About us

USPTO Changes Requirements for Specimens and Post-Registration Filings

Amendments to U.S. Trademark Rules of Practice (37 CFR Parts 2 and 7) to facilitate review by the Trademark Office of the nature and accuracy of allegations use made during the trademark application process and post-registration phase will go into effect on June 21, 2012.

The amendments have three elements.

First, examining attorneys will have the authority to require additional materials in the form of specimens, information, exhibits, affidavits or declarations to examine allegations of use in post-registration filings.

Second, the rules are being amended to permit an examining attorney require an applicant or registrant to submit more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark.

Third, to assess the accuracy of the identifications of goods/services currently registered marks, the Trademark Office will launch a two-year pilot program in which 500 trademark registrations for which Section 8 or 71 affidavits are being filed will be randomly selected specially-trained senior attorneys to receive an office action requiring proof of use of the mark on two additional goods/services per Class. Owners of the selected registrations will be afforded the usual post-registration office action response period of six months from the issuance of the office action or the end of the filing period for the Section 8 or 71 affidavit whichever is later.

Additional specimens submitted in response to the office actions will be reviewed according to the generally accepted standards for use in commerce. If a registrant files a timely response but does not provide adequate proof of use, the goods/services in question will be deleted from registration, and the response may trigger a further requirement for proof of use as to some or all of the remaining goods/services. By contrast, if no response whatsoever to the office action is filed within the relevant period, the registration will be cancelled. The Trademark Office will establish a dedicated, for general questions and concerns relating to the pilot.

The amendments are intended to help to ensure proper examination, verify claims that a trademark is in use on particular goods/services and improve the accuracy and integrity of the Register.

The full text of the final rule was published in the May 22, 2012 edition of the Federal Register (Vol. 77, No. 99) at page 30197.

Source:INTA Bulletin June 15, 2012

Scott Woldow, Smith, Gambrell & Russell, LLP, Washington, DC USA
Trademark Office Practices Committee's USPTO Subcommittee