Chipping Away at the Dead Wood and Other Registered-But-Unused Marks

Matthew D. Asbell

©2015. Published in Landslide, Vol. 7, No. 6, July/August 2015, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

An ongoing issue faced by the United States Patent and Trademark Office (USPTO) has been the number of trademark registrations granted or retained for over-inclusive identifications of goods and/or services where the registrants do not actually use or intend to use the marks on all of the goods and services listed in the registration. Indeed, some registrations remain in effect even though the owner may no longer use the marks on any of the goods or services. These registrations, referred to as “dead wood,” as well as another category in which the marks were registered without ever having been used, are a concern because they block others from legitimately registering and using similar marks for similar goods or services. Those parties then need to take a substantial risk and initiate cancellation proceedings that can be costly over time if contested. The goal of the USPTO is to ensure the accuracy and preserve the integrity of the Trademark Register by certifying that all registered marks are in use in relation to all of the specified goods and/or services.

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