Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases

The USPTO today published a notice in the Federal Register regarding a proposed rule change, entitled “Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases”. Click herefor the notice. The USPTO has expressed concern for some time that Madrid Protocol applicants and trademark owners may be obtaining and maintaining trademark registrations with overly-broad descriptions of goods and services, and the purpose of the proposed rule change is ostensibly to address this concern.

As the notice indicates, the proposed rule follows a roundtable discussion held in April 2010 on the topic of use-based trademark registrations. The issue was raised in part by the series of decisions on fraud on the USPTO based on descriptions of goods/services beyond those in use by the applicant/registrant.

The proposed rule will allow the USPTO to request more than one specimen per class, in an effort to “verify the accuracy of identifications of goods/services in trademark applications and registrations.”

The USPTO has invited comments by the public and the deadline to submit comments is September 12, 2011. Oblon, Spivak will post further on the proposed rule change in the coming days.

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