Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases, 30197-30208 [2012-12178]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 77, Number 99 (Tuesday, May 22, 2012)]
[Rules and Regulations]
[Pages 30197-30208]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-12178]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. PTO-T-2010-0073]
RIN 0651-AC49


Changes in Requirements for Specimens and for Affidavits or 
Declarations of Continued Use or Excusable Nonuse in Trademark Cases

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: In order to help assess and ensure the accuracy of the 
trademark register, the United States Patent and Trademark Office 
(``USPTO'') is revising the Trademark Rules of Practice and the Rules 
of Practice for Filings Pursuant to the Madrid Protocol to allow the 
USPTO to: Upon request, require any additional specimens, information, 
exhibits, and affidavits or declarations deemed reasonably necessary to 
examine a post registration affidavit or declaration of continued use 
or excusable nonuse in trademark cases, and for a two-year period, 
conduct a pilot program for the USPTO to assess the accuracy and 
integrity of the register; and upon request, require more than one 
specimen in connection with a use-based trademark application, an 
allegation of use, or an amendment to a registered mark. These 
revisions aim to ensure the ability to rely on the trademark register 
as an accurate reflection of marks that are actually in use in the 
United States for the goods/services identified in the registration, 
and thereby reduce costs and burdens on the public.

DATES: This rule is effective on June 21, 2012.

FOR FURTHER INFORMATION CONTACT: Contact Cynthia C. Lynch, Office of 
the Deputy Commissioner for Trademark Examination Policy, by telephone 
at (571) 272-8742.

SUPPLEMENTARY INFORMATION:

General Information

    To benefit the public, the USPTO is revising the Trademark Rules of 
Practice (37 CFR part 2) and the Rules of Practice for Filings Pursuant 
to the Madrid Protocol (``Madrid Rules'') (37 CFR part 7) to allow the 
USPTO to: (1) Upon request, require any specimens, information, 
exhibits, and affidavits or declarations deemed reasonably necessary to 
examine a post registration affidavit or declaration of continued use 
in trademark cases, and assess the accuracy and integrity of the 
register; and (2) upon request, require more than one specimen in 
connection with a use-based trademark application, an allegation of 
use, or an amendment to a registered mark.
    The revisions will facilitate the USPTO's ability to verify the 
accuracy of identifications of goods/services. The accuracy of the 
trademark register as a reflection of marks that are actually in use in 
the United States for the goods/services identified in the registration 
serves an important purpose for the public. The public relies on the 
register to clear trademarks that they may wish to adopt or are already 
using. Where a party searching the register uncovers a similar mark, 
registered for goods or services that may result in confusion of 
consumers, that party may incur a variety of resulting costs and 
burdens, such as changing plans to avoid use of the mark, investigative 
costs to determine how the similar mark is actually used and assess the 
nature of any conflict, or cancellation proceedings or other litigation 
to resolve a dispute over the mark. If a registered mark is not 
actually in use in the United States, or is not in use on all the 
goods/services recited in the registration, these types of costs and 
burdens may be incurred unnecessarily. Thus, accuracy and reliability 
of the trademark register help avoid such needless costs and burdens, 
and thereby benefit the public.
    Specimens of use in use-based trademark applications illustrate how 
the applicant is using the proposed mark in commerce on particular 
goods/services identified in the application. Post registration 
affidavits or declarations of use and their accompanying specimens 
demonstrate a trademark owner's continued use of its mark in commerce 
for the goods/services in the registration. As part of a pilot program 
to assess the accuracy of the identifications of goods/services of 
currently registered marks, the USPTO anticipates issuing requirements 
for additional proof of use in conjunction with the review of post-
registration maintenance filings for approximately 500 registrations.

Background

    On April 26, 2010, the USPTO and the George Washington University 
Law School hosted a roundtable discussion on the topic of ``The Future 
of the Use-Based Register.'' Panelists and audience members explored 
the implications of the decision of the Court of Appeals for the 
Federal Circuit in In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 
(Fed. Cir. 2009), clarifying the high standard for fraud on the USPTO 
in connection with trademark cases.
    A ``brainstorming'' session at the conclusion of the roundtable 
resulted in a list of suggestions for how to improve the accuracy of 
identifications of goods/services. These suggestions were not focused 
on fraud, as was the Bose decision, but rather on the accuracy of the 
register. Several participants made the suggestion that the USPTO 
require additional specimens, or a specific type of proof of use of a 
mark, for all, or more than one, of the identified goods/services. Such 
additional requirements could help provide information regarding the 
extent to which a problem

[[Page 30198]]

with inaccuracy exists on the register, and could help discourage 
inaccuracies.
    The Trademark Act gives the Director discretion regarding the 
number of specimens to require (15 U.S.C. 1051(a)(1), (d)(1), 
1058(b)(1)(C), 1141k(b)(1)(C)). Moreover, it requires applicants to 
comply with rules as prescribed by the Director (15 U.S.C. 1051(a)(4), 
(b)(4)). Additionally, the Director and USPTO may establish regulations 
governing the conduct of proceedings in the Office (15 U.S.C. 1123, 35 
U.S.C. 2(b)(2)(A)). The current Trademark Rules of Practice and Madrid 
Rules mandate the submission of one specimen per class in connection 
with use-related filings (37 CFR 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 
2.86(a)(3), 2.86(b), 2.88(b)(2), 2.161(g), 7.37(g)). Similarly, the 
current rules require one specimen to be submitted in connection with 
an amendment to a registered mark (37 CFR 2.173(b)(3)). In addition, 
although the current Trademark Rules of Practice allow the USPTO to 
require additional information or exhibits deemed reasonably necessary 
to the examination of a pending application (37 CFR 2.61(b)), no 
counterpart rule exists in the post registration context to facilitate 
proper examination of an affidavit or declaration of continued use or 
excusable nonuse.
    To ensure that the USPTO may properly examine affidavits or 
declarations, and the nature and veracity of the use claimed therein, 
additional specimens or other information or exhibits, such as a 
photograph of the mark appearing on certain goods, may be needed. 
Accompanying affidavits or declarations to verify information or 
exhibits may also be needed. One purpose of the final rule is to allow 
the USPTO to require trademark applicants or registrants to submit any 
additional specimens or other information, exhibits and affidavits or 
declarations reasonably necessary for proper examination. A second 
purpose of the rule is to allow the USPTO to conduct a limited-duration 
post registration pilot program to verify the accuracy of claims that a 
trademark is in use on particular goods/services, as a means to assess 
and improve the accuracy and integrity of the register. The rule does 
not focus on fraud issues, but only on the more general concern with 
ensuring accuracy. A third purpose of the rule is to harmonize the 
requirements that can be made as part of the examination of use 
allegations made in post registration maintenance documents with the 
requirements currently authorized in the examination of use allegations 
made prior to registration.

Proposed Rule and Request for Comments

    A proposed rule was published in the Federal Register on July 12, 
2011, at 76 FR 40839, and in the Official Gazette on August 9, 2011. 
The USPTO received comments from six intellectual property 
organizations and four attorneys and/or law firms. These comments are 
posted on the USPTO's Web site at https://www.uspto.gov/trademarks/law/comments_requirements_for_specimens_or_evidence.jsp, and are 
addressed below.
    References below to ``the Act,'' ``the Trademark Act,'' or ``the 
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., 
as amended. References to ``TMEP'' or ``Trademark Manual of Examining 
Procedure'' refer to the 8th edition, October 2011.

