WORLD TRADE ORGANIZATION  
ORGANISATION MONDIALE DU COMMERCE  
ORGANIZACIÓN MUNDIAL DEL COMERCIO   
IP/N/1/USA/G/2 
IP/N/1/USA/T/6 17 August de 2012 
 
 
(12-4487) 
Council for Trade-Related Aspects  of Intellectual Property Rights Original:   English/ 
 anglais/  inglés 
 
 
MAIN DEDICATED INTELLECTUAL PR OPERTY LAWS AND REGULATIONS 
NOTIFIED UNDER ARTICLE 63.2 OF THE AGREEMENT 
 
UNITED STATES 
 
 The present document reproduces the text
1 of the Regulation on Changes in Requirements for 
Specimens and for Affidavits or Declarations of  Continued Use or Excusable Nonuse in Trademark 
Cases, which entered into force on 21 June 2012,  as notified by the United States on 20 June 2012 
under Article 63.2 of the Agreemen t (see document IP/N/1/USA/5). 
 
Conseil des aspects des droits de propriété intellectuelle qui touchent au commerce 
 
PRINCIPALES LOIS ET RÉGLEMENTATIONS CONSACRÉES À 
LA PROPRIÉTÉ INTELLECTUELLE NOTIFIÉES AU TITRE 
DE L'ARTICLE 63:2 DE L'ACCORD 
 
ÉTATS-UNIS 
 
 Le présent document contient le texte
1 du Règlement portant modi fication des dispositions 
exigeant la présentation d'échantillons et d'attestati ons ou déclarations d'utilisation continue ou de 
non-utilisation excusable dans les affaires concerna nt les marques de fabrique ou de commerce, qui 
est entré en vigueur le 21 juin 2012, et a été no tifié par les États-Unis le 20 juin 2012 au titre de 
l'article 63:2 de l'Accord (voir le document IP/N/1/USA/5). 
 
Consejo de los Aspectos de los Derechos de Propiedad 
Intelectual relacionados con el Comercio 
 
PRINCIPALES LEYES Y REGLAMENTOS DEDICADOS A LA 
PROPIEDAD INTELECTUAL NOTIFICADOS EN VIRTUD 
DEL PÁRRAFO 2 DEL ARTÍCULO 63 DEL ACUERDO 
 
ESTADOS UNIDOS 
 
 En el presente documento se reproduce el texto1 del Reglamento por el que se modifican las 
prescripciones relativas a los especímenes y a las declaraciones juradas o las declaraciones de 
continuación del uso o de falta de uso excusable en  los asuntos relativos a marcas de fabrica o de 
comercio, que entró en vigor el 21 de junio de 2012,  notificado por los Estados Unidos el 20 de junio 
de 2012 en virtud de lo dispuesto en el párr afo 2 del artículo 63 del Acuerdo (véase el 
documento IP/N/1/USA/5). 
                                                      
1 In English only./En anglais seulement./En inglés solamente.     
   IP/N/1/USA/G/2 
 IP/N/1/USA/T/6 
 Page 3 
 
 
  DEPARTMENT OF 
COMMERCE  
 
Patent and Trademark Office  
 
37 CFR Parts 2 and 7   
[Docket No. PTO–T–2010–
0073]   
RIN 0651–AC49   
 Changes in Requirements for 
Specimens and for Affidavits 
or Declarations of Continued 
Use or Excusable Nonuse in 
Trademark Cases     
AGENCY: United States 
Patent and Trademark Office, Commerce.   
 
ACTION: Final rule.   
 
SUMMARY: In order to help 
assess and ensure the accuracy of the trademark register, the 
United States Patent and 
Trademark Office ("USPTO") is revising the Trademark 
Rules of Practice and the Rules 
of Practice for Filings Pursuant to the Madrid Protocol to allow 
the USPTO to: Upon request, 
require any additional 
specimens, information, 
exhibits, and affidavits or declarations deemed 
reasonably necessary to 
examine a post registration affidavit or declaration of 
continued use or excusable 
nonuse in trademark cases, and for a two-year period, conduct 
a pilot program for the USPTO 
to assess the accuracy and integrity of the register; and 
upon request, require more 
than one specimen in connection with a usebased 
trademark application, an 
allegation of use, or an amendment to a registered 
mark. These revisions aim to 
ensure the ability to rely on the 
trademark register as an accurate reflection of marks 
that are actually in use in the 
United States for the goods/ 
services identified in the registration, and thereby reduce 
costs and burdens on the 
public.  
 
DATES: This rule is effective 
on June 21, 2012.  
 
FOR FURTHER 
INFORMATION CONTACT:  
Contact Cynthia C. Lynch, 
Office of the Deputy 
Commissioner for Trademark 
Examination Policy, by telephone at (571) 272–8742. 
 
