Proposed Rule Affecting Proof of Use of U.S. Trademarks

The U.S. Patent and Trademark Office (USPTO) is considering a proposed rule change that will require a more comprehensive affidavit or declaration of use in commerce.  Specifically, the USPTO is considering new auditing procedures designed to cancel registrations for trademarks not in use.

The proposed changes are a direct result of a pilot program designed to see how many registered trademarks were actually in use.  Of the 500 registrations selected for the pilot program beginning July of 2012, approximately half failed to verify use of the particular goods or services registered.  This prompted the USPTO to consider implementing more permanent initiatives designed to ensure accuracy of the Trademark Register and actual use of marks in commerce.

If the USPTO implements the proposed rule, random audits will be performed for marks that are due to file statements of use. The mark owner will be required to provide proof of use of three total items per class instead of the usual one per class. If the mark owner does not respond at all, the mark can be cancelled, and if the mark owner does respond and cannot offer proof of use, the mark is vulnerable to partial cancellation.

These changes are particularly noteworthy for non-US based companies, as the use-based trademark system in the U.S. differs from trademark rules in other countries which do not require proof of use.

Please be assured that we at The Sladkus Law Group are monitoring proposed rule changes closely, and will advise on the best course of action to protect your U.S. trademarks.  If you have concerns about specific trademarks that may be vulnerable to the proposed rule changes, please feel free to contact us and we would be happy to discuss further.