Roundtable Discussion December 12 2014 Post Registration Proof of Use Pilot Results and Beyond 1 Data Through October 15 2014 Beginning in July 2012 500 registrations filing Section 8 or 71 Declarations of Use were randomly selected to participate in proof of use pilot ID: 377981
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United States Patent and Trademark OfficeRoundtable DiscussionDecember 12, 2014
Post Registration Proof of Use Pilot Results and Beyond
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Data Through October 15, 2014
Beginning in July 2012, 500 registrations filing Section 8 or 71 Declarations of Use were randomly selected to participate in “proof of use” pilot
97% (486) of registrations completed the pilot
51% (253) of registrations unable to verify previously claimed use
35% deleted goods/services queried under the pilot16% failed to respond to pilot Office actions and were cancelled81% (406) of registrations received notices of acceptance (includes notices issued after goods/services queried under the pilot were deleted)
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Deletions/Cancellations/Acceptances by Registration Basis
Basis for Registration
Percentage of Registrations Selected for the Pilot Deleting Goods/Services Queried Under the Pilot
Percentage of Registrations Selected for the Pilot Receiving Notices of CancellationPercentage of Registrations Selected for the Pilot Receiving Notices of Acceptance (Including for a Narrowed Scope of Goods/Services)
Section 1(a)
27%
18%80%Section 44(e)58%7%89%Section 66(a)59%14%82%Combined Section 1(a) and 44(e)63%13%81%
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Deletions/Cancellations/Acceptances by Registration Basis
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Continuing the Dialogue: Ongoing Efforts? Suggestion 1: Create streamlined
non-use expungement procedure (analogous to the Canadian expungement proceedings under Section 45 of the Trade-marks Act).
Third parties could request USPTO to require an owner to prove
use of
mark for protected goods/services. If the owner complies, procedure completed. If not, any goods/services for which the owner has not provided the requisite proof would be deleted from the registration.5Slide6
Continuing the Dialogue: Ongoing Efforts?Suggestion 2(A):
Require specimens for all goods/services listed in the registration when the first Section 8 or 71 declaration
is filed;
or
Suggestion 2(B): Require specimens for all goods/services listed in the registration when the first Section 8 or 71 declaration is filed, and:Require specimen to be a photo showing use of the mark in conjunction with claimed goods Require advertisement for the services 6Slide7
Continuing the Dialogue: Ongoing Efforts?Suggestion 3: Increase the solemnity of the declaration. For example, (1) require the trademark owner to check a box stating that he/she understands the seriousness of the oath; or
(2) require statements accompanying Section 8 and 71 declarations detailing steps taken to verify use with the goods/services in the registration.
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Continuing the Dialogue: Ongoing Efforts?Suggestion 4:
Conduct random audits of Section 8 and 71 declarations.
Require a Section 7 Request (along with the required fee) to delete any goods/services queried by the USPTO for which proof of use cannot be provided.
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Continuing the Dialogue: Ongoing Efforts?Other suggestions/comments?
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