On January 19, 2017, the USPTO published a final rule that would allow the USPTO to verify whether trademark holders are using a trademark with all of the goods and services listed in the trademark application or registration. However, the White House’s recent regulatory freeze calls into question whether and when the USPTO will implement the new rule.
Before the USPTO will issue a trademark registration, trademark applicants are required to submit proof that they using the mark in commerce. In addition, in order to maintain a trademark registration, trademark owners must periodically submit affidavits of continued use to the USPTO.
Under the new rule, when a trademark holder or applicant submits evidence of use in commerce, the USPTO “may require the owner to furnish such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary to the proper examination of the affidavit or declaration under section 8 of the Act or for the Office to assess and promote the accuracy and integrity of the register.” The USPTO explained the reasoning for the new rule as: “A register that does not accurately reflect marks in use in commerce in the United States for the goods/services identified in registrations imposes costs and burdens on the public.”
On February 10, 2017 the USPTO issued a notice stating that implementation of the new rule would be delayed to March 21, 2017 in accordance with the White House’s January 20, 2017 “Regulatory Freeze Pending Review” memorandum, which placed a 60-day freeze on implementation of all new regulations.