USPTO Changes Trademark Rules to Improve Accuracy in Goods and Services Identification | Practical Law

USPTO Changes Trademark Rules to Improve Accuracy in Goods and Services Identification | Practical Law

The USPTO published final rules concerning trademark practice to require, on request: (i) additional specimens and other information deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and (ii) more than one specimen for a use-based trademark application, an allegation of use, or an amendment to a registered mark. The USPTO will also implement a pilot program to assess and improve the accuracy of the register. The new rules will go into effect on June 21, 2012.

USPTO Changes Trademark Rules to Improve Accuracy in Goods and Services Identification

by PLC Intellectual Property & Technology
Published on 21 May 2012 • USA (National/Federal)
The USPTO published final rules concerning trademark practice to require, on request: (i) additional specimens and other information deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and (ii) more than one specimen for a use-based trademark application, an allegation of use, or an amendment to a registered mark. The USPTO will also implement a pilot program to assess and improve the accuracy of the register. The new rules will go into effect on June 21, 2012.
On May 22 2012, the USPTO published final rules revising the rules of trademark practice before the USPTO to allow the USPTO, on request, to require:
  • Any specimens, information, exhibits and affidavits or declarations the USPTO deems reasonably necessary to examine a post registration affidavit or declaration of continued use in trademark cases, and assess the accuracy and integrity of the register.
  • More than one specimen for a use-based trademark application, an allegation of use, or an amendment to a registered mark.
As part of a two-year pilot program to assess the accuracy of the identification of goods and services of currently registered marks, the USPTO anticipates issuing requirements for additional proof of use together with the review of post-registration maintenance filings for about 500 registrations.
The purpose of these rules is to:
  • Allow the USPTO to require trademark applicants or registrants to submit any additional specimens or other information, exhibits and affidavits or declarations reasonably necessary for proper examination.
  • Allow the USPTO to conduct a limited-duration post registration pilot program to verify the accuracy of claims that a trademark is in use on particular goods or services to assess and improve the accuracy and integrity of the register.
  • Harmonize the requirements that can be made as part of the examination of use allegations made in post registration maintenance documents with the requirements currently authorized in the examination of use allegations made before registration.
These changes go into effect on June 21, 2012.