Last year the U.S. Trademark Office tested and then formally implemented the Proof Of Use Audit Program. Under this program, some registrations, randomly selected, will now be targeted for audit when a Declaration of Use is submitted either to maintain the registration during the sixth year after registration or to renew the registration at the end of any 10-year term. When your registration is chosen for audit, you will then be required to show “proof of use” of your mark on or with not just one item in each “class” of goods and services in your registration, but with several items in each class. The stated purpose of the program is to improve the integrity and accuracy of the trademark register by cancelling some registrations or deleting some goods and services from other registrations that “may unnecessarily block future applications.”
The reason that governments register and protect trademarks is to prevent consumers from being confused or deceived about who is making and standing behind what we, as consumers, buy. An existing registration, among other things, prohibits registration by others of “confusingly similar” trademarks and service marks (marks) for use on and with “related” goods and services sold in the same markets to the same class of consumers. So it makes sense to eliminate registrations, or limit the scope of protection of marks where they are no longer in use. That has always been the purpose of the required sixth-year maintenance declaration and renewal declarations and the proof of use (referred to as a “specimen”) that accompany them. The declaration states that the registrant is currently using the registered mark on all goods and services identified in the registration. The specimen is a photo showing the mark on goods or a scan of a document offering or providing services for just one item in each class of goods and services. Trademark Office practice has been to take the registrant’s word that the mark is used on or with all of the other items not voluntarily deleted from the registration.
No longer. Any registration that lists four or more items in a single class, or has at least two classes listing two or more items, may be selected for audit. When that happens, you will receive a post-registration Action giving you the good news and requiring that you provide a specimen proving use of your mark on or with one or more additional items listed in one or more classes in your registration. Those items are not yours to choose, but are selected by the trademark examiner who is looking at and will accept or reject your declaration.
In response to the post-registration Action, you may then (oh-gee-I-meant-to) delete items from your registration, but not the items the examiner selected for you. If you cannot prove use of your mark on any one of the examiner’s selections, you will then receive a second Action that may insist that you provide specimens of use of your mark on all of the remaining items in your registration, or at least a good number of them. And if you don’t respond at all, your registration will be cancelled.
The idea of the program is to encourage registrants to take the time to evaluate and correct their registrations to reflect the actual use of their marks in the marketplace. Whether these audits are a welcome or unwelcome device depends on your point of view. If you are one of the chosen, you will likely look at it as at least an imposition on your time and resources. If you have tried to obtain a new trademark registration, and were blocked by an existing registration that hasn’t been maintained or renewed in a half-dozen years, you might appreciate the effort by the Trademark Office to improve the integrity and accuracy of the registry.
 In trademark registrations, the listed goods on which, and services with which a trademark is used are grouped into “classes” each representing broadly, and not very accurately, a market in which the goods and services are traded.
Descriptive brand names are seductive, if for no other reason than the belief that the name itself helps in the marketing of the goods and services. So marks like “Gal Fashion” for women’s clothing stores and “Fitband” for an armband to hold fitness tracking devices prove hard to resist. But when it comes to registering those types of trademarks and service marks, descriptive marks almost always wind up on the U.S. Supplemental Register, as did the two marks mentioned above.
Although a registration on the U.S. Supplemental Register is still a U.S. federal registration and provides a subset of trademark rights (see the table below), the reasons we attempt to discourage the adoption of descriptive marks are manifold and extend beyond the Supplemental Registration’s incomplete set of benefits and protections. First and foremost, of course, is that registration on the Supplemental Register lacks all legal presumption that you have any rights in the registered trademark at all.
But perhaps the most important drawback of choosing a descriptive mark is that when a descriptive mark is your first choice for your new product or service, it or something very like it is often the first choice of others entering your market space. That often leads to either continually spending lots of time, energy, and resources trying to enforce your rights against a parade of newcomers, or not enforcing your rights and, as a result, losing whatever exclusive rights you might have had in the trademark and any claim to the mark having “acquired” distinctiveness.
