Intellectual Property Owners Association (IPO) submits these comments in response to the USPTO’s proposed “reformatting” of the declaration and signature portion of the applications for registration, allegations of use, and post-registration affidavits or declarations of continued use or excusable non-use.
Based on past roundtables and discussions with the Office, it is IPO’s understanding that the main impetus for “increasing and strengthening the solemnity of verified statements regarding use of a mark” rose out of the findings of the post-registration pilot program that only about half of those signing documents declaring a mark to be in use on goods/services could provide evidence of such use when asked to provide it. Specifically, we thought that revisions to the declaration would focus on ensuring that parties make accurate claims as to use of the mark. In general, IPO supports the Office’s efforts to ensure that claims of use are substantiated and valid. However, except as noted below, IPO does not believe that the reformatted declaration achieves this purpose, and thus does not support the proposed changes.
Support: We agree that separating the individual statements in the existing declaration might help signers appreciate the solemnity of the declaration. We do not object to stating these as separate statements or to having the signer check a box pertaining to each individual statement.
1. As drafted, the form directs signers to “[r]ead all of the statements below and check the boxes next to each before signing.” Simply checking the box does not ensure the accuracy of the statements. Instead, signers should be instructed to check the box next to each statement only if the statement is true, and to sign the declaration only if all statements are true.
2. Rather than focusing the signer in any practical or direct fashion on the need to be accurate in the claims of use of the mark on goods/services, the new declaration imports a certification from another section of the federal regulations. Title 37 of C.F.R. §§ 11.18(b),) (b)(2) & (b)(2)(iii) states that “[b]y presenting to the Office . . . any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that-- [t]o the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances, . . . [t]he allegations and other factual contentions have evidentiary support.” Although this certification applies to all papers presented to the Office, and thus pertains to claims of use in a broader sense, the regulatory language does not specifically reference claims of use. As such it is not likely to signal anything more to signers about the need to ensure that claims of use are accurate than the existing declaration does. For these reasons, IPO does not support the proposed declaration “reformatting.”
IPO’s trademark practitioners advise trademark applicants and registrants on a daily basis about the importance of ensuring that the documents they sign are accurate. Based on this experience, we believe that engaging practicing attorneys in the process of revising the declaration would be beneficial and lead to a product that would better address the problem that the changes seek to address. We would appreciate and look forward to the opportunity to participate in such an effort.