On June 21, 2012, the United States Patent and Trademark Office issued a final rule revising the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol. This new rule allows the PTO to (1) require more than one specimen in connection with a use-based trademark application, an allegation of use, or an amendment to a registered mark, and (2) conduct a two-year pilot program aimed at assessing the accuracy of the register by requiring additional specimens, information, exhibits, affidavits, and/or declarations, as deemed necessary in the examination of a post-registration affidavit or declaration of use or continued non-use.
Currently, applicants/registrants are only required to submit one specimen per class in connection with the filing of use-based applications, allegations of use, amendments to a registered mark, or post-registration maintenance or renewal filings. The PTO has articulated three reasons for the new rule. The first is to allow applicants and registrants to submit any additional specimens or other information as needed for proper examination. The second is to allow the PTO to conduct this pilot program to assess and improve the accuracy of the register. The third is to make post-registration use-allegation examination rules uniform with current pre-registration examination rules, which allow the PTO to require additional information necessary for the examination of pending applications.
As part of the pilot program, the PTO will randomly select 500 registrations for which post-registration affidavits of use (Section 8 or 71 affidavits) are being filed, and issue office actions requesting proof of use of the mark on two additional goods and/or services per class which the PTO will select. The deadline to respond will be either within 6 months of the office action issue date, or before the expiration of the relevant filing period, whichever is later. The registrant may either provide additional specimens, or delete the additional goods or services from the application. All filings for registrations selected for the pilot program will be reviewed by what the PTO describes as "specially trained" senior attorneys. In the event that the registrant's additional specimens are deemed insufficient or if the registrant deletes the additional goods or services, the PTO will further review the registration and may request proof of use of the mark on two or more of the remaining goods or services.
The PTO has clearly stated that this new rule is intended to assess the accuracy of the register and is unrelated to the issue of fraud. Accordingly, failure to provide sufficient specimens showing use of the mark on the additional goods chosen by the PTO will not subject the entire registration, or even an entire class of goods and services, to cancellation. Having said that, it is worth noting that while the rule itself may be unrelated to fraud, a third party could conceivably use a registrant's failure to comply with an additional specimen requirements as evidence in a cancellation action based on fraud.
As set forth above, owners of trademark registrations with Section 8 or 71 filings due before June 21, 2014 are advised to take extra care to ensure accuracy in their description of goods and services prior to filing their affidavits and specimens.