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USPTO Changes Pertaining to Trademark Declarations, Post-Registration Use Filings

In efforts to enhance the US Patent and Trademark Office (USPTO) electronic filing system and to “assess and promote the accuracy and integrity of the trademark register,” the USPTO has ushered in changes that affect electronic trademark filings and the review process for post-registration specimens of use.

Beginning on January 14, 2017, the USPTO implemented changes to the declaration and signature portion of various electronic filing forms available through the Trademark Electronic Application System (TEAS), including trademark application and declaration of use forms. The requisite statutory declaration language that trademark owners attest to in each USPTO trademark filing is now separated into individual declaration statements, and the person electronically executing the declaration must now affirmatively check a box next to each statement, the last of which is the standard warning that false statements are punishable by fine or imprisonment. The affected forms include (1) applications for registration, (2) allegations of use, and (3) post-registration affidavits or declarations of continued use or excusable non-use. 

Additionally, beginning March 21, 2017, the USPTO will implement changes to its examination of post-registration affidavits or declarations of continued use or excusable non-use filed pursuant to Section 8 or Section 71 of the Trademark Act (i.e., trademark registration maintenance affidavits and renewal applications). These changes are a result of the USPTO’s two-year pilot study in which owners of more than 50 percent of 500 randomly chosen registrations were unable to verify use of the registered mark for all of the goods and/or services for which the mark was registered. 

Currently, the USPTO only requires one specimen of use per class, regardless of the total number of goods or services identified in each class. Beginning in March 2017, however, the USPTO will enact a permanent audit program in which approximately 10 percent of registrants filing a Section 8 or Section 71 affidavit for registrations covering more than one good or service per class will be asked to provide further proof of use for the additional goods or services (e.g., additional specimens, information, exhibits, affidavits or declarations). The request for additional information will come as an Office Action and will give registrants the standard six-month period to respond. If the registrant is unable to provide proof of use for all of the goods/services, those goods/services will be deleted from the registration. Failure to respond to the Office Action will result in cancellation of the entire registration

In light of these heightened post-registration examination procedures, trademark holders should conduct a detailed review of their trademark registrations that are up for maintenance filings or renewals, and should consider identifying specimens of use for all goods and/or services in each class.

© 2019 McDermott Will & Emery


About this Author

Sarah Bro, McDermott Will Emery Law Firm, Intellectual Property Attorney

Sarah Bro is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Orange County office.Sarah focuses her practice on trademark prosecution and trademark litigation support.

Eleanor (Ellie) B. Atkins, Trademark, Copyright Attorney, McDermott Will Law Firm

Eleanor (Ellie) B. Atkins focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters.

Ellie is experienced in client counsel, strategy and legal research, including portfolio management and the selection, clearance, prosecution, registration and enforcement of trademarks. Additionally, she has assisted with district court litigation as well as actions before the Trademark Trial and Appeal Board, including drafting complaints, discovery requests and briefs in support of various motions.

Ellie previously served as judicial intern for the Honorable Gerald Bruce Lee of the United States District Court for the Eastern District of Virginia. Prior to that, she worked as deputy press secretary for United States Senator Mary L. Landrieu.