Cleaning house at the trademark office new rules

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disclosed without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal

advice or a legal opinion of Barnes & Thornburg LLP.

Cleaning House at the Cleaning House at the Trademark Office: The New Trademark Office: The New

RulesRulesChanges in Requirements for Specimens Changes in Requirements for Specimens

and and for Affidavits or Declarations of for Affidavits or Declarations of

Continued Continued Use or Excusable Nonuse in Trademark Use or Excusable Nonuse in Trademark

CasesCasesKenneth D. SuzanKenneth D. Suzan

© 2012 CONFIDENTIAL Barnes & Thornburg LLP. All Rights Reserved. This page, and all information on it, is confidential, proprietary and the property of Barnes & Thornburg LLP, which may not be disseminated or disclosed to any person or entity other than the intended recipients), and may not be reproduced, in any form, without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal advice or a legal opinion of Barnes & Thornburg LLP.

New USPTO Rules for Specimens and Post-Registration Filings

• Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases Final Rule, 77 Fed. Reg. 30197-30208 (May 22, 2012)

• Effective: June 21, 2012 • Three Important Changes to Rules

• Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases Final Rule, 77 Fed. Reg. 30197-30208 (May 22, 2012)

• Effective: June 21, 2012 • Three Important Changes to Rules

Purpose of New Rules Purpose of New Rules

• Improve accuracy and integrity of the Register

• Clear the “deadwood”

• Improve accuracy and integrity of the Register

• Clear the “deadwood”

• Ensure proper examination of trademarks and service marks

• Verify claims that mark is used in connection with all goods and services listed in the application/registration

• Ensure proper examination of trademarks and service marks

• Verify claims that mark is used in connection with all goods and services listed in the application/registration

Change #1 Requests for Additional Materials

• Examining Attorneys can require additional materials when examining Affidavits of Use in post-registration filings

• The Examining Attorney can require additional information as may be “reasonably necessary” to properly examine trademark applications and post-registration filings

SpecimensInformationExhibits Affidavits Declarations

• Examining Attorneys can require additional materials when examining Affidavits of Use in post-registration filings

• The Examining Attorney can require additional information as may be “reasonably necessary” to properly examine trademark applications and post-registration filings

SpecimensInformationExhibits Affidavits Declarations

Change #2 More than One Specimen Per Class

• The USPTO can require an applicant or registrant to submit more than one specimen per class of goods/services in connection with:– a use-based trademark or service mark

application,– an allegation of use, or– an amendment to a registered mark

• The USPTO can require an applicant or registrant to submit more than one specimen per class of goods/services in connection with:– a use-based trademark or service mark

application,– an allegation of use, or– an amendment to a registered mark

Change #3 2-Year Pilot Audit Program

• Trademark Specimen Audits• 2-Year Pilot Program

– (June 21, 2012 through June 21, 2014)

• 500 trademark registrants who have filed Section 8 or Section 71 Affidavits

• Randomly Selected • Office Action will issue requiring proof of

use of mark on Two Additional Goods/Services Per Class

• Trademark Specimen Audits• 2-Year Pilot Program

– (June 21, 2012 through June 21, 2014)

• 500 trademark registrants who have filed Section 8 or Section 71 Affidavits

• Randomly Selected • Office Action will issue requiring proof of

use of mark on Two Additional Goods/Services Per Class

Change #3 2-Year Pilot Audit Program

• Important Deadline: – 6 months from issuance of Office Action, OR– End of filing period for Section 8 or 71 Affidavit

(Whichever is Later) to file required specimens

• Once 2-Year Pilot ends, additional specimens and information may be requested by USPTO whenever it deems it “reasonably necessary” for examination during application process or during post-registration filings

• Important Deadline: – 6 months from issuance of Office Action, OR– End of filing period for Section 8 or 71 Affidavit

(Whichever is Later) to file required specimens

• Once 2-Year Pilot ends, additional specimens and information may be requested by USPTO whenever it deems it “reasonably necessary” for examination during application process or during post-registration filings

Applicable Registrant Pool Subject to Audit

• Generally, marks registered or renewed between December 21, 2001 and June 21, 2009

• June 21, 2003 – December 21, 2003: Subject to pilot program• December 22, 2003 – June 20, 2005: Possibly subject to pilot

program depending upon when renewal is filed• June 21, 2005 – December 20, 2005: Not subject to pilot program

