Cleaning House at the Trademark     Office: The New Rules  Changes in Requirements for Specimens and   for Affidavits or D...
New USPTO Rules for Specimens                            and Post-Registration Filings  • Changes in Requirements for Spec...
Purpose of New Rules  • Ensure proper examination of trademarks and    service marks  • Verify claims that mark is used in...
Change #1                           Requests for Additional Materials  • Examining Attorneys can require additional materi...
Change #2                      More than One Specimen Per Class  • The USPTO can require an applicant or registrant to    ...
Change #3                                             2-Year Pilot Audit Program  • Trademark Specimen Audits  • 2-Year Pi...
Change #3                                             2-Year Pilot Audit Program  • Important Deadline:               – 6 ...
Applicable Registrant Pool Subject to Audit  •         Generally, marks registered or renewed between December 21, 2001 an...
Trademark Audit Procedures  • Specimens to be reviewed under standard rules for    accepting specimens  • If a response to...
Preparing for a Trademark Audit                                                                              • Maintain at...
Acceptable Specimens: Goods  •         Labels  •         Tags  •         Containers for goods  •         Packaging  •     ...
Acceptable Specimens: Services  •         Advertising  •         Brochures, pamphlets, leaflets, flyers  •         Interne...
Example: IPOD                U.S. Trademark Registration No. 3,341,191                                                    ...
Example: IPOD                U.S. Trademark Registration No. 3,341,191© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Righ...
For More Information  • Contact Kenneth D. Suzan at:               – ksuzan@btlaw.com or (612) 367-8713  • Dedicated USPTO...
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Cleaning house at the trademark office new rules

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Cleaning house at the trademark office new rules

  1. 1. Cleaning House at the Trademark Office: The New Rules Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases Kenneth D. Suzan ATLANTA CHICAGO DELAWARE INDIANA LOS ANGELES MICHIGAN MINNEAPOLIS OHIO WASHINGTON, DC © 2012 Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is the property of Barnes & Thornburg LLP which may not be reproduced, disseminated or disclosed without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.
  2. 2. New USPTO Rules for Specimens and Post-Registration Filings • Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases Final Rule, 77 Fed. Reg. 30197-30208 (May 22, 2012) • Effective: June 21, 2012 • Three Important Changes to Rules© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  3. 3. Purpose of New Rules • Ensure proper examination of trademarks and service marks • Verify claims that mark is used in connection with all goods and services listed in the application/registration • Improve accuracy and integrity of the Register • Clear the “deadwood”© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  4. 4. Change #1 Requests for Additional Materials • Examining Attorneys can require additional materials when examining Affidavits of Use in post-registration filings • The Examining Attorney can require additional information as may be “reasonably necessary” to properly examine trademark applications and post-registration filings Specimens Information Exhibits Affidavits Declarations© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  5. 5. Change #2 More than One Specimen Per Class • The USPTO can require an applicant or registrant to submit more than one specimen per class of goods/services in connection with: – a use-based trademark or service mark application, – an allegation of use, or – an amendment to a registered mark© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  6. 6. Change #3 2-Year Pilot Audit Program • Trademark Specimen Audits • 2-Year Pilot Program – (June 21, 2012 through June 21, 2014) • 500 trademark registrants who have filed Section 8 or Section 71 Affidavits • Randomly Selected • Office Action will issue requiring proof of use of mark on Two Additional Goods/Services Per Class© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  7. 7. Change #3 2-Year Pilot Audit Program • Important Deadline: – 6 months from issuance of Office Action, OR – End of filing period for Section 8 or 71 Affidavit (Whichever is Later) to file required specimens • Once 2-Year Pilot ends, additional specimens and information may be requested by USPTO whenever it deems it “reasonably necessary” for examination during application process or during post- registration filings© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  8. 8. Applicable Registrant Pool Subject to Audit • Generally, marks registered or renewed between December 21, 2001 and June 21, 2009 • June 21, 2003 – December 21, 2003: Subject to pilot program • December 22, 2003 – June 20, 2005: Possibly subject to pilot program depending upon when renewal is filed • June 21, 2005 – December 20, 2005: Not subject to pilot program (no filings due during pilot period) • December 21, 2005 – June 20, 2007: Possibly subject to pilot program depending upon when renewal is filed • June 21, 2007 – December 21, 2007: Subject to pilot program • December 22, 2007 – June 21, 2009: Possibly subject to pilot program depending upon when renewal is filed and if the pilot program is not extended under a new rulemaking • No date restriction for any amendments to marks (possibly more than 1 specimen will be required)© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  9. 9. Trademark Audit Procedures • Specimens to be reviewed under standard rules for accepting specimens • If a response to the Office Action is filed within 6 months, but specimens not filed, – the goods and services at issue will be deleted from the registration • If a response is not filed to the Office Action within the required period of time, – the entire registration will be cancelled© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  10. 10. Preparing for a Trademark Audit • Maintain at least 3 acceptable specimens for each class of goods or services listed in the application • Keep files for additional specimens • Review the goods and services listed in the registration on a periodic basis© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  11. 11. Acceptable Specimens: Goods • Labels • Tags • Containers for goods • Packaging • Inscription on goods • Displays associated with the goods – e.g. point of sale displays, acceptable catalogue specimens© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  12. 12. Acceptable Specimens: Services • Advertising • Brochures, pamphlets, leaflets, flyers • Internet Web sites • Billboards • Direct Mail pieces© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  13. 13. Example: IPOD U.S. Trademark Registration No. 3,341,191 CLASS 9: full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files; electronic docking stations; stands specially designed for holding portable and handheld digital electronic devices; battery chargers; battery packs; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for portable and handheld digital electronic devices; headphones and earphones; stereo amplifier and speaker base stations; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; video viewers, namely video monitors for portable and handheld digital electronic devices; and computer software for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files; computer application software for recording and organizing calendars and schedules, to-do lists, and contact information; computer game software; and, computer software for clock and alarm clock functionality; carrying cases, all for use with portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  14. 14. Example: IPOD U.S. Trademark Registration No. 3,341,191© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.
  15. 15. For More Information • Contact Kenneth D. Suzan at: – ksuzan@btlaw.com or (612) 367-8713 • Dedicated USPTO E-mail: – TMPostRegPilot@uspto.gov • Follow @ksuzan on Twitter© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any personor entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not beconstrued as legal advice or a legal opinion of Barnes & Thornburg LLP.

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