December 2019 Newsletter

Vol 12, Issue 4

New Trademark Office Initiatives Enhance the Integrity of the Trademark Register

By Benjamin R. Imhoff

The United States Patent and Trademark Office (USPTO) has two initiatives that seek to improve the quality of the registrations on the Trademark Register. These initiatives are the new US counsel rule and the Post Registration Proof of Use Audit Program. The USPTO had noticed a disconnect between the goods and services for which trademarks were registered and renewed, the quality of specimens provided, and the likelihood of marks being in actual use across disparate identified goods and services. Some of these discrepancies were due to a lack of diligence on the part of mark owners and practitioners, but others were organized activities of fraud including the use of fake specimens.

The US Counsel Rule

Many of the most egregious examples of fraudulent descriptions or specimens came from entities located outside of the US purporting to be representing themselves before the USPTO. However, this was found to often be a cover by people outside of the US engaged in unauthorized representation of others before the USPTO. The US Counsel Rule now requires any applicant, registrant, or party domiciled outside of the US to appoint and be represented by an attorney licensed to practice law in the United States. US-domiciled parties are still permitted to represent themselves in matters before the USPTO, should they so choose.

Representation by a US attorney will help to ensure a competent level of representation and communication foreign parties before the USPTO. Moreover, the required appointment of a US attorney places an additional accountable person in the process for every trademark application or registration. The appointed attorney is accountable to the client under the standards of US legal practice, and the appointed attorney is accountable to the USPTO to make good faith representations to the USPTO. Particularly, those good faith representations include the statements and specimens of use.

Post Registration Audits

Trademark rights in the US stem from goodwill acquired through the use of the mark in commerce. This goodwill is the source of common law trademark rights. A US Federal Registration is the governmental recognition of these common law rights. Due to this, the Trademark Office has stringent use requirements to support a Federal Registration.

Evidence of use, as provided by a specimen of use and declaration of use, is required for each international class of goods in an application before a trademark registration will grant. While only one specimen of use is required for each class of goods, the declaration of use swears that the mark is currently in use on all of the other listed goods and services as well. This same evidence of use is later required between the 5th and 6th years of registration and at renewal of the registration which occurs every ten years after the registration date.

The Post Registration Proof of Use Audit Program selects trademark registrations that meet certain criteria and places an increased burden of production of additional specimens of use or face full or partial cancellation of the registration. A trademark registration can be selected for audit if:

  1. A §8 or §71 declaration of use has been filed; and
  2. The registration includes at least one class with four or more goods and services, or if the registration includes at least two classes with two or more goods or services

If a registration is selected for audit, the registration receives a post-registration office action requiring specimens of use of two additional goods or services identified for each audited class. The registrant has six months to provide these additional specimens. If acceptable specimens are provided for these additional goods or services, then the registration will pass the audit. If no response is filed at all, the registration will be canceled in its entirety.

If a specimen of any one of the requested goods or services cannot be provided, then the response must provide the available specimens and delete all goods or services for which a specimen cannot be provided. The registrant will receive a second office action requiring specimens of use or cancellation for every remaining good or service in the registration. A response should provide proof of use for all remaining goods or services or delete them. If any specimens are not acceptable, a third and final office action will be issued notifying the registrant that goods without an acceptable specimen will be canceled from the registration.

As a mark owner or a representative of a mark owner, it is important to remember that a declaration of use is an oath stating that the mark is currently in use on every listed good or service in a trademark registration. Any goods or services in the registration for which the mark is not currently in use should be canceled from the registration at the time that the §8 or §71 declaration is filed. Use this as a time to take inventory of actual trademark use. With additional care at the time of trademark declarations of use, statements to the USPTO can be accurate. Should your registration happen to be audited, then you will be prepared to efficiently reply to the audit request and maintain your trademark registration.

Benjamin R. Imhoff appointed to a second term on INTA's Trademark Office Practices Committee

Benjamin Imhoff was appointed to a second term on the Trademark Office Practices Committee of the International Trademark Association (INTA). During the two-year term, Ben’s subcommittee will focus on the Madrid System and work with the World Intellectual Property Office (WIPO) on improvements to trademark practices and procedures within the Madrid System.

Andrus Attorneys Selected for Inclusion in 2019 Super Lawyers List and Rising Stars List

We are pleased to announce that Aaron Olejniczak, Pete Holsen and George Solveson have been selected to the 2019 Wisconsin Super Lawyers list and Ben Imhoff and Ryann Beck were named a Rising Stars in the State of Wisconsin. This is an exclusive list, recognizing no more than five percent of attorneys in the state.