Unlike the practice in many countries, in most cases the U.S. requires a trademark owner to place the mark into actual use in commerce and provide specific types of proof of use before the registration certificate will issue. Similar requirements apply to the mandatory declaration of use to maintain or renew a U.S. registration. Effective February 17, 2017, the United States Patent and Trademark Office (“PTO”) has amended its rules relating to the amount of proof necessary to substantiate current use of the mark for post-registration declarations of use. 37 CFR Part§§ 2.161 and 7.37.
Post-registration requirements to prove use in U.S. commerce
Under § 8 of the Lanham Act, a trademark registrant must file a declaration that the mark is in current use in commerce and provide a specimen of that use between the 5th and 6th years after registration and every 10th year, when the registration is renewed. Similar requirements under § 71 of the Act apply to owners of International Registrations with extensions of protection to the U.S. under the Madrid Protocol. Specimens of use submitted to the PTO must illustrate how the owner is using the mark in commerce in connection with the particular goods or services identified in the application or registration. Specimens of use for trademarks are usually photos of packaging or labeling for the goods bearing the mark or of the mark placed directly on the goods. Specimens of use for service marks are usually advertising or promotional material for the services bearing the mark. For registrations originally based on the Madrid Protocol or on registrations obtained in other countries, the §8 or § 71 declaration of use is the first time proof of use of the mark in U.S. commerce is required.
The PTO has discretion to issue regulations about the number and kind of specimens of use that must be produced. Previously, the rules only required one specimen of use for each International Class of goods or services in the application or registration, regardless of the number of goods/services identified in each class. For example, a mark registered for five types of jewelry items in International Class 14 and ten types of clothing items in International Class 25 would currently require only two specimens of use, for one jewelry item and one clothing item. In an effort to more accurately identify marks that are no longer in use and should be cleared from the register so that others may use them, the new regulations allow the trademark examiners to require evidence of use for more than one covered item per class and other types of evidence of use, such as information, exhibits, affidavits or declarations.
Read more: http://www.ilnipinsider.com/2017/02/uspto-adopts-new-regulations-for-trademark-specimens-of-use/
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