USPTO to Require Additional Evidence of Use for Post-Registration Affidavits

March 2, 2017

By: Nathan T. Harris

Beginning March 21, 2017, the USPTO has announced it will scrutinize more closely the Allegation of Use and accompanying evidence needed to renew a trademark registration. The strict use requirement in the United States can present a trap for the unwary, and the new procedure for examining evidence of use make it all the more important for registrants to understand and make accurate representations as to how the mark is in use. The new procedure is particularly relevant to U.S. registrations based on a Madrid filing, as such registrations often include a relatively long list of goods and/or services.

U.S. law requires that a registered trademark be in use in commerce on all of the goods and in connection with all of the services recited in the registration.[1] Accordingly, a registrant must provide a sworn declaration to that effect when renewing a trademark registration, along with a specimen of use for each class of goods/services; examples of such specimens include photographs of product packaging, tags, labels, and screenshots of websites offering the recited services. Until now, applicants were only required to submit one specimen of use per class. For example, for a multiclass application having two classes, only two specimens were required, even if hundreds of goods were listed. As a result, for registrations reciting a large number of goods, no evidence of use beyond the declaration is required for the vast majority of the goods, meaning that some percentage of registrations may recite goods and services for which the mark is not actually in use.

To improve the accuracy of the register, the USPTO in 2012 announced a pilot program during which it randomly selected a number of registrations for which Section 8 or 71 renewal affidavits had been filed for a number of goods and/or services. For those registrations, the USPTO selected one or more goods for which no specimen had been submitted with the affidavit, and requested that the registrant submit additional specimens for those goods before the registration was renewed. In 51% of cases, the registrant failed to provide the requested evidence. While some of those registrants simply did not respond, many others responded by deleting from the registration the goods for which the additional specimen was sought. Of course, those same registrants had recently submitted an affidavit indicating that the mark was in use on those goods.

On January 19, 2017, the USPTO announced it was revising its rules to allow Examining Attorneys to require additional information or specimens of use from registrants. Initially, the USPTO expects to audit roughly 10% of Section 8 or 71 renewal affidavits. Those registrants whose affidavits are selected will be issued an Office Action requesting proof of use for two additional recited goods or services per class, in the form of additional specimens, exhibits, or affidavits or declarations.

If a registrant provides acceptable evidence upon request, the renewal will be processed as in the past. If the registrant responds but fails to provide suitable additional evidence for particular goods or services, the USPTO will suggest that the registrant cancel those goods or services, and may make subsequent requests about other recited goods or services.  Any goods or services for which additional information is requested but not provided will be deleted from the registration. Notably, the entire registration will be canceled if the registrant fails to respond to the request within the standard six-month period for doing so.

In light of this new procedure, those seeking to renew registrations should carefully review the recited goods and services to determine whether the mark is still in use for each. Companies with registrations covering multiple goods and services may wish to begin collecting specimens for all recited goods and services before submitting a Section 8 or 71 affidavit. And as always, the affidavit itself should recite only those goods and services for which the mark is still in use.

Including goods or services for which no evidence of use is available can introduce a number of potential problems. In the short term, the new examination procedure will add cost and delay to those registrants who end up deleting goods or services in response to a request for additional information; the possibility of receiving subsequent requirements will only compound the problem. And a registrant forced to delete goods or services on which it swore the mark was in use may encounter problems enforcing the registration later on, with adversaries seizing on the inconsistency to assert that the registration is invalid for fraud.

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[1] Some exceptions apply, including registrations based on foreign or international registrations, or where excusable non-use can be shown.