General Comments

    Comment: Five commenters expressed support of the USPTO's efforts 
to ensure the accuracy of the trademark register but expressed concern 
regarding the lack of more specific criteria signaling when and to what 
extent an owner might expect a request for additional evidence, 
specimens, or information under the rule changes. Two commenters 
speculated that the only way an owner might mitigate these concerns 
would be to preemptively submit additional specimens in all filings; 
and another commenter noted that, without further guidelines, the rules 
could be implemented to create an unfair burden on certain trademark 
owners.
    Response: The USPTO appreciates the commenters' support of the 
general objective of the rule changes, namely, requiring additional 
evidence or specimens to allow the USPTO to assess the accuracy and 
integrity of the register. The USPTO initially intends to accomplish 
this objective by conducting a pilot in which approximately 500 
trademark registrations for which Section 8 or 71 affidavits are being 
filed will be randomly selected to receive an Office action requiring 
proof of use of the mark on two additional goods/services per class. If 
the owner is unable to provide the requested proof of the mark 
appearing on or in connection with the specified goods/services, those 
goods/services in question will be deleted from the registration, and 
the Section 8 or 71 affidavit will be subject to further review.
    Because the USPTO and stakeholders initially desire information 
about the level of accuracy of the register, rather than assuming that 
widespread inaccuracies exist, the rules permit the USPTO to randomly 
select for the pilot from among all types of registrations. This will 
ensure that the resulting assessment is not skewed by consideration of 
registrations with particular criteria, and that implementation of the 
rules does not create an unfair burden on specific types of trademark 
owners.
    Contrary to the suggestion by some commenters, owners need not 
submit additional specimens with all Section 8 or 71 affidavits. The 
approximately 500 registrations selected to participate in the two-year 
pilot represent less than 1% of the total number of affidavits usually 
processed during a typical six-month period. Moreover, owners of the 
registrations selected will be afforded the usual post registration 
response period to the Office action requiring additional information.
    To address concerns regarding the long-term impact of the rule 
changes beyond the pilot, the USPTO is amending the rulemaking to 
indicate that the language authorizing the USPTO to assess the accuracy 
and integrity of the register will expire two years after the effective 
date of the final rules on Section 8 and 71 affidavits. This ``sunset 
provision'' allows the USPTO the necessary authority to randomly sample 
Section 8 and 71 affidavits in order to conduct the pilot. Upon 
expiration of the two-year period, additional specimens and information 
may be requested when the USPTO deems it reasonably necessary for 
examination of a particular Section 8 or 71 affidavit. The USPTO is 
eliminating from the final rulemaking other provisions included in the 
proposed rule which would have authorized requests for additional 
specimens and information to assess the accuracy and integrity of the 
register both prior to registration and in connection with a Section 7 
amendment to a registration. In those contexts, the final rules provide 
that the USPTO may request additional specimens and information only 
when reasonably necessary for examination. Therefore, although the 
USPTO is sunsetting its authority to ask randomly for additional 
specimens and information, it is maintaining authority to probe 
accuracy when reasonably necessary for proper examination of a 
particular application or registration.
    Comment: Due to the potential burden on trademark owners and broad 
discretion given to examiners, three commenters suggested a targeted 
approach in determining when the USPTO would request additional 
specimens. One commenter requested a provision in the rules or TMEP 
that the USPTO only require additional

[[Page 30199]]

specimens on special occasions; for example, where identifications 
include a large number of, or significant disparity in, goods or 
services, and that the standards for requiring additional specimens for 
house marks be relaxed as compared to other identifications.
    Another commenter suggested that specific guidelines be enacted to 
direct the exercise of discretion in requesting additional specimens. 
For example, an examiner should be required to identify some other 
fact-based reason, beyond the number of goods or services in an 
application, to justify a request for additional specimens, such as 
where a Web site does not show use of a mark with all goods or 
services. Moreover, the TMEP should be revised to include specific 
guidelines for when an examiner can request additional specimens.
    A third commenter suggested that in order to achieve the desired 
result of a more accurate register, implementation of the proposed 
rules should be accompanied by guidance describing instances in which 
additional evidence can be required. The commenter suggested that 
applications and registrations be flagged for heightened scrutiny and 
additional specimens or evidence of use if they use class headings in 
the identification, include unrelated and unlikely goods within a 
class, use multiple languages on packaging, include a lengthy list of 
related goods or services, or encompass alphabetically arranged ``data 
dumps'' from the ID manual.
    Response: The USPTO determined that its objective of assessing the 
accuracy and integrity of the register could be better reached by 
randomly selecting the registrations chosen to participate in the pilot 
rather than targeting a specific subset of registrations. While the 
USPTO concurs that in the long term, a ``targeted'' approach may be 
appropriate, an initial assessment of a wide cross section of all types 
of registrations will best determine appropriate criteria for 
targeting. The limited nature of the pilot and ``sunset provision'' are 
geared to alleviate concerns regarding potential burdens to trademark 
owners. The USPTO has opted to initially request proof of use for two 
additional goods/services per class for registrations selected for the 
pilot. Thus, the potential burden will not be greater on trademark 
owners with particular types of registrations, including those for 
house marks or with lengthy identifications.
    Comment: One commenter requested clarification whether trademark 
owners would face additional fees and surcharges for supplemental 
filings required under the new rules. The commenter noted that it was 
unclear whether a response to a request for additional evidence must be 
completed according to the same timeline as other responses and if an 
owner would need to pay a deficiency surcharge for a deficiency that 
did not exist until the request.
    Response: No additional fees or surcharges will be required under 
the new rules. Owners must respond to an Office action requiring 
additional information or specimens within six months of the issuance 
date of the Office action, or before the end of the relevant filing 
period for the Section 8 or 71 affidavit, whichever is later (37 CFR 
2.163(b), 7.39(a)). Although such an Office action may address other 
items unrelated to the pilot program, and those other items may trigger 
a deficiency surcharge, a request under the new rules pertaining to the 
pilot would not be considered a deficiency requiring an additional fee.
    Comment: One commenter expressed that typical trademark file 
histories are ``too skimpy'' with respect to specimens. The commenter 
further explained that advances in technology, and the USPTO's 
information technology, have made it easier for trademark owners to 
submit photographs for specimen use. The commenter, therefore, 
suggested that specimens be required for each good or service, along 
with liberal correction of the specimen record. The commenter 
additionally expressed his preference for a date of use to be listed 
for every good and service so that priority of use is easier for the 
public to check.
    Response: The USPTO appreciates the commenter's support of its on-
line resources. In order to mitigate the potential burden on trademark 
owners, the USPTO has opted to initially request proof of use for only 
two additional goods/services per class from participants in the pilot. 
Failure to provide such proof may result in a further request for 
additional information or specimens. The results of the pilot will help 
the USPTO to assess the accuracy and integrity of the register and 
whether and to what extent it may be necessary to request additional 
information or specimens on a more routine basis to ensure the accuracy 
of a registration.
    Currently, the USPTO requires dates of use for each class of goods 
and services. There must be at least one specified item in each class 
to which the specified dates pertain (37 CFR 2.34(a)(1)(v), 2.76(c), 
2.88(c); TMEP section 903.08). It is longstanding Office practice not 
to require dates of use for each good or service since it would be 
cumbersome for applicants to designate the dates for each item 
individually (TMEP section 903.08).
    Comment: Another commenter stated that especially in cases where a 
lengthy identification triggers a requirement for additional 
information, examination of the accuracy of a claim of use should focus 
on ensuring the registration accurately reflects the goods or services 
for which the mark is used, based on all evidence that can be supplied, 
and not be an exercise designed to delete goods or services from 
registrations based on a ``hyper-technical'' analysis of specimens. 
Trademark owners should not lose rights in marks used in commerce 
because producing formal specimens can be burdensome, costly, and time-
consuming. Deleting such goods and services from a mark in use would 
detract from, rather than improve, the accuracy of the register.
    The commenter, therefore, suggested that the USPTO accept evidence 
of use that is reasonably sufficient to confirm the accuracy of the 
list, rather than determining if the evidence qualifies as a formal 
specimen. Acceptance of this evidence would be a practical way of 
determining that the claim of use is accurate without imposing an undue 
burden on trademark owners or an undue allocation of USPTO resources to 
the examination of additional specimens.
    Moreover, the commenter noted that the USPTO's examination of the 
additional evidence supplied in response to an information inquiry 
should apply a reasonable standard as to whether the mark on the 
specimen agrees with the drawing, consistent with recent TTAB decisions 
and the more forgiving standard applied post registration.
    A second commenter similarly proposed that a formal specimen is not 
necessary to ensure proper examination of claims of use and to assess 
the possibility of over-claiming. The commenter noted that goods and 
services should not necessarily be considered improperly included in a 
claim of use because specimens fail to satisfy rigorous formal 
requirements as to their sufficiency.
    Response: As noted above, in order to assess the accuracy and 
integrity of the register, the USPTO intends to conduct a pilot in 
which approximately 500 trademark registrations will be randomly 
selected to submit proof of use for only two additional goods/services 
per class in response to an Office action issued after a Section 8 or 
71 affidavit is reviewed by the USPTO.

