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USPTO Heightens Post-Registration Requirements for Trademarks

March 16, 2017
Post by Brandon W. Clark

The U.S. Patent and Trademark Office (USPTO) has recently made changes to the post-registration requirements for U.S. trademark registrations. Effective March 21, 2017, the USPTO will implement a post-registration audit program intended to obtain additional evidence and ensure accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed in the registration.

The Lanham (Trademark) Act requires a number of post-registration filings with the USPTO. Currently, the owner of a federally registered trademark must submit a Declaration of Use between the fifth and sixth anniversary of the initial registration of the trademark. Additionally, the owner must also submit a Declaration of Use within a one-year period prior to the tenth anniversary, and every ten years after, of the initial registration. Along with the Declaration of Use the owner must also submit a specimen showing how the mark is currently used on one product or service in each registered class. Currently, the USPTO only requires one specimen of use per class, regardless of the total number of goods or services identified in each class. When a registration identifies more than one product or service within the same class, the post-registration audit program will allow the USPTO to request evidence of use (specimens, information, exhibits, or affidavits) on additional products and services. 

If the owner is unable to provide proof of use for all of the goods or services, those goods or services will be deleted from the registration. Failure to respond to the request will result in cancellation of the entire registration. To avoid the uncertainty and expense of receiving and responding a post-registration request, trademark owners may wish to voluntarily provide valid specimens of use for all goods and services in the registration with the initial (Section 8) filing or remove terms/products that are no longer being used in commerce. This is especially so for registrations that cover a minimal number of products or services.

These changes are a result of the USPTO‚Äôs two-year study in which owners of more than fifty percent of five hundred randomly chosen registrations were unable to verify use of the registered mark for all of the goods or services for which the mark was registered. In light of these heightened post-registration procedures, trademark owners should conduct a detailed review of their trademark registrations that are up for maintenance filings or renewals, and should consider identifying specimens of use for all goods or services in each class. 

Brandon W. Clark is the Chair of the Copyright, Entertainment, and Media Law Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Brandon directly via email at brandon.clark@ipmvs.com.


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