Is the Jig up? USPTO Revises Rules Regarding Specimens of Use and Initiates Pilot Project

Many European owners base their U.S. trademark applications either on §44 (home registration) or §66 (Madrid Protocol Extension of Protection) of the Lanham Act.  By doing this, they gain the useful advantage of not having to prove use in commerce before obtaining their registration.  Unfortunately, in doing so they often disregard the requirement of having to have a “bona-fide intent to use” and consequently stuff their applications with all manner of goods and services, many of which have exactly nothing to do with what the applicant will actually use the mark on in the U.S.  I call this the “everything including the kitchen sink” approach.  Now, it appears, the USPTO is about to crack down on this practice.

Effective June 22, 2012, The U.S. Patent and Trademark Office (“USPTO”) has changed the rules and, depending on how Examiner’s use their new powers, these rules changes could have a dramatic effect.  Here is my slightly edited version of the USPTO’s summary of the new rules:

“In order to help assess and ensure the accuracy of the trademark register, the USPTO is revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to allow the USPTO to: Upon request, require any additional specimens, information, exhibits, and affidavits or declarations deemed reasonably necessary to examine a post registration affidavit or declaration of continued use or excusable nonuse in trademark cases, and for a two-year period, conduct a pilot program for the USPTO to assess the accuracy and integrity of the register; and upon request, require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark. These revisions aim to ensure the ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration, and thereby reduce costs and burdens on the public.” (Emphasis mine)

The entire notice can be found in the May 22, 2012, Federal Register.

In summary, for owner’s of registrations obtained pursuant to §44 or §66, the post-registration examiners at the USPTO can make the owner prove that they are actually using the mark on all of the goods and services listed in the registration, if they have doubts about the actual extent of the use of the mark being maintained or renewed.  For those filing use-based or intent-to-use applications, that requirement may come during the initial application process.

The issue of overly broad descriptions is not new, of course.  I have been preaching, cajoling, whining and arguing for years with my (mostly European) clients regarding what it means to have to prove use of a mark in the United States.  There have been endless conversations and arguments concerning the requirements for the submission of a declaration of use and how those requirements, rules and regulations are to be interpreted.  I have felt strongly about this subject for a long time and even co-authored an article outlining the consequences of filing incorrect affidavits of use (GRUR Int, Issue 3/2011, p. 225), Well, after many years of fruitless arguments it seems my clients are about to be faced with situations where they are going to have to really, I mean REALLY, prove that the are using the mark on all of the goods and services named in the registration, when it comes time to file an affidavit of use.

As my esteemed fellow blogger and colleague John Welch points out here, Examining Attorneys have had the power to request additional information all along under Rule 2.61(b).  It can be expected, however, that this new rule will embolden Examiners to aggressively seek additional information and specimens and I suspect (as it seems John does) that they have been told to use their power liberally.  This does not bode well for my clients, but I’m not at all upset about it.  After all, what the USPTO is doing here is really nothing other than enforcement of the already existing principle that governs trademark registration ownership in the US: use it or lose it!

Let me be clear about this: I’m behind the USPTO’s initiative.  I believe that the final results will be better for everyone. It will help clean the registry of deadwood and it will make applicants, especially those who initially adopt the “everything including the kitchen sink” approach, reconsider their description of goods and services, at the very latest when the time comes to file the affidavit of use required by §8 or §71 of Lanham Act, depending on the original filing basis.

The only negative is that I may have to explain to my clients how it came about that they suddenly have to submit additional specimens or get out a really big red pen and start deleting all of the chaff.   But they’ll get used to it…  I hope.

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