(492) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Parts 2 and 7
Docket No. PTO-T-2010-0073
RIN 0651-AC49
Changes in Requirements for Specimens and for
Affidavits or Declarations of Continued Use or
Excusable Nonuse in Trademark Cases
AGENCY: United States Patent and Trademark Office, Commerce
ACTION: Final Rule
SUMMARY: In order to help assess and ensure the accuracy of the trademark
register, the United States Patent and Trademark Office ("USPTO") is
revising the Trademark Rules of Practice and the Rules of Practice for
Filings Pursuant to the Madrid Protocol to allow the USPTO to: upon request,
require any additional specimens, information, exhibits, and affidavits or
declarations deemed reasonably necessary to examine a post registration
affidavit or declaration of continued use or excusable nonuse in trademark
cases, and for a two-year period, conduct a pilot program for the USPTO to
assess the accuracy and integrity of the register; and upon request, require
more than one specimen in connection with a use-based trademark
application, an allegation of use, or an amendment to a registered mark.
These revisions aim to ensure the ability to rely on the trademark register
as an accurate reflection of marks that are actually in use in the United
States for the goods/services identified in the registration, and thereby
reduce costs and burdens on the public.
The Trademark Act gives the Director discretion regarding the number of
specimens to require. Moreover, it requires applicants to comply with rules
as prescribed by the Director. Additionally, the Director and USPTO may
establish regulations governing the conduct of proceedings in the Office.
The current Trademark Rules of Practice and Madrid Rules require the
submission of one specimen per class in connection with use-related filings
and one specimen in connection with the amendment to a registered mark. In
addition, although the current rules allow the USPTO to require additional
information or exhibits deemed reasonably necessary to the examination of a
pending application, no counterpart rule exists in the post registration
context to facilitate proper examination of an affidavit or declaration of
continued use or excusable nonuse. The rule changes will allow the USPTO to
require additional proof of use of a mark when deemed reasonably necessary
for examination of a use-related filing in a particular application or
registration.
The rule changes also will allow the USPTO to conduct a limited-duration
pilot program to verify the accuracy of post registration claims that a
trademark is in use on particular goods/services. In conducting the pilot,
the USPTO intends to randomly select approximately 500 trademark
registrations for which Section 8 or 71 affidavits are being filed and issue
an Office action requiring proof of use of the mark on two additional
goods/services per class. As the pilot will be conducted over a two-year
period with the filing of Section 8 or 71 affidavits, the USPTO is amending
the rulemaking to indicate that the language authorizing the USPTO to assess
the accuracy and integrity of the register will expire two years after the
effective date of the final rule and only apply to Section 8 or 71
affidavits. Although the USPTO is sunsetting its authority to randomly ask
for additional proof of use, it is maintaining authority to probe accuracy
when reasonably necessary for proper examination of a particular application
or registration. The rule changes will facilitate an assessment of the
reliability of the trademark register in this regard, so that the USPTO and
stakeholders may determine whether and to what extent a general problem may
exist and consider measures to address it, if necessary.
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DATES: This rule is effective on June 21, 2012.
FOR FURTHER INFORMATION: Contact Cynthia C. Lynch, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at
(571)272-8742.
SUPPLEMENTARY INFORMATION
General Information
To benefit the public, the USPTO is revising the Trademark Rules of
Practice (37 CFR Part 2) and the Rules of Practice for Filings Pursuant to
the Madrid Protocol ("Madrid Rules") (37 CFR Part 7) to allow the USPTO to:
(1) upon request, require any specimens, information, exhibits, and
affidavits or declarations deemed reasonably necessary to examine a post
registration affidavit or declaration of continued use in trademark cases,
and assess the accuracy and integrity of the register; and (2) upon request,
require more than one specimen in connection with a use-based trademark
application, an allegation of use, or an amendment to a registered mark.
The revisions will facilitate the USPTO's ability to verify the accuracy
of identifications of goods/services. The accuracy of the trademark register
as a reflection of marks that are actually in use in the United States for
the goods/services identified in the registration serves an important
purpose for the public. The public relies on the register to clear
trademarks that they may wish to adopt or are already using. Where a party
searching the register uncovers a similar mark, registered for goods or
services that may result in confusion of consumers, that party may incur a
variety of resulting costs and burdens, such as changing plans to avoid use
of the mark, investigative costs to determine how the similar mark is
actually used and assess the nature of any conflict, or cancellation
proceedings or other litigation to resolve a dispute over the mark. If
a registered mark is not actually in use in the United States, or is not in
use on all the goods/services recited in the registration, these types of
costs and burdens may be incurred unnecessarily. Thus, accuracy and
reliability of the trademark register help avoid such needless costs and
burdens, and thereby benefit the public.
Specimens of use in use-based trademark applications illustrate how the
applicant is using the proposed mark in commerce on particular goods/
services identified in the application. Post registration affidavits or
declarations of use and their accompanying specimens demonstrate a
trademark owner's continued use of its mark in commerce for the goods/
services in the registration. As part of a pilot program to assess the
accuracy of the identifications of goods/services of currently registered
marks, the USPTO anticipates issuing requirements for additional proof of
use in conjunction with the review of post-registration maintenance filings
for approximately 500 registrations.
Background
On April 26, 2010, the USPTO and the George Washington University Law
School hosted a roundtable discussion on the topic of "The Future of the
Use-Based Register." Panelists and audience members explored the
implications of the decision of the Court of Appeals for the Federal
Circuit in In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir.
2009), clarifying the high standard for fraud on the USPTO in connection
with trademark cases.
A "brainstorming" session at the conclusion of the roundtable resulted
in a list of suggestions for how to improve the accuracy of identifications
of goods/services. These suggestions were not focused on fraud, as was the
Bose decision, but rather on the accuracy of the register. Several
participants made the suggestion that the USPTO require additional
specimens, or a specific type of proof of use of a mark, for all, or more
than one, of the identified goods/services. Such additional requirements
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could help provide information regarding the extent to which a problem with
inaccuracy exists on the register, and could help discourage inaccuracies.
The Trademark Act gives the Director discretion regarding the number of
specimens to require (15 U.S.C. 1051(a)(1), (d)(1), 1058(b)(1)(C),
1141k(b)(1)(C)). Moreover, it requires applicants to comply with rules as
prescribed by the Director (15 U.S.C. 1051(a)(4), (b)(4)). Additionally,
the Director and USPTO may establish regulations governing the conduct of
proceedings in the Office (15 U.S.C. 1123, 35 U.S.C. 2(b)(2)(A)). The
current Trademark Rules of Practice and Madrid Rules mandate the submission
of one specimen per class in connection with use-related filings (37 CFR
2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), 2.88(b)(2),
2.161(g), 7.37(g)). Similarly, the current rules require one specimen to be
submitted in connection with an amendment to a registered mark (37 CFR
2.173(b)(3)). In addition, although the current Trademark Rules of Practice
allow the USPTO to require additional information or exhibits deemed
reasonably necessary to the examination of a pending application (37 CFR
2.61(b)), no counterpart rule exists in the post registration context to
facilitate proper examination of an affidavit or declaration of continued
use or excusable nonuse.
To ensure that the USPTO may properly examine affidavits or
declarations, and the nature and veracity of the use claimed therein,
additional specimens or other information or exhibits, such as a photograph
of the mark appearing on certain goods, may be needed. Accompanying
affidavits or declarations to verify information or exhibits may also be
needed. One purpose of the final rule is to allow the USPTO to require
trademark applicants or registrants to submit any additional specimens or
other information, exhibits and affidavits or declarations reasonably
necessary for proper examination. A second purpose of the rule is to allow
the USPTO to conduct a limited-duration post registration pilot program to
verify the accuracy of claims that a trademark is in use on particular
goods/services, as a means to assess and improve the accuracy and integrity
of the register. The rule does not focus on fraud issues, but only on the
more general concern with ensuring accuracy. A third purpose of the rule is
to harmonize the requirements that can be made as part of the examination
of use allegations made in post registration maintenance documents with the
requirements currently authorized in the examination of use allegations made
prior to registration.
