Cleaning house at the trademark office new rules

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.

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 person
or 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 be
construed as legal advice or a legal opinion of Barnes & Thornburg LLP.

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”


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


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


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


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


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)
depending upon when renewal is filed
• June 21, 2007 – December 21, 2007: 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)


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


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


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


Acceptable Specimens: Services
• Advertising
• Brochures, pamphlets, leaflets, flyers
• Internet Web sites
• Billboards
• Direct Mail pieces


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


Example: IPOD
U.S. Trademark Registration No. 3,341,191


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


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