New Post-Registration Proof-of-Use Rule Goes Into Effect February 17th
Effective February 17, 2017, the USPTO is amending its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed under Section 8 or Section 71 of the Trademark Act. Under the new rule, the USPTO may require additional information to verify that a mark is in use in commerce in connection with particular goods/services identified in the registration, unless excusable nonuse is claimed. [See Federal Register announcement of January 19, 2017 (here)].
In order to assess and promote the accuracy and integrity of the Trademark Register, the United States Patent and Trademark Office (USPTO or Office) amends its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Act. Specifically, under the regulations enacted herein, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part. A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The amended rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/services identified in the registration.
In a two-year study conducted by the USTPO, the owners of approximately 50% the 500 randomly-chosen registrations in which Section 8 or 71 declarations had been filed, were unable to verify that the involved marks were still in use on the identified goods/services.
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Text Copyright John L. Welch 2017.
posted by John L. Welch @ 2/08/2017
7 comments
7 Comments:
Does the amended rule implement a random review, similar to the pilot program? Or does it authorize targeted requests for additional evidence of use?
Foreign rights holders are already being discriminated against. All 44(e) and 66(a) regs are being examined by examining attorneys at the maintenance/renewal stage now.
Does the rule apply to affidavits filed before February 17?
It sounds to me like the rule is written to be applied discretionarily, not randomly.
"It sounds to me like the rule is written to be applied discretionarily, not randomly." What's the difference?
"Discretionarily" means that the Examining Attorney is suspicious whether the mark in actually in use (likely with ALL listed goods or services), whereas "randomly" would be a spot-check on a totally random basis regardless of the mark or the specimen submitted.
From what I have seen, examining attorneys never review renewals.
I only see these reviewed by paralegals.
Are Section 71 renewals being handled differently?
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