Proposed Rule and Request for Comments
A proposed rule was published in the Federal Register on July 12, 2011,
at 76 FR 40839, and in the Official Gazette on August 9, 2011. The USPTO
received comments from six intellectual property organizations and four
attorneys and/or law firms. These comments are posted on the USPTO's Web
site at http://www.uspto.gov/trademarks/law/comments_requirements_for_
specimens_or_evidence.jsp, and are addressed below.
References below to "the Act," "the Trademark Act," or "the statute"
refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., as amended.
References to "TMEP" or "Trademark Manual of Examining Procedure" refer
to the 8th edition, October 2011.
General Comments
Comment: Five commenters expressed support of the USPTO's efforts to
ensure the accuracy of the trademark register but expressed concern
regarding the lack of more specific criteria signaling when and to what
extent an owner might expect a request for additional evidence, specimens,
or information under the rule changes. Two commenters speculated that the
only way an owner might mitigate these concerns would be to preemptively
submit additional specimens in all filings; and another commenter noted
that, without further guidelines, the rules could be implemented to create
an unfair burden on certain trademark owners.
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Response: The USPTO appreciates the commenters' support of the general
objective of the rule changes, namely, requiring additional evidence or
specimens to allow the USPTO to assess the accuracy and integrity of the
register. The USPTO initially intends to accomplish this objective by
conducting a pilot in which approximately 500 trademark registrations for
which Section 8 or 71 affidavits are being filed will be randomly selected
to receive an Office action requiring proof of use of the mark on two
additional goods/services per class. If the owner is unable to provide the
requested proof of the mark appearing on or in connection with the
specified goods/services, those goods/services in question will be deleted
from the registration, and the Section 8 or 71 affidavit will be subject to
further review.
Because the USPTO and stakeholders initially desire information about
the level of accuracy of the register, rather than assuming that widespread
inaccuracies exist, the rules permit the USPTO to randomly select for the
pilot from among all types of registrations. This will ensure that the
resulting assessment is not skewed by consideration of registrations with
particular criteria, and that implementation of the rules does not create
an unfair burden on specific types of trademark owners.
Contrary to the suggestion by some commenters, owners need not submit
additional specimens with all Section 8 or 71 affidavits. The approximately
500 registrations selected to participate in the two-year pilot represent
less than 1% of the total number of affidavits usually processed during a
typical six-month period. Moreover, owners of the registrations selected
will be afforded the usual post registration response period to the Office
action requiring additional information.
To address concerns regarding the long-term impact of the rule changes
beyond the pilot, the USPTO is amending the rulemaking to indicate that the
language authorizing the USPTO to assess the accuracy and integrity of the
register will expire two years after the effective date of the final rules
on Section 8 and 71 affidavits. This "sunset provision" allows the USPTO
the necessary authority to randomly sample Section 8 and 71 affidavits in
order to conduct the pilot. Upon expiration of the two-year period,
additional specimens and information may be requested when the USPTO deems
it reasonably necessary for examination of a particular Section 8 or 71
affidavit. The USPTO is eliminating from the final rulemaking other
provisions included in the proposed rule which would have authorized
requests for additional specimens and information to assess the accuracy
and integrity of the register both prior to registration and in connection
with a Section 7 amendment to a registration. In those contexts, the final
rules provide that the USPTO may request additional specimens and
information only when reasonably necessary for examination. Therefore,
although the USPTO is sunsetting its authority to ask randomly for
additional specimens and information, it is maintaining authority to probe
accuracy when reasonably necessary for proper examination of a particular
application or registration.
Comment: Due to the potential burden on trademark owners and broad
discretion given to examiners, three commenters suggested a targeted
approach in determining when the USPTO would request additional specimens.
One commenter requested a provision in the rules or TMEP that the USPTO
only require additional specimens on special occasions; for example, where
identifications include a large number of, or significant disparity in,
goods or services, and that the standards for requiring additional
specimens for house marks be relaxed as compared to other identifications.
Another commenter suggested that specific guidelines be enacted to
direct the exercise of discretion in requesting additional specimens. For
example, an examiner should be required to identify some other fact-based
reason, beyond the number of goods or services in an application, to
justify a request for additional specimens, such as where a Web site does
not show use of a mark with all goods or services. Moreover, the TMEP
should be revised to include specific guidelines for when an examiner can
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request additional specimens.
A third commenter suggested that in order to achieve the desired result
of a more accurate register, implementation of the proposed rules should be
accompanied by guidance describing instances in which additional evidence
can be required. The commenter suggested that applications and
registrations be flagged for heightened scrutiny and additional specimens
or evidence of use if they use class headings in the identification,
include unrelated and unlikely goods within a class, use multiple languages
on packaging, include a lengthy list of related goods or services, or
encompass alphabetically arranged "data dumps" from the ID manual.
Response: The USPTO determined that its objective of assessing the
accuracy and integrity of the register could be better reached by randomly
selecting the registrations chosen to participate in the pilot rather than
targeting a specific subset of registrations. While the USPTO concurs that
in the long term, a "targeted" approach may be appropriate, an initial
assessment of a wide cross section of all types of registrations will best
determine appropriate criteria for targeting. The limited nature of the
pilot and "sunset provision" are geared to alleviate concerns regarding
potential burdens to trademark owners. The USPTO has opted to initially
request proof of use for two additional goods/services per class for
registrations selected for the pilot. Thus, the potential burden will not
be greater on trademark owners with particular types of registrations,
including those for house marks or with lengthy identifications.
Comment: One commenter requested clarification whether trademark owners
would face additional fees and surcharges for supplemental filings required
under the new rules. The commenter noted that it was unclear whether a
response to a request for additional evidence must be completed according
to the same timeline as other responses and if an owner would need to pay a
deficiency surcharge for a deficiency that did not exist until the request.
Response: No additional fees or surcharges will be required under the
new rules. Owners must respond to an Office action requiring additional
information or specimens within six months of the issuance date of the
Office action, or before the end of the relevant filing period for the
Section 8 or 71 affidavit, whichever is later (37 C.F.R. 2.163(b),
7.39(a)). Although such an Office action may address other items unrelated
to the pilot program, and those other items may trigger a deficiency
surcharge, a request under the new rules pertaining to the pilot would not
be considered a deficiency requiring an additional fee.
Comment: One commenter expressed that typical trademark file histories
are "too skimpy" with respect to specimens. The commenter further explained
that advances in technology, and the USPTO's information technology, have
made it easier for trademark owners to submit photographs for specimen use.
The commenter, therefore, suggested that specimens be required for each
good or service, along with liberal correction of the specimen record. The
commenter additionally expressed his preference for a date of use to be
listed for every good and service so that priority of use is easier for the
public to check.
Response: The USPTO appreciates the commenter's support of its on-line
resources. In order to mitigate the potential burden on trademark owners,
the USPTO has opted to initially request proof of use for only two
additional goods/services per class from participants in the pilot. Failure
to provide such proof may result in a further request for additional
information or specimens. The results of the pilot will help the USPTO to
assess the accuracy and integrity of the register and whether and to what
extent it may be necessary to request additional information or specimens
on a more routine basis to ensure the accuracy of a registration.
Currently, the USPTO requires dates of use for each class of goods and
services. There must be at least one specified item in each class to which
the specified dates pertain (37 C.F.R. 2.34(a)(1)(v), 2.76(c), 2.88(c);
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TMEP § 903.08). It is longstanding Office practice not to require dates of
use for each good or service since it would be cumbersome for applicants to
designate the dates for each item individually (TMEP § 903.08).
