More Stringent Trademark Registration Maintenance Rules Coming Soon
Starting on February 17, 2017 (that’s this Friday folks) USPTO trademark examiners will have the ability to request additional evidence of continued use of registered trademarks when maintenance filings cross their desks.
After a trademark is registered, owners must make periodic filings with the USPTO to maintain their registrations, specifically at the 5 and 10-year marks after the date of registration (and every 10 years thereafter). Currently these “Section 8” filings require the owner/applicant to make a sworn statement (an “Affidavit of Use”) that their marks are still in use in the classes of goods or services in which registration originally occurred. In addition to the Affidavit of Use, owners must also submit a current specimen demonstrating that the mark is still in use.
The new rules will allow examiners to require submission of additional materials to verify that a mark is in use to avoid cancellation of marks. In the announcement of the new rules in the Federal Register, the USPTO said examiners will be able to request “information, exhibits, affidavits or declarations, and…additional specimens of use…” The rules will also apply to Section 71 affidavits for excusable non-use.
The USPTO estimates that in 2016 alone, approximately 150,000 Section 8 applications were filed, as well as 9,100 under Section 71. In a pilot study of implementation of the proposed rules, the owners of 51% of the 500 randomly-chosen registrations were unable to verify that their marks were still in use on the identified goods or services. When the roll out occurs, the USPTO aims to conduct random audits of up to approximately 10% of submitted applications but may increase the percentage depending on the results and availability of resources.
Section 8 and section 71 affidavits exist to facilitate the cancellation of registrations of marks no longer in use in connection with the goods or services identified in the registrations. Ultimately, this clearing of “dead wood” allows the USPTO to “assess and promote the integrity of the trademark register” according to the announcement in the Federal Register.
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