TMO Cracks Down on Sections 8/71 Proof of Use

Simor Moskowitz | February 14, 2017

Effective February 17, 2017, the U.S. Trademark Office (“TMO”) is amending its rules concerning the examination of affidavits or declarations of continued use or excusable nonuse filed pursuant to section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to section 71 of the Act (relating to Madrid Protocol based registrations). Specifically, under the regulations, the TMO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the TMO to ensure that the Trademark Register accurately reflects marks that are in use in commerce in the United States for ALL of the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part.

The new rules relate more to the enforcement of the existing rules, and highlight a common issue that we see in practice. That is, it is often the case that a U.S. trademark registration based upon a foreign application or registration, or Madrid Protocol, includes a broad identification of goods and/or services. Between the 5th – 6th year after the registration date or at the 10th year renewal(s), the registrant must submit a declaration attesting to the fact that the mark is currently in use in U.S. commerce in connection with ALL of the goods and/or services identified in the registration, together with at least one representative specimen per class showing such current use. Any goods/services with which the mark is not currently in use should be deleted from the registration. Traditionally, the TMO has relied upon the signed Declaration and the specimen(s) submitted, and has not inquired further unless there was a glaring issue with the specimen.

But, through a recent two-year survey, the TMO has found that there are many instances in which a registrant is not actually using the mark on ALL of the goods/services identified. In fact, the TMO survey disclosed that in 51% of the Declarations of Use reviewed the trademark owners failed to supply additional verified proof of use on specific goods/services for which use in commerce was initially claimed. The amended rules will institutionalize this practice and allow the TMO as a matter of course to require additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/services identified in the registration.

In view of the amended rules, we recommend that registrant’s be vigilant in confirming that a mark is in use in U.S. commerce on ALL of the goods/services identified in the registration when instructing our office to prepare and file a Declaration Under Section 8, or Section 71 between the 5th – 6th year after the registration date or at the 10th year renewal(s); and/or to advise which identified goods are not in use and should be deleted from the registration.

Should you have any questions, please do not hesitate to contact us.

Simor Moskowitz February 14, 2017