The US Patent and Trademark Office (“PTO”) has made effective as of February 17, 2017 a rule concerning the examination of affidavits or declarations of continued use or excusable nonuse filed under section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed under section 71 of the Act (Official Register, Vol. 82, No. 12: 37 CFR Parts 2 and 7).
Between the 5th and 6th anniversary years, applicants of all US trademark registrations must file a declaration or affidavit of use and continued use of the registered mark to maintain the trademark registration in force. A US Trademark Registration can potentially live into perpetuity, but the registered mark must be in continuous use. Prior to the enactment of the new rule, a Statement of Use needed to include a specimen showing use of the mark on only a single good listed in the Identification of Goods/Services (“ID”) for each registered international classification. The requirement of providing proof of use, with a specimen, still exists. However, now the PTO may request proof from the applicant that the mark has been used on all goods identified in the ID. If the applicant cannot prove such use, the PTO can cancel in whole, or in part the US Trademark Registration.
During the pilot proof-of-use program,which was published in 2012, the PTO randomly selected 500 registrations for which section 8 and section 71 affidavits were filed to participate in the pilot program to determine the actual use in commerce of the marks in connection with the goods/services identified in the registrations. As part of the pilot program, the selected trademark owners were required to submit proof of use of their marks for additional goods/services per class, in addition to the one specimen per class submitted with their affidavits, and to verify use of the additional goods/services during the statutory filing period.
In 51% of the registrations selected for the pilot, the trademark owners failed to supply additional verified proof of use on specific goods/services for which use in commerce was initially claimed. Of this 51%, in 35% of the registrations, the owner requested that some goods/services that were initially claimed to be in use in commerce be deleted, and the remaining 16% of the registrations were cancelled because the trademark owners failed to respond to the requirements for additional proof or to other issues raised during examination of the section 8 or section 71 affidavit. Ultimately, the section 8 and section 71 affidavits were accepted for 84.4%, or 422 registrations, which included acceptances issued after goods/services queried under the pilot were deleted.
The rule makes clear that use must occur of the mark for all goods identified in the ID or the applicant risks the loss of the mark, at least with respect to the goods on which the mark is not actually used.