Issue 069
  September 2016
Contents:
 

MARQUES Annual Conference Day 1 highlights

>  
 

Annual Conference Day 2

>  
 

Annual Conference Day 3

>  
 

A message to MARQUES members from WIPO

>  
 

Maintenance of US registrations to become more demanding

>  
 

Using trade marks to protect traditional cultural expressions

>  
 

Field Note from the Outer Borders: Authentic Indigenous

>  
 

New MARQUES events announced

>  
 

MARQUES Media Roundup

>  
 
Disclaimer:
The views expressed by contributors to this newsletter are their own and do not necessarily reflect the policy and/or opinions of MARQUES and/or its membership.  Information is published only as a guide and not as a comprehensive authority on any of the subjects covered.  While every effort has been made to ensure the information given is accurate and not misleading neither MARQUES nor the contributors can accept any responsibility for any loss or liability perceived to have arisen from the use or application of any such information or for errors and omissions.  Readers are strongly advised to follow up articles of interest with quoted sources and specialist advisors.
 

9 Cartwright Court Cartwright Way
Bardon
Leicester
LE67 1UE
United Kingdom
T: +44 116 274 7355
F: +44 116 274 7365
E: info@marques.org
MARQUES Annual Conference Day 1 highlights

 

A packed first day of this year’s Annual Conference in Villaitana saw updates from EUIPO, discussions on branding and Brexit, and a taste of Spain

Read More >>

Annual Conference Day 2

 

Annual Conference Day 3

Tips on litigating at the CJEU, the latest design developments and a new volunteer award were among the highlights of the second day at this year’s Annual Conference

 

Indigenous IP rights, EU case law and the winners of the Lewis Gaze Memorial Scholarship were on the agenda on the Annual Conference's final day

Read More >>   Read More >>
A message to MARQUES members from WIPO

 

MARQUES is pleased to share with members a message received from the WIPO team following this year’s Annual Conference

Read More >>
Maintenance of US registrations to become more demanding

 

Applicants attempting to maintain their registered marks in the United States should be aware of the potential for additional scrutiny that is to be placed upon holders owning registrations listing more than one good or service in each class, as Michael Leonard and Randall Collins explain


On 22nd June 2016, the United States Patent and Trademark Office (USPTO) proposed a set of rules requiring the provision of additional documentation and/or specimens in support of the required filing of Declarations of Use to maintain US registrations.

The USPTO’s stated goal is to asses and promote the integrity of trade marks as well as to facilitate the cancellation of so-called deadwood marks that were never or are no longer in use in the United States.

Declarations of Use

Under the US Trademark Act (the Lanham Act), the filing of a Section 8 or Section 71 Declaration of Use is required between the fifth and sixth year anniversary of registration and at every 10-year anniversary of registration thereafter.

The Declaration of Use requires the registrant’s sworn statement that the goods/services are in current use as well as the provision of specimens/documentation in support of the use claim. The current USPTO Rules only require the submission of one specimen per class in connection with a Section 8 or Section 71 Declaration of Use unless additional documentation or specimens are needed for the USPTO to properly examine the Declaration itself.

But the USPTO says that the current rules do not permit the Office to require additional specimens or documentation to verify that the mark is being used in connection with other goods and/or services listed in registrations. 

The proposed additional requirements apply to all Declarations of Use filed under Section 8 and Section 71 and give the USPTO the power to require exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary to enable the USPTO to verify the accuracy of the claims that a trade mark is in use in connection with the goods/services listed in the registration.

The additional specimen requirement would apply to a random assortment of up to 10% of all Declaration of Use filings for the maintenance of marks reciting more than one good or service per class.

Pilot programme

The proposal is supported by the USPTO’s two-year Post Registration Proof-of-Use Pilot Program, which began in July 2012. This Program involved the random selection of 500 Section 8 and Section 71 Declarations of Use.

When the USPTO issued requirements for additional specimens of use from the owners of those registrations, the USPTO discovered that approximately 50% of the registrants were unable to provide such additional specimens. Despite 422 of those 500 Declarations of Use ultimately being accepted (many owners were forced to delete goods/services for which they lacked evidence of use), the proposal reflects the USPTO’s desire for a more vigorous enforcement mechanism for the maintenance of US registrations.

The proposed rules would apply only to a subset of those owners filing Section 8 or Section 71 Declarations who would need to provide more than one specimen or additional documentation in connection with the audit.

The USPTO does not anticipate a disproportionate impact upon any particular class of small or large business or upon individuals, although any individual or entity owning a registration containing more than one good or service per class could be subjected to and impacted by the proposed rule.  

Consider filings additional specimens

Although the particulars of the auditing process have not been finalised, the USPTO anticipates that the audits will be conducted in a manner similar to the pilot programme and anticipates implementing the proposed rule after January 2017.

Holders are therefore encouraged, but not (yet) required, to begin providing additional specimens when filing a Declaration of Use in an effort to avoid the possibility of a future random audit. 

Michael Leonard is a Partner of Fox Rothschild LLP in Philadelphia and a member of the MARQUES International Trade Mark Practice Team. Randall Collins is an associate at Fox Rothschild LLP in Philadelphia.

Using trade marks to protect traditional cultural expressions

Indigenous peoples are seeking to protect their traditional cultural expressions (TCE) for several reasons, including preserving their culture and tradition and maintaining its sanctity and integrity. Karsay Enikö of the IP Outer Borders Team discusses some examples

Read More >>
Field Note from the Outer Borders: Authentic Indigenous

The artwork and symbolism of indigenous peoples has long been popular outside their communities. It has, however, often been adopted by others without respect to its cultural significance or benefit to the artists and communities from which it originates
By David Fyfield

Read More >>

New MARQUES events announced

 

MARQUES Media Roundup

Events lined up in the coming months include three workshops on the USPTO, an arbitration/mediation workshop and the second Luxury Brand Seminar

 


The MARQUES Class 46 blog now has 5,000 email subscribers and the LinkedIn discussion group has more than 4,100 members. Have you read the latest posts?

Read More >>   Read More >>

Unsubscribe:
You can unsubscribe from this emailing list or change the frequency and type of information you receive from MARQUES at anytime by logging into the MARQUES website and clicking on the Preferences tab in the My Profile section of the My Account page.  Alternatively you can reply to this email with the subject 'NewsChannel - Unsubscribe' to be removed from this mailing list.