Friday, June 24, 2016

USPTO Proposes Changes in Section 8 Affidavit/Declaration Requirements

On Wednesday, June 22nd, the USPTO published a Notice of Proposed Rulemaking entitled "Changes in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases," Federal Register, Volume 81, No. 120, pp. 40589-40594 [pdf here]. "Specifically, the USPTO proposes to 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 the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part." Comments must be received by the USPTO by August 22, 2016, preferably submitted electronically to TTABFRNotices at, or submit comments at the Federal Register website, 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) proposes to amend 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 Trademark Act. *** A register that does not accurately reflect marks in use in the United States for the goods/services identified in registrations imposes costs and burdens on the public. The proposed rules will allow the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in connection with particular goods/services identified in the registration.

Read comments and post your comment here.

Text Copyright John L. Welch 2016.


At 4:52 PM, Anonymous Anonymous said...

Well, it would be a lot simpler if there was a streamlined procedure for cancelling these registrations. I know that in the past the USPTO has concluded that a Canadian like system is not feasible. Not sure what else can be done other than charge extra for goods descriptions that have more than X number of goods in a class


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