In the United States, a trademark owner must use their mark in commerce to maintain a federal trademark registration. This requirement is different from many other countries which do not require use of the mark to maintain registration. Further, the trademark owner is required periodically to prove to the United States Patent and Trademark Office (USPTO) that the registered mark is in use by submitting specimen(s) of current use, along with an affidavit or declaration attesting to the use. The USPTO is amending its rules regarding the examination of these affidavits or declarations to potentially put registrants to stricter proof requirements.
The new rules, pertaining to affidavits and declarations of continued use or excusable nonuse filed pursuant to Section 8 or Section 71 of the Trademark Act, will become effective on February 17, 2017. The new rules allow 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 the goods and services identified in the registration. The USTPO will be able to require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary to ensure that the register accurately reflects marks that are in use in commerce in the United States (unless excusable nonuse is asserted).
The purpose of the amended regulations is to enable the USPTO to “assess and promote the integrity of the trademark register” and “clear the register of deadwood” by cancelling, in whole or in part, registrations for marks that are not in use for the designated goods and services. A recent pilot program conducted by the USPTO studied 500 randomly chosen registrations to determine the actual use in commerce of marks. The study found that approximately 50% of the trademark owners failed to prove use on goods or services for which use in commerce was claimed.
With these changes, the USPTO appears more focused on enforcing the “use it or lose it” policy underlying U.S. trademark rights. U.S. trademark registrants should keep good records of the use of their marks for each good or service listed in the registration, have several specimens available as back-up if needed, and allow plenty of time before the deadline to evaluate whether a specimen appears to be sufficient or whether additional action should be taken to verify or establish use of the mark.
UPDATE: The effective date of this rule has been delayed until March 21, 2017, in accordance with the memorandum of January 20, 2017, from the Assistant to the President and Chief of Staff, entitled “Regulatory Freeze Pending Review.” See 82 Fed. Reg. 10273.