SUPPLEMENTARY INFORMATION:  
 
General Information  
 
 To benefit the public, the 
USPTO is revising the Trademark Rules of Practice 
(37 CFR part 2) and the Rules 
of Practice for Filings Pursuant to the Madrid Protocol 
("Madrid Rules") (37 CFR 
part 7) to allow the USPTO to: (1) Upon request, require any 
specimens, information, 
exhibits, and affidavits or 
declarations deemed 
reasonably necessary to examine a post registration 
affidavit or declaration of 
continued use in trademark cases, and assess the accuracy 
and integrity of the register; 
and (2) upon request, require more than one specimen in 
connection with a usebased 
trademark application, an allegation of use, or an 
amendment to a registered 
mark.   The revisions will facilitate 
the USPTO's ability to verify 
the accuracy of identifications of goods/services. The 
accuracy of the trademark 
register as a reflection of marks 
that are actually in use in the United States for the 
goods/services identified in the 
registration serves an important 
purpose for the public. The public relies on the register to 
clear trademarks that they may 
wish to adopt or are already using. Where a party searching 
the register uncovers a similar 
mark, registered for goods or services that may result in 
confusion of consumers, that 
party may incur a variety of 
resulting costs and burdens, 
such as changing plans to 
avoid use of the mark, 
investigative costs to determine 
how the similar mark is actually used and assess the 
nature of any conflict, or 
cancellation proceedings or other litigation to resolve a 
dispute over the mark. If a 
registered mark is not actually in use in the United States, or 
is not in use on all the 
goods/services recited in the registration, these types of 
costs and burdens may be 
incurred unnecessarily. Thus, accuracy and reliability of the 
trademark register help avoid 
such needless costs and burdens, and thereby benefit 
the public.  
 Specimens of use in use-
based trademark applications 
illustrate how the applicant is using the proposed mark in 
commerce on particular 
goods/services identified in the application. Post registration 
affidavits or declarations of use 
and their accompanying specimens demonstrate a 
trademark owner's continued 
use of its mark in commerce for the goods/ services in the 
registration. As part of a pilot 
program to assess the accuracy of the identifications of 
goods/services of currently 
registered marks, the USPTO anticipates issuing 
requirements for additional 
proof of use in conjunction 
with the review of post-IP/N/1/USA/G/2 
IP/N/1/USA/T/6 Page 4 
 
 
  registration maintenance filings 
for approximately 500 
registrations.  
 
Background   
 
 On April 26, 2010, the 
USPTO and the George 
Washington University Law 
School hosted a roundtable discussion on the topic of "The 
Future of the Use- Based 
Register." Panelists and audience members explored 
the implications of the decision 
of the Court of Appeals for the 
Federal Circuit in In re Bose 
Corp., 580 F.3d 1240, 91 
USPQ2d 1938 (Fed. Cir. 
2009), clarifying the high 
standard for fraud on the USPTO in connection with 
trademark cases.  
 A "brainstorming" session at the conclusion of the 
roundtable resulted in a list of 
suggestions for how to improve the accuracy of identifications 
of goods/ services. These 
suggestions were not focused on fraud, as was the Bose 
decision, but rather on the 
accuracy of the register. Several participants made the 
suggestion that the USPTO 
require additional specimens, 
or a specific type of proof of 
use of a mark, for all, or more than one, of the identified 
goods/ services. Such 
additional requirements could help provide information 
regarding the extent to which a 
problem with inaccuracy exists on the register, and could help 
discourage inaccuracies.  
 The Trademark Act gives the Director discretion 
regarding the number of 
specimens to require (15 U.S.C. 1051(a)(1), (d)(1), 
1058(b)(1)(C), 
1141k(b)(1)(C)). Moreover, it requires applicants to comply 
with rules as prescribed by the 
Director (15 U.S.C. 1051(a)(4), 
(b)(4)). Additionally, the Director and USPTO may 
establish regulations governing 
the conduct of proceedings in 
the Office (15 U.S.C. 1123, 35 U.S.C. 2(b)(2)(A)). The current 
Trademark Rules of Practice 
and Madrid Rules mandate the submission of one specimen 
per class in connection with 
use-related filings (37 CFR 2.34(a)(1)(iv), 2.56(a), 
2.76(b)(2), 2.86(a)(3), 2.86(b), 
2.88(b)(2), 2.161(g), 7.37(g)). Similarly, the current rules 
require one specimen to be 
submitted in connection with 
an amendment to a registered 
mark (37 CFR 2.173(b)(3)). In addition, although the current 
Trademark Rules of Practice 
allow the USPTO to require additional information or 
exhibits deemed reasonably 
necessary to the examination of a pending application (37 CFR 
2.61(b)), no counterpart rule 
exists in the post registration context to facilitate proper 
examination of an affidavit or 
declaration of continued use or excusable non-use.  
 To ensure that the USPTO 
may properly examine affidavits or declarations, and 
the nature and veracity of the 
use claimed therein, additional 
specimens or other information 
or exhibits, such as a photograph of the mark 
appearing on certain goods, 
may be needed. Accompanying affidavits or declarations to 
verify information or exhibits 
may also be needed. One purpose of the final rule is to 
allow the USPTO to require 
trademark applicants or registrants to submit any 
additional specimens or other 
information, exhibits and affidavits or declarations 
reasonably necessary for 
proper examination. A second purpose of the rule is to allow 
the USPTO to conduct a 
limited duration post 
registration pilot program to verify the accuracy of claims 
that a trademark is in use on 
particular goods/ services, as a 
means to assess and improve the accuracy and integrity of 
the register. The rule does not 
focus on fraud issues, but only on the more general concern 
with ensuring accuracy. A third 
purpose of the rule is to harmonize the requirements 
that can be made as part of the 
examination of use allegations made in post registration 
maintenance documents with 
the requirements currently 
authorized in the examination of use allegations made prior to registration.  
 