[[Page 30200]]

Registrations will not be selected for the pilot program's additional 
inquiry based on either the length or content of the identification in 
the registration. Instead, the incomplete nature of a trademark owner's 
response to the initial request for additional information will 
determine whether further inquiry is necessary. The limited nature of 
the pilot, in terms of duration, number of registrations impacted, the 
random selection of registrations for participation, and the amount of 
additional proof or specimens required, is intended to alleviate 
concerns regarding the potential burden to trademark owners.
    The additional information or specimens will be reviewed according 
to the generally accepted standards for use in commerce. The USPTO 
finds no basis to establish a different, less formal, standard for use 
of the mark in commerce in the context of the pilot, and believes such 
a distinction would be a disservice to the public. Not only would a new 
standard for determining what constitutes acceptable use in commerce 
increase public confusion, but it would also call into question whether 
a mark is actually used with particular goods or services. The USPTO 
notes that there is a uniform standard for determining what constitutes 
an acceptable specimen both prior to and post registration.
    Comment: A comment noted that additional specimens or evidence of 
use should not be required to support identifications that appear in 
the USPTO ID Manual, even if the particular identification encompasses 
numerous products, such as ``cosmetics'' or ``furniture.'' Evidence of 
use of the mark on a single product should be sufficient to support 
inclusion of the phrase in the identification of goods or services.
    Response: In conducting the pilot to assess the accuracy and 
integrity of the register, the USPTO will request that pilot 
participants submit proof of use for only two additional goods/services 
per class, with each demonstrating use for a different good or service 
in the identification. Even if a good or service within an 
identification is broadly defined, the USPTO will only require one 
specimen or other proof to demonstrate use for that particular good or 
service.

Discussion of Rule Changes

    The USPTO is amending Sec. Sec.  2.34(a)(1)(iv), 2.56(a), 
2.76(b)(2), 2.86(a)(3), 2.86(b), and 2.88(b)(2) to indicate that the 
USPTO may, upon request, require more than one specimen, including more 
than one specimen per class, if the USPTO deems additional specimens 
reasonably necessary to examine the application or allegation of use. 
These revisions codify existing practice, where such additional 
specimens occasionally are requested under Sec.  2.61 as information or 
exhibits necessary to examination. The Trademark Act gives the Director 
discretion regarding the number of specimens to require (15 U.S.C. 
1051(a)(1), (d)(1)). The USPTO is additionally amending the final rule 
for Sec.  2.56(a) to substitute the wording ``or services'' for ``or in 
the sale or advertising of the services in commerce'' to be consistent 
with the language in Sec.  2.173(b)(3), and adding the wording ``as 
reasonably necessary to proper examination'' to be consistent with the 
language in Sec.  2.61(b).
    Comment: One commenter stated that requiring applicants and 
registrants to submit additional specimens is not burdensome, 
especially in comparison to the exclusive rights and evidentiary 
presumptions granted to trademark owners and the benefits of an 
accurate trademark register. The commenter further noted that in the 
digital age, the costs of obtaining and submitting additional specimens 
are negligible when the goods or services are being used in commerce as 
required. The commenter additionally stated that thorough training by 
the USPTO should mitigate concerns regarding the additional discretion 
given to examiners and describe with particularity the types of 
situations where additional specimens may be required. The commenter, 
therefore, expressed strong support for the rule changes because of the 
benefits obtained from a more accurate register and relatively small 
burdens on applicants and registrants. The commenter also noted that 
further study regarding the amount of ``deadwood'' on the U.S. 
trademark register would be valuable to all stakeholders in the 
trademark community.
    Response: The USPTO appreciates the commenter's support of the rule 
changes and agrees that the public will greatly benefit from an 
accurate trademark register. As the commenter suggests, the USPTO 
intends to continue to provide internal and external guidance to 
mitigate concerns regarding USPTO discretion and provide examples of 
when additional specimens may be required.
    The USPTO is amending Sec.  2.61(b) to indicate that accompanying 
affidavits or declarations may be required along with information or 
exhibits. The wording ``and such additional specimens'' is added to the 
final rule to explicitly provide for specimen requests. The previously 
proposed provision that a requirement for additional information may 
issue, for the USPTO to assess the accuracy and integrity of the 
register, is not included in the final rule because the USPTO's pilot 
program will focus exclusively on use allegations in post registration 
maintenance filings. The USPTO maintains its authority to probe 
accuracy when reasonably necessary for examination of a particular 
application.
    Comment: Citing TMEP section 904.01(a) and current Sec.  2.61(b), 
three commenters stated that in the context of pre-registration, 
examining attorneys already have authority to request additional 
specimens. Two commenters noted that it is unclear why the amendment to 
Sec.  2.61(b) is necessary since authority to request additional 
specimens is already given under the current rule. The third commenter 
suggested that further guidance on the use of this authority can be 
provided through examination guides, rather than rule changes. One of 
the commenters expressed a lack of support for the changes to 
Sec. Sec.  2.34, 2.56, 2.61, 2.76, 2.86, or 2.88.
    Response: Because the current rule on specimens refers to only one 
specimen per class and the current rule on information requirements 
does not explicitly refer to specimens, in revising the rules, the 
USPTO deems it appropriate to provide explicitly for such specimen 
requests. Specifically, the additional language allowing for 
``affidavits or declarations'' to be required codifies existing 
practice, where additional evidence is requested, and explicitly 
clarifies that the USPTO may verify information or exhibits, when 
needed.
    The additional previously proposed language allowing the USPTO to 
``assess the accuracy and integrity of the register'' was deleted and 
is not included in the final rule because the USPTO's pilot program 
will focus exclusively on use allegations in post registration 
maintenance filings. The USPTO maintains its authority to probe 
accuracy when reasonably necessary for examination of a particular 
application.
    Comment: A commenter expressed concern that while the goal of 
amending Sec.  2.61(b) may be to determine the extent to which over-
claiming exists pre-registration, the changes to the rule may impact 
domestic applicants more than Section 44 or 66 applicants, who are not 
required to submit specimens prior to registration.
    Response: Section 2.61(b) is used to require additional information 
and exhibits from all applicants prior to registration. Although it has

[[Page 30201]]

