The United States Patent and Trademark Office (“USPTO”) announced a final rule that took effect on February 17, 2017. To assess and promote the accuracy and integrity of the trademark register, the USPTO amended rules concerning the examination of affidavits or declarations of continued use pursuant to Section 8 of the Trademark Act, or affidavits or declarations of use in commerce pursuant to Section 71 of the Act.
Under the regulations, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all of the goods/services identified in the registrations, unless the registrant submits a claim of excusable nonuse.
A register that does not accurately reflect marks in use in commerce for the goods/services identified in registrations imposes costs and burdens on the public. The rules change allows the USPTO to require additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/services identified in the registration.
Registrants will have six months to respond to any Office Action instituted under the random audit. The registrant may submit the required proof of use, or delete any goods or services for which the mark is not being used. Failure to respond to an Office Action will result in cancellation of the entire registration, unless the grace period for Section 8 & 71 filings has not expired. Trademark owners must be prepared to prove use for all of the goods/services listed if they are selected for the random audit.
We recommend that you perform an internal audit for all of your trademark registrations, and take steps to ensure that you can provide evidence of use for every listed item of goods and services.
