Effective February 17, 2017, examiners at the U.S. Trademark Office may require trademark owners to submit more than one specimen of use per class of goods/services when registering a mark or maintaining a registration. The hope is that by giving examiners discretion they will be able to better determine the nature of the actual use of the mark and thus the scope of protection of any registration so that the register reflects actual commercial use and not just trademark owners wishful thinking.
The problem of “deadwood” on the U.S. register is well-known. Under the old rules, in place for decades, trademark owners had to submit only one specimen per class, even if the class included many different items. While trademark owners still had to aver that the mark was being used with all the items, undoubtedly some registrations have been granted or renewed for goods or services for which the mark was not in actual use. Giving examiners discretion to require additional specimens should help to pare down the scope of overbroad registrations, as registrations may be cancelled in whole or in part if the mark is not shown to be in use in U.S. commerce for the goods to which the examiner’s inquiry pertains. By helping to reduce the clutter on the register the new rule should make clearing new marks easier, a goal shared by all trademark owners.