Another important, but hidden weakness is that, even though registrations on the Supplemental Register can be used as the basis of obtaining registration in most foreign countries, the U.S. is the only nation that maintains anything like the Supplemental Register for descriptive marks. Some countries are more forgiving than the U.S. about what is and is not descriptive and may simply register a mark that is not blatantly descriptive. Most other countries, however, simply will not register a descriptive, non-distinctive mark at all or will only register the mark on evidence of its acquired distinctiveness in their county. In the global economy, this can be a serious drawback.
This table compares the benefits acquired from registration on the Principal Register with those provided by registration on the Supplemental Register:
* To prevail, you must first be able to prove on evidence that you have rights in the mark based on current and continuing use in interstate trade.
The nations in bold are currently members of the European Union and individually contracting parties to the Madrid Protocol. Malta and Netherlands, which are also members of the E.U., are not individually contracting parties to the Madrid Protocol.
African Intellectual Property Union (OAPI)
Antigua and Barbuda
Bosnia and Herzegovina
Brunei Darussalam Bulgaria
Cuba Cyprus Czech Republic
Democratic People’s Republic of Korea (North) Denmark
Egypt Estonia European Union Finland France
Ghana Greece Hungary
Islamic Republic of Iran
Lao People’s Democratic Republic (Laos) Latvia
Liechtenstein Lithuania Luxembourg
Philippines Poland Portugal
Republic of Korea (South)
Republic of Moldova Romania
Sao Tome and Principe
Singapore Slovakia Slovenia Spain
Syrian Arab Republic
The former Yugoslav Republic of Macedonia
Ukraine United Kingdom
United States of America
We enjoy seeing our patent and trademark clients become successful. When a brand becomes so successful that simply everyone knows it and talks about it, however, a new threat to trademark rights arises: the threat of a trademark becoming the “generic” term for a class of goods and/or services and incapable of being a trademark. This was recently the threat the Google brand that we all know faced and overcame in Elliot v. Google Inc., and the way Google, Inc. prevailed and saved its brand is a lesson in how to handle brand success.
The fight to save Google, the trademark, began in an Arizona courtroom, but the work began long before that.
Unlike terms that are “merely descriptive” of the a feature of goods or services, which can be registered on a subordinate Supplemental Register, words that are the generic name of the class of goods or services cannot be registered at all. That is, no one could expect to register the word “piano” for musical keyboard instruments. Generic terms cannot have or even acquire the right of exclusive use by any one person or company to brand goods in the generic class.
It’s because of this that “cellophane,” the well-known term for transparent plastic sheet material, although a registered trademark in many countries throughout the world for that material, is not a registered trademark in the United States. By the time the British company that coined the brand name got around to applying to register “cellophane” in the U.S., the word had become the generic term we use.
So to avoid becoming generic, brands like Xerox, Kleenex, Thermos, and others, as a consequence of success, have had to work hard to keep their trademark rights valid and enforceable. When a character in a book or play asked for a “kleenex,” small k, the publisher or producer would receive a letter firmly reminding them that Kleenex is a trademark, politely asking for a change or acknowledgement. Anyone who writes and reads writing magazines had probably seen the ads reminding us that “Xerox® has two R’s,” the one in the middle, and the one in the circle at the end. It’s because of this kind of hard (and expensive) policing of these brands that purveyors of well-known products still have valid and enforceable trademark registrations.
Because of that kind of hard and relentless work, when you look up “xerox” in a dictionary, you’ll see the small-x verb ”xerox” for using a xerographic (dry) copy machine, but also the big-X Xerox defined as a trademark for a machine that makes copies.
And that’s what saved Google®. Google, Inc. preserved the literary and literal distinction between small-g google the verb and big-G Google the trademark. Referring, among other things, to the dictionary definition of the verb google, “to use the Google search engine to obtain information about (as a person) on the Internet,” the U.S. District Court for the District of Arizona decided, and the U.S. Court of Appeals for the Ninth Circuit recently affirmed that GOOGLE remains a valid and enforceable trademark of Google, Inc.