By UpCounsel Intellectual Property Attorney Radiance Harris

Earlier this year, the U.S. Patent and Trademark Office (USPTO) implemented two changes that affect electronic trademark filings and the review process for post-registration maintenance filings.

The New Rules

1. Trademark Electronic Application System

The first change updated the declaration and signature portion of several electronic forms available on the Trademark Electronic Application System (TEAS). This change specifically affects three forms: (1) applications for registration; (2) allegations of use; and (3) post-registration affidavits or declarations of continued use or excusable non-use.

In the declaration portion of each form, the statutory language has been divided into individual declaration statements. Trademark applicants must now affirmatively check a box next to each statement, as opposed to accepting all the statements collectively at the bottom of the page.

2. Post-Registration Examination Procedure

The second change updates the post-registration examination procedure. This change affects trademark registration maintenance affidavits and renewal applications filed under Section 8 and Section 71 of the Trademark Act.

Previously, the USPTO only required one specimen of use per class, regardless of how many goods or services the registrant identified in each class. After conducting a two-year pilot study, the USPTO discovered that owners of more than fifty percent of five hundred randomly chosen registrations were unable to verify use of the registered mark for all goods and services listed under their registration.

This study led to the development of a permanent audit program in which ten percent of registrants filing a Section 8 or Section 71 affidavit for registration covering more than one good or service per class will be required to provide further proof of use for additional goods and services. An office action will be sent to request this additional proof, and the registrant must provide evidence in the form of specimens, information, exhibits, affidavits or declarations.

The USPTO will remove any goods and services the registrant is unable to provide proof of use for within the allotted six-month period. Failure to respond to the Office Action requesting additional information will result in cancellation of the entire registration.

The Takeaway

These heightened post-registration examination procedures should encourage all trademark holders to carefully review any trademark registrations that are due for maintenance filings or renewals, and to identify specimens of use for each item listed in the goods and services in every class.

It is important to take note of these changes because they impact the filing process for all trademark applicants and registrants. For more information about this recent change along with other USPTO updates, head to the USPTO’s website.

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About the author

Radiance Harris

Radiance Harris

Radiance Harris focuses her dynamic practice on trademark law, copyright law, advertising law, business contracts, and outside general counsel services. Prior to going solo, Radiance was an associate at DLA Piper and Kelly IP in Washington, DC, where she handled contentious and non-contentious matters in the areas of trademark law, copyright law, and advertising law. Radiance has been recognized as an up-and-coming leader in the intellectual property law field and the legal community as a whole.

Radiance received a J.D. from University of Maryland School of Law and a B.A. in English Literature and Religion from Swarthmore College.

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