occasionally been used as a means for requiring additional specimens, 
it is more commonly used as a means for examining attorneys to request 
literature, exhibits, and general information concerning the nature of 
the mark in order to allow for proper examination. See TMEP section 
814. The additional previously proposed language allowing the USPTO to 
``assess the accuracy and integrity of the register'' was deleted and 
is not included in the final rule. The USPTO maintains its authority to 
probe accuracy when reasonably necessary for examination of a 
particular application. The USPTO will conduct its pilot to assess 
accuracy in connection with the filing of a Section 8 or 71 affidavit, 
since such filings are required of all trademark owners.
    The USPTO is amending Sec.  2.161(g) and Sec.  7.37(g) to indicate 
that the USPTO may require more than one specimen in connection with 
the examination of the affidavit or declaration of continued use. For 
example, additional specimens may be requested in a case to verify the 
accuracy and the nature of the use when the identification includes a 
large number of, or significant disparity in, goods or services. The 
Trademark Act gives the Director discretion regarding the number of 
specimens to require (15 U.S.C. 1058(b)(1)(C), 1141k(b)(1)(C)).
    The USPTO is adding Sec.  2.161(h) and Sec.  7.37(h) to provide 
that the USPTO may require such specimens, information, exhibits, and 
affidavits or declarations as the USPTO deems reasonably necessary to 
the proper examination of the affidavit or declaration of continued 
use, or for the USPTO to assess the accuracy and integrity of the 
register. These provisions are corollaries to Sec.  2.61(b), which 
currently allows the USPTO to require additional information or 
exhibits in connection with the examination of a pending application. 
These provisions also clarify that accompanying affidavits or 
declarations may be required. The wording ``and such additional 
specimens'' is added to the final rule to clarify that the standards 
applicable to Sec.  2.161(g) and Sec.  7.37(g) are contained in Sec.  
2.161(h) and Sec.  7.37(h). The provisions allowing the USPTO to assess 
the accuracy and integrity of the register will expire two years after 
the effective date of the final rule.
    Comment: Noting that currently there is not a counterpart to Sec.  
2.61(b) that would enable the USPTO to request additional specimens 
post registration, three commenters expressed support of implementing 
proposed Sec.  2.161(h) and Sec.  7.37(h) to the extent they conform to 
current Sec.  2.61(b). Two of the commenters further noted that claims 
of use, post registration, for owners of registrations under Sections 
44 and 66 should be examined under the same criteria applied to owners 
of use-based applications. One commenter further noted that they did 
not support the proposed changes to Sec.  2.161(g) and Sec.  7.37(g) 
since they did not conform to current Sec.  2.61(b).
    Response: The USPTO appreciates the commenters' support of the rule 
changes and agrees with the commenters regarding the importance of 
having post registration corollaries to Sec.  2.61(b). Just as Sec.  
2.61(b) was amended to clarify that accompanying affidavits or 
declarations may be required, this same clarification was added to 
Sec.  2.161(h) and Sec.  7.37(h) in order to explicitly provide for the 
USPTO to verify information or exhibits, when needed. Similarly, the 
amendments to Sec.  2.161(g) and Sec.  7.37(g) were made in order to 
provide for the USPTO to request additional specimens.
    The language in Sec.  2.161(h) and Sec.  7.37(h) allowing the USPTO 
to ``assess the accuracy and integrity of the register'' is for the 
limited purposes of the pilot explained above, and will expire two 
years after the effective date of the final rule. This ``sunset 
provision'' is intended to alleviate concerns regarding the burdens 
associated with discretionary requests for additional specimens and 
information to assess the accuracy and integrity of the register. The 
USPTO maintains its authority to probe accuracy when reasonably 
necessary for examination of a particular registration.
    The USPTO agrees with the commenters that post registration claims 
of use should be examined under the same criteria regardless of the 
initial filing basis. The USPTO, therefore, determined that the pilot 
assessing the accuracy and integrity of the register should be 
conducted with the filing of Section 8 or 71 affidavits, since such 
filings are required of all trademark owners.
    Comment: Noting that a registration could include many goods and 
services, one commenter emphasized that submitting many specimens could 
be time-consuming and burdensome.
    Response: As previously noted, the limited nature of the pilot and 
``sunset provision'' are geared to alleviate concerns regarding 
potential burdens to trademark owners. As proof of use of the mark on 
only two additional goods/services per class will be required of 
participants in the pilot, the potential burden will not be much 
greater on trademark owners with registrations for many goods or 
services. Failure to provide the requested proof may result in further 
requests for proof as to additional goods/services in that 
registration.
    Comment: Two commenters noted that prior to registration, if an 
applicant is unable to provide an acceptable specimen for a Section 
1(a) use-based application, the applicant has the option of amending 
the applicable goods or services to a Section 1(b) intent-to-use basis. 
The commenters proposed, with a third commenter, that if a trademark 
owner is faced with a requirement for additional specimens post 
registration, the USPTO should allow the owner to voluntarily delete 
the goods or services, as an alternative to providing the specimens, 
without incurring vulnerability as to the remaining goods or services. 
This should not be viewed as an admission that the goods or services 
were improperly claimed in the initial filing as there are a number of 
reasons why trademark owners may opt not to provide additional evidence 
of use.
    Similarly, one of the commenters noted that if goods or services 
are deleted from a registration following an information request, the 
remainder of the registration should not be vulnerable to challenge as 
to its validity. A commenter further stated that pre-registration for 
use-based applications, applicants should have the option of asserting 
a dual Section 1(b) basis for any goods or services subject to a 
requirement for additional specimens or evidence.
    Response: When a trademark owner files a Section 8 or 71 affidavit, 
the trademark owner is asked to specifically verify if the mark is in 
use in commerce on or in connection with all of the goods or services 
listed in the registration. If the mark is not in use with all of the 
goods or services, the owner is asked to identify the goods or services 
to be deleted from the registration. Therefore, if a trademark owner is 
not using the mark with all of the goods or services listed in a 
registration, and excusable nonuse is not claimed, the goods should be 
voluntarily deleted from the registration upon the filing of the 
Section 8 or 71 affidavit as required by the Trademark Act, prior to 
the USPTO's request for additional information or specimens upon review 
of the Section 8 or 71 affidavit. As a reminder, 18 U.S.C. 1001 and 37 
CFR 11.18 apply to submissions to the USPTO and impose an obligation of 
reasonable inquiry and truthfulness.
    If a registration is selected to participate in the pilot assessing 
the accuracy and integrity of the register, the trademark owner may at 
that point voluntarily delete goods or services

[[Page 30202]]

from its registration as an alternative to providing the additional 
information or specimens requested by the USPTO. Such a deletion will 
not trigger cancellation of the entire registration, but may subject 
the registration to a further information or specimen requirement by 
the USPTO to verify the accuracy of the remaining goods or services 
claimed in the registration. Although the pilot will not apply to 
applications, applicants always have the option of relying on both 
Sections 1(a) and 1(b) in the same application, though the applicant 
may not assert both bases for identical goods or services in the same 
application. See TMEP section 806.02(b).
    Comment: One comment noted that failure to provide requested 
information as to only a portion of the goods or services should not 
result in cancellation of the entire registration.
    Response: The USPTO agrees with this comment and notes that when a 
registration is selected to participate in the pilot and an Office 
action issues requiring additional evidence or specimens, a response 
must be filed within six months of the Office action, or before the end 
of the filing period for the Section 8 or 71 affidavit, whichever is 
later (37 CFR 2.163(b), 7.39(a)). If a response is filed but fails to 
include the required evidence or specimens, the USPTO will deem the 
Section 8 or 71 affidavit unacceptable as to the goods or services to 
which the requirement pertained and delete them from the registration. 
Such a response may also trigger a further requirement for proof of use 
as to some or all of the remaining goods/services. However, assuming 
the Section 8 or 71 affidavit is otherwise acceptable, and any 
requested proof of use as to remaining goods/services is satisfied, the 
remaining goods/services will be unaffected. By contrast, if no 
response whatsoever to the Office action is filed within the response 
period, and no time remains in the statutory filing period, the 
registration will be cancelled (37 CFR 2.163(c), 7.39(b)). Thus, absent 
other issues with the affidavit, the registration will not be cancelled 
unless the owner fails to respond to the Office action or is unable to 
demonstrate use for any of the remaining goods or services in the 
registration.
    Comment: Citing Sec.  2.161 and Sec.  7.37, an additional commenter 
indicated that the proposed rules providing for additional specimens 
could present an equal-protection issue due to their discretionary 
nature, noting that ``when requested by the Office'' is not a clear and 
definite standard.
    Response: The Trademark Act gives the Director discretion regarding 
the number of specimens to require (15 U.S.C. 1051(a)(1), (d)(1), 
1058(b)(1)(C), 1141k(b)(1)(C)). The revisions to Sec. Sec.  
2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), and 
2.88(b)(2) to indicate that the USPTO may, upon request, require more 
than one specimen, including more than one specimen per class, if the 
USPTO deems additional specimens reasonably necessary to examine the 
application or allegation of use, codify existing practice, where such 
additional specimens occasionally are requested under Sec.  2.61 as 
information or exhibits necessary to examination.
    The revisions to Sec.  2.161(g) and Sec.  7.37(g) to indicate that 
the USPTO may require more than one specimen in connection with the 
examination of an affidavit or declaration of continued use are 
corollaries to the above-referenced pre-registration procedures when 
additional specimens are necessary to verify the accuracy and nature of 
the use. The standards applicable to Sec.  2.161(g) and Sec.  7.37(g) 
can be found in Sec.  2.161(h) and Sec.  7.37(h). Both subsections have 
been revised to explicitly provide that the USPTO may require 
specimens, information, exhibits, and affidavits or declarations as 
``reasonably necessary'' for examination or ``to assess the accuracy 
and integrity of the register.'' Because these standards are not 
impermissible or arbitrary, there can be no equal-protection violation. 
Cf. In re Boulevard Entm't, Inc., 334 F.3d 1336, 1343, 67 USPQ2d 1475, 
1480 (Fed. Cir. 2003) (noting that no USPTO equal-protection violation 
could occur ``unless the agency acted pursuant to some impermissible or 
arbitrary standard'').
    Moreover, even regardless of standards, constitutional challenges 
have been rejected in the trademark-registration context where a 
determination not to register a mark does not foreclose use of that 
mark. See In re Mavety Media Grp. Ltd., 33 F.3d 1367, 1374, 31 USPQ2d 
1923, 1928-29 (Fed. Cir. 1994); In re McGinley, 660 F.2d 481, 484, 211 
USPQ 668, 672 (C.C.P.A. 1981).
    The USPTO is amending Sec.  2.173(b)(3) to clarify that where an 
amendment involves a change in the mark, a new specimen must be 
provided for each class in a multiple-class registration, and 
additional specimens may be required when necessary, and to add Sec.  
2.173(b)(4) to provide that the USPTO may require such specimens, 
information, exhibits, and affidavits or declarations as the USPTO 
deems reasonably necessary to the proper examination of the proposed 
amendment. The term ``specimens'' is added to Sec.  2.173(b)(4) to 
clarify that the standards applicable to Sec.  2.173(b)(4) are 
contained in Sec.  2.173(b)(3). The previously proposed provision that 
a requirement for additional information may issue, for the USPTO to 
assess the accuracy and integrity of the register, is not included in 
the final rule.
    Comment: Two commenters noted that because claims of use as to all 
goods and services are not at issue when a request for amendment of a 
registration is sought, they do not support the proposed changes to 
Sec.  2.173.
    Response: As claims of use as to all goods and services do not 
accompany amendments to registrations, the pilot to assess the accuracy 
and integrity of the register will be conducted with the filing of 
mandatory Section 8 or 71 affidavits and not optional Section 7 
amendments. The revisions to Sec.  2.173(b)(3) clarify that where an 
amendment involves a change in the mark, a new specimen must be 
provided for each class in a multiple-class registration. This will 
allow the USPTO to assess that the amended mark is being used on or in 
connection with each class of goods or services in the registration. 
The addition of Sec.  2.173(b)(4) similarly assists the USPTO by 
providing a means for additional information to be requested, as a post 
registration corollary to Sec.  2.61(b). The additional previously 
proposed language allowing the USPTO to ``assess the accuracy and 
integrity of the register'' was deleted and is not included in the 
final rule.

