In accordance with U.S. law*, in order to obtain and maintain a Trademark Registration with the United States Patent and Trademark Office, a mark must be in use in commerce in connection with all the goods and services listed in the application and registration.
In practice, to obtain or maintain a Trademark Registration, the Applicant must submit to the Trademark Office only one example as evidence of the use of the mark per class in which registration is or was sought. So, for example, an application or registration might list “hats, shirts, socks, and pants” which are all in Class 25, but could get a registration by showing the mark only in use on the hats.
During a 2-year “Post-Registration Proof-of-Use Pilot Program”** the USPTO randomly selected 500 registrations that were being renewed, and requested additional evidence of use of the mark on other goods that were listed in the registration. In our example above, the USPTO asked to see the mark on shirts, socks and pants, in addition to the hat we had already submitted.
The Pilot Program found that in 51% of the selected registrations, the trademark owners were unable to supply the additional evidence. As a result, the Trademark owners were required to either delete the listed goods they cannot prove they are selling in commerce or allow the Registrations to be canceled.
As a result of the program, and in order to protect the accuracy and integrity of the Federal Trademark Register, the USPTO has recently enacted several rule changes that will affect our practice. Essentially, while we will still only be required to submit one example of the use of a mark, the Trademark Office will be permitted to request evidence of use of all goods and services listed in a registration, regardless of duplicate class coverage, or the Registration may be canceled.
Going forward, we must be more vigilant in ensuring our clients understand the requirements, both in accordance with the law and in accordance with reality. With good practice techniques, planning and record-keeping, our clients will still obtain and maintain all rights to which they are entitled.
If you have any questions about Trademarks, rules, applications or registrations, please feel free to call our office at (845) 897-3400 or email at email@example.com.
*15 U.S.C. §1051
Author: Meaghan Doyle