Wednesday, July 13, 2011

PTO Proposes New Rules Allowing Examining Attorneys to Request Additional Specimens of Use

In a Notice published in the Federal Register yesterday (pdf here), the USPTO proposes a revision of the Trademark Rules of Practice to permit the Office "to require: any information, exhibits, and affidavits or declarations deemed reasonably necessary to examine an affidavit or declaration of continued use or excusable nonuse in trademark cases, or for the USPTO to assess the accuracy and integrity of the register; and upon request, more than one specimen in connection with a use-based trademark application, an allegation of use, an amendment to a registered mark, or an affidavit or declaration of continued use in trademark cases." Comments are due by September 12, 2011.

The ultimate goal of the PTO is to ensure the accuracy and reliability of the trademark register:

The public relies on the register to clear trademarks that they may wish to adopt or are already using. Where a party searching the register uncovers a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as changing plans to avoid use of the mark, investigative costs to determine how the similar mark is actually used and assess the nature of any conflict, or cancellation proceedings or other litigation to resolve a dispute over the mark. If a registered mark is not actually in use in the United States, or is not in use on all the goods/services in the registration, these types of costs and burdens may be incurred unnecessarily. Thus, accuracy and reliability of the trademark register help avoid such needless costs and burdens, and thereby benefit the public.

The PTO notes that under current practice, the Office may require additional information relevant to a pending application, but no such rule exists for post-registration filings. These new rules would harmonize these requirements.

Note that the PTO may, for example, "require a verified photograph showing use of the mark on particular goods." This reminds me of my blog posting of May 11, 2009 (here), entitled "Fraud and the Digital Camera," where I suggested (in the fraud context) that the Office might require a specimen of use (e.g., a digital photograph) for each product included in an identification of goods.

Text Copyright John L. Welch 2011.


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