USPTO Implements New Trademark Post-Registration Proof-of-Use Rule

Client Alert

April 19, 2017

Effective as of March 27, 2017, a portion of all Section 8 and 71 trademark renewal affidavits filed with the USPTO will be audited. 

As part of the trademark renewal process, the USPTO may require additional information to ensure that the mark is in use in the U.S. in connection with the sale of all of the goods and services listed in the registration. The Federal Register announcement of the new rule, which is part of a broader effort to clear the register of marks not actually in use for the goods or services listed and thereby “promote the accuracy and integrity of the trademark register,”  is available at Federal Register, Vol. 82, No. 12 at 6269 (Jan. 19, 2017).

The Backstory

The USPTO continues to require registrants to submit an affidavit specifically identifying which goods and services are sold in the U.S. under the mark. Prior to implementation of this new rule, the  USPTO only required proof of use of a mark for one good or service in each class. In a pilot program that started in May 2012, the USPTO randomly selected 500 registrations where Section 8 or Section 71 renewals were filed, and required proof of use of the marks on additional goods or services for each class in addition to the one specimen submitted. In 51% of the registrations selected for the pilot, the trademark owners failed to supply additional verified proof of use. Under the new rule, the USPTO will now audit approximately 10% of all renewal affidavits, and registrants may receive an Office Action requiring the submission of additional information – such as exhibits, affidavits, declarations or additional specimens – if the USPTO deems it necessary to ensure that the register accurately reflects marks that are in use in commerce in the U.S. for all of the goods and services.

The Impact

The ramifications of this new rule for owners of U.S. trademark registrations could be significant. If the registrant fails to provide requested evidence of use on additional goods/services in response to an Office Action, the USPTO will cancel the registration only as it applies to those goods/services.  However, if a registrant fails to respond to the Office Action at all within the six-month response period, the USPTO will cancel the entire registration unless there is time remaining in the statutory filing period.  In addition, a successful audit by the USPTO under this rule could be used against the registrant in the context of third party fraud claims in TTAB cancellation or district court proceedings.

Our Thoughts

To ensure that trademark owners can support Section 8 or Section 71 renewal filings with evidence of use, we strongly recommend keeping records demonstrating use of each of the goods and/or services covered by a renewal application. To prepare for a possible audit, trademark owners should also avoid filing applications with duplicate or synonymous terms or should delete such terms when renewing a mark.  In addition, since registrations covering numerous, seemingly unrelated, goods/services could be targeted, registrants should take care to delete all goods/services for which the mark is not in use when the Section 8 or Section 71 affidavit is filed. 

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