(no filings due during pilot period)• December 21, 2005 – June 20, 2007: Possibly subject to pilot

program depending upon when renewal is filed • June 21, 2007 – December 21, 2007: Subject to pilot program • December 22, 2007 – June 21, 2009: Possibly subject to pilot

program depending upon when renewal is filed and if the pilot program is not extended under a new rulemaking

• No date restriction for any amendments to marks (possibly more than 1 specimen will be required)

• Generally, marks registered or renewed between December 21, 2001 and June 21, 2009

• June 21, 2003 – December 21, 2003: Subject to pilot program• December 22, 2003 – June 20, 2005: Possibly subject to pilot

program depending upon when renewal is filed• June 21, 2005 – December 20, 2005: Not subject to pilot program

(no filings due during pilot period)• December 21, 2005 – June 20, 2007: Possibly subject to pilot

program depending upon when renewal is filed • June 21, 2007 – December 21, 2007: Subject to pilot program • December 22, 2007 – June 21, 2009: Possibly subject to pilot

program depending upon when renewal is filed and if the pilot program is not extended under a new rulemaking

• No date restriction for any amendments to marks (possibly more than 1 specimen will be required)

Trademark Audit Procedures Trademark Audit Procedures

• Specimens to be reviewed under standard rules for accepting specimens

• If a response to the Office Action is filed within 6 months, but specimens not filed, – the goods and services at issue will be

deleted from the registration

• If a response is not filed to the Office Action within the required period of time, – the entire registration will be cancelled

• Specimens to be reviewed under standard rules for accepting specimens

• If a response to the Office Action is filed within 6 months, but specimens not filed, – the goods and services at issue will be

deleted from the registration

• If a response is not filed to the Office Action within the required period of time, – the entire registration will be cancelled

Preparing for a Trademark Audit

• Maintain at least 3 acceptable specimens for each class of goods or services listed in the application

• Keep files for additional specimens

• Review the goods and services listed in the registration on a periodic basis

• Maintain at least 3 acceptable specimens for each class of goods or services listed in the application

• Keep files for additional specimens

• Review the goods and services listed in the registration on a periodic basis

Acceptable Specimens: Goods

• Labels• Tags• Containers for goods• Packaging • Inscription on goods• Displays associated with the goods

– e.g. point of sale displays, acceptable catalogue specimens

• Labels• Tags• Containers for goods• Packaging • Inscription on goods• Displays associated with the goods

– e.g. point of sale displays, acceptable catalogue specimens

Acceptable Specimens: Services

• Advertising• Brochures, pamphlets, leaflets, flyers• Internet Web sites• Billboards• Direct Mail pieces

Example: IPOD U.S. Trademark Registration No.

3,341,191

3,341,191CLASS 9: full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files; electronic docking stations; stands specially designed for holding portable and handheld digital electronic devices; battery chargers; battery packs; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for portable and handheld digital electronic devices; headphones and earphones; stereo amplifier and speaker base stations; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; video viewers, namely video monitors for portable and handheld digital electronic devices; and computer software for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files; computer application software for recording and organizing calendars and schedules, to-do lists, and contact information; computer game software; and, computer software for clock and alarm clock functionality; carrying cases, all for use with portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files

CLASS 9: full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files; electronic docking stations; stands specially designed for holding portable and handheld digital electronic devices; battery chargers; battery packs; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for portable and handheld digital electronic devices; headphones and earphones; stereo amplifier and speaker base stations; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; video viewers, namely video monitors for portable and handheld digital electronic devices; and computer software for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files; computer application software for recording and organizing calendars and schedules, to-do lists, and contact information; computer game software; and, computer software for clock and alarm clock functionality; carrying cases, all for use with portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files

3,341,191

For More Information For More Information

• Contact Kenneth D. Suzan at:– ksuzan@btlaw.com or (612) 367-8713

• Dedicated USPTO E-mail:– TMPostRegPilot@uspto.gov

• Follow @ksuzan on Twitter

• Contact Kenneth D. Suzan at:– ksuzan@btlaw.com or (612) 367-8713

• Dedicated USPTO E-mail:– TMPostRegPilot@uspto.gov

• Follow @ksuzan on Twitter

Cleaning house at the trademark office new rules

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