July 22, 2019

July 22, 2019

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USPTO Amendment Requires Additional Proof of Use for Trademarks

In an effort to verify that trademarks are currently in use in commerce, the United States Patent and Trademark Office (USPTO) has recently amended its rules to require additional proof of such use of a mark in connection with the particular goods and/or services identified in the registration.

Effective Feb. 17, 2017, when examining affidavits or declarations of continued use filed pursuant to Section 8 of the Trademark Act, the USPTO may request such additional proof through random selection of registrations. Assuming that the new program will operate similarly to the USPTO’s pilot program conducted in 2012, if a randomly selected registrant cannot submit additional proof of use, or adequate and current use, they will risk losing rights in the mark. Likely, the USPTO will either delete the goods or services for which proof cannot be shown, or cancel the registration in its entirety. Note that not every trademark registration will be subject to this review, as the USPTO indicated that this will be a random, but not routine, exercise.

What Does the Amendment Seek to Accomplish?

The USPTO is making an effort to “clean up” its registry with regard to inaccurate goods and/or services identifications, as well as registrations that might no longer be in use or were never in use in commerce.

What are the Next Steps?

There is no action required on your part at this time. If your mark is selected for review and Armstrong Teasdale manages your trademark work, we will contact you to discuss your options for responding to the USPTO’s request.

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About this Author

Matthew Gearin, Pateint Attorney, Armstrong Teasdale Law Firm
Associate

Matthew Gearin is an associate in the firm’s Intellectual Property practice group. His main focus is the preparation and prosecution of patents related to science technology. 

As an attorney and patent engineer, Matthew works through all stages of patent prosecution including patentability searches, patent applications and answering office actions from the U.S. Patent and Trademark Office. 

Matthew also reviews patent term adjustments, assists with responses to requests for corrected publications, generates information disclosure documents, and prepares sequence listings....

314.342.8044
Courtney Jackson, Intellectual Property Attorney, Armstrong Teasdale Law Firm
Partner

Courtney Jackson is a partner handling intellectual property and related agreements. Most often, she provides counsel regarding brand management, strategy and operational issues.

For various national and international organizations, Courtney assists in the development, maintenance and protection of their trademark portfolios. She gives opinions relating to trademark selection and infringement issues. She also negotiates and drafts worldwide agreements relating to the licensing of intellectual property rights and the distribution of related products.

Courtney’s other experience includes privacy, terms of use, social media, sweepstakes and contests, marketing, advertising, e-commerce, employment, agency, products liability and premises liability.

 

314-259-4784
Donna Schmitt, Intellectual Property Attorney, Armstrong Teasdale Law Firm
Partner

As a member of the Intellectual Property practice group, Donna Schmitt strategically manages global trademark portfolios.

Businesses in a variety of industries look to Donna to handle domestic and foreign trademark prosecution and for guidance on trademark selection, use, registration, policing, protection, infringement and enforcement. She also advises on trade dress and copyright matters as well as brand expansion through trademark licensing. Donna counsels on domain name registration and use of trademarks and copyrights in social media.

As part of her practice, Donna works...

314.552.6681