To combat persistent concerns of fraud, the United States Patent and Trademark Office (“USPTO”) announced the launch of a pilot study to analyze possible fraud or other errors in the register.  In connection with the pilot study, the USPTO  amended the Trademark Rules of Practice (37 CFR part 2) §§ 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), and 2.88(b)(2). The new rule allows the USPTO to  request additional specimens of use, including information, exhibits, and affidavits or declarations, that are deemed reasonably necessary to examine a post-registration affidavit or declaration of continued use or excusable nonuse. These new requirements become effective starting June 22, 2012.


The need for this rule came out of the fact that, although the current rules require one specimen to be submitted in connection with an amendment to a registered mark or additional specimens for the examination of a pending application, there was no counterpart rule for post-registration filings. These changes will enhance the accuracy with which the USPTO can verify use of goods and services in connection with a trademark.


To fulfill the overarching purpose of the new rule, the USPTO will conduct a two-year pilot program in which it will randomly select approximately 500 registrations for which Section 8 or 71 affidavits are being filed to receive an Office action requiring proof of use of the mark on two additional goods or services per class.  This figure of 500 registrations comprises merely 1% of total affidavits processed in a typical six-month period.  Under the pilot program, Examining Attorneys will request additional information or specimens, and will review them according to the generally accepted standards for use in commerce; no more- or less-formal standards will be applied to assess use of the mark.  Owners will be afforded the usual six months for post-registration response time or before the end of the relevant filing period for Section 8 or 71 affidavits to submit the requested specimens, whichever is later.  If the trademark owner is unable to provide the requested specimens, then those goods or services in question will be deleted from the registration and the affidavit will be subject to further review; if the proof of use requested is satisfactory, then the remaining goods and services of the mark will remain unaffected.  However, if no response to the Office action is filed within six months or the statutory filing period, then the registration will be cancelled under 37 CFR 2.163(c) and 7.39(b).


The public benefit of the revisions is the result of a more accurate register that clearly identifies which goods and services are actually in use, thereby (hopefully) eliminating unnecessary confusion and resulting expenses.