Comment: Another commenter stated that especially in cases where a
lengthy identification triggers a requirement for additional information,
examination of the accuracy of a claim of use should focus on ensuring the
registration accurately reflects the goods or services for which the mark
is used, based on all evidence that can be supplied, and not be an exercise
designed to delete goods or services from registrations based on a
"hyper-technical" analysis of specimens. Trademark owners should not lose
rights in marks used in commerce because producing formal specimens can be
burdensome, costly, and time-consuming. Deleting such goods and services
from a mark in use would detract from, rather than improve, the accuracy of
the register.
The commenter, therefore, suggested that the USPTO accept evidence of
use that is reasonably sufficient to confirm the accuracy of the list,
rather than determining if the evidence qualifies as a formal specimen.
Acceptance of this evidence would be a practical way of determining that
the claim of use is accurate without imposing an undue burden on trademark
owners or an undue allocation of USPTO resources to the examination of
additional specimens.
Moreover, the commenter noted that the USPTO's examination of the
additional evidence supplied in response to an information inquiry should
apply a reasonable standard as to whether the mark on the specimen agrees
with the drawing, consistent with recent TTAB decisions and the more
forgiving standard applied post registration.
A second commenter similarly proposed that a formal specimen is not
necessary to ensure proper examination of claims of use and to assess the
possibility of over-claiming. The commenter noted that goods and services
should not necessarily be considered improperly included in a claim of use
because specimens fail to satisfy rigorous formal requirements as to their
sufficiency.
Response: As noted above, in order to assess the accuracy and integrity
of the register, the USPTO intends to conduct a pilot in which
approximately 500 trademark registrations will be randomly selected to
submit proof of use for only two additional goods/services per class in
response to an Office action issued after a Section 8 or 71 affidavit is
reviewed by the USPTO. Registrations will not be selected for the pilot
program's additional inquiry based on either the length or content of the
identification in the registration. Instead, the incomplete nature of a
trademark owner's response to the initial request for additional
information will determine whether further inquiry is necessary. The
limited nature of the pilot, in terms of duration, number of registrations
impacted, the random selection of registrations for participation, and the
amount of additional proof or specimens required, is intended to alleviate
concerns regarding the potential burden to trademark owners.
The additional information or specimens will be reviewed according to
the generally accepted standards for use in commerce. The USPTO finds no
basis to establish a different, less formal, standard for use of the mark
in commerce in the context of the pilot, and believes such a distinction
would be a disservice to the public. Not only would a new standard for
determining what constitutes acceptable use in commerce increase public
confusion, but it would also call into question whether a mark is actually
used with particular goods or services. The USPTO notes that there is a
uniform standard for determining what constitutes an acceptable specimen
both prior to and post registration.
Comment: A comment noted that additional specimens or evidence of use
should not be required to support identifications that appear in the USPTO
ID Manual, even if the particular identification encompasses numerous
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products, such as "cosmetics" or "furniture." Evidence of use of the mark
on a single product should be sufficient to support inclusion of the phrase
in the identification of goods or services.
Response: In conducting the pilot to access the accuracy and integrity
of the register, the USPTO will request that pilot participants submit
proof of use for only two additional goods/services per class, with each
demonstrating use for a different good or service in the identification.
Even if a good or service within an identification is broadly defined, the
USPTO will only require one specimen or other proof to demonstrate use for
that particular good or service.
Discussion of Rule Changes
The USPTO is amending §§ 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2),
2.86(a)(3), 2.86(b), and 2.88(b)(2) to indicate that the USPTO may, upon
request, require more than one specimen, including more than one specimen
per class, if the USPTO deems additional specimens reasonably necessary to
examine the application or allegation of use. These revisions codify
existing practice, where such additional specimens occasionally are
requested under § 2.61 as information or exhibits necessary to examination.
The Trademark Act gives the Director discretion regarding the number of
specimens to require (15 U.S.C. 1051(a)(1), (d)(1)). The USPTO is
additionally amending the final rule for § 2.56(a) to substitute the
wording "or services" for "or in the sale or advertising of the services in
commerce" to be consistent with the language in § 2.173(b)(3), and adding
the wording "as reasonably necessary to proper examination" to be consistent
with the language in § 2.61(b).
Comment: One commenter stated that requiring applicants and registrants
to submit additional specimens is not burdensome, especially in comparison
to the exclusive rights and evidentiary presumptions granted to trademark
owners and the benefits of an accurate trademark register. The commenter
further noted that in the digital age, the costs of obtaining and
submitting additional specimens are negligible when the goods or services
are being used in commerce as required. The commenter additionally stated
that thorough training by the USPTO should mitigate concerns regarding the
additional discretion given to examiners and describe with particularity
the types of situations where additional specimens may be required. The
commenter, therefore, expressed strong support for the rule changes because
of the benefits obtained from a more accurate register and relatively small
burdens on applicants and registrants. The commenter also noted that further
study regarding the amount of "deadwood" on the U.S. trademark register
would be valuable to all stakeholders in the trademark community.
Response: The USPTO appreciates the commenter's support of the rule
changes and agrees that the public will greatly benefit from an accurate
trademark register. As the commenter suggests, the USPTO intends to
continue to provide internal and external guidance to mitigate concerns
regarding USPTO discretion and provide examples of when additional
specimens may be required.
The USPTO is amending § 2.61(b) to indicate that accompanying affidavits
or declarations may be required along with information or exhibits. The
wording "and such additional specimens" is added to the final rule to
explicitly provide for specimen requests. The previously proposed provision
that a requirement for additional information may issue, for the USPTO to
assess the accuracy and integrity of the register, is not included in the
final rule because the USPTO's pilot program will focus exclusively on use
allegations in post registration maintenance filings. The USPTO maintains
its authority to probe accuracy when reasonably necessary for examination
of a particular application.
Comment: Citing TMEP § 904.01(a) and current § 2.61(b), three
commenters stated that in the context of pre-registration, examining
attorneys already have authority to request additional specimens. Two
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commenters noted that it is unclear why the amendment to § 2.61(b) is
necessary since authority to request additional specimens is already given
under the current rule. The third commenter suggested that further guidance
on the use of this authority can be provided through examination guides,
rather than rule changes. One of the commenters expressed a lack of support
for the changes to §§ 2.34, 2.56, 2.61, 2.76, 2.86, or 2.88.
Response: Because the current rule on specimens refers to only one
specimen per class and the current rule on information requirements does
not explicitly refer to specimens, in revising the rules, the USPTO deems
it appropriate to provide explicitly for such specimen requests.
Specifically, the additional language allowing for "affidavits or
declarations" to be required codifies existing practice, where additional
evidence is requested, and explicitly clarifies that the USPTO may verify
information or exhibits, when needed.
The additional previously proposed language allowing the USPTO to
"assess the accuracy and integrity of the register" was deleted and is not
included in the final rule because the USPTO's pilot program will focus
exclusively on use allegations in post registration maintenance filings.
The USPTO maintains its authority to probe accuracy when reasonably
necessary for examination of a particular application.
Comment: A commenter expressed concern that while the goal of amending
§ 2.61(b) may be to determine the extent to which over-claiming exists
pre-registration, the changes to the rule may impact domestic applicants
more than Section 44 or 66 applicants, who are not required to submit
specimens prior to registration.
Response: Section 2.61(b) is used to require additional information
and exhibits from all applicants prior to registration. Although it has
occasionally been used as a means for requiring additional specimens, it
is more commonly used as a means for examining attorneys to request
literature, exhibits, and general information concerning the nature of
the mark in order to allow for proper examination. See TMEP § 814. The
additional previously proposed language allowing the USPTO to "assess the
accuracy and integrity of the register" was deleted and is not included
in the final rule. The USPTO maintains its authority to probe accuracy when
reasonably necessary for examination of a particular application. The USPTO
will conduct its pilot to assess accuracy in connection with the filing of
a Section 8 or 71 affidavit, since such filings are required of all
trademark owners.
