Trade mark-related developments in the United States Patent and Trademark Office: 2016–17

Abstract

... The USPTO has continued to fulfil its core mission of servicing clients and has maintained a particularly high level of service in trade mark matters. It expects applications comprising approximately 568,000 fee-paid classes in the fiscal year 2017, representing a 7.1 per cent increase from the previous year. Metrics indicate that, despite an increased caseload in the first quarter of 2017, the USPTO was meeting or exceeding its targets for timeliness and accuracy in disposing of new applications. The USPTO’s internal adjudicative body, the Trademark Trial and Appeal Board (TTAB), anticipates a corresponding increase in matters, but is similarly meeting or surpassing its targets for issuing decisions and disposing of cases. Even so, the USPTO is not satisfied with this excellent performance and remains focused on improving its trade mark services. The USPTO has undertaken to address the high number of trade mark registrations that are maintained despite the owners’ failure to make bona fide use of the marks in commerce as required by the Trademark Act.1 In connection with the Proof-of-Use Pilot Program,2 the USPTO recently found that, of a random sample of trade mark owners claiming use of their marks in commerce, 51 per cent failed to provide further proof of use when the USPTO requested it.3 In part of its ongoing effort to clear such ‘dead wood’ registrations, the USPTO issued modifications to the Trademark Rules, effective 21 March 2017, that permit the USPTO to request additional specimens of use as reasonably necessary to confirm that the requirements for Section 8 and 71 Declarations or Affidavits of Continued Use or Excusable Non-Use are being met.4 These requests will be made in connection with a permanent audit programme, whereby the USPTO will initially review up to one tenth of Section 8 and 71 filings at random by requesting information, exhibits, affidavits or declarations, and specimens showing use in commerce. These requests will come in the form of an Office action affording the owner of a mark six months to respond. Brand owners and their attorneys should be aware that they might receive Office actions auditing their renewal applications and, hopefully, will take greater care in ensuring that they have sufficient basis for maintaining their registrations.