USPTO Proposes Randomly Auditing Trademark Use Filings | Practical Law

USPTO Proposes Randomly Auditing Trademark Use Filings | Practical Law

The US Patent and Trademark Office (USPTO) has proposed to amend rules concerning affidavits or declarations of continued use or excusable nonuse filed under the Trademark Act, requiring the submission of additional information to verify the continued use of a trademark.

USPTO Proposes Randomly Auditing Trademark Use Filings

Practical Law Legal Update w-002-7016 (Approx. 3 pages)

USPTO Proposes Randomly Auditing Trademark Use Filings

by Practical Law Intellectual Property & Technology
Published on 24 Jun 2016 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has proposed to amend rules concerning affidavits or declarations of continued use or excusable nonuse filed under the Trademark Act, requiring the submission of additional information to verify the continued use of a trademark.
On June 22, 2016, the US Patent and Trademark Office (USPTO) proposed to amend rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed under Section 8 (15 U.S.C. § 1058) or Section 71 (15 U.S.C. § 1141k) of the Trademark Act (81 Fed. Reg. 40589 (June 22, 2016)).
Under the proposed amendments, the USPTO would conduct random audits of up to 10 percent of the combined total of Sections 8 and 71 affidavits filed each year for marks registered for more than one good or service per class. In addition to the current requirement of one specimen of use per class, owners of the selected affidavits would be required to provide additional proof of use in the form of information, exhibits, affidavits or declarations, and specimens of use for additional goods or services.
The USPTO said the amendment would help it:
  • Assess and promote the accuracy and integrity of the trademark register.
  • Clear from the register trademark registrations no longer in use.
The proposed amendment follows a pilot program concluded in 2014 that confirmed that a significant number of registrations cover goods and services for which the registered trademark is no longer in use. For more details about the pilot program, see Legal Update, USPTO Seeks Comments on Ensuring Accuracy of Claimed Trademark Use.
Interested parties may submit comments on the proposed rulemaking via email to [email protected] no later than August 22, 2016.