The USPTO is amending § 2.161(g) and § 7.37(g) to indicate that the
USPTO may require more than one specimen in connection with the examination
of the affidavit or declaration of continued use. For example, additional
specimens may be requested in a case to verify the accuracy and the nature
of the use when the identification includes a large number of, or
significant disparity in, goods or services. The Trademark Act gives the
Director discretion regarding the number of specimens to require (15
U.S.C. 1058(b)(1)(C), 1141k(b)(1)(C)).
The USPTO is adding § 2.161(h) and § 7.37(h) to provide that the USPTO
may require such specimens, information, exhibits, and affidavits or
declarations as the USPTO deems reasonably necessary to the proper
examination of the affidavit or declaration of continued use, or for the
USPTO to assess the accuracy and integrity of the register. These
provisions are corollaries to § 2.61(b), which currently allows the USPTO
to require additional information or exhibits in connection with the
examination of a pending application. These provisions also clarify that
accompanying affidavits or declarations may be required. The wording "and
such additional specimens" is added to the final rule to clarify that the
standards applicable to § 2.161(g) and § 7.37(g) are contained in
§ 2.161(h) and § 7.37(h). The provisions allowing the USPTO to assess the
accuracy and integrity of the register will expire two years after the
effective date of the final rule.
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Comment: Noting that currently there is not a counterpart to § 2.61(b)
that would enable the USPTO to request additional specimens post
registration, three commenters expressed support of implementing proposed
§ 2.161(h) and § 7.37(h) to the extent they conform to current § 2.61(b).
Two of the commenters further noted that claims of use, post registration,
for owners of registrations under Sections 44 and 66 should be examined
under the same criteria applied to owners of use-based applications. One
commenter further noted that they did not support the proposed changes to
§ 2.161(g) and § 7.37(g) since they did not conform to current § 2.61(b).
Response: The USPTO appreciates the commenters' support of the rule
changes and agrees with the commenters regarding the importance of having
post registration corollaries to § 2.61(b). Just as § 2.61(b) was amended
to clarify that accompanying affidavits or declarations may be required,
this same clarification was added to § 2.161(h) and § 7.37(h) in order to
explicitly provide for the USPTO to verify information or exhibits, when
needed. Similarly, the amendments to § 2.161(g) and § 7.37(g) were made in
order to provide for the USPTO to request additional specimens.
The language in § 2.161(h) and § 7.37(h) allowing the USPTO to "assess
the accuracy and integrity of the register" is for the limited purposes of
the pilot explained above, and will expire two years after the effective
date of the final rule. This "sunset provision" is intended to alleviate
concerns regarding the burdens associated with discretionary requests for
additional specimens and information to assess the accuracy and integrity
of the register. The USPTO maintains its authority to probe accuracy when
reasonably necessary for examination of a particular registration.
The USPTO agrees with the commenters that post registration claims of
use should be examined under the same criteria regardless of the initial
filing basis. The USPTO, therefore, determined that the pilot assessing
the accuracy and integrity of the register should be conducted with the
filing of Section 8 or 71 affidavits, since such filings are required of
all trademark owners.
Comment: Noting that a registration could include many goods and
services, one commenter emphasized that submitting many specimens could be
time-consuming and burdensome.
Response: As previously noted, the limited nature of the pilot and
"sunset provision" are geared to alleviate concerns regarding potential
burdens to trademark owners. As proof of use of the mark on only two
additional goods/services per class will be required of participants in the
pilot, the potential burden will not be much greater on trademark owners
with registrations for many goods or services. Failure to provide the
requested proof may result in further requests for proof as to additional
goods/services in that registration.
Comment: Two commenters noted that prior to registration, if an
applicant is unable to provide an acceptable specimen for a Section 1(a)
use-based application, the applicant has the option of amending the
applicable goods or services to a Section 1(b) intent-to-use basis. The
commenters proposed, with a third commenter, that if a trademark owner is
faced with a requirement for additional specimens post registration, the
USPTO should allow the owner to voluntarily delete the goods or services,
as an alternative to providing the specimens, without incurring
vulnerability as to the remaining goods or services. This should not be
viewed as an admission that the goods or services were improperly claimed
in the initial filing as there are a number of reasons why trademark owners
may opt not to provide additional evidence of use.
Similarly, one of the commenters noted that if goods or services are
deleted from a registration following an information request, the remainder
of the registration should not be vulnerable to challenge as to its
validity. A commenter further stated that pre-registration for applications,
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applicants should have the option of asserting a dual Section 1(b) for any
goods or services subject to a requirement for additional specimens or
evidence.
Response: When a trademark owner files a Section 8 or 71 affidavit,
the trademark owner is asked to specifically verify if the mark is in use
in commerce on or in connection with all of the goods or services listed
in the registration. If the mark is not in use with all of the goods or
services, the owner is asked to identify the goods or services to be
deleted from the registration. Therefore, if a trademark owner is not using
the mark with all of the goods or services listed in a registration, and
excusable nonuse is not claimed, the goods should be voluntarily deleted
from the registration upon the filing of the Section 8 or 71 affidavit as
required by the Trademark Act, prior to the USPTO's request for additional
information or specimens upon review of the Section 8 or 71 affidavit. As a
reminder, 18 U.S.C. 1001 and 37 CFR 11.18 apply to submissions to the USPTO
and impose an obligation of reasonable inquiry and truthfulness.
If a registration is selected to participate in the pilot assessing the
accuracy and integrity of the register, the trademark owner may at that
point voluntarily delete goods or services from its registration as an
alternative to providing the additional information or specimens requested
by the USPTO. Such a deletion will not trigger cancellation of the entire
registration, but may subject the registration to a further information or
specimen requirement by the USPTO to verify the accuracy of the remaining
goods or services claimed in the registration. Although the pilot will not
apply to applications, applicants always have the option of relying on both
Sections 1(a) and 1(b) in the same application, though the applicant may
not assert both bases for identical goods or services in the same
application. See TMEP § 806.02(b).
Comment: One comment noted that failure to provide requested
information as to only a portion of the goods or services should not result
in cancellation of the entire registration.
Response: The USPTO agrees with this comment and notes that when a
registration is selected to participate in the pilot and an Office action
issues requiring additional evidence or specimens, a response must be filed
within six months of the Office action, or before the end of the filing
period for the Section 8 or 71 affidavit, whichever is later (37 CFR
2.163(b), 7.39(a)). If a response is filed but fails to include the required
evidence or specimens, the USPTO will deem the Section 8 or 71 affidavit
unacceptable as to the goods or services to which the requirement pertained
and delete them from the registration. Such a response may also trigger a
further requirement for proof of use as to some or all of the remaining
goods/services. However, assuming the Section 8 or 71 affidavit is
otherwise acceptable, and any requested proof of use as to remaining goods/
services is satisfied, the remaining goods/services will be unaffected. By
contrast, if no response whatsoever to the Office action is filed within
the response period, and no time remains in the statutory filing period,
the registration will be cancelled (37 CFR 2.163(c), 7.39(b)). Thus, absent
other issues with the affidavit, the registration will not be cancelled
unless the owner fails to respond to the Office action or is unable to
demonstrate use for any of the remaining goods or services in the
registration.
Comment: Citing § 2.161 and § 7.37, an additional commenter indicated
that the proposed rules providing for additional specimens could present
an equal-protection issue due to their discretionary nature, noting that
"when requested by the Office" is not a clear and definite standard.
Response: The Trademark Act gives the Director discretion regarding
the number of specimens to require (15 U.S.C. 1051(a)(1), (d)(1),
1058(b)(1)(C), 1141k(b)(1)(C)). The revisions to §§ 2.34(a)(1)(iv),
2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), and 2.88(b)(2) to indicate that
the USPTO may, upon request, require more than one specimen, including more
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than one specimen per class, if the USPTO deems additional specimens
reasonably necessary to examine the application or allegation of use,
codify existing practice, where such additional specimens occasionally
are requested under § 2.61 as information or exhibits necessary to
examination.