Overview of the Pilot

    As set forth above, the USPTO intends to conduct a two-year pilot 
program to verify the accuracy of post registration claims that a 
trademark is in use on particular goods/services. The USPTO will 
randomly select approximately 500 trademark registrations for which a 
Section 8 or 71 affidavit was filed and issue an Office action 
requiring proof of use of the mark on two additional goods/services per 
class. Although a declaration will be required to verify the proof of 
use, one declaration may support all the additional proof. The random 
selection will include all types of registrations and will represent 
less than 1% of the total number of affidavits usually processed during 
a typical six-month period.
    Owners of the registrations selected for the pilot will be afforded 
the usual post registration response period to the Office action 
requiring additional proof of use and an accompanying standard 
declaration. Specifically, a response will be due within six months of 
the Office

[[Page 30203]]

action, or before the end of the filing period for the Section 8 or 71 
affidavit, whichever is later (37 CFR 2.163(b), 7.39(a)). Specially 
trained senior attorneys will conduct the examination for the pilot, 
reviewing the proof of use according to the generally accepted 
standards for use in commerce. The assigned senior attorneys may 
address specific questions or concerns about particular cases. The 
USPTO also will establish a dedicated mailbox, TMPostRegPilot@uspto.gov 
for more general questions and concerns relating to the pilot.
    If a response is filed but fails to include the required evidence 
or specimens, the USPTO will deem the Section 8 or 71 affidavit 
unacceptable as to the goods or services to which the requirement 
pertained and delete them from the registration. Such a response may 
also trigger a further requirement for proof of use as to some or all 
of the remaining goods/services. However, assuming the Section 8 or 71 
affidavit is otherwise acceptable, and any requested proof of use as to 
remaining goods/services is satisfied, the remaining goods/services 
will be unaffected. By contrast, if no response to the Office action is 
filed within the response period, and no time remains in the statutory 
filing period, the registration will be cancelled (37 CFR 2.163(c), 
7.39(b)).
    After the conclusion of the pilot, the USPTO will share the results 
as a basis for further consideration and discussion of the level of 
accuracy of the register. The results of the pilot will help inform 
whether and to what extent it may be appropriate to request additional 
information or specimens on a more routine basis to ensure accuracy.

Rulemaking Requirements

    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Executive Order 13563: The Office has complied with Executive Order 
13563. Specifically, the Office has: (1) Used the best available 
techniques to quantify costs and benefits, and has considered values 
such as equity, fairness and distributive impacts; (2) provided the 
public with a meaningful opportunity to participate in the regulatory 
process, including soliciting the views of those likely affected prior 
to issuing a notice of proposed rulemaking, and provided on-line access 
to the rulemaking docket; (3) attempted to promote coordination, 
simplification and harmonization across government agencies and 
identified goals designed to promote innovation; (4) considered 
approaches that reduce burdens and maintain flexibility and freedom of 
choice for the public; and (5) ensured the objectivity of scientific 
and technological information and processes, to the extent applicable.
    Administrative Procedure Act: This rule merely involves rules of 
agency practice and procedure within the meaning of 5 U.S.C. 553(b)(A). 
See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-37 (Fed. Cir. 2008) 
(stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not 
require notice and comment rulemaking for ``interpretative rules, 
general statements of policy, or rules of agency organization, 
procedure, or practice'') (quoting 5 U.S.C. 553(b)(A)); Inova 
Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 2001) (rules 
for handling appeals were procedural where they did not change the 
substantive standard for reviewing claims); Bachow Commc'ns Inc. v. 
FCC, 237 F.3d 683, 690 (DC Cir. 2001) (rules governing an application 
process are procedural under the Administrative Procedure Act). 
Therefore, this rule may be adopted without prior notice and 
opportunity for public comment under 5 U.S.C. 553(b) and (c), or 
thirty-day advance publication under 5 U.S.C. 553(d).
    However, the USPTO chose to seek public comment before implementing 
the rule and is providing thirty-day advance publication notice.
    Regulatory Flexibility Act: The final rule involves rules of agency 
practice and procedure. As prior notice and an opportunity for public 
comment are not required pursuant to 5 U.S.C. 553 or any other law, 
neither a Regulatory Flexibility Act analysis nor a certification under 
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) is required. See 
5 U.S.C. 603.
    A Final Regulatory Flexibility Act Analysis (``FRFA'') of the final 
rule is not required; nevertheless, the USPTO has undertaken this FRFA 
to further describe the minimal effects on any small entities.

1. Description of the Reasons That Action by the Office Is Being 
Undertaken

    The USPTO is requiring: (1) Any specimens, information, exhibits, 
and affidavits or declarations deemed reasonably necessary to examine 
an affidavit or declaration of continued use in trademark cases; and 
(2) upon request, more than one specimen in connection with a use-based 
trademark application, an allegation of use, an amendment to a 
registered mark, or an affidavit or declaration of continued use in 
trademark cases.
    These revisions will facilitate the USPTO's ability to verify the 
accuracy of identifications of goods/services. Specimens of use in use-
based trademark applications illustrate how the applicant is using the 
proposed mark in commerce on particular goods/services identified in 
the application. Post registration affidavits or declarations of use 
and their accompanying specimens demonstrate a trademark owner's 
continued use of its mark in commerce for the goods/services in the 
registration.

