USPTO Institutes Trademark Post-Registration Rule Changes and Reforms

Rebeccah Gan
February 15, 2017

In recent months, the USPTO has begun to institute significant changes to Post-Registration examination of declarations and attendant specimens. More particularly, the USPTO has mandated that USPTO examining attorneys (rather than traditional non-attorney post-registration specialists) will now review all maintenance documents filed in connection with registered extensions of protection (i.e., applications filed via the Madrid Protocol). In addition, effective March 21, 2017, USPTO rule changes will go into effect which give examining attorneys or post-registration specialists broad discretion to require additional specimens, information, exhibits, affidavits or declarations of use, as the USPTO deems reasonably necessary, to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/services identified in the registration. To avoid problems in responding to post-registration office actions requiring additional specimens and/or subsequent third-party collateral attacks on a registration, the registrant needs to carefully review and edit the list of goods and/or services in any maintenance or renewal filing and to make the filing as soon as possible to permit corrections before the due date.