USPTO Changes Pertaining to Trademark Declarations, Post-Registration Use Filings


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In efforts to enhance the US Patent and Trademark Office (USPTO) electronic filing system and to “assess and promote the accuracy and integrity of the trademark register,” the USPTO has ushered in changes that affect electronic trademark filings and the review process for post-registration specimens of use.

Beginning on January 14, 2017, the USPTO implemented changes to the declaration and signature portion of various electronic filing forms available through the Trademark Electronic Application System (TEAS), including trademark application and declaration of use forms. The requisite statutory declaration language that trademark owners attest to in each USPTO trademark filing is now separated into individual declaration statements, and the person electronically executing the declaration must now affirmatively check a box next to each statement, the last of which is the standard warning that false statements are punishable by fine or imprisonment. The affected forms include (1) applications for registration, (2) allegations of use, and (3) post-registration affidavits or declarations of continued use or excusable non-use.

Additionally, beginning March 21, 2017, the USPTO will implement changes to its examination of post-registration affidavits or declarations of continued use or excusable non-use filed pursuant to Section 8 or Section 71 of the Trademark Act (i.e., trademark registration maintenance affidavits and renewal applications). These changes are a result of the USPTO’s two-year pilot study in which owners of more than 50 percent of 500 randomly chosen registrations were unable to verify use of the registered mark for all of the goods and/or services for which the mark was registered.

Currently, the USPTO only requires one specimen of use per class, regardless of the total number of goods or services identified in each class. Beginning in March 2017, however, the USPTO will enact a permanent audit program in which approximately 10 percent of registrants filing a Section 8 or Section 71 affidavit for registrations covering more than one good or service per class will be asked to provide further proof of use for the additional goods or services (e.g., additional specimens, information, exhibits, affidavits or declarations). The request for additional information will come as an Office Action and will give registrants the standard six-month period to respond. If the registrant is unable to provide proof of use for all of the goods/services, those goods/services will be deleted from the registration. Failure to respond to the Office Action will result in cancellation of the entire registration.

In light of these heightened post-registration examination procedures, trademark holders should conduct a detailed review of their trademark registrations that are up for maintenance filings or renewals, and should consider identifying specimens of use for all goods and/or services in each class.

McDermott Will & Emery’s trademark team is pleased to work with our clients to review the use of trademarks prior to the submission of post-registration specimens of use, and/or to conduct a post-registration audit of certain brands or trademark portfolios. Please contact McDermott’s Trademark Group with any questions about these USPTO changes or for assistance with post-registration filing procedures.