2. Succinct Statement of the Objectives of, and Legal Basis for, the 
Final Rule

    The objective of the final rule is to facilitate the USPTO's 
ability to verify the accuracy of identifications of goods/services in 
trademark applications and registrations. The rule ensures that the 
USPTO may properly examine the nature and veracity of allegations of 
use made during the trademark application or post registration phase, 
and upon request, may require additional specimens or other information 
or exhibits, such as a photograph of the mark appearing on certain 
goods. Another purpose of the rule is to harmonize the requirements 
that can be made as part of the examination of use allegations made in 
post registration maintenance documents, which are currently more 
limited, with the requirements authorized in the examination of use 
allegations made prior to registration.
    The Trademark Act gives the Director of the USPTO discretion 
regarding the number of specimens to require (15 U.S.C. 1051(a)(1), 
(d)(1), 1058(b)(1)(C), 1141k(b)(1)(C)). Moreover, it requires 
applicants to comply with rules as prescribed by the Director (15 
U.S.C. 1051(a)(4), (b)(4)). Additionally, the Director and USPTO may 
establish regulations governing the conduct of proceedings in the 
Office (15 U.S.C. 1123, 35 U.S.C. 2(b)(2)(A)). The current Trademark 
Rules of Practice and the Rules of Practice for Filings Pursuant to the 
Madrid Protocol mandate the submission of one specimen per class in 
connection with use-related filings (37 CFR 2.34(a)(1)(iv), 2.56(a), 
2.76(b)(2), 2.86(a)(3), 2.86(b), 2.88(b)(2), 2.161(g), 7.37(g)). 
Similarly, the current rules require one specimen to be submitted in 
connection with a proposed amendment of a registered mark (37 CFR 
2.173(b)(3)). In addition, although the current Trademark Rules of 
Practice allow the USPTO to require additional information or exhibits 
deemed reasonably necessary to the examination of a pending application 
(37 CFR 2.61(b)), no counterpart rule exists in the post registration 
context to facilitate proper examination of an affidavit or

[[Page 30204]]

declaration of continued use or excusable nonuse.

3. Description and Estimate of the Number of Affected Small Entities

    The USPTO does not collect or maintain statistics in trademark 
cases on small versus large entity applicants, and this information 
would be required in order to estimate the number of small entities 
that would be affected by the final rule. However, the USPTO believes 
that the overall impact of the rule on applicants and registrants will 
be relatively minimal.
    The final rule applies to any entity filing a use-based trademark 
application and to any entity filing trademark registration maintenance 
filings or amendments. With respect to allegations of use in trademark 
applications, the rules merely codify existing practice, whereby the 
USPTO already occasionally requests additional specimens or other 
information under 37 CFR 2.61. Thus, because no change in practice will 
result from the rules in this regard, they will have no impact in the 
trademark application context.
    After registration, registrants must make periodic filings with the 
USPTO to maintain their registrations. A Section 8 or 71 affidavit of 
continued use is a sworn statement that the mark is in use in commerce, 
filed by the owner of a registration (15 U.S.C. 1058, 1141k). The 
purpose of the Section 8 or 71 affidavit is to facilitate the 
cancellation of registrations for marks no longer in use. With respect 
to post registration maintenance filings, the Office estimates that 
only a small subset of trademark owners will be required to provide 
more than one specimen, or information or exhibits in connection with a 
Section 8 or 71 affidavit. The USPTO is unable to estimate what subset 
of the owners will be small entities impacted by the rules. In Fiscal 
Year 2011, 114,808 Section 8 or 71 affidavits were filed.

4. Description of The Reporting, Recordkeeping, and Other Compliance 
Requirements of the Final Rule, Including an Estimate of the Classes of 
Small Entities Which Will Be Subject to the Requirement and the Type of 
Professional Skills Necessary for Preparation of the Report or Record

    The final rule imposes no new recordkeeping requirements on 
trademark applicants or registrants.
    Regarding compliance with the final rule, as an initial matter, the 
USPTO does not anticipate that the rule will have a disproportionate 
impact upon any particular class of small or large entities. Any entity 
that has a registered trademark could potentially be impacted by the 
rule.
    Based on additional comment from the proposed rule, the USPTO 
estimates that in those post registration cases where a requirement for 
additional information, exhibits, declarations, or specimens is issued, 
it will take one hour to comply.
    While the statement of use is a similar type of filing to those at 
issue in the final rules applied in the post registration context, as 
the statement of use involves providing one or more specimens of use 
and an accompanying declaration, the compliance time for the final 
rules should be less. Under the final rules applied in the post 
registration context, the type of fact gathering and review of the 
nature and extent of the use of the mark that underlies a statement of 
use will already have occurred. Compliance with the requirement will 
only necessitate gathering and submitting the evidence to demonstrate 
what has already been assessed.
    Assuming the mark is in use, as claimed, the compliance time 
involves the length of time to secure a specimen, exhibit (such as 
taking a digital photograph), information, or declaration, plus any 
time it takes an attorney to communicate with the client in order to 
obtain what is required and make the necessary filing with the USPTO. 
In reality, approximately one-third of applications are filed pro se. 
These applicants and registrants, therefore, will likely have a lower 
compliance time than the USPTO has estimated, which assumes the 
involvement of counsel. These rules do not mandate the use of counsel.
    The Office does not estimate any change in compliance cost 
associated with the final rules with respect to allegations of use in 
trademark applications, since the USPTO's current practice already 
allows for this. The rule change merely codifies existing practice.

5. Description of Any Significant Alternatives to the Final Rule Which 
Accomplish the Stated Objectives of Applicable Statutes and Which 
Minimize Any Significant Economic Impact of the Rule on Small Entities

    The USPTO has considered whether and how it is appropriate to 
reduce any burden on small businesses through increased flexibility. 
The following options have been considered, but rejected, by the USPTO 
as ineffective.
    The alternative of never requiring additional specimens or other 
information in connection with Section 8 or 71 affidavits or exempting 
small entities from such requirements would have a lesser economic 
impact on small entities, but would not accomplish the stated objective 
of verifying the accuracy of identifications of goods/services in 
trademark registrations. As set forth above, the USPTO will rely on the 
final rule to assess the accuracy of use allegations. This assessment 
may provide a better sense of whether significant problems may exist 
with the accuracy of identifications of goods and services. Thus, 
exempting small entities would prevent the potential consideration of 
all Section 8 or 71 affidavits for this purpose, and therefore, would 
not achieve the stated objective of verifying accuracy.
    The stated objective of the final rule also facilitates the 
cancellation of any registrations for marks that are no longer in use, 
the policy underlying the statutory requirement for Section 8 or 71 
affidavits. Exempting small entities from any possible scrutiny 
regarding use allegations would fail to reach non-use of marks by small 
entity owners, thereby failing to achieve the objective.
    Other options to potentially lessen the impact on small entities 
have been rejected as ineffective. For example, the USPTO deems 
unnecessary extended time periods for small entity compliance because 
there appears to be no reason that compliance with the requirements in 
the rules would be more time-consuming for small entities, and because 
the USPTO's standard time period for responding to trademark Office 
actions allows sufficient time regardless of small entity status.
    The USPTO deems any streamlined or simplified compliance mechanism 
for small entities unnecessary, given the ease of responding to 
trademark Office actions electronically. Thus, compliance will be as 
streamlined and simplified as possible for all affected entities. 
Moreover, where the objective is to verify the accuracy of a claim of 
use in an affidavit, the requirements of one or more additional 
examples of the manner of the claimed use, or of other information such 
as photographic proof already seem to be the least burdensome and 
complex way to achieve the objective. Additionally, the requirement for 
submissions in order to assess the accuracy and integrity of the 
register will expire two years from the effective date of the rule. 
Accordingly, these post registration requirements will not have a 
significant economic impact on small entities. Any more minimal 
requirement would not demonstrate use, and therefore, would not meet 
the objective to verify use claims.
    Use of performance rather than design standards is not applicable 
to the final rulemaking because the USPTO is not

[[Page 30205]]

issuing any sort of standard. Rather, the rules will require applicants 
and registrants to furnish evidence of use, rather than comply with a 
performance or design standard.
    Finally, with respect to allegations of use in trademark 
applications, the final rules merely codify existing practice, whereby 
the USPTO already occasionally requests additional specimens or other 
information under 37 CFR 2.61. Thus, because no change in practice 
would result from the rules in this regard, any different treatment of 
small entities in this context would fail to meet the stated objective 
and likely would generate concern and confusion about a change in 
practice.