Proposed Rule and Request 
for Comments  
 
 A proposed rule was published in the Federal 
Register on July 12, 2011, at 
76 FR 40839, and in the Official Gazette on 
August 9, 2011. The USPTO 
received comments from six intellectual property 
organizations and four 
attorneys and/or law firms. These comments are posted on 
the USPTO's Web site at http:// 
www.uspto.gov/trademarks/law
/comments _requirements _for_s
pecimens _or_evidence.jsp, and 
are addressed below.  
 References below to "the 
Act," "the Trademark Act," or "the statute" refer to the 
Trademark Act of 1946, 15 
U.S.C. 1051 et seq., as 
amended. References to 
"TMEP" or " Trademark 
Manual of Examining Procedure " refer to the 8th 
edition, October 2011.  
 
General Comments  
 
 Comment: Five 
commenters expressed support 
of the USPTO's efforts to 
ensure the accuracy of the 
trademark register but  IP/N/1/USA/G/2 
 IP/N/1/USA/T/6 
 Page 5 
 
 
  expressed concern regarding 
the lack of more specific 
criteria signaling when and to 
what extent an owner might expect a request for additional 
evidence, specimens, or 
information under the rule changes. Two commenters 
speculated that the only way an 
owner might mitigate these concerns would be to 
preemptively submit additional 
specimens in all filings; and another commenter noted that, 
without further guidelines, the 
rules could be implemented to 
create an unfair burden on 
certain trademark owners.  Response: The USPTO 
appreciates the commenters' 
support of the general objective of the rule changes, namely, 
requiring additional evidence 
or specimens to allow the USPTO to assess the accuracy 
and integrity of the register. 
The USPTO initially intends to accomplish this objective by 
conducting a pilot in which 
approximately 500 trademark registrations for which 
Section 8 or 71 affidavits are 
being filed will be randomly selected to receive an Office 
action requiring proof of use of 
the mark on two additional 
goods/services per class. If the 
owner is unable to provide the requested proof of the mark 
appearing on or in connection 
with the specified goods/services, those 
goods/services in question will 
be deleted from the registration, and the Section 8 
or 71 affidavit will be subject 
to further review.   Because the USPTO and 
stakeholders initially desire 
information about the level of accuracy of the register, rather 
than assuming that widespread 
inaccuracies exist, the rules permit the USPTO to randomly 
select for the pilot from among 
all types of registrations. This 
will ensure that the resulting assessment is not skewed by 
consideration of registrations 
with particular cr iteria, and that 
implementation of the rules does not create an unfair 
burden on specific types of 
trademark owners.   Contrary to the suggestion 
by some commenters, owners 
need not submit additional specimens with all Section 8 or 
71 affidavits. The 
approximately 500 registrations selected to 
participate in the two-year pilot 
represent less than 1% of the 
total number of affidavits 
usually processed during a typical six-month period. 
Moreover, owners of the 
registrations selected will be afforded the usual post 
registration response period to 
the Office action requiring additional information.  
 To address concerns 
regarding the long-term impact of the rule changes beyond the 
pilot, the USPTO is amending 
the rulemaking to indicate that the language authorizing the 
USPTO to assess the accuracy 
and integrity of the register will expire two years after the 
effective date of the final rules 
on Section 8 and 71 affidavits. 
This "sunset provision" allows 
the USPTO the necessary authority to randomly sample 
Section 8 and 71 affidavits in 
order to conduct the pilot. Upon expiration of the two-
year period, additional 
specimens and information may be requested when the 
USPTO deems it reasonably 
necessary for examination of a particular Section 8 or 71 
affidavit. The USPTO is 
eliminating from the final rulemaking other provisions 
included in the proposed rule 
which would have authorized requests for additional 
specimens and information to 
assess the accuracy and 
integrity of the register both prior to registration and in 
connection with a Section 7 
amendment to a registration. In 
those contexts, the final rules provide that the USPTO may 
request additional specimens 
and information only when reasonably necessary for 
examination. Therefore, 
although the USPTO is sunsetting its authority to ask 
randomly for additional 
specimens and information, it is maintaining authority to 
probe accuracy when 
reasonably necessary for 
proper examination of a 
particular application or registration.  
 Comment: 
Due to the 
potential burden on trademark owners and broad discretion 
given to examiners, three 
commenters suggested a targeted approach in 
determining when the USPTO 
would request additional specimens. One commenter 
requested a provision in the 
rules or TMEP that the USPTO only require additional 
specimens on special 
occasions; for example, where identifications include a large 
number of, or significant 
disparity in, goods or services, 
and that the standards for 
requiring additional specimens for house marks be relaxed as 
compared to other 
identifications.   Another commenter 
suggested that specific 
guidelines be enacted to direct the exercise of discretion in 
requesting additional 
specimens. For example, an examiner should be required to 
identify some other fact-based 
reason, beyond the number of goods or services in an 
application, to justify a request 
for additional specimens, such as where a Web site does not 
show use of a mark with all 
goods or services. Moreover, 
the TMEP should be revised to IP/N/1/USA/G/2 
IP/N/1/USA/T/6 Page 6 
 
