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IP Cases & Commentary – Details

05 November 2012

US Update - US PTO Takes a Tougher Stance on Evidence of Use

Helen Cawley

US Update - US PTO Takes a Tougher Stance on Evidence of Use

New rules have been introduced that allow the US PTO to request additional specimens, information and exhibits to ensure trade mark registrations can be maintained.

Readers who own US trade mark registrations will know that, in order to maintain their registration, they are required to file a ‘Declaration of Use’ between the fifth and sixth year following registration. In the past, the US PTO has accepted one specimen per class showing use of the trade mark.

However, under a pilot programme, the new rules allow the US PTO to ask the registrant to provide additional specimens or information to better evaluate whether the trade mark has been put to genuine use for all goods and services covered by their registration.

Those registrants randomly selected will receive an office action requesting proof of use of their trade mark on two additional goods and/or services covered by their registration. The US PTO will allow a six-month period to respond and if adequate specimens and/or information are not provided, this is likely to result in the cancellation of such goods/services from the registration. These new rules will also extend to evidence of use to be filed when seeking a registration based on use in the US.

This stricter approach from the US PTO is likely to see a number of rights restricted as a result. We recommend to our readers that they maintain detailed records of sales and the provision of services of their trade mark in the US along with retaining a number of samples covering all goods and services which can be used to demonstrate use before the US PTO in order to maintain their registration.

For further information, please contact your usual D Young & Co attorney or our Trade Mark Records Manager, Sharon Sequeira.

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