USPTO Seeks Comments on Ensuring Accuracy of Claimed Trademark Use | Practical Law

USPTO Seeks Comments on Ensuring Accuracy of Claimed Trademark Use | Practical Law

The US Patent and Trademark Office (USPTO) has issued a status report on the Trademark Post Registration Proof of Use pilot program, and seeks public comment on efforts aimed at ensuring the trademark register's accuracy and integrity regarding use of marks with the goods or services included in the registrations.

USPTO Seeks Comments on Ensuring Accuracy of Claimed Trademark Use

Practical Law Legal Update 3-575-9306 (Approx. 3 pages)

USPTO Seeks Comments on Ensuring Accuracy of Claimed Trademark Use

by Practical Law Intellectual Property & Technology
Published on 24 Jul 2014 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has issued a status report on the Trademark Post Registration Proof of Use pilot program, and seeks public comment on efforts aimed at ensuring the trademark register's accuracy and integrity regarding use of marks with the goods or services included in the registrations.
On July 24, 2014, the USPTO issued a status report on the Trademark Post Registration Proof of Use pilot program, announcing that:
  • The results to date support continued efforts aimed at ensuring the trademark register's accuracy and integrity on the actual use of marks with the goods or services included in the registrations.
  • The USPTO is seeking public comments, and will hold a roundtable discussion, to explore the topic.
The pilot program required 500 randomly selected trademark owners filing Section 8 or Section 71 declarations of use to submit proof of use of their marks for two goods or services per class in addition to specimens submitted with their filings. The registration was subject to further proof of use requirements if the response either:
  • Did not fully address the program's requirements
  • Included a request to delete the goods or services identified for the pilot.
As of June 30, 2014, the pilot was completed for 470 of the 500 registrations. Half of the registrations selected for the pilot failed to meet the requirement to verify the previously claimed use, with:
  • 34% requesting deletions.
  • 16% failing to respond to the requirements of the pilot and any other issues raised during examination of the underlying maintenance filing, which resulted in the cancellation of the registration.
In particular, the USPTO is seeking comments on suggestions to:
  • Create a streamlined procedure for deleting goods and services from a trademark registration based on the trademark owner's non-use or failure to prove use of the mark with those goods or services.
  • Require registrants to provide specimens for all goods or services listed in the registration when the first Section 8 or 71 declaration is filed, and possibly include a requirement that each specimen be either:
    • a photo showing use of the mark with the goods; or
    • an advertisement for the services.
  • Increase the solemnity of the declaration by requiring the trademark owner to, for example:
    • state that he understands the seriousness of the oath; or
    • accompany the Section 8 or 71 declaration with a statement detailing the steps the owner has taken to verify the claimed use.
  • Conduct random audits of Section 8 and 71 declarations and require that a Section 7 request be filed to delete any reviewed goods or services which the trademark owner cannot show proof of use.
The date of the roundtable has not been announced. Interested parties may submit comments via email to [email protected].
The status report is available on the USPTO website.