All U.S. trademark registrations must be renewed by filing an affidavit under Section 8 of the Trademark Act declaring that the mark is still in use in U.S. commerce, or filing a declaration of permissible non-use under Section 71. Otherwise the registration will be administratively cancelled. However, in an effort to assess and promote the accuracy and integrity of the U.S. Trademark Register, the U.S. Patent and Trademark Office ("USPTO") is proposing amendments to its rules relating to the examination of affidavits or declarations of continued use or excusable nonuse filed under the renewal provisions of Section 8 of the Trademark Act, or affidavits or declarations of use in commerce or excusable nonuse filed pursuant to Section 71 of the Trademark Act.

Specifically, in addition to keeping the current renewal requirements, the USPTO proposes amending its rules to require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be "reasonably necessary" for the USPTO to ensure that the register accurately reflects marks that are in use on all of the goods/services claimed in each registration. The proposed changes would permit the USPTO to remove "deadwood" from the register, i.e., amend or cancel registered marks that were allowed or maintained with false claims of usage.

The USPTO's current proposal based on the prior pilot program calls for the audit of as much as ten (10%) percent of renewal or excusable non-use or renewal filings where a mark is registered to cover more than one good or service. If audited, trademark holders would get six months to supply additional evidence to verify the registrant's claim of usage.

Regardless of whether the new rules are adopted, Troutman Sanders has the following recommendations for our clients:

  1. When renewal filings are due, carefully review your registration for use on all of the goods/services listed to confirm that the mark claimed is in use on or in connection with all of the goods/services claimed in the registration certificate;
  2. If the mark is no longer in current use on or in connection with certain goods/services claimed in the registration, please discuss with your attorney as to whether those goods should be deleted or whether a declaration of non-use should be filed as to those goods/services; and
  3. If the mark is used with goods/services not covered by the existing registration or you have an intention to use the mark again on any goods which must be deleted, discuss with your attorney whether new applications should be filed to enhance your trademark protection for the registered mark.

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