The USPTO has expanded its practice of testing the veracity of post-registration Declarations of Use under a program intended to improve accuracy and integrity of the trademark register, under a new rule which is scheduled to go into effect March 21, 2017. The rule will formalize a small-scale trial program in effect since 2012.

Under the new rule, the USPTO may respond to the filing of a Declaration of Use by requiring additional proof of use of the mark in connection with the goods/services identified in the registration. The additional proof may be provided in the form of information, exhibits, affidavits or declarations, and specimens of use. A registrant who cannot produce the additional proof of use for particular goods/services, or an acceptable claim of excusable nonuse, will be advised to cancel those goods/services from the registration as well as any others no longer being offered under the mark.

Under Sections 8 and 71 of the Lanham Act, registration holders are required to submit a Declaration of Use in the fifth year after registration and every ten years after registration to keep a registration in force. A suitable Declaration either verifies that the mark is still in use with the goods/services listed in the registration and is accompanied by a specimen of use for one of the goods/services in each class listed in the registration, or offers a statement establishing excusable nonuse.

Before implementation of this new rule, the USPTO was only able to require additional documentation as reasonably necessary to the proper examination of the submitted Declaration itself. As a result, a significant number of registrants have, in the past, submitted Declarations of Use and a single specimen in each class without canceling from their registration goods/services no longer offered under the mark. Such registrations are at least partially invalid for this reason; these are the ‘dead wood’ registrations that the USPTO seeks to reduce.

Dead wood registrations can be challenged by competitors under current rules by administrative cancellation procedures or in court. However, such challenges are costly to the challengers and leave the dead wood in place until a challenger takes action; the new policy is intended to reduce these problems proactively. Eliminating dead wood from the register will also facilitate due diligence investigations ahead of the adoption of a new mark, because finding a potentially confusingly similar ‘dead wood’ mark may prompt a party to incur, unnecessarily, the costs and burdens of investigating the actual use of the registered mark or decide against the adopting a proposed mark and re-engaging in search for another.

In the pilot program preceding adoption of this final rule, the USPTO randomly selected 500 Declarations of Use for additional scrutiny, and found that in slightly more than half of them, the initially filed Declarations encompassed good/services that were no longer being offered under the mark. In more than two thirds of these cases, the registrations were maintained with reduced listings of goods/services; the remaining registrations were canceled.

The USPTO plans to implement new program with respect to about ten percent of Declarations of Use filed this year, and might increase the level of implementation after that.
To reduce the cost of compliance with requests for additional evidence of use under the new rule, when the time comes to file a Declaration of Use to maintain a registration, a registrant can collect and submit evidence of use for as many goods/services listed in the registration as possible, and preemptively delete any with which the mark is no longer in use. The USPTO suggest that by doing so, a registrant would reduce the likelihood that additional proof of use would be required under the new program.

Frederick Spaeth

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