6. Identification, to the Extent Practicable, of All Relevant Federal 
Rules Which May Duplicate, Overlap, or Conflict With the Final Rule

    The final rule will not duplicate, overlap, or conflict with any 
other Federal rules.
    Unfunded Mandates: The Unfunded Mandates Reform Act requires, at 2 
U.S.C. 1532, that agencies prepare an assessment of anticipated costs 
and benefits before issuing any rule that may result in expenditure by 
State, local, and tribal governments, in the aggregate, or by the 
private sector, of $100 million or more (adjusted annually for 
inflation) in any given year. This rule would have no such effect on 
State, local, and tribal governments or the private sector.
    Executive Order 13132: This rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Paperwork Reduction Act: This rule involves information collection 
requirements which are subject to review by the Office of Management 
and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 
3501 et seq.). An information collection request was submitted to OMB 
under control number 0651-0055 at the time of the Notice of Proposed 
Rulemaking, and a pre-approval was given. Since that time no 
substantive changes to the burden have been made. Additionally, the 
agency will follow up with a change worksheet submission to make all 
the necessary burden estimate adjustments.
    This rulemaking provides for the USPTO to require: (1) Any 
specimens, information, exhibits, and affidavits or declarations deemed 
reasonably necessary to examine an affidavit or declaration of 
continued use or excusable nonuse in trademark cases, or for the USPTO 
to assess the accuracy and integrity of the register; and (2) upon 
request, more than one specimen in connection with a use-based 
trademark application, an allegation of use, or an amendment to a 
registered mark.
    There is no fee impact for submission of specimens. Additional 
burden due to postage costs for paper submissions for the post-
registration Office actions is estimated at $90, for a total increase 
in fee burden by an estimated $90. The agency estimates the following 
overall impact on burden: An increase of responses of 500; an increase 
in burden hours of 485; and an increase in burden hour costs of 
$164,900.
    Comments were invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    In response to the first inquiry, whether the collection of 
information is necessary for proper performance of the functions of the 
agency, the USPTO received three comments.
    Comment: One comment noted that based on the U.S. trademark system, 
the commenter could understand the contents of the revision, but the 
commenter indicated that the revision may contradict the Trademark Law 
Treaty prohibition against submitting evidence of use with a renewal 
application.
    Response: Evidence of use, or excusable non-use, is not a 
requirement for renewal applications under Section 9, and therefore, 
the revision does not contradict the Trademark Law Treaty (15 U.S.C. 
1059). To renew a registration under Section 9, the owner must submit 
the requisite fee with the signed renewal form (15 U.S.C. 1059). 
Evidence of use, or excusable nonuse, is separately required under 
Sections 8 and 71 between the fifth and sixth year anniversaries after 
registration and every ten years after registration, or with payment of 
an additional fee, during the six-month grace period that follows (15 
U.S.C. 1058(a), 1141k(a)).
    Comment: Another commenter expressed that the collection of 
additional specimens would ensure a more accurate register and thus 
benefits the public and brand owners.
    Response: The USPTO appreciates the commenter's support of the rule 
changes and agrees with the commenter regarding the benefit of a more 
accurate register.
    Comment: A third commenter agreed that collecting information 
regarding the accuracy of the marks on the trademark register is a 
necessary and proper performance of the USPTO's functions. The 
commenter noted that an up-to-date register reflecting marks that are 
actually in use would benefit everyone. The commenter further stated 
that the USPTO should ensure that the information is gathered 
consistently and without singling out any particular classes of 
applications, registrations, or mark owners.
    Response: The USPTO appreciates the commenter's support of the 
information collection. In conducting the pilot, the USPTO will collect 
the information regarding the accuracy of marks on the register 
consistently, without singling out any particular classes of 
applications, registrations, or mark owners. The USPTO intends to 
ensure consistent information collection by having a small group of 
specially trained senior attorneys examine the registrations selected 
for participation in the pilot. As the USPTO also intends to randomly 
select the registrations examined in the pilot, no type of application, 
registration, or mark owner will be singled out.
    Regarding the accuracy of the agency's estimate of the burden, 
comments were received from three parties.
    Comment: One commenter noted that due to the limited nature of the 
rule changes, they will not affect the scope of pre-registration 
trademark searches; and costs will be incurred when attorneys submit 
the additional evidence required. The commenter additionally requested 
that foreign applicants be allowed to maintain broader identifications 
of goods and services when filing a new trademark application based on 
a home-country registration.
    Response: The rule changes codify current pre-registration 
practice. The USPTO's pilot program will be conducted post 
registration, and the limited nature of the pilot will alleviate the 
potential burden on trademark owners. The rule changes will not affect 
the USPTO's standards for determining the acceptability of 
identifications of goods and services, which are applied to all 
applicants and registrants.
    Comment: Another comment noted that the burden on applicants to 
produce additional specimens is not terribly significant in the age of 
electronic specimens and filings. The burden of producing additional 
specimens is far less than the burdens imposed on the public and 
trademark community from an inaccurate register. Any evidence required 
under the rule changes relates to something an

[[Page 30206]]

applicant or registrant should possess or easily document in carrying 
out existing duties of confirming that goods and services are currently 
in use.
    Response: The USPTO appreciates the commenter's support of the rule 
changes and concurs that the rule changes create minimal burdens on 
trademark owners.
    Comment: A commenter on the time burden agreed that the time to 
actually submit specimens or additional evidence will likely be an 
hour, but stated that the time involved in making the request to a 
client and reviewing the client's responses will be substantially 
greater. For mark owners and their counsel, compliance time with the 
additional requirements may depend on factors such as whether the 
client is foreign or domestic, the degree of explanation necessary for 
the client, and the length of the identification. The commenter noted 
that the USPTO may help alleviate the burden by requiring only one 
additional specimen or minimal additional information, and by foregoing 
the need for verifications of the specimens or other information.
    Response: The USPTO notes that the estimated time burden for 
Paperwork Reduction Act purposes is an average encompassing the 
response time for all trademark owners, taking into account that 
trademark owners comprise large and small entities, with and without 
counsel. The USPTO acknowledges that the compliance time for the pilot 
may be greater than the compliance time for a typical post registration 
response, and based on the commenter's feedback, the USPTO has 
increased the estimated burden time for submissions under the pilot to 
an hour. While the USPTO concurs with the commenter that compliance 
time may be greater for larger, represented entities, the average also 
encompasses pro se owners, for whom the compliance time will likely be 
lower than the USPTO has estimated. The USPTO also notes that as 
trademark owners are already required to ascertain whether a mark is 
currently in use with all the goods/services in connection with the 
filing of a Section 8 or 71 affidavit, any additional requirement to 
provide proof of such use with select goods/services should not be 
unduly burdensome.
    As an additional means of alleviating the potential burden to 
trademark owners, only approximately 500 registrations will be selected 
to participate in the pilot assessing the accuracy and integrity of the 
register. Moreover, only proof of use of two additional goods/services 
per class will be required of participants in the pilot. Although a 
declaration will be required to verify the proof of use, one 
declaration may support all the additional proof. Owners need not 
preemptively submit multiple specimens with all trademark filings since 
the approximately 500 registrations selected to participate in the 
pilot represent less than 1% of the total number of Section 8 and 71 
affidavits processed during a typical six-month period.
    In response to the third inquiry, whether there are ways to enhance 
the quality, utility, and clarity of the information to be collected, 
the USPTO received two comments.
    Comment: One commenter suggested that the USPTO could publish more 
guidance as to when specimens are required and the type of specimens 
that are generally acceptable. The commenter additionally noted that 
the USPTO should provide guidance to both applicants and examiners that 
specimens for goods that appear to be merely digital mock-ups may be 
insufficient.
    Response: The USPTO intends to provide additional guidance for 
those trademark owners chosen to participate in the pilot and continue 
its efforts to provide both internal and external guidance, through the 
TMEP and examination guides, regarding the general acceptability of 
specimens. It is long-standing Office policy that a submission that 
appears not to be actually used in commerce is unacceptable as a 
specimen. See, e.g., TMEP sections 904.03(i) and 904.04(a) regarding 
beta Web sites and printers proofs.
    Comment: Another comment stated that the USPTO should publicize the 
nature of the specimens and additional information that will be 
required to support requests for information under the rule changes. 
The commenter noted that loosening the restrictions on catalog 
submissions could assist mark owners requested to provide additional 
specimens. Moreover, the USPTO should clarify whether requests for 
additional information will apply to entire classes or specific goods 
or services within a class. If declarations will be required to support 
additional specimens, having a uniform format will help ensure higher-
quality submissions. Additionally, ensuring uniform levels of inquiry 
for specimens during prosecution and post registration, and publicizing 
them in exam guides or the TMEP, would further the goal of an accurate 
trademark register. Having a particular contact person, or dedicated 
mailbox, for issues that arise would ensure that practitioners and 
USPTO employees receive consistent guidance. Lastly, the USPTO should 
share any statistics kept on the success of the new rule--such as the 
length of descriptions routinely queried, percentage of applications or 
registrations queried, and statistics that suggest that ``deadwood'' on 
the register is an issue to be addressed.
    Response: As noted above, in order to assess the accuracy and 
integrity of the register, the USPTO intends to conduct a pilot in 
which approximately 500 trademark registrations will be selected to 
receive a requirement to submit proof of use for two additional goods/
services per class in response to an Office action issued after a 
Section 8 or 71 affidavit is reviewed by the USPTO. The additional 
proof will be reviewed according to the same general standards as 
specimens submitted with a Section 8 or 71 affidavit, with the standard 
Section 8 or 71 declaration language required to be submitted with the 
additional proof.
    In order to ensure uniformity within the pilot, a small group of 
specially trained senior attorneys will conduct the examination of the 
registrations selected for participation in the pilot. The assigned 
senior attorney handling a particular case may address specific 
questions or concerns about the case. As suggested by the commenter, 
the USPTO will establish a dedicated mailbox for more general questions 
and concerns relating to the pilot. Moreover, the USPTO will share the 
results of the pilot in the context of further consideration as to 
whether ``deadwood'' on the register is an issue.
    Regarding ways to minimize the burden of the collection of 
information to respondents, comments were received from two parties.
    Comment: A commenter proposed additional emphasis by the USPTO to 
educate applicants, in advance, regarding proper specimens and the 
difference between use-based and intent-to-use applications. The 
commenter also suggested adding information and warnings on the USPTO 
Web site and during the electronic application process explaining the 
types of specimens that may be acceptable. The commenter additionally 
expressed that the USPTO could suggest to applicants that they may be 
able to reduce the length of the application process by submitting 
additional specimens with their applications.
    Response: The USPTO appreciates the commenter's suggestions 
regarding ways to educate the public regarding the trademark process. 
The USPTO has developed a series of ``how-to'' videos covering 
important topics and critical application-filing and registration-

