Audit Program At USPTO Brings Changes And Additional Requirements For Registrants

Following a pilot program conducted by the United States Patent and Trademark Office (USPTO), the USPTO is considering and implementing some new procedures that will have a big effect on trademark filers, especially those belonging to foreign companies.

In 2012, the USPTO launched a pilot program to gather data on whether registered trademarks were actually being used on all the products or services listed in their registrations. As both domestic and foreign filers know, the USPTO requires specificity in the identifications of goods and services. This has sometimes been an issue for foreign filers who are accustomed to drafting identifications either containing the class heading or to include as many goods or services under a class heading as possible.

The pilot program was launched to help the USPTO determine if new procedures needed to be implemented in the Office to clear the trademark registry of "deadwood," or registrations for marks that are no longer in use. Under the program, the USPTO randomly selected 500 registrations that were up for renewal and required the registrants to submit proof of use for two additional items in each class listed on the registration. In more than half of the trademark registrations selected, the owner was unable to verify the actual use of the mark. These findings prompted a three pronged approach to tackling those registrations which may be problematic.

The first approach, which has already been implemented, has been to increase the readability of the declarations that are submitted along with renewals. This should make these declarations more readable. Signatories should be well aware that by signing the declarations, they swear under penalty of perjury of ongoing use of the mark as part of the maintenance filing.

The second approach consists of amendments to the cancellation proceedings. Although not yet in effect, a blog post by Gerard F. Rogers, Chief Administrative Trademark Judge at USPTO, indicates that streamlined proceedings are on the horizon. The streamlined proceedings would make it easier to cancel a mark because of nonuse or abandonment of the mark. Under the new proceedings, a party seeking the cancellation of a mark can do so by providing evidence of nonuse. The streamlined proceedings will mean not only speed (cases could be decided anywhere from 70 days to 170 days from commencement), but also efficiency and cost savings for the challenger.

The third approach, and what the bulk of this...

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