Post Registration Proof of Use
Pilot Results and Beyond
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UNITED STATES PATENT AND TRADEMARK
OFFICE
ROUNDTABLE DISCUSSION
DECEMBER 12, 2014
Data Through October 15, 2014
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 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 pilot
16% failed to respond to pilot Office actions and were cancelled
 81% (406) of registrations received notices of acceptance (includes
notices issued after goods/services queried under the pilot were
deleted)
Deletions/Cancellations/Acceptances by
Registration Basis
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Percentage of
Registrations Selected
for the Pilot Deleting
Goods/Services Queried
Under the Pilot
Percentage of
Registrations Selected
for the Pilot Receiving
Notices of Cancellation
Percentage 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%
Basis for Registration
Deletions/Cancellations/Acceptances by
Registration Basis
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Continuing the Dialogue: Ongoing Efforts?
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 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.
Continuing the Dialogue: Ongoing Efforts?
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 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
Continuing the Dialogue: Ongoing Efforts?
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 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.
Continuing the Dialogue: Ongoing Efforts?
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 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.
Continuing the Dialogue: Ongoing Efforts?
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 Other suggestions/comments?