelled.
The intent of the pilot program was to test the accuracy and legal integrity of registered trademarks. The program wanted to ensure that registrants were using their marks as they said they were. The samples selected were of registrations under Trademark Act Sections 1(a), 44(e), 66(a), and 1(a) and 44(e).
Trademark holders were asked to supply “proof of use” for the marks they registered. After analyzing the data, the USPTO asked some of the participants to delete goods and/or services from their registration that did not satisfy proof of use, while others received notices of cancellation.
Here is a breakdown of the data under the sections registered:
Asked to delete goods/services Received notices of cancellation
Section 1(a) 27% 18%
Section 44(e) 58% 7%
Section 66(a) 59% 14%
Combined 1(a) and 44(e) 63% 13%
Combined, over half of the registrants were unable to verify that they were using their trademarks as they said they were in the Declaration of Continued Use.
The USPTO fully expects that you will use your trademark for the specific goods/services listed in the registration. I cannot stress the importance of adhering to ALL post-registration requirements. If you don’t, rest assured you will lose your trademark. It may not happen today, or tomorrow, but it will happen. Even if the USPTO does not cancel your registration on its own, an unhappy competitor could institute a cancelation proceeding.
While you may save a few dollars by trying to register your trademark by yourself, in the long run it will cost you so much more than if you had the help of an experienced attorney who specializes in Trademark law.
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