Declarations of Use

Declarations of Use

 

Link to a PDF of the Proposed Changes

The USPTO is reformatting the declaration and signature portion of the forms for applications for registration, allegations of use, and affidavits or declarations of continued use or excusable nonuse (post-registration affidavits).  In addition, the updated forms include an explicit statement reiterating what is already required pursuant to 37 C.F.R. §11.18(b) of all signatories of documents submitted to the USPTO, namely, that “to the best of the [signatory’s] knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, . . . the allegations and other factual contentions [in the submission] have evidentiary support.”  37 C.F.R. §11.18(b).  The changes in format stem from the results of the USPTO’s post registration proof-of-use pilot program and subsequent outreach efforts made by the USPTO to solicit recommendations for assessing and promoting the accuracy and integrity of the Trademark Register going forward. 

A recommendation that resulted from these outreach efforts was that the USPTO consider increasing and strengthening the solemnity of the required verified statement regarding use of the mark in connection with the goods/services/collective membership organizations listed in the registration for which the post-registration affidavit was being submitted.  In response to this recommendation, the USPTO has evaluated the declaration language in the post-registration and other use-related forms.  The USPTO has concluded that the issue is not the solemnity of the declaration language (the signatory currently signs subject to criminal penalties under 18 U.S.C. § 1001), but instead that signatories may not be carefully reading and appreciating the significance of the attestations they are making.  The Office believes that the current formatting of the declaration paragraphs may not promote sufficient reflection on the language by the signatory before he or she signs a document.  Therefore, the USPTO has decided to reformat the verified statements made in connection with applications and allegations of use, in addition to those required for post-registration affidavits, to separate out the clauses to improve readability and to require the signatory to check a box next to each statement in order to validate an electronic submission. 

The USPTO believes that requiring signatories to focus on the declaration language best achieves the goal of increasing the signatory’s appreciation of the solemnity of the statements he or she is making.  Reformatting the statements, and requiring applicants and registrants to check a box indicating that he or she has read each statement in order to validate an electronic submission, will encourage accuracy in the identification of goods/services/collective membership organizations for which use or continued use is claimed.  The USPTO is keenly aware of the important purpose that an accurate Trademark Register serves for the public and strives to promote confidence in the Trademark Register as an accurate reflection of marks actually in use in the United States for the goods/services/collective membership organizations identified in the registrations.

Declarations of Use

Comments regarding proposed changes to declaration format

It appears that the USPTO wishes to increase the “solemnity” of the trademark application declarations in response to the Section 8 & 71 pilot project that revealed more than half of all renewals included at least partially overbroad statements of continued use. Considering that these declarations are already made under penalty of perjury, I am not sure how big an impact the increasing solemnity might have on the problem. ...more »

Submitted by (@erikpelton)

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Declarations of Use

IPO Comments on Declarations of Use

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 ...more »

Submitted by (@intellectualpropertyowners)

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Declarations of Use

Proposed teas declarations of use may have merit, but needs work

I like the idea of increased solemnity of declarations for new and infrequent filers, and particularly, for pro se applicants. The current teas formatting of the declaration averments are often lost on the declarant/applicant where diligent trademark counsel has not gone over the declaration statements prior to signing. Having an enhanced format (e.g., check the box of declaration statements format) could be a good ...more »

Submitted by (@kathleen.petrich)

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Declarations of Use

Wording open to interpretation

The proposed wording "formed after an inquiry reasonable under the circumstances" and "evidentiary support” is open to a wide range of interpretation. It is questionable what benefit is provided by its inclusion when it is so ambiguous. The phrasing "..specimens show the mark as used on or in connection with the goods/services…" may convey the incorrect impression that the specimen has to show use of the mark on or ...more »

Submitted by (@cdonahue)

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Declarations of Use

Plain Writing Act of 2010

I do not believe this proposed "reformatting" of the trademark declaration complies with the Plain Writing Act of 2010 (the Act) (Public Law 111-274), which the President signed into law on October 13, 2010. As defined in the Act, plain writing is writing that is clear, concise, well-organized, and consistent with other best practices appropriate to the subject or field and intended audience. See OMB Guidance of April ...more »

Submitted by (@allisonstricklandricketts)

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