 
  include specific guidelines for 
when an examiner can request 
additional specimens.  
 A third commenter suggested that in order to 
achieve the desired result of a 
more accurate register, implementation of the 
proposed rules should be 
accompanied by guidance describing instances in which 
additional evidence can be 
required. The commenter suggested that applications and 
registrations be flagged for 
heightened scrutiny and 
additional specimens or 
evidence of use if they use class headings in the 
identification, include 
unrelated and unlikely goods within a class, use multiple 
languages on packaging, 
include a lengthy list of related goods or services, or 
encompass alphabetically 
arranged "data dumps" from the ID manual.  
 Response: The USPTO 
determined that its objective of assessing the accuracy and 
integrity of the register could 
be better reached by randomly selecting the registrations 
chosen to participate in the 
pilot rather than targeting a 
specific subset of registrations. 
While the USPTO concurs that in the long term, a "targeted" 
approach may be appropriate, 
an initial assessment of a wide cross section of all types of 
registrations will best 
determine appropriate criteria for targeting. The limited 
nature of the pilot and "sunset 
provision" are geared to alleviate concerns regarding 
potential burdens to trademark 
owners. The USPTO has opted to initially request proof of use 
for two additional goods/ 
services per class for registrations selected for the 
pilot. Thus, the potential 
burden will not be greater on 
trademark owners with particular types of 
registrations, including those 
for house marks or with 
lengthy identifications.  Comment: One commenter 
requested clarification whether 
trademark owners would face additional fees and surcharges 
for supplemental filings 
required under the new rules. The commenter noted that it 
was unclear whether a response 
to a request for additional evidence must be completed 
according to the same timeline 
as other responses and if an 
owner would need to pay a 
deficiency surcharge for a deficiency that did not exist 
until the request.  
 Response: No additional 
fees or surcharges will be 
required under the new rules. 
Owners must respond to an Office action requiring 
additional information or 
specimens within six months of the issuance date of the Office 
action, or before the end of the 
relevant filing period for the Section 8 or 71 affidavit, 
whichever is later (37 CFR 
2.163(b), 7.39(a)). Although such an Office action may 
address other items unrelated 
to the pilot program, and those 
other items may trigger a 
deficiency surcharge, a request under the new rules pertaining 
to the pilot would not be 
considered a deficiency requiring an additional fee. 
 Comment: One commenter 
expressed that typical trademark file histories are 
"too skimpy" with respect to 
specimens. The commenter further explained that advances 
in technology, and the 
USPTO's information technology, have made it easier 
for trademark owners to submit 
photographs for specimen use. The commenter, therefore, 
suggested that specimens be 
required for each good or 
service, along with liberal correction of the specimen 
record. The commenter 
additionally expressed his 
preference for a date of use to be listed for every good and 
service so that priority of use is 
easier for the public to check.  Response: The USPTO 
appreciates the commenter's 
support of its on-line resources. 
In order to mitigate the 
potential burden on trademark 
owners, the USPTO has opted to initially request proof of use 
for only two additional 
goods/services per class from 
participants in the pilot. Failure 
to provide such proof may result in a further request for 
additional information or 
specimens. The results of the pilot will help the USPTO to 
assess the accuracy and 
integrity of the register and whether and to what extent it 
may be necessary to request 
additional information or specimens on a more routine 
basis to ensure the accuracy of 
a registration.   Currently, the USPTO 
requires dates of use for each 
class of goods and services. 
There must be at least one 
specified item in each class to 
which the specified dates 
pertain (37 CFR 2.34(a)(1)(v), 
2.76(c), 2.88(c); TMEP section 903.08). It is 
longstanding Office practice 
not to require dates of use for each good or service since it 
would be cumbersome for 
applicants to designate the dates for each item individually 
(TMEP section 903.08). 
 Comment: Another 
commenter stated that 
especially in cases where a 
lengthy identification triggers a requirement for additional 
information, examination of 
the accuracy of a claim of use should focus on ensuring the 
registration accurately reflects 
the goods or services for which 
the mark is used, based on all  IP/N/1/USA/G/2 
 IP/N/1/USA/T/6 
 Page 7 
 
