• PTO To Launch Pilot Program Increasing Scrutiny of Post-Registration Maintenance Filings: Program to Begin June 21, 2012
  • June 22, 2012 | Author: Louis J. Levy
  • Law Firm: Lerman Senter PLLC - Washington Office
  • Beginning June 21, 2012, the U.S. Patent and Trademark Office (“PTO”) will launch a pilot program under which it will randomly review post-registration maintenance filings, i.e., Declarations of Continued Use filed under Sections 8 and 71 of the Trademark Act.  Under this program, which is described in revised rules published on May 22, 2012, trademark owners whose post-registration maintenance filings are selected for review may be asked to provide information and additional specimens “as may be reasonably necessary to the proper examination” of such filings and, more generally, to “assess the accuracy  and integrity” of the trademark register.  The launch of this program is particularly important for foreign owners of U.S. trademarks who registered their marks on the basis of foreign registrations under the Madrid Protocol or pursuant to the Paris Convention because, unlike the U.S., most foreign jurisdictions do not require evidence of use to obtain a registration.

    The pilot program will last for two years.  According to the revised rules, the PTO will randomly review approximately 500 post-registration maintenance filings, which represent less than 1% of the total number of such filings processed during a six-month period.  Following completion of the pilot program, the PTO will assess the results to determine whether it should expand the program to encompass a broader group of trademark registration and application owners on a more routine basis.

    Trademark owners whose filings are selected for review will be asked to provide proof of use, i.e., additional specimens of use and related information, exhibits or declarations, for only two additional goods or services per class identified in the filing.  Trademark owners must respond within six months of the date of the office action, or before the end of the relevant filing period for the Section 8 or Section 71 Declaration, whichever is later.

    If a response fails to include the required evidence or specimens, the PTO will deem the Declaration of Continued Use unacceptable with respect to those goods and/or services and delete those goods and/or services from the registration.  Failure to file an adequate response may also trigger a request for additional specimens of use and related information for some or all of the remaining goods and services in the registration.  Assuming PTO requirements are satisfied, the registration will remain in force with respect to the remaining goods and services.

    Given the launch of the pilot program, trademark owners, and in particular, owners of U.S. trademark registrations obtained on the basis of foreign registrations, should exercise great care when filing post-registration maintenance documents.  In particular, given an increased likelihood of closer PTO examination, trademark owners must be prepared to provide additional specimens and related information, including advertising and other promotional material, to support claims of use made in post-registration maintenance filings so that they are able to respond sufficiently to any request for additional information the PTO may issue.