USPTO Issues Final Rule that Permits Examiners to Require Further Evidence to Support Claim of Use on Goods/Services in Registrations

Almost one year ago (July 2011), the USPTO published a proposed Rule to allow Examiners to require additional specimens to support that a registered mark is in use for the goods/services claimed in the registration (See Oblon Spivak Trademark Blog post of July 12, 2011.)

On May 22, 2012, the USPTO published a Final Rule in the Federal Register here that will be effective on June 21, 2012. The Rule implements a pilot study that will be in effect for two years and will permit the USPTO to randomly select 250 cases per year for additional scrutiny. In those cases, the USPTO may require up to two additional specimens per Class of goods/services , or other information such as exhibits, or affidavits/declarations to support that the mark is in use on all of the goods/services set forth in the registration. In these cases, the Registrant will have at least six months to file the information required by the Examiner. Failure to respond will result in the cancellation of the registration.

At the conclusion of the two year study, the USPTO will evaluate the results of the study and decide whether to permanently implement and/or expand the increased scrutiny of claims of use by registrants. Please contact us at trademarks@oblon.com to discuss how this new process may impact your company’s registered marks.

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