The revisions to § 2.161(g) and § 7.37(g) to indicate that the USPTO may
require more than one specimen in connection with the examination of an
affidavit or declaration of continued use are corollaries to the above-
referenced pre-registration procedures when additional specimens are
necessary to verify the accuracy and nature of the use. The standards
applicable to § 2.161(g) and § 7.37(g) can be found in § 2.161(h) and
§ 7.37(h). Both subsections have been revised to explicitly provide that
the USPTO may require specimens, information, exhibits, and affidavits or
declarations as "reasonably necessary" for examination or "to assess the
accuracy and integrity of the register." Because these standards are not
impermissible or arbitrary, there can be no equal-protection violation.
Cf. In re Boulevard Entm't, Inc., 334 F.3d 1336, 1343, 67 USPQ2d 1475,
1480 (Fed. Cir. 2003) (noting that no USPTO equal-protection violation
could occur "unless the agency acted pursuant to some impermissible or
arbitrary standard").
Moreover, even regardless of standards, constitutional challenges have
been rejected in the trademark-registration context where a determination
not to register a mark does not foreclose use of that mark. See In re
Mavety Media Grp. Ltd., 33 F.3d 1367, 1374, 31 USPQ2d 1923, 1928-29 (Fed.
Cir. 1994); In re McGinley, 660 F.2d 481, 484, 211 USPQ 668, 672 (C.C.P.A.
1981).
The USPTO is amending § 2.173(b)(3) to clarify that where an amendment
involves a change in the mark, a new specimen must be provided for each
class in a multiple-class registration, and additional specimens may be
required when necessary, and to add § 2.173(b)(4) to provide that the
USPTO may require such specimens, information, exhibits, and affidavits or
declarations as the USPTO deems reasonably necessary to the proper
examination of the proposed amendment. The term "specimens" is added to
§ 2.173(b)(4) to clarify that the standards applicable to § 2.173(b)(4)
are contained in § 2.173(b)(3). The previously proposed provision that a
requirement for additional information may issue, for the USPTO to assess
the accuracy and integrity of the register, is not included in the final
rule.
Comment: Two commenters noted that because claims of use as to all
goods and services are not at issue when a request for amendment of a
registration is sought, they do not support the proposed changes to
§ 2.173.
Response: As claims of use as to all goods and services do not
accompany amendments to registrations, the pilot to assess the accuracy and
integrity of the register will be conducted with the filing of mandatory
Section 8 or 71 affidavits and not optional Section 7 amendments. The
revisions to § 2.173(b)(3) clarify that where an amendment involves a
change in the mark, a new specimen must be provided for each class in a
multiple-class registration. This will allow the USPTO to assess that the
amended mark is being used on or in connection with each class of goods or
services in the registration. The addition of § 2.173(b)(4) similarly
assists the USPTO by providing a means for additional information to be
requested, as a post registration corollary to § 2.61(b). The additional
previously proposed language allowing the USPTO to "assess the accuracy
and integrity of the register" was deleted and is not included in the final
rule.
Overview of the Pilot
As set forth above, the USPTO intends to conduct a two-year pilot
program to verify the accuracy of post registration claims that a trademark
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is in use on particular goods/services. The USPTO will randomly select
approximately 500 trademark registrations for which a Section 8 or 71
affidavit was filed and issue an Office action requiring proof of use of
the mark on two additional goods/services per class. Although a declaration
will be required to verify the proof of use, one declaration may support
all the additional proof. The random selection will include all types of
registrations and will represent less than 1% of the total number of
affidavits usually processed during a typical six-month period.
Owners of the registrations selected for the pilot will be afforded the
usual post registration response period to the Office action requiring
additional proof of use and an accompanying standard declaration.
Specifically, a response will be due within six months of the Office
action, or before the end of the filing period for the Section 8 or 71
affidavit, whichever is later (37 CFR 2.163(b), 7.39(a)). Specially trained
senior attorneys will conduct the examination for the pilot, reviewing the
proof of use according to the generally accepted standards for use in
commerce. The assigned senior attorneys may address specific questions or
concerns about particular cases. The USPTO also will establish a dedicated
mailbox, TMPostRegPilot@uspto.gov for more general questions and concerns
relating to the pilot.
If a response is filed but fails to include the required evidence or
specimens, the USPTO will deem the Section 8 or 71 affidavit unacceptable
as to the goods or services to which the requirement pertained and delete
them from the registration. Such a response may also trigger a further
requirement for proof of use as to some or all of the remaining goods/
services. However, assuming the Section 8 or 71 affidavit is otherwise
acceptable, and any requested proof of use as to remaining goods/services
is satisfied, the remaining goods/services will be unaffected. By contrast,
if no response to the Office action is filed within the response period,
and no time remains in the statutory filing period, the registration will
be cancelled (37 CFR 2.163(c), 7.39(b)).
After the conclusion of the pilot, the USPTO will share the results as
a basis for further consideration and discussion of the level of accuracy
of the register. The results of the pilot will help inform whether and to
what extent it may be appropriate to request additional information or
specimens on a more routine basis to ensure accuracy.
Rulemaking Requirements
Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866.
Executive Order 13563: The Office has complied with Executive Order
13563. Specifically, the Office has: (1) used the best available techniques
to quantify costs and benefits, and has considered values such as equity,
fairness and distributive impacts; (2) provided the public with a meaningful
opportunity to participate in the regulatory process, including soliciting
the views of those likely affected prior to issuing a notice of proposed
rulemaking, and provided on-line access to the rulemaking docket;
(3) attempted to promote coordination, simplification and harmonization
across government agencies and identified goals designed to promote
innovation; (4) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (5) ensured the
objectivity of scientific and technological information and processes, to
the extent applicable.
Administrative Procedure Act: This rule merely involves rules of agency
practice and procedure within the meaning of 5 U.S.C. 553(b)(A). See Cooper
Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that
5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and
comment rulemaking for "interpretative rules, general statements of policy,
or rules of agency organization, procedure, or practice") (quoting 5 U.S.C.
553(b)(A)); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir.
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2001) (rules for handling appeals were procedural where they did not change
the substantive standard for reviewing claims); Bachow Commc'ns Inc. v.
FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an application
process are procedural under the Administrative Procedure Act). Therefore,
this rule may be adopted without prior notice and opportunity for public
comment under 5 U.S.C. 553(b) and (c), or thirty-day advance publication
under 5 U.S.C. 553(d).
However, the USPTO chose to seek public comment before implementing the
rule and is providing thirty-day advance publication notice.
Regulatory Flexibility Act: The final rule involves rules of agency
practice and procedure. As prior notice and an opportunity for public
comment are not required pursuant to 5 U.S.C. 553 or any other law, neither
a Regulatory Flexibility Act analysis nor a certification under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 5 U.S.C.
603.
A Final Regulatory Flexibility Act Analysis ("FRFA") of the final rule
is not required; nevertheless, the USPTO has undertaken this FRFA to
further describe the minimal effects on any small entities.
1. Description of the reasons that action by the Office is being undertaken:
The USPTO is requiring: (1) any specimens, information, exhibits, and
affidavits or declarations deemed reasonably necessary to examine an
affidavit or declaration of continued use in trademark cases; and (2) upon
request, more than one specimen in connection with a use-based trademark
application, an allegation of use, an amendment to a registered mark, or an
affidavit or declaration of continued use in trademark cases.
These revisions will facilitate the USPTO's ability to verify the
accuracy of identifications of goods/services. Specimens of use in
use-based trademark applications illustrate how the applicant is using the
proposed mark in commerce on particular goods/services identified in the
application. Post registration affidavits or declarations of use and their
accompanying specimens demonstrate a trademark owner's continued use of its
mark in commerce for the goods/services in the registration.