 
  evidence that can be supplied, 
and not be an exercise 
designed to delete goods or 
services from registrations based on a "hyper-technical" 
analysis of specimens. 
Trademark owners should not lose rights in marks used in 
commerce because producing 
formal specimens can be burdensome, costly, and time-
consuming. Deleting such 
goods and services from a mark in use would detract 
from, rather than improve, the 
accuracy of the register.  
 The commenter, therefore, 
suggested that the USPTO accept evidence of use that is 
reasonably sufficient to 
confirm the accu racy of the 
list, rather than determining if 
the evidence qualifies as a 
formal specimen. Acceptance of this evidence would be a 
practical way of determining 
that the claim of use is accurate without imposing an undue 
burden on trademark owners or 
an undue allocation of USPTO resources to the examination of 
additional specimens. 
 Moreover, the commenter noted that the USPTO's 
examination of the additional 
evidence supplied in response 
to an information inquiry 
should apply a reasonable standard as to whether the 
mark on the specimen agrees 
with the drawin g, consistent 
with recent TTAB decisions 
and the more forgiving 
standard applied post registration.  
 A second commenter 
similarly proposed that a formal specimen is not 
necessary to ensure proper 
examination of claims of use and to assess the possibility of 
over-claiming. The commenter 
noted that goods and services should not necessarily be 
considered improperly 
included in a claim of use 
because specimens fail to satisfy rigorous formal 
requirements as to their 
sufficiency.  
 Response: As noted above, 
in order to assess the accuracy 
and integrity of the register, the 
USPTO intends to conduct a pilot in which approximately 
500 trademark registrations 
will be randomly selected to submit proof of use for only 
two additional goods/ services 
per class in response to an Office action issued after a 
Section 8 or 71 affidavit is 
reviewed by the USPTO. 
Registrations will not be 
selected for the pilot program's additional inquiry based on 
either the length or content of 
the identification in the registration. Instead, the 
incomplete nature of a 
trademark owner's response to the initial request for additional 
information will determine 
whether further inquiry is necessary. The limited nature 
of the pilot, in terms of 
duration, number of registrations impacted, the 
random selection of 
registrations for participation, and the amount of additional 
proof or specimens required, is 
intended to alleviate concerns 
regarding the potential burden 
to trademark owners.   The additional information 
or specimens will be reviewed 
according to the generally accepted standards for use in 
commerce. The USPTO finds 
no basis to establish a different, less formal, standard for use of 
the mark in commerce in the 
context of the pilot, and believes such a distinction 
would be a disservice to the 
public. Not only would a new standard for determining what 
constitutes acceptable use in 
commerce increase public confusion, but it would also 
call into question whether a 
mark is actually used with 
particular goods or services. The USPTO notes that there is 
a uniform standard for 
determining what constitutes 
an acceptable specimen both prior to and post registration. 
 Comment: A comment 
noted that additional specimens or evidence of use should not 
be required to support 
identifications that appear in the USPTO ID Manual, even if 
the particular identification 
encompasses numerous 
products, such as "cosmetics" 
or "furniture." Evidence of use 
of the mark on a single product 
should be sufficient to support 
inclusion of the phrase in the identification of goods or 
services.  
 Response: In conducting 
the pilot to assess the accuracy 
and integrity of the register, the 
USPTO will request that pilot participants submit proof of 
use for only two additional 
goods/services pe r class, with 
each demonstrating use for a 
different good or service in the 
identification. Even if a good or service within an 
identification is broadly 
defined, the USPTO will only require one specimen or other 
proof to demonstrate use for 
that particular good or service.  
 
Discussion of Rule Changes  
 
 The USPTO is amending 
§§ 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), 
and 2.88(b)(2) to indicate that 
the USPTO may, upon request, require more than one 
specimen, including more than 
one specimen per class, if the USPTO deems additional 
specimens reasonably 
necessary to examine the application or allegation of use. 
These revisions codify existing 
practice, where such additional specimens occasionally are 
requested under § 2.61 as 
information or exhibits 
necessary to examination. The IP/N/1/USA/G/2 
IP/N/1/USA/T/6 Page 8 
 
