USPTO Amends Rules Regarding Specimens of Use, Launches Pilot "Deadwood" Project

Although the "golden era of fraud" at the TTAB ended in August 2009 with the CAFC's Bose decision, the brouhaha over fraud did bring to the forefront what some believe to be a serious problem: the existence of use-based registrations covering goods or services for which the mark has not been, or is no longer being, used. With fraud pretty much dead at the TTAB, the USPTO chose to look at the problem from the other end of the telescope, focusing on the application process rather than on a litigation solution, by considering how to ensure that the applicant (or registrant) has used the mark with all the goods or services claimed. [I once suggested (here) that, in this age of the digital camera, the PTO should require the submission of a specimen of use for every item listed in a Section 1(a) application or in a Section 8 Declaration of use.] The PTO has now revised the Rules regarding specimens of use, and has launched a pilot study to review a number of registrations at the Section 8 or renewal stages. These new Rules go into effect on June 22, 2012. The CFR notice, entitled "Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases," may be found here.

SUMMARY: In order to help assess and ensure the accuracy of the trademark register, the United States Patent and Trademark Office (‘‘USPTO’’) is revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to allow the USPTO to: Upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark. These revisions aim to ensure the ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration, and thereby reduce costs and burdens on the public.

Even without these amendments to the Rules, Trademark Examining Attorneys could, via a Rule 2.61(b) request for information, require an applicant to submit additional specimens of use. See, for example, In re Anderson, Serial No. 76497832 (August 4, 2009) [not precedential]. The amendments make it explicit that the Examining Attorney has that "power." Now we shall see whether there is an increase in the number of requests for additional specimens of use; may we presume that the Examining Attorneys have been urged to make use of this authority?

Text Copyright John L. Welch 2012.