2. Succinct statement of the objectives of, and legal basis for, the final
rule:
The objective of the final rule is to facilitate the USPTO's ability to
verify the accuracy of identifications of goods/services in trademark
applications and registrations. The rule ensures that the USPTO may
properly examine the nature and veracity of allegations of use made during
the trademark application or post registration phase, and upon request, may
require additional specimens or other information or exhibits, such as a
photograph of the mark appearing on certain goods. Another purpose of the
rule is to harmonize the requirements that can be made as part of the
examination of use allegations made in post registration maintenance
documents, which are currently more limited, with the requirements
authorized in the examination of use allegations made prior to registration.
The Trademark Act gives the Director of the USPTO discretion regarding
the number of specimens to require (15 U.S.C. 1051(a)(1), (d)(1),
1058(b)(1)(C), 1141k(b)(1)(C)). Moreover, it requires applicants to comply
with rules as prescribed by the Director (15 U.S.C. 1051(a)(4), (b)(4)).
Additionally, the Director and USPTO may establish regulations governing
the conduct of proceedings in the Office (15 U.S.C. 1123, 35 U.S.C.
2(b)(2)(A)). The current Trademark Rules of Practice and the Rules of
Practice for Filings Pursuant to the Madrid Protocol mandate the submission
of one specimen per class in connection with use-related filings (37 CFR
2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), 2.88(b)(2),
2.161(g), 7.37(g)). Similarly, the current rules require one specimen to be
submitted in connection with a proposed amendment of a registered mark
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(37 CFR 2.173(b)(3)). In addition, although the current Trademark Rules of
Practice allow the USPTO to require additional information or exhibits
deemed reasonably necessary to the examination of a pending application
(37 CFR 2.61(b)), no counterpart rule exists in the post registration
context to facilitate proper examination of an affidavit or declaration of
continued use or excusable nonuse.
3. Description and estimate of the number of affected small entities:
The USPTO does not collect or maintain statistics in trademark cases
on small versus large entity applicants, and this information would be
required in order to estimate the number of small entities that would be
affected by the final rule. However, the USPTO believes that the overall
impact of the rule on applicants and registrants will be relatively
minimal.
The final rule applies to any entity filing a use-based trademark
application and to any entity filing trademark registration maintenance
filings or amendments. With respect to allegations of use in trademark
applications, the rules merely codify existing practice, whereby the USPTO
already occasionally requests additional specimens or other information
under 37 CFR 2.61. Thus, because no change in practice will result from the
rules in this regard, they will have no impact in the trademark application
context.
After registration, registrants must make periodic filings with the
USPTO to maintain their registrations. A Section 8 or 71 affidavit of
continued use is a sworn statement that the mark is in use in commerce,
filed by the owner of a registration (15 U.S.C. 1058, 1141k). The purpose
of the Section 8 or 71 affidavit is to facilitate the cancellation of
registrations for marks no longer in use. With respect to post registration
maintenance filings, the Office estimates that only a small subset of
trademark owners will be required to provide more than one specimen, or
information or exhibits in connection with a Section 8 or 71 affidavit.
The USPTO is unable to estimate what subset of the owners will be small
entities impacted by the rules. In Fiscal Year 2011, 114,808 Section 8 or
71 affidavits were filed.
4. Description of the reporting, recordkeeping, and other compliance
requirements of the final rule, including an estimate of the classes of
small entities which will be subject to the requirement and the type of
professional skills necessary for preparation of the report or record:
The final rule imposes no new recordkeeping requirements on trademark
applicants or registrants.
Regarding compliance with the final rule, as an initial matter, the
USPTO does not anticipate that the rule will have a disproportionate
impact upon any particular class of small or large entities. Any entity
that has a registered trademark could potentially be impacted by the rule.
Based on additional comment from the proposed rule, the USPTO estimates
that in those post registration cases where a requirement for additional
information, exhibits, declarations, or specimens is issued, it will take
one hour to comply.
While the statement of use is a similar type of filing to those at issue
in the final rules applied in the post registration context, as the
statement of use involves providing one or more specimens of use and an
accompanying declaration, the compliance time for the final rules should
be less. Under the final rules applied in the post registration context,
the type of fact gathering and review of the nature and extent of the use
of the mark that underlies a statement of use will already have occurred.
Compliance with the requirement will only necessitate gathering and
submitting the evidence to demonstrate what has already been assessed.
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Assuming the mark is in use, as claimed, the compliance time involves
the length of time to secure a specimen, exhibit (such as taking a digital
photograph), information, or declaration, plus any time it takes an attorney
to communicate with the client in order to obtain what is required and make
the necessary filing with the USPTO. In reality, approximately one-third of
applications are filed pro se. These applicants and registrants, therefore,
will likely have a lower compliance time than the USPTO has estimated, which
assumes the involvement of counsel. These rules do not mandate the use of
counsel.
The Office does not estimate any change in compliance cost associated
with the final rules with respect to allegations of use in trademark
applications, since the USPTO's current practice already allows for this.
The rule change merely codifies existing practice.
5. Description of any significant alternatives to the final rule which
accomplish the stated objectives of applicable statutes and which minimize
any significant economic impact of the rule on small entities:
The USPTO has considered whether and how it is appropriate to reduce any
burden on small businesses through increased flexibility. The following
options have been considered, but rejected, by the USPTO as ineffective.
The alternative of never requiring additional specimens or other
information in connection with Section 8 or 71 affidavits or exempting
small entities from such requirements would have a lesser economic impact
on small entities, but would not accomplish the stated objective of
verifying the accuracy of identifications of goods/services in trademark
registrations. As set forth above, the USPTO will rely on the final rule to
assess the accuracy of use allegations. This assessment may provide a better
sense of whether significant problems may exist with the accuracy of
identifications of goods and services. Thus, exempting small entities would
prevent the potential consideration of all Section 8 or 71 affidavits for
this purpose, and therefore, would not achieve the stated objective of
verifying accuracy.
The stated objective of the final rule also facilitates the cancellation
of any registrations for marks that are no longer in use, the policy
underlying the statutory requirement for Section 8 or 71 affidavits.
Exempting small entities from any possible scrutiny regarding use
allegations would fail to reach non-use of marks by small entity owners,
thereby failing to achieve the objective.
Other options to potentially lessen the impact on small entities have
been rejected as ineffective. For example, the USPTO deems unnecessary
extended time periods for small entity compliance because there appears to
be no reason that compliance with the requirements in the rules would be
more time-consuming for small entities, and because the USPTO's standard
time period for responding to trademark Office actions allows sufficient
time regardless of small entity status.
The USPTO deems any streamlined or simplified compliance mechanism for
small entities unnecessary, given the ease of responding to trademark
Office actions electronically. Thus, compliance will be as streamlined and
simplified as possible for all affected entities. Moreover, where the
objective is to verify the accuracy of a claim of use in an affidavit, the
requirements of one or more additional examples of the manner of the
claimed use, or of other information such as photographic proof already
seem to be the least burdensome and complex way to achieve the objective.
Additionally, the requirement for submissions in order to assess the
accuracy and integrity of the register will expire two years from the
effective date of the rule. Accordingly, these post registration
requirements will not have a significant economic impact on small entities.
Any more minimal requirement would not demonstrate use, and therefore,
would not meet the objective to verify use claims.
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Use of performance rather than design standards is not applicable to the
final rulemaking because the USPTO is not issuing any sort of standard.
Rather, the rules will require applicants and registrants to furnish
evidence of use, rather than comply with a performance or design standard.
Finally, with respect to allegations of use in trademark applications,
the final rules merely codify existing practice, whereby the USPTO already
occasionally requests additional specimens or other information under 37
CFR 2.61. Thus, because no change in practice would result from the rules
in this regard, any different treatment of small entities in this context
would fail to meet the stated objective and likely would generate concern
and confusion about a change in practice.
6. Identification, to the extent practicable, of all relevant Federal rules
which may duplicate, overlap, or conflict with the final rule:
The final rule will not duplicate, overlap, or conflict with any other
Federal rules.
Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2
U.S.C. 1532, that agencies prepare an assessment of anticipated costs and
benefits before issuing any rule that may result in expenditure by State,
local, and tribal governments, in the aggregate, or by the private sector,
of $100 million or more (adjusted annually for inflation) in any given
year. This rule would have no such effect on State, local, and tribal
governments or the private sector.
Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Paperwork Reduction Act: This rule involves information collection
requirements which are subject to review by the Office of Management and
Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). An information collection request was submitted to OMB under control
number 0651-0055 at the time of the Notice of Proposed Rulemaking, and a
pre-approval was given. Since that time no substantive changes to the
burden have been made. Additionally, the agency will follow up with a change
worksheet submission to make all the necessary burden estimate adjustments.
This rulemaking provides for the USPTO to require: (1) any specimens,
information, exhibits, and affidavits or declarations deemed reasonably
necessary to examine an affidavit or declaration of continued use or
excusable nonuse in trademark cases, or for the USPTO to assess the accuracy
and integrity of the register; and (2) upon request, more than one specimen
in connection with a use-based trademark application, an allegation of use,
or an amendment to a registered mark.
There is no fee impact for submission of specimens. Additional burden
due to postage costs for paper submissions for the post-registration Office
actions is estimated at $90, for a total increase in fee burden by an
estimated $90. The agency estimates the following overall impact on burden:
an increase of responses of 500; an increase in burden hours of 485; and an
increase in burden hour costs of $164,900.
Comments were invited on: (1) whether the collection of information is
necessary for proper performance of the functions of the agency; (2) the
accuracy of the agency's estimate of the burden; (3) ways to enhance the
quality, utility, and clarity of the information to be collected; and (4)
ways to minimize the burden of the collection of information to respondents.
In response to the first inquiry, whether the collection of information
is necessary for proper performance of the functions of the agency, the
USPTO received three comments.
Comment: One comment noted that based on the U.S. trademark system,
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the commenter could understand the contents of the revision, but the
commenter indicated that the revision may contradict the Trademark Law
Treaty prohibition against submitting evidence of use with a renewal
application.
Response: Evidence of use, or excusable non-use, is not a requirement
for renewal applications under Section 9, and therefore, the revision does
not contradict the Trademark Law Treaty (15 U.S.C. 1059). To renew a
registration under Section 9, the owner must submit the requisite fee with
the signed renewal form (15 U.S.C. 1059). Evidence of use, or excusable
nonuse, is separately required under Sections 8 and 71 between the fifth
and sixth year anniversaries after registration and every ten years after
registration, or with payment of an additional fee, during the six-month
grace period that follows (15 U.S.C. 1058(a), 1141k(a)).
Comment: Another commenter expressed that the collection of additional
specimens would ensure a more accurate register and thus benefits the public
and brand owners.
Response: The USPTO appreciates the commenter's support of the rule
changes and agrees with the commenter regarding the benefit of a more
accurate register.
Comment: A third commenter agreed that collecting information regarding
the accuracy of the marks on the trademark register is a necessary and
proper performance of the USPTO's functions. The commenter noted that an
up-to-date register reflecting marks that are actually in use would benefit
everyone. The commenter further stated that the USPTO should ensure that
the information is gathered consistently and without singling out any
particular classes of applications, registrations, or mark owners.
Response: The USPTO appreciates the commenter's support of the
information collection. In conducting the pilot, the USPTO will collect the
information regarding the accuracy of marks on the register consistently,
without singling out any particular classes of applications, registrations,
or mark owners. The USPTO intends to ensure consistent information
collection by having a small group of specially trained senior attorneys
examine the registrations selected for participation in the pilot. As the
USPTO also intends to randomly select the registrations examined in the
pilot, no type of application, registration, or mark owner will be singled
out.
Regarding the accuracy of the agency's estimate of the burden, comments
were received from three parties.
Comment: One commenter noted that due to the limited nature of the rule
changes, they will not affect the scope of pre-registration trademark
searches; and costs will be incurred when attorneys submit the additional
evidence required. The commenter additionally requested that foreign
applicants be allowed to maintain broader identifications of goods and
services when filing a new trademark application based on a home-country
registration.
Response: The rule changes codify current pre-registration practice.
The USPTO's pilot program will be conducted post registration, and the
limited nature of the pilot will alleviate the potential burden on
trademark owners. The rule changes will not affect the USPTO's standards
for determining the acceptability of identifications of goods and services,
which are applied to all applicants and registrants.
Comment: Another comment noted that the burden on applicants to produce
additional specimens is not terribly significant in the age of electronic
specimens and filings. The burden of producing additional specimens is far
less than the burdens imposed on the public and trademark community from
an inaccurate register. Any evidence required under the rule changes relates
to something an applicant or registrant should possess or easily document in
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carrying out existing duties of confirming that goods and services are
currently in use.
Response: The USPTO appreciates the commenter's support of the rule
changes and concurs that the rule changes create minimal burdens on
trademark owners.
Comment: A commenter on the time burden agreed that the time to actually
submit specimens or additional evidence will likely be an hour, but stated
that the time involved in making the request to a client and reviewing the
client's responses will be substantially greater. For mark owners and their
counsel, compliance time with the additional requirements may depend on
factors such as whether the client is foreign or domestic, the degree of
explanation necessary for the client, and the length of the identification.
The commenter noted that the USPTO may help alleviate the burden by
requiring only one additional specimen or minimal additional information,
and by foregoing the need for verifications of the specimens or other
information.
Response: The USPTO notes that the estimated time burden for Paperwork
Reduction Act purposes is an average encompassing the response time for all
trademark owners, taking into account that trademark owners comprise large
and small entities, with and without counsel. The USPTO acknowledges that
the compliance time for the pilot may be greater than the compliance time
for a typical post registration response, and based on the commenter's
feedback, the USPTO has increased the estimated burden time for submissions
under the pilot to an hour. While the USPTO concurs with the commenter that
compliance time may be greater for larger, represented entities, the average
also encompasses pro se owners, for whom the compliance time will likely be
lower than the USPTO has estimated. The USPTO also notes that as trademark
owners are already required to ascertain whether a mark is currently in use
with all the goods/services in connection with the filing of a Section 8 or
71 affidavit, any additional requirement to provide proof of such use with
select goods/services should not be unduly burdensome.
As an additional means of alleviating the potential burden to trademark
owners, only approximately 500 registrations will be selected to participate
in the pilot assessing the accuracy and integrity of the register. Moreover,
only proof of use of two additional goods/services per class will be
required of participants in the pilot. Although a declaration will be
required to verify the proof of use, one declaration may support all the
additional proof. Owners need not preemptively submit multiple specimens
with all trademark filings since the approximately 500 registrations
selected to participate in the pilot represent less than 1% of the total
number of Section 8 and 71 affidavits processed during a typical six-month
period.
In response to the third inquiry, whether there are ways to enhance the
quality, utility, and clarity of the information to be collected, the USPTO
received two comments.
Comment: One commenter suggested that the USPTO could publish more
guidance as to when specimens are required and the type of specimens that
are generally acceptable. The commenter additionally noted that the USPTO
should provide guidance to both applicants and examiners that specimens for
goods that appear to be merely digital mock-ups may be insufficient.
Response: The USPTO intends to provide additional guidance for those
trademark owners chosen to participate in the pilot and continue its
efforts to provide both internal and external guidance, through the TMEP
and examination guides, regarding the general acceptability of specimens.
It is long-standing Office policy that a submission that appears not to
be actually used in commerce is unacceptable as a specimen. See, e.g., TMEP
§§ 904.03(i) and 904.04(a) regarding beta Web sites and printers proofs.