 
  Trademark Act gives the 
Director discretion regarding 
the number of specimens to 
require (15 U.S.C. 1051(a)(1), (d)(1)). The USPTO is 
additionally amending the final 
rule for § 2.56(a) to substitute the wording "or services" for 
"or in the sale or advertising of 
the services in commerce" to be consistent with the language 
in § 2.173(b)(3), and adding 
the wording "as reasonably necessary to proper 
examination" to be consistent 
with the language in § 2.61(b). 
 Comment: One commenter 
stated that requiring applicants and registrants to submit 
additional specimens is not 
burdensome, especially in comparison to the exclusive 
rights and evidentiary 
presumptions granted to trademark owners and the 
benefits of an accurate 
trademark register. The commenter further noted that 
in the digital age, the costs of 
obtaining and submitting additional specimens are 
negligible when the goods or 
services are being used in commerce as required. The 
commenter additionally stated 
that thorough training by the 
USPTO should mitigate 
concerns regarding the additional discretion given to 
examiners and describe with 
particularity the types of situations where additional 
specimens may be required. 
The commenter, therefore, expressed strong support for 
the rule changes because of the 
benefits obtained from a more accurate register and relatively 
small burdens on applicants 
and registrants. The commenter also noted that further study 
regarding the amount of 
"deadwood" on the U.S. trademark register would be 
valuable to all stakeholders in 
the trademark community.   Response: The USPTO 
appreciates the commenter's 
support of the rule changes and 
agrees that the public will greatly benefit from an 
accurate trademark register. As 
the commenter suggests, the USPTO intends to continue to 
provide internal and external 
guidance to mitigate concerns regarding USPTO discretion 
and provide examples of when 
additional specimens may be required.  
 The USPTO is amending 
§ 2.61(b) to indicate that 
accompanying affidavits or 
declarations may be required along with information or 
exhibits. The wording "and 
such additional specimens" is added to the final rule to 
explicitly provide for specimen 
requests. The previously proposed provision that a 
requirement for additional 
information may issue, for the USPTO to assess the accuracy 
and integrity of the register, is 
not included in the final rule because the USPTO's pilot 
program will focus exclusively 
on use allegations in post registration maintenance 
filings. The USPTO maintains 
its authority to probe accuracy 
when reasonably necessary for 
examination of a particular application.  
 Comment: Citing TMEP 
section 904.01(a) and current § 2.61(b), three commenters 
stated that in the context of 
pre-registration, examining attorneys already have 
authority to request additional 
specimens. Two commenters noted that it is unclear why the 
amendment to § 2.61(b) is 
necessary since authority to request additional specimens is 
already given under the current 
rule. The third commenter suggested that further guidance 
on the use of this authority can 
be provided through 
examination guides, rather than rule changes. One of the 
commenters expressed a lack 
of support for the changes to 
§§ 2.34, 2.56, 2.61, 2.76, 2.86, or 2.88.  
 Response: Because the 
current rule on specimens refers to only one specimen per 
class and the current rule on 
information requirements does not explicitly refer to 
specimens, in revising the 
rules, the USPTO deems it appropriate to provide 
explicitly for such specimen 
requests. Specifically, the 
additional language allowing 
for "affidavits or declarations" 
to be required codifies existing 
practice, where additional 
evidence is requested, and explicitly clarifies that the 
USPTO may verify 
information or exhibits, when needed.  
 The additional previously 
proposed language allowing the USPTO to "assess the 
accuracy and integrity of the 
register" was deleted and is not included in the final rule 
because the USPTO's pilot 
program will focus exclusively on use allegations in post 
registration maintenance 
filings. The USPTO maintains 
its authority to probe accuracy 
when reasonably necessary for examination of a particular 
application.  
 Comment: A commenter 
expressed concern that while 
the goal of amending § 2.61(b) 
may be to determine the extent to which over-claiming exists 
preregistration, the changes to 
the rule may impact domestic applicants more than 
Section 44 or 66 applicants, 
who are not required to submit specimens prior to registration.  
 Response: Section 2.61(b) 
is used to require additional information and exhibits from 
all applicants prior to 
registration. Although it has 
occasionally been used as a  IP/N/1/USA/G/2 
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  means for requiring additional 
specimens, it is more 
commonly used as a means for 
examining attorneys to request literature, exhibits, and general 
information concerning the 
nature of the mark in order to allow for proper examination. 
See TMEP section 814. The 
additional previously proposed language allowing the USPTO 
to "assess the accuracy and 
integrity of the register" was deleted and is not included in 
the final rule. The USPTO 
maintains its authority to probe 
accuracy when reasonably 
necessary for examination of a particular application. The 
USPTO will conduct its pilot 
to assess accuracy in connection with the filing of a 
Section 8 or 71 affidavit, since 
such filings are required of all trademark owners.  
