Crystal Broughan, Esq.

March 2017

Trademark owners who have multiple products and services listed in a single class may now have to prove that their products or services are actually being used in commerce.  The newly published final rule recently issued by the United States Patent and Trademark Office (USPTO) establishes a permanent random audit program for:

1- Statements of Use filed after a Notice of Allowance is issued for Intent to Use Applications; and

2- Declarations of   Use and/or Excusable Nonuse of a Mark for registrations that list multiple goods or services in the same class.

As an example, consider a trademark owner who owns a retail store and has registered their trademark in Class 25 for clothing.  The registration lists T-shirts, pants, sweat shirts, sweat pants, golf shirts and shorts.  Historically, the trademark owner only had to provide one specimen of use in commerce when the owner filed a Declaration of  Use and/or Excusable Nonuse of a Mark between the fifth and sixth year.  Now the owner needs to be prepared to provide a specimen for each type of clothing listed (T-shirts, pants, sweat pants, golf shirts and shorts).

Brief History and Reason for New Rule

The USPTO conducted a two-year study in which they randomly verified trademark registrations in an attempt to discover whether the marks were still in use on the listed goods or services.  Approximately fifty percent (50%) of the owners were able to verify that their marks were still in use on the goods or services listed in the registration.  The USPTO wants the Trademark Register to be an accurate and a reliable source of information for trademark owners. So what can trademark registration owners expect in the future?

How New Rule Will Be Implemented

The USPTO will conduct random audits of:

• Statements of use
• Declarations of Use and/or Excusable Nonuse of a Mark
• with more than one good or service listed per class.

In registrations that are selected for audit, the USPTO will issue an Office Action requesting additional proof that the mark on specific goods or services is being used in commerce.

Trademark owners will have up to six months to respond to the Office Action by submitting the required proof of use. Alternatively, trademark owners can agree to delete the goods or services if the mark is not being used in commerce.  If the trademark owner fails to respond to the Office Action, the USPTO will cancel the entire trademark registration unless there is time remaining in the grace period for the filing of the declaration of continued use or statement of use.

Recommendations to Trademark Owners

• When filing a Statement of Use or Declaration of Use and/or Excusable Nonuse of a Mark, trademark owners need to make sure that they have specimens of each listed product with the trademark on each type of product or packaging.  If the trademark is for a service, owners need to make sure that they have specimens of advertising that includes each type of service listed.
• It might be helpful to maintain a file of specimens that show how the trademark is being used in commerce so you are prepared when it is time to file the Statement of Use or the Declaration ofUse and/or Excusable nonuse of a Mark.
• If you are a trademark owner with multiple products and services listed in a single class and have questions about how the new rule will affect your business, it’s best to reach out to a trademark attorney for further consultation.