U.S. Trademark Filings — How Overinclusive Goods & Services Can Weaken Your U.S. Rights

This Litmus Latest is specifically for our clients that are outside the U.S. and more particularly, those clients who seek registration of marks in the U.S. based on the “defensive” filing strategy used in many jurisdictions around the world.  The goal is simple: Explain an important U.S. rule that is one of the many ways U.S. trademark law differs from the laws of other jurisdictions.

Executive Summary
U.S. trademark law strictly requires that U.S. trademark registrations be tied to use of a particular mark for goods/services in U.S. commerce. While non-U.S. companies can secure a registration based upon intent-to-use, this requirement importantly includes a specific bona fide intent to use the mark on each and every good and service listed in a U.S. application.  When a maintenance document is filed in a U.S. registration, each and every good and service listed in that registration must be in current use in the U.S.  It is wholly irrelevant that the U.S. registration was derived from a broad International Registration or based upon a filing from a different country which allowed broader recitations.  The U.S. application or designation must only be for the goods/services that are in use/will be in use in the U.S. and you should maintain documentation that proves this intention.  The U.S. does NOT recognize the ability to hold “defensive” registrations.
Remember: Use of the mark for some goods/services in a particular class is not sufficient for proof that there is a bona fide intent with relationship to ALL of the goods/services in that class and/or to maintain all goods/services in an existing registration.
The fact that an owner of a U.S. registration (based upon a home country registration or as an IR designation) has 3 years from the date of registration to commence use and the first maintenance document proving use in the U.S. is not required until the 6th year of registration does NOT excuse a lack of bona fide intent.

Special Considerations for International Registrations
Many international clients add the United States to their global coverage using the Madrid System.  The quick and easy “click” system can be deceptively easy.  For the U.S., you must include Form MM18 (E), which is a sworn statement that there is a bona fide intent to use the mark in U.S. commerce.  You should also make liberal use of narrowing the scope of goods/services for the U.S. designation right in your Madrid filing.

When Filing a National Application in the U.S. with a Home Country Registration Basis
The mere fact that the home country registration has a broad list of goods/services does not mean that all of these goods/services should be included in the U.S. application.  The U.S. application can be for any portion of the goods/services, as long as there is the requisite bona fide intent-to-use the mark for the goods/services.

Document Bona Fide Intent
If another party challenges your U.S. application or registration, adversaries (and the tribunals to whom the adversaries complain) will look for objective, contemporaneous proof of intent or use, at the time of the U.S. application or designation. Useful examples of what might prove such intent include: a U.S.-specific product or service roadmap, budget or board approval for a U.S. launch, distributor or reseller agreements or emails mentioning U.S. distribution, U.S.-targeted marketing plans, prototype or packaging work tied to U.S. commercialization, or filings/communications related to U.S. regulation or compliance. Oral statements are helpful, but business documents are the strongest evidence and often decide disputes.  The more specific these documents are and the more closely tied to the mark in question, the better the position will be if the client’s application or registration is challenged by an interested third party.

Overinclusion: More Can be Less
Overly broad identifications commonly cause trouble in several ways:

1. When you want to enforce your rights, you may be in a precarious position asserting a registration that could have flaws (such as lack of bona fide intent at the relevant time);
2. In legal proceedings, the other side may secure deletions for unsupported goods or services and thereby gain a strategic advantage;
3. If the other side can prove that the overinclusive recitation was fraudulent, it may be able to delete WHOLE class(es) of goods/services (even if there is use for some of those goods/services) and the statutory benefits of registration as to those classes; and
4. When filing maintenance documents, the USPTO’s audit and Trademark Register “cleanup” efforts can force owners to prove use for multiple goods/services (and the audit targets goods/services for which there is least likely to be proof) or remove items from the registration.  The audit process can be arduous, time-consuming and expensive.

Fraud: A Caution
An opposing party seeing a laundry list of goods/services may very well assert a claim of fraud when attacking such a registration.  Specifically, such a party may allege (if it has a sufficient basis) that a statement to the USPTO was knowingly false and made with intent to deceive. Fraud is taken very seriously and can have severe consequences, if proven. While current case law requires proof of intent to deceive (i.e., that fraud is not established by mistake or poor record-keeping alone), there can be very real consequences even in connection with being targeted with a claim of fraud. Also, the allegation itself can increase costs, risks and exposures.  Of course, a tribunal can always find that an application or registration tainted by fraud is completely void (and thus, the owner loses all of the benefits of that registration, including any priority and/or constructive first use dates).
Best Practice: Carefully review each and every good or service identified in all U.S. applications and make a further careful review with each maintenance filing to ensure that the same meet the requirements of U.S. practice as explained above.  If there are existing applications or registrations that might be targeted by the USPTO and/or an interested third party: cull the recitations now!

USPTO and Overly Broad Recitations
The USPTO continues to introduce more procedures to try to ensure that only marks for goods/services that are entitled to a U.S. registration remain on the Register. In addition to the audit program (for maintenance documents) and the 2025 surcharges for non-complying and lengthy recitations, the USPTO also introduced expungement and reexamination procedures to make it easier (and less costly) for third parties to attack overbroad recitations.  Adopting proper strategies now can ensure the best protection for all clients.

Recommended Approach

1. Cull proactively. Review every U.S. application and registration and, at the appropriate time, proactively authorize us to remove any goods or services you could not convincingly document to a tribunal that there was a bona fide intent at the time of filing.
2. Limit Future Applications.  Only goods/services that meet the U.S. legal requirements should be included in new applications.
3. Maintenance Filings.  When filing a U.S. Declaration of Continued Use (filed during the 6th year of every registration and during every 10th anniversary year), carefully review and permanently delete goods/services which are not in use in the U.S., as required by U.S. law.
4. Keep documentation. For each application filed in the U.S. (as a national application or as a Madrid designation), keep records of the bona fide intent to use the mark in the U.S.  Similarly, maintain records of U.S. sales at the time of maintenance filings.

 
Conclusion
Having a U.S. registration that is enforceable without serious concerns of being attacked by the other side strengthens a client’s enforcement ability.  Also, U.S. trademark law considers whether there is a likelihood of confusion based primarily on the similarity of the marks and the relatedness of the respective goods/services.  There is no requirement that the targeted goods/services be identical.  Thus, while U.S. law does not recognize “defensive” trademark registrations, it does provide an umbrella of protection beyond the specific goods/services recited in a U.S. registration.
As always, we look forward to helping you navigate this aspect of U.S. trademark law and develop the best strategies.