 The USPTO is amending 
§ 2.161(g) and § 7.37(g) to indicate that the USPTO may 
require more than one 
specimen in connection with the examination of the affidavit 
or declaration of continued use. 
For example, additional specimens may be requested in 
a case to verify the accuracy 
and the nature of the use when 
the identification includes a 
large number of, or significant disparity in, goods or services. 
The Trademark Act gives the 
Director discretion regarding the number of specimens to 
require (15 U.S.C. 
1058(b)(1)(C), 1141k(b)(1)(C)).  
 The USPTO is adding 
§ 2.161(h) and § 7.37(h) to provide that the USPTO may 
require such specimens, 
information, exhibits, and affidavits or declarations as the 
USPTO deems reasonably 
necessary to the proper examination of the affidavit or 
declaration of continued use, or 
for the USPTO to assess the 
accuracy and integrity of the register. These provisions are 
corollaries to § 2.61(b), which 
currently allows the USPTO to 
require additional information or exhibits in connection with 
the examination of a pending 
application. These provisions also clarify that accompanying 
affidavits or declarations may 
be required. The wording "and such additional specimens" is 
added to the final rule to clarify 
that the standards applicable to § 2.161(g) and § 7.37(g) are 
contained in § 2.161(h) and § 
7.37(h). The provisions 
allowing the USPTO to assess 
the accuracy and integrity of the register will expire two 
years after the effective date of 
the final rule.   Comment: Noting that 
currently there is not a 
counterpart to § 2.61(b) that would enable the USPTO to 
request additional specimens 
post registration, three commenters expressed support 
of implementing proposed 
§ 2.161(h) and § 7.37(h) to the extent they conf orm to current 
§ 2.61(b). Two of the 
commenters further noted that claims of use, post registration, 
for owners of registrations 
under Sections 44 and 66 
should be examined under the 
same criteria applied to owners of use-based applications. One 
commenter further noted that 
they did not support the proposed changes to § 2.161(g) 
and § 7.37(g) since they did 
not conform to current § 2.61(b).  
 Response: The USPTO 
appreciates the commenters' support of the rule changes and 
agrees with the commenters 
regarding the importance of having post registration 
corollaries to § 2.61(b). Just as 
§ 2.61(b) was amended to clarify that accompanying 
affidavits or declarations may 
be required, this same 
clarification was added to § 2.161(h) and § 7.37(h) in 
order to explicitly provide for 
the USPTO to verify 
information or exhibits, when needed. Similarly, the 
amendments to § 2.161(g) and 
§ 7.37(g) were made in order to provide for the USPTO to 
request additional specimens. 
 The language in § 2.161(h) and § 7.37(h) allowing the 
USPTO to "assess the accuracy 
and integrity of the register" is for the limited purposes of the 
pilot explained above, and will 
expire two years after the 
effective date of the final rule. 
This "sunset provision" is 
intended to alleviate concerns 
regarding the burdens 
associated with discretionary requests for additional 
specimens and information to 
assess the accuracy and integrity of the register. The 
USPTO maintains its authority 
to probe accuracy when reasonably necessary for 
examination of a particular 
registration.   The USPTO agrees with 
the commenters that post 
registration claims of use should be examined under the 
same criteria regardless of the 
initial filing basis. The 
USPTO, therefore, determined 
that the pilot assessing the accuracy and integrity of the 
register should be conducted 
with the filing of Section 8 or 71 affidavits, since such filings 
are required of all trademark 
owners.   Comment: Noting that a 
registration could include 
many goods and services, one commenter emphasized that 
submitting many specimens 
could be time-consuming and burdensome.  
 Response: As previously 
noted, the limited nature of the pilot and "sunset provision" are 
geared to alleviate concerns 
regarding potential burdens to 
trademark owners. As proof of IP/N/1/USA/G/2 
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  use of the mark on only two 
additional goods/ services per 
class will be required of 
participants in the pilot, the potential burden will not be 
much greater on trademark 
owners with registrations for many goods or services. 
Failure to provide the 
requested proof may result in further requests for proof as to 
additional goods/services in 
that registration.   Comment: Two 
commenters noted that prior to 
registration, if an applicant is 
unable to provide an acceptable 
specimen for a Section 1(a) use-based application, the 
applicant has the option of 
amending the applicable goods or services to a Section 1(b) 
intent-to-use basis. The 
commenters proposed, with a third commenter, that if a 
trademark owner is faced with 
a requirement for additional specimens post registration, the 
USPTO should allow the 
owner to voluntarily delete the goods or services, as an 
alternative to providing the 
specimens, without incurring vulnerability as to the 
remaining goods or services. 
This should not be viewed as 
an admission that the goods or 
services were improperly claimed in the initial filing as 
there are a number of reasons 
why trademark owners may opt not to provide additional 
evidence of use.  
 Similarly, one of the commenters noted that if goods 
or services are deleted from a 
registration following an information request, the 
remainder of the registration 
should not be vulnerable to challenge as to its validity. A 
