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.