The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 5 August 2016

When its comes to "deadwood", leave it in the State of South Dakota and out of Trademark Office policy

This Kat has been engaged in trademarks for 30 years and he is usually pretty relaxed about developments in the field. When it comes to the
alleged problem of deadwood on the trademark registry, however, his trademark fur bristles. In a word, please leave Deadwood to the State of South Dakota USA; it has no place in trademark practice. “Deadwood”, “South Dakota”, “trademarks”—what is this Kat talking about? Read on.

Last month, Guest Kat Mike Mireles published a post— “The USPTO Moves to Clear ‘Trademark Deadwood’.” Mike reported on the latest steps intended by the United States Patent and Trademark Office to clean “deadwood” from the trademark registry. For several years, the claim has been expressed (not just in the U.S.) that there are too many unused registered trademarks, with the result that the registry suffers from trademark clutter. Moreover, it is claimed, unless we get control of the deadwood issue, the task of trademark clearance will one day become well-nigh impossible.

The impetus for this interest in trademark deadwood seems to have come from an attempt to make big data relevant to trademark policy—what better subject than deadwood and clutter to do so. The proposed solution in the U.S. is to tighten the evidentiary requirements supporting proof of use. In this way, it is presumed, the deadwood problem will be ameliorated. (There has also been discussion on shortening the period after registration by which evidence of use must be filed, but this change does not appear be part of the current intended rules.)

Sorry, but this Kat has difficulty in understanding these claims. There is, in principle, a virtually limitless number of inherently distinctive marks that can meet the test for registration. (We will call them “fanciful” marks, as the term has been developed in U.S. practice.) This is especially so when one also takes into account that a mark is protectable with respect to specified goods or services. The prime limitation on the reservoir of fanciful marks is the creativity of the person charged with coming up with a new mark. True, as more fanciful marks are registered, the task of creating a new fanciful mark may be marginally more difficult, but the basic principle remains: there is virtually no limit on the number of potential fanciful marks.

This means that when the claim is made that deadwood and resulting clutter on the registry place an increasingly heavy burden on clearance, what is really being said is that the mark under consideration is straddling the divide between being descriptive and suggestive. As trademark Kat readers will know, U.S. practice has rested for decades on the principle that “descriptive” marks, which are not inherently distinctive, require proof of sufficient use as a prerequisite for registration (so-called “secondary meaning”) On the other hand, “suggestive” marks are deemed inherently distinctive, obviating the need for evidence of sufficient use to support registration.

Because “descriptive/suggestive” marks are, in some sense, more descriptive of the goods or services to which they relate than are fanciful marks, it is easier to come up with such a mark. Also, such marks are usually preferred by the marketing department. In such a case, there may well be a potential problem of cluttering, because the universe of such marks is much more circumscribed. But that is the price paid by a person who fails to adopt a fanciful mark. The root of the problem are decisions made regarding the type of mark being registered, not accumulated deadwood on the registry.

Thus, when we focus on the real issue, the alleged problem of deadwood is another way of saying that too many of this type of mark is being accepted without the need to prove secondary meaning, i.e., the mark has been found to be suggestive and not descriptive. It is presumed that a mark for which secondary meaning has been proved will not likely fall into rapid disuse, i.e., it will not become trademark deadwood. Seen in this way, trademark deadwood is really about registry practice in distinguishing between inherent and acquired distinctiveness. (The renewal process serves as an additional check on this, by requiring the periodic payment of a renewal fee. A trademark owner will likely pay such a fee only if the mark is actually being used.) All of this points to the conclusion—the alleged issue of deadwood and trademark clutter is a solution in search of a problem.

That means putting “deadwood” in its proper perspective. There were few U.S. frontier settlements that enjoyed the aura of Deadwood, South Dakota. The discovery of gold and the flourishing of brothels that followed the prospectors; General George Armstrong Custer (of “Last Stand” infamy); the near-by Black Hills; and the female adventurer and gunslinger, Calamity Jane, all contributed to this small town punching above its weight as an American icon. And then there is the legendary 19th century rascal, “Wild Bill” Hickok, who was shot to death in Deadwood over a round of poker. For poker Kats, the notion of the “dead man’s hand”—black aces and eights-- comes from this event; it was the hand held by Hickok at the time of his death (in Deadwood, of course).

All of this well and good, even interesting. One thing though—please keep “Deadwood” in South Dakota and far away from trademark policy and practice.


Anonymous said...

The "Deadwood" issue isn't about acquired distinctiveness. It's about marks that aren't being used at all remaining on the register, or overbroad lists of goods/services in an application when the mark isn't being used on all of them.

Anonymous said...

Having a hard time understanding the jump from non-used marks to descriptive marks?

Anonymous said...

Yeah, the Anonymouses are correct. One has absolutely nothing to do with the other.

Anonymous said...

“A trademark owner will likely pay such a fee only if the mark is actually being used”.
This is not always true. Imagine I have a trademark registered for video-games but I am worried that someone else could register the same mark for, let's suppose, clothing.
As a solution, I will register the mark also for clothing (without using it). And before the 5 years grace period has elapsed and the use has became compulsory, I will submit a new application for the same mark (for clothing). And I will have a new 5 years grace period.
In conclusion, the registries are full of marks which are not used, even though they are regularly renewed

Neil Wilkof said...

As always, this Kat thanks readers who have published their Comments. While this Kat does not usually offer his own further Comments, he would like to make an exception in the interest of making his position clear.

1. This Kat does not dispute that an argument can be made that there is deadwood (non-use for some or all of a registered mark) on the trademark registry.
2. But this is at most a fact, not a problem. The problem usually expressed is that deadwood on the registry is making clearance more and more difficult.
3. We suggest that the problem of clearance is not necessarily the result of deadwood, because there is a virtually unlimited number of (word) marks that can be created in a language, each mark inherently distinctive and different from the other. In such a situation, the presence of deadwood should not significantly affect trademark clearance.
4. The problem allegedly caused by deadwood arises because some/many/most trademarks are not of this kind, but straddle the descriptive/suggestive divide. Because of the potentially descriptive aspect of such marks, they are far fewer in number, which makes clearance of a newly proposed descriptive/suggestive mark more difficult.
5. If examination is more inclined to find a mark descriptive rather than suggestive, then its registration will depend upon proving secondary meaning, i.e., substantial use, and thereby lessen the amount of trademark deadwood on the registry (and also ease the problem of clearance).

The views of Kat readers are, of course, welcome.

Anonymous said...

Neil - suppose I get a list of the 10000 most common words, and I put in a trade mark application for each of them with the letter "I" in front. What will Apple do when they invent a new device? The problem isn't that IPad is descriptive, it's that the term should be free until someone actually starts making the product.

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