Comment: Another comment stated that the USPTO should publicize the
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nature of the specimens and additional information that will be required to
support requests for information under the rule changes. The commenter
noted that loosening the restrictions on catalog submissions could assist
mark owners requested to provide additional specimens. Moreover, the USPTO
should clarify whether requests for additional information will apply to
entire classes or specific goods or services within a class. If declarations
will be required to support additional specimens, having a uniform format
will help ensure higher-quality submissions. Additionally, ensuring uniform
levels of inquiry for specimens during prosecution and post registration,
and publicizing them in exam guides or the TMEP, would further the goal of
an accurate trademark register. Having a particular contact person, or
dedicated mailbox, for issues that arise would ensure that practitioners
and USPTO employees receive consistent guidance. Lastly, the USPTO should
share any statistics kept on the success of the new rule - such as the
length of descriptions routinely queried, percentage of applications or
registrations queried, and statistics that suggest that "deadwood" on the
register is an issue to be addressed.
Response: As noted above, in order to assess the accuracy and integrity
of the register, the USPTO intends to conduct a pilot in which approximately
500 trademark registrations will be selected to receive a requirement to
submit proof of use for two additional goods/services per class in response
to an Office action issued after a Section 8 or 71 affidavit is reviewed by
the USPTO. The additional proof will be reviewed according to the same
general standards as specimens submitted with a Section 8 or 71 affidavit,
with the standard Section 8 or 71 declaration language required to be
submitted with the additional proof.
In order to ensure uniformity within the pilot, a small group of
specially trained senior attorneys will conduct the examination of the
registrations selected for participation in the pilot. The assigned senior
attorney handling a particular case may address specific questions or
concerns about the case. As suggested by the commenter, the USPTO will
establish a dedicated mailbox for more general questions and concerns
relating to the pilot. Moreover, the USPTO will share the results of the
pilot in the context of further consideration as to whether "deadwood" on
the register is an issue.
Regarding ways to minimize the burden of the collection of information
to respondents, comments were received from two parties.
Comment: A commenter proposed additional emphasis by the USPTO to
educate applicants, in advance, regarding proper specimens and the
difference between use-based and intent-to-use applications. The commenter
also suggested adding information and warnings on the USPTO Web site and
during the electronic application process explaining the types of specimens
that may be acceptable. The commenter additionally expressed that the USPTO
could suggest to applicants that they may be able to reduce the length of
the application process by submitting additional specimens with their
applications.
Response: The USPTO appreciates the commenter's suggestions regarding
ways to educate the public regarding the trademark process. The USPTO has
developed a series of "how-to" videos covering important topics and critical
application-filing and registration-maintenance tips. One video entitled
"Before You File" covers the different filing bases, while another video
focuses exclusively on education about specimens. The videos can be accessed
on the USPTO Web site at http://www.uspto.gov/trademarks/process/TMIN.jsp.
The USPTO is continuously striving to improve its electronic systems and to
provide helpful information and warnings to guide users throughout the
trademark registration process, and provides a link to the instructional
video accessed through the Trademark Electronic Application System ("TEAS")
explaining what constitutes an appropriate specimen for a good or service.
While applicants are always welcome to submit additional specimens, the
USPTO only requires one specimen per class, but agrees that by submitting
additional specimens, applicants may in certain circumstances reduce the
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length of the application process by reducing the need for Office actions
requesting acceptable specimens.
Notwithstanding any other provision of law, no person is required to
respond to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the
Paperwork Reduction Act unless that collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks, International
Registration.
For the reasons stated in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the USPTO proposes to amend
parts 2 and 7 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR Part 2 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Revise § 2.34(a)(1)(iv) to read as follows:
§ 2.34 Bases for filing.
(a) ***
(1) ***
(iv) One specimen per class showing how the applicant actually uses the
mark in commerce. When requested by the Office, additional specimens must be
provided.
*****
3. Revise § 2.56(a) to read as follows:
§ 2.56 Specimens.
(a) An application under section 1(a) of the Act, an amendment to allege
use under § 2.76, and a statement of use under § 2.88 must each include one
specimen per class showing the mark as used on or in connection with the
goods or services. When requested by the Office as reasonably necessary to
proper examination, additional specimens must be provided.
*****
4. Revise § 2.61(b) to read as follows:
§ 2.61 Action by examiner.
*****
(b) The Office may require the applicant to furnish such information,
exhibits, affidavits or declarations, and such additional specimens as may
be reasonably necessary to the proper examination of the application.
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*****
5. Revise § 2.76(b)(2) to read as follows:
§ 2.76 Amendment to allege use.
*****
(b) ***
(2) One specimen per class showing the mark as actually used in
commerce. When requested by the Office, additional specimens must be
provided. See § 2.56 for the requirements for specimens; and
*****
6. Revise §§ 2.86(a)(3) and (b) to read as follows:
§ 2.86 Application may include multiple classes.
(a) ***
(3) Include either dates of use (see §§ 2.34(a)(1)(ii) and (iii)) and
one specimen for each class, or a statement of a bona fide intention to use
the mark in commerce on or in connection with all the goods or services
specified in each class. When requested by the Office, additional specimens
must be provided. The applicant may not claim both use in commerce and a
bona fide intention to use the mark in commerce for the identical goods or
services in one application.
(b) An amendment to allege use under § 2.76 or a statement of use under
§ 2.88 must include, for each class, the required fee, dates of use, and one
specimen. When requested by the Office, additional specimens must be
provided. The applicant may not file the amendment to allege use or
statement of use until the applicant has used the mark on all the goods or
services, unless the applicant files a request to divide. See § 2.87 for
information regarding requests to divide.
*****
7. Revise § 2.88(b)(2) to read as follows:
§ 2.88 Filing statement of use after notice of allowance.
*****
(b) ***
(2) One specimen of the mark as actually used in commerce. When
requested by the Office, additional specimens must be provided. See
§ 2.56 for the requirements for specimens; and
*****
8. Amend § 2.161 by revising the introductory text of paragraph (g) and
adding paragraph (h) to read as follows:
§ 2.161 Requirements for a complete affidavit or declaration of continued
use or excusable nonuse.
*****
(g) Include one specimen showing current use of the mark for each class
of goods or services, unless excusable nonuse is claimed under
§ 2.161(f)(2). When requested by the Office, additional specimens must be
provided. The specimen must:
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*****
(h) The Office may require the owner to furnish such information,
exhibits, affidavits or declarations, and such additional specimens:
(1) As may be reasonably necessary to the proper examination of the
affidavit or declaration under section 8 of the Act; or
(2) For the Office to assess the accuracy and integrity of the register.
(3) The provisions of subsection (h)(2) will no longer be effective on
June 21, 2014.
9. Amend § 2.173 by revising paragraph (b)(3) and adding paragraph (b)(4)
to read as follows:
§ 2.173 Amendment of registration.
*****
(b) ***
(3) If the amendment involves a change in the mark: one new specimen
per class showing the mark as used on or in connection with the goods or
services; an affidavit or declaration under § 2.20 stating that the
specimen was in use in commerce at least as early as the filing date of the
amendment; and a new drawing of the amended mark. When requested by the
Office, additional specimens must be provided.
(4) The Office may require the owner to furnish such specimens,
information, exhibits, and affidavits or declarations as may be reasonably
necessary to the proper examination of the amendment.
*****
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL RELATING
TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
10. The authority citation for 37 CFR Part 7 continues to read as follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
11. Amend § 7.37 by revising paragraph (g) and adding paragraph (h) to
read as follows:
§ 7.37 Requirements for a complete affidavit or declaration of continued
use or excusable nonuse.
*****
(g) Include a specimen showing current use of the mark for each class of
goods or services, unless excusable nonuse is claimed under § 7.37(f)(2).
When requested by the Office, additional specimens must be provided. The
specimen must meet the requirements of § 2.56 of this chapter.
(h) The Office may require the holder to furnish such information,
exhibits, affidavits or declarations, and such additional specimens:
(1) As may be reasonably necessary to the proper examination of the
affidavit or declaration under section 71 of the Act; or
(2) For the Office to assess the accuracy and integrity of the register.
(3) The provisions of subsection (h)(2) will no longer be effective on
June 21, 2014.
May 15, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[1379 TMOG 110]