UNITED STATES PATENT AND TRADEMARK OFFICE ROUNDTABLE DISCUSSION DECEMBER 12, 2014 Post Registration Proof of Use Pilot Results and Beyond 1

Data Through October 15, 2014 Beginning in July 2012, 500 registrations filing Section 8 or 71 Declarations of Use were randomly selected to participate in “proof of use” pilot 97% (486) of registrations completed the pilot 51% (253) of registrations unable to verify previously claimed use  35% deleted goods/services queried under the pilot  16% failed to respond to pilot Office actions and were cancelled 81% (406) of registrations received notices of acceptance (includes notices issued after goods/services queried under the pilot were deleted) 2

Deletions/Cancellations/Acceptances by Registration Basis Basis for Registration Percentage of Registrations Selected for the Pilot Deleting Goods/Services Queried Under the Pilot Percentage of Registrations Selected for the Pilot Receiving Notices of Cancellation Percentage of Registrations Selected for the Pilot Receiving Notices of Acceptance (Including for a Narrowed Scope of Goods/Services) Section 1(a)27%18%80% Section 44(e)58%7%89% Section 66(a)59%14%82% Combined Section 1(a) and 44(e) 63%13%81% 3

Deletions/Cancellations/Acceptances by Registration Basis 4

Continuing the Dialogue: Ongoing Efforts? Suggestion 1: Create streamlined non-use expungement procedure (analogous to the Canadian expungement proceedings under Section 45 of the Trade-marks Act).  Third parties could request USPTO to require an owner to prove use of mark for protected goods/services.  If the owner complies, procedure completed.  If not, any goods/services for which the owner has not provided the requisite proof would be deleted from the registration. 5

Continuing the Dialogue: Ongoing Efforts? Suggestion 2(A): Require specimens for all goods/services listed in the registration when the first Section 8 or 71 declaration is filed; or Suggestion 2(B): Require specimens for all goods/services listed in the registration when the first Section 8 or 71 declaration is filed, and:  Require specimen to be a photo showing use of the mark in conjunction with claimed goods  Require advertisement for the services 6

Continuing the Dialogue: Ongoing Efforts? Suggestion 3: Increase the solemnity of the declaration.  For example, (1) require the trademark owner to check a box stating that he/she understands the seriousness of the oath; or  (2) require statements accompanying Section 8 and 71 declarations detailing steps taken to verify use with the goods/services in the registration. 7

Continuing the Dialogue: Ongoing Efforts? Suggestion 4: Conduct random audits of Section 8 and 71 declarations.  Require a Section 7 Request (along with the required fee) to delete any goods/services queried by the USPTO for which proof of use cannot be provided. 8

Continuing the Dialogue: Ongoing Efforts? Other suggestions/comments? 9