Changes to PTO Rules Concerning Declarations of Continued Use or Excusable Nonuse
All United States trademark and service mark registrations must be renewed by filing an affidavit under Section 8 of the Trademark Act declaring that the mark is still in use in U.S. commerce, or filing a declaration of permissible non-use pursuant to Section 71 of the Trademark Act.
Effective March 2017, the United States Patent and Trademark Office amended its rules relating to the examination of declarations filed under these provisions alleging continued use of registered marks. Previously, the owner of a registration was required to delete from the declaration any goods or services for which the subject trademark was not in current use or for which there was not excusable nonuse, but need only submit one specimen illustrating use for each international classification covered by the registration.
Under the new rules, after submission of the declaration the PTO can request from the registrant additional information, exhibits, affidavits or additional specimens for other goods or services covered in these international classes by issuing an Office Action requesting proof that the registered mark is actually used for all of the covered goods and services and not only those for which a specimen of use was submitted with the declaration. Inability of a registrant to demonstrate continued use of the mark for any goods or service categories will result in cancellation of the registration as to such goods or services. If no response to the Office action is filed within six months of the issuance date of the Office action, or before the end of the statutory filing period for the section 8 or section 71 affidavit, whichever is later, the USPTO will cancel the registration in its entirety. This rule is expected to be applied randomly to approximately 10 percent of all declarations of use.
In practice, this requires owners of registrations to take precautions to ensure the accuracy of all maintenance filings for registrations. When renewal filings are due, registrations should be carefully reviewed for use on all of the goods/services listed to confirm that the mark claimed is in use on or in connection with all of the goods/services claimed in the registration certificate. Any submissions should be scrutinized to ensure that they delete goods or service categories for which the marks are no longer used. Inclusion of categories for which a mark is not in use may result in additional cost to the registrant and, ultimately, jeopardize protection for the mark. For those goods or services for which the mark is no longer in current use, but for which continued protection is desired, discuss with us whether those goods or services should be deleted or whether a declaration of non-use should be filed as to those goods or services. Any goods or services which are deleted from an existing registration based on absence of continued use but for which there is an intention to use the mark again may warrant the filing of a fresh application to buttress protection for the mark. exercise care to ensure the declaration of use does not claim use of the mark on any goods that are not sold in commerce under the mark and to select a proper specimen. To the extent possible, proof of use of the mark on some of the additional goods or services should be obtained prior to filing the declaration of use even if only one specimen is ultimately submitted. This is a good way of checking to make sure the mark is in use on other goods and providing an easily accessible record of use as of the date of filing in the event an office action issues.
We are here to assist you with any concerns about what constitutes acceptable use and what categories should be included in any maintenance filings.