Earlier this month the USPTO enacted a new facet to the §§ 8 and 71 Declarations of Continued Use, allowing examiners to ask registrants for additional proof-of-use specimens, above and beyond the ones provided in their affidavits. After conducting a two-year pilot where the USPTO asked 500 participants to provide additional specimens, 51% of registrants were unable to provide the now mandatory proof-of-use. This resulted in many of the trademark holders deleting the goods and services for which they were unable to prove use. Other registrations were cancelled altogether.
So what does this mean for in-house trademark departments?
With this new rule, trademark departments should proactively maintain proof-of-use specimens by class for all US trademarks under management so that they can respond to requests without delay. Relying on marketing departments to quickly supply specimens upon request (for the appropriate class) can create unnecessary risk which can easily be abated. Needless to say, systems for managing trademark specimens should be intuitive and secure, with easy-to-use search and download capabilities.
Of course, this creates more work upfront for in-house trademark departments to proactively manage specimens. But the flip side is that when a request is issued by the USPTO, trademark administrators will be able to quickly and easily respond ensuring that trademarks are renewed.