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ATLANTA CHICAGO DELAWARE INDIANA LOS ANGELES MICHIGAN MINNEAPOLIS OHIO WASHINGTON, DC
disclosed without the express written consent of the author or presenter. The information on this page is intended for informational purposes only and shall not be construed as legal
advice or a legal opinion of Barnes & Thornburg LLP.
Cleaning House at the Cleaning House at the Trademark Office: The New Trademark Office: The New
RulesRulesChanges in Requirements for Specimens Changes in Requirements for Specimens
and and for Affidavits or Declarations of for Affidavits or Declarations of
Continued Continued Use or Excusable Nonuse in Trademark Use or Excusable Nonuse in Trademark
New USPTO Rules for Specimens and Post-Registration Filings
New USPTO Rules for Specimens and Post-Registration Filings
• Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases Final Rule, 77 Fed. Reg. 30197-30208 (May 22, 2012)
• Effective: June 21, 2012 • Three Important Changes to Rules
• Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases Final Rule, 77 Fed. Reg. 30197-30208 (May 22, 2012)
• Effective: June 21, 2012 • Three Important Changes to Rules
• Examining Attorneys can require additional materials when examining Affidavits of Use in post-registration filings
• The Examining Attorney can require additional information as may be “reasonably necessary” to properly examine trademark applications and post-registration filings
• Examining Attorneys can require additional materials when examining Affidavits of Use in post-registration filings
• The Examining Attorney can require additional information as may be “reasonably necessary” to properly examine trademark applications and post-registration filings
• The USPTO can require an applicant or registrant to submit more than one specimen per class of goods/services in connection with:– a use-based trademark or service mark
application,– an allegation of use, or– an amendment to a registered mark
• The USPTO can require an applicant or registrant to submit more than one specimen per class of goods/services in connection with:– a use-based trademark or service mark
application,– an allegation of use, or– an amendment to a registered mark
• Important Deadline: – 6 months from issuance of Office Action, OR– End of filing period for Section 8 or 71 Affidavit
(Whichever is Later) to file required specimens
• Once 2-Year Pilot ends, additional specimens and information may be requested by USPTO whenever it deems it “reasonably necessary” for examination during application process or during post-registration filings
• Important Deadline: – 6 months from issuance of Office Action, OR– End of filing period for Section 8 or 71 Affidavit
(Whichever is Later) to file required specimens
• Once 2-Year Pilot ends, additional specimens and information may be requested by USPTO whenever it deems it “reasonably necessary” for examination during application process or during post-registration filings
• Generally, marks registered or renewed between December 21, 2001 and June 21, 2009
• June 21, 2003 – December 21, 2003: Subject to pilot program• December 22, 2003 – June 20, 2005: Possibly subject to pilot
program depending upon when renewal is filed• June 21, 2005 – December 20, 2005: Not subject to pilot program
(no filings due during pilot period)• December 21, 2005 – June 20, 2007: Possibly subject to pilot
program depending upon when renewal is filed • June 21, 2007 – December 21, 2007: Subject to pilot program • December 22, 2007 – June 21, 2009: Possibly subject to pilot
program depending upon when renewal is filed and if the pilot program is not extended under a new rulemaking
• No date restriction for any amendments to marks (possibly more than 1 specimen will be required)
• Generally, marks registered or renewed between December 21, 2001 and June 21, 2009
• June 21, 2003 – December 21, 2003: Subject to pilot program• December 22, 2003 – June 20, 2005: Possibly subject to pilot
program depending upon when renewal is filed• June 21, 2005 – December 20, 2005: Not subject to pilot program
(no filings due during pilot period)• December 21, 2005 – June 20, 2007: Possibly subject to pilot
program depending upon when renewal is filed • June 21, 2007 – December 21, 2007: Subject to pilot program • December 22, 2007 – June 21, 2009: Possibly subject to pilot
program depending upon when renewal is filed and if the pilot program is not extended under a new rulemaking
• No date restriction for any amendments to marks (possibly more than 1 specimen will be required)
3,341,191CLASS 9: full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files; electronic docking stations; stands specially designed for holding portable and handheld digital electronic devices; battery chargers; battery packs; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for portable and handheld digital electronic devices; headphones and earphones; stereo amplifier and speaker base stations; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; video viewers, namely video monitors for portable and handheld digital electronic devices; and computer software for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files; computer application software for recording and organizing calendars and schedules, to-do lists, and contact information; computer game software; and, computer software for clock and alarm clock functionality; carrying cases, all for use with portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files
CLASS 9: full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files; electronic docking stations; stands specially designed for holding portable and handheld digital electronic devices; battery chargers; battery packs; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for portable and handheld digital electronic devices; headphones and earphones; stereo amplifier and speaker base stations; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; video viewers, namely video monitors for portable and handheld digital electronic devices; and computer software for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files; computer application software for recording and organizing calendars and schedules, to-do lists, and contact information; computer game software; and, computer software for clock and alarm clock functionality; carrying cases, all for use with portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files