The United States Patent and Trademark Office (USPTO) has issued a Notice of Proposed Rule, 76 Fed. Reg. 40,839 (July 12, 2011), regarding proof that a mark is in use. The proposed rules changes will facilitate the USPTO's ability to verify the accuracy of the identification of goods and services by allowing the USPTO to require additional proof of use of a mark. The proposed rules allow the USPTO to require (1) additional "information, exhibits, and affidavits or declarations deemed reasonably necessary to examine" renewal applications and declarations of use, and (2) "more than one specimen in connection with a use-based trademark application, an allegation of use, an amendment to a registered mark, or an affidavit or declaration of continued use." According to the USPTO, the proposed rules "will facilitate an assessment of the reliability of the trademark register . . . so that the USPTO and stakeholders may determine whether and to what extent a general problem may exist and consider measures to address it, if necessary."
While the USPTO states that it will "seek additional specimens or a specific type of evidence in a relatively small subset of cases," the proposed rules have raised the ire of many members of the trademark bar. Trademark lawyers are concerned that the USPTO does not clearly specify the circumstances that will require additional specimens or evidence and how such requests would affect the filing deadlines and deficiency surcharges associated with post-registration submissions.
As comments regarding the proposed rules changes were due to the USPTO by September 12, 2011, we anticipate the final rules will be promulgated by the USPTO before year's end.
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