Demonstrating Continued Use of Your Trademark Just Got a Little More Difficult

April 5, 2017

By Alex E. Jones

On March 21, 2017, the United States Patent and Trademark Office (“USPTO”) issued a new rule concerning Section 8 and Section 71 trademark affidavits.  The USPTO will now issue post-registration Office actions, requiring registrants to submit evidence demonstrating a mark’s use in commerce for each good/service identified in the registration.

By way of background, a trademark may only be registered if it is “used in interstate commerce” in connection with goods or services. Applicants must submit evidence, referred to as specimens, to demonstrate the mark is indeed being used in connection with a specified good/service. For example, if a mark is being registered in International Class 028 (toys and sporting goods) for baseballs and basketball hoops, the applicant must submit evidence that the mark is being used in connection with each good.

Owners of trademarks must continue to demonstrate the use of the mark through Section 8 affidavits (Section 71 affidavits for international registrations). Section 8 affidavits must be filed between the 5th and 6th year after registration and between the 9th and 10th years after registration thereafter.

Prior to the new rule, registrants could prove continued use by submitting a specimen for one good/service in each class, and attesting that the mark was being used in connection with the other identified goods/services. To take the earlier example, a registrant could submit a specimen showing the mark in use in connection with baseballs, and attesting (without offering any specimen) that the mark is being used in connection with basketball hoops. This may no longer be sufficient following the implementation of the new rule.

Under the new rule, the USPTO will audit 10 percent of Section 8/Section 71 affidavits by issuing Office actions requesting additional specimens to ensure marks are actually being used in connection with each good/service identified in the registration (e.g. specimens for both baseballs and basketball hoops). For each audit, the USPTO expects to request specimens for two additional goods/services for each class in which the mark is registered. If a registrant cannot produce a specimen for the requested good/service, then the USPTO will cancel the registration as to that good/service. Failing to respond to the Office action could result in a complete cancellation of the mark.

The USPTO’s goal is to rid the trademark registry of “dead wood” – marks that remain live but are not actually in use for the identified goods/services. While such a goal is worthy, trademark owners must now review their registrations to ensure each good/service identified in the registration is actually being used in commerce, and owners must be prepared to produce evidence to support such use. Furthermore, new trademark applicants should carefully select which goods/services the mark is being used in connection with.

For additional information or assistance with trademark registrations and Section 8/Section 71 affidavits, please contact David Posteraro at 216.736.7218 or drp@kjk.com.