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Important Update Recent Change On Proof Of Use Rule

Important Update: Recent Change on Proof of Use Rule



28 February 20174 min read

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Important Update: Recent Change on Proof of Use Rule

What is the update?

On February 17, 2017, the USPTO implemented a new rule that requires you to provide additional information when you file a section 8 to prove that you are actually selling and/or providing all your listed goods and/or services. The new rule makes it easier for the USPTO to amend/cancel registrations that are not actually being used by their owners.

Well, what does that mean?

This means you will possibly have to submit specimens for every single item or service being sold. When filing a new application, you should make sure you can prove that you are currently selling or offering every single item/service listed in your application.

Why is the USPTO changing this rule?

In a two-year study conducted by the USPTO , the owners of approximately 50% the 500 randomly-chosen registrations, in which Section 8 or 71 declarations had been filed, were unable to verify that the involved marks were still in use on all the identified goods/services. The USPTO is attempting to combat registrants from unfairly holding a monopoly over certain areas when these marks are not even being used for these certain goods and services.

Bottom line-- Many registrations that were not actually still being used prevented other people from using them. In order to fix this serious issue, the USPTO implemented this rule.

Who does this affect?


However, this new USPTO rule will prove particularly burdensome for registrations obtained through the Madrid Protocol and foreign based applications since they usually throw everything and the kitchen sink into their identifications. (66a, 44e)

So how does this affect me?

So when filing your section 8 affidavit, it is important to cross-out the items you are no longer selling. Also when filing your initial application these days being succinct and accurate is better than throwing in a huge list of items/services.


The USPTO has implemented a new rule that requires additional information when filing a section 8 to prove actual sales. This makes it easier for the USPTO to amend/cancel registrations not being used. Registrants must submit specimens for each item or service being sold. The rule aims to prevent unfair monopolies and fix the issue of unused registrations. It affects everyone, especially registrations obtained through the Madrid Protocol and foreign-based applications. When filing, it is important to cross out items no longer sold and be succinct and accurate.

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