USPTO Publishes Final Rule Facilitating Verification of Certain Trademark Use Claims in Affidavits or Declarations

The US Patent and Trademark Office (USPTO) published final rules amending its rules concerning the examination of affidavits or declarations of use in commerce, continued use, or excusable nonuse filed under Section 8 or Section 71 of the Trademark Act.

Practical Law Intellectual Property & Technology

On January 19, 2017, the USPTO published final rules amending its rules concerning the examination of affidavits or declarations of use in commerce, continued use, or excusable nonuse filed under Section 8 or Section 71 of the Trademark Act (82 FR 6259-01 (Jan. 19, 2017)).

The current rules require the submission of only one specimen per class in connection with a Section 8 or Section 71 affidavit, unless additional information, exhibits, affidavits or declarations, or specimens are necessary to properly examine the affidavit itself.

Under the amended rules, the USPTO will establish an audit program and randomly select, initially, 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. The USPTO will issue office actions to the selected registrants requiring additional proof of use to verify claims that the subject trademark is in use in commerce in connection with the goods or services listed in the registration.

The amended rules will facilitate:

  • The USPTO's ability to assess and promote the integrity of the trademark register by encouraging accuracy in the identification of the goods or services for which use in commerce or continued use is claimed.

  • The cancellation of registrations for marks that were never in use in commerce or are no longer in use and for which acceptable claims of excusable nonuse were not submitted in connection with the relevant goods or services.

The amended rules are effective February 17, 2017.

Update: The amended rules will take effect on March 21, 2017. See Update, Trump Regulatory Freeze Stalls New USPTO Trademark Use Rule ( www.practicallaw.com/w-005-9709) .

 
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