A U.S. trademark registration must be maintained every five years, and renewed every ten, to keep it active and enforceable.  A component of this is the trademark owner filing an affidavit with the Trademark Office, stating the trademark owner is still using the mark in connection with the goods and services in the registration.  The affidavit had to be accompanied by a current specimen showing at least one good or service in the registration actually in use.

This changed recently.  Trademark owners need to know about this change, because of the catastrophic impact it can have on their valuable brands/marks.

The Trademark Office implemented a new rule for trademark renewals and maintenance.  A trademark owner must now submit evidence of use for every type of good or service claimed in the registration.  Failure to do so can result in the Trademark Office deleting goods or services for which the trademark owner can’t prove use.  Worse still, a failure to respond to the Office’s request for additional proof of use can result in cancellation of the entire registration and loss of that brand’s trademark protection.

How do you as a mark owner avoid this? I suggest doing the following:

  • When a maintenance or renewal affidavit is filed, items you’re no longer selling and services you’re no longer providing should be deleted.
  • When filing a registration application, don’t throw in the kitchen sink by having a huge list of goods and services in the application. Only list what’s actually being sold or provided or that you’re intending to sell or provide.
  • Keep records of what you’re actually selling and offering and review it periodically. This allows you to make sure you can prove what goods and services in your registration you’re actually selling or offering.  You can begin to sell or offer anything in your registration that you haven’t before the next maintenance/renewal time and keep track of what needs to be deleted from the affidavit when it’s time to file it.

The reason for this huge change in proving use?  The Trademark Office did an audit of several hundred trademark owners seeking renewal.  They found that over 1/2 of these trademark owners couldn’t supply requested proof of use for at least some of the goods and services listed in their registrations.  The Trademark Office wants to stop trademark owners from unfairly holding monopolies that registered marks provide, when those marks aren’t being used for some goods and services listed in their registrations.  The Trademark Office considers it abuse of the registration process.

As far as the Trademark Office is now concerned, failure to prove use is abuse.  And, an abused trademark is one for which you can lose protection for unused goods or services, or lose your registration altogether.  So, in trademark as it some other aspects of life, use it, or lose it.

Just Sayin’ . . . TM

© 2017 Paul I. Menes

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