[[Page 30207]]

maintenance tips. One video entitled ``Before You File'' covers the 
different filing bases, while another video focuses exclusively on 
education about specimens. The videos can be accessed on the USPTO Web 
site at https://www.uspto.gov/trademarks/process/TMIN.jsp. The USPTO is 
continuously striving to improve its electronic systems and to provide 
helpful information and warnings to guide users throughout the 
trademark registration process, and provides a link to the 
instructional video accessed through the Trademark Electronic 
Application System (``TEAS'') explaining what constitutes an 
appropriate specimen for a good or service. While applicants are always 
welcome to submit additional specimens, the USPTO only requires one 
specimen per class, but agrees that by submitting additional specimens, 
applicants may in certain circumstances reduce the length of the 
application process by reducing the need for Office actions requesting 
acceptable specimens.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, Trademarks, International 
registration.

    For the reasons stated in the preamble and under the authority 
contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the USPTO 
amends parts 2 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority:  15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
2. Amend Sec.  2.34 by revising paragraph (a)(1)(iv) to read as 
follows:


Sec.  2.34  Bases for filing.

    (a) * * *
    (1) * * *
    (iv) One specimen per class showing how the applicant actually uses 
the mark in commerce. When requested by the Office, additional 
specimens must be provided.
* * * * *

0
3. Amend Sec.  2.56 by revising paragraph (a) to read as follows:


Sec.  2.56  Specimens.

    (a) An application under section 1(a) of the Act, an amendment to 
allege use under Sec.  2.76, and a statement of use under Sec.  2.88 
must each include one specimen per class showing the mark as used on or 
in connection with the goods or services. When requested by the Office 
as reasonably necessary to proper examination, additional specimens 
must be provided.
* * * * *

0
4. Amend Sec.  2.61 by revising paragraph (b) to read as follows:


Sec.  2.61  Action by examiner.

* * * * *
    (b) The Office may require the applicant to furnish such 
information, exhibits, affidavits or declarations, and such additional 
specimens as may be reasonably necessary to the proper examination of 
the application.
* * * * *

0
5. Amend Sec.  2.76 by revising paragraph (b)(2) to read as follows:


Sec.  2.76  Amendment to allege use.

* * * * *
    (b) * * *
    (2) One specimen per class showing the mark as actually used in 
commerce. When requested by the Office, additional specimens must be 
provided. See Sec.  2.56 for the requirements for specimens; and
* * * * *

0
6. Amend Sec.  2.86 by revising paragraphs (a)(3) and (b) to read as 
follows:


Sec.  2.86  Application may include multiple classes.

    (a) * * *
    (3) Include either dates of use (see Sec. Sec.  2.34(a)(1)(ii) and 
(iii)) and one specimen for each class, or a statement of a bona fide 
intention to use the mark in commerce on or in connection with all the 
goods or services specified in each class. When requested by the 
Office, additional specimens must be provided. The applicant may not 
claim both use in commerce and a bona fide intention to use the mark in 
commerce for the identical goods or services in one application.
    (b) An amendment to allege use under Sec.  2.76 or a statement of 
use under Sec.  2.88 must include, for each class, the required fee, 
dates of use, and one specimen. When requested by the Office, 
additional specimens must be provided. The applicant may not file the 
amendment to allege use or statement of use until the applicant has 
used the mark on all the goods or services, unless the applicant files 
a request to divide. See Sec.  2.87 for information regarding requests 
to divide.
* * * * *

0
7. Amend Sec.  2.88 by revising paragraph (b)(2) to read as follows:


Sec.  2.88  Filing statement of use after notice of allowance.

* * * * *
    (b) * * *
    (2) One specimen of the mark as actually used in commerce. When 
requested by the Office, additional specimens must be provided. See 
Sec.  2.56 for the requirements for specimens; and
* * * * *

0
8. Amend Sec.  2.161 by revising paragraph (g) introductory text and 
adding paragraph (h) to read as follows:


Sec.  2.161  Requirements for a complete affidavit or declaration of 
continued use or excusable nonuse.

* * * * *
    (g) Include one specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
Sec.  2.161(f)(2). When requested by the Office, additional specimens 
must be provided. The specimen must:
* * * * *
    (h) The Office may require the owner to furnish such information, 
exhibits, affidavits or declarations, and such additional specimens:
    (1) As may be reasonably necessary to the proper examination of the 
affidavit or declaration under section 8 of the Act; or
    (2) For the Office to assess the accuracy and integrity of the 
register.
    (3) The provisions of paragraph (h)(2) of this section will no 
longer be applied after June 21, 2014.

0
9. Amend Sec.  2.173 by revising paragraph (b)(3) and adding paragraph 
(b)(4) to read as follows:


Sec.  2.173  Amendment of registration.

* * * * *
    (b) * * *
    (3) If the amendment involves a change in the mark: one new 
specimen per class showing the mark as used on or in connection with 
the goods or services; an affidavit or declaration under Sec.  2.20 
stating that the specimen was in use in commerce at least as early as 
the filing date of the amendment; and a new drawing of the amended 
mark. When requested by the Office, additional specimens must be 
provided.

[[Page 30208]]

    (4) The Office may require the owner to furnish such specimens, 
information, exhibits, and affidavits or declarations as may be 
reasonably necessary to the proper examination of the amendment.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARKS

0
10. The authority citation for 37 CFR part 7 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
11. Amend Sec.  7.37 by revising paragraph (g) and adding paragraph (h) 
to read as follows:


Sec.  7.37  Requirements for a complete affidavit or declaration of 
continued use or excusable nonuse.

* * * * *
    (g) Include a specimen showing current use of the mark for each 
class of goods or services, unless excusable nonuse is claimed under 
Sec.  7.37(f)(2). When requested by the Office, additional specimens 
must be provided. The specimen must meet the requirements of Sec.  2.56 
of this chapter.
    (h) The Office may require the holder to furnish such information, 
exhibits, affidavits or declarations, and such additional specimens:
    (1) As may be reasonably necessary to the proper examination of the 
affidavit or declaration under section 71 of the Act; or
    (2) For the Office to assess the accuracy and integrity of the 
register.
    (3) The provisions of paragraph (h)(2) of this section will no 
longer be applied after June 21, 2014.

    Dated: May 15, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-12178 Filed 5-21-12; 8:45 am]
BILLING CODE 3510-16-P