commenter further stated that 
preregistration for use-based applications, applicants should 
have the option of asserting a 
dual Section 1(b) basis for any 
goods or services subject to a requirement for additional 
specimens or evidence.  
 Response: When a 
trademark owner files a Section 8 or 71 affidavit, the 
trademark owner is asked to 
specifically verify if the mark is in use in commerce on or in 
connection with all of the 
goods or services listed in the registration. If the mark is not 
in use with all of the goods or 
services, the owner is asked to identify the goods or services 
to be deleted from the 
registration. Therefore, if a 
trademark owner is not using 
the mark with all of the goods or services listed in a 
registration, and excusable 
nonuse is not claimed, the goods should be voluntarily 
deleted from the registration 
upon the filing of the Section 8 or 71 affidavit as required by 
the Trademark Act, prior to the 
USPTO's request for additional information or specimens upon 
review of the Section 8 or 71 
affidavit. As a reminder, 18 U.S.C. 1001 and 37 CFR 11.18 
apply to submissions to the 
USPTO and impose an obligation of reasonable 
inquiry and truthfulness.  
 If a registration is selected 
to participate in the pilot 
assessing the accuracy and integrity of the register, the 
trademark owner may at that 
point voluntarily delete goods or services from its registration 
as an alternative to providing 
the additional information or specimens requested by the 
USPTO. Such a deletion will 
not trigger cancellation of the entire registration, but may 
subject the registration to a 
further information or specimen requirement by the 
USPTO to verify the accuracy 
of the remaining goods or services claimed in the 
registration. Although the pilot 
will not apply to applications, 
applicants always have the option of relying on both 
Sections 1(a) and 1(b) in the 
same application, though the 
applicant may not assert both bases for identical goods or 
services in the same 
application. See TMEP 
section 806.02(b).  
 Comment: One comment 
noted that failure to provide requested information as to 
only a portion of the goods or 
services should not result in cancellation of the entire 
registration.  
 Response: The USPTO 
agrees with th is comment and 
notes that when a registration is selected to participate in the 
pilot and an Office action 
issues requiring additional evidence or specimens, a 
response must be filed within 
six months of the Office action, or before the end of the filing 
period for the Section 8 or 71 
affidavit, whichever is later (37 CFR 2.163(b), 7.39(a)). If a 
response is filed but fails to 
include the required evidence or specimens, the USPTO will 
deem the Section 8 or 71 
affidavit unacceptable as to the goods or services to which the 
requirement pertained and 
delete them from the 
registration. Such a response 
may also trigger a further requirement for proof of use as 
to some or all of the remaining 
goods/services. However, assuming the Section 8 or 71 
affidavit is otherwise 
acceptable, and any requested proof of use as to remaining 
goods/services is satisfied, the 
remaining goods/services will be unaffected. By contrast, if 
no response whatsoever to the 
Office action is filed within the response period, and no time 
remains in the statutory filing 
period, the registration will be cancelled (37 CFR 2.163(c), 
7.39(b)). Thus, absent other 
issues with the affidavit, the 
registration will not be  IP/N/1/USA/G/2 
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  cancelled unless the owner 
fails to respond to the Office 
action or is unable to 
demonstrate use for any of the remaining goods or services in 
the registration.  
 Comment: Citing § 2.161 
and § 7.37, an additional 
commenter indicated that the 
proposed rules providing for additional specimens could 
present an equal-protection 
issue due to their discretionary nature, noting that "when 
requested by the Office" is not 
a clear and definite standard.  
 Response: The Trademark 
Act gives the Director discretion regarding the 
number of specimens to require 
(15 U.S.C. 1051(a)(1), (d)(1), 1058(b)(1)(C), 
1141k(b)(1)(C)). The revisions 
to §§ 2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.86(a)(3), 2.86(b), 
and 2.88(b)(2) to indicate that 
the USPTO may, upon request, require more than one 
specimen, including more than 
one specimen per class, if the USPTO deems additional 
specimens reasonably 
necessary to examine the application or allegation of use, 
codify existing practice, where 
such additional specimens 
occasionally are requested 
under § 2.61 as information or exhibits necessary to 
examination.  
 The revisions to § 2.161(g) and § 7.37(g) to indicate that 
the USPTO may require more 
than one specimen in connection with the 
examination of an affidavit or 
declaration of continued use are corollaries to the above-
referenced pre-registration 
procedures when additional specimens are necessary to 
verify the accuracy and nature 
of the use. The standards applicable to § 2.161(g) and § 
7.37(g) can be found in § 
2.161(h) and § 7.37(h). Both 
subsections have been revised to explicitly provide that the 
USPTO may require 
specimens, information, 
exhibits, and affidavits or declarations as "reasonably 
necessary" for examination or 
"to assess the accuracy and integrity of the register." 
Because these standards are not 
impermissible or arbitrary, there can be no equal 
protection violation. Cf. In re 
Boulevard Entm't, Inc., 334 
F.3d 1336, 1343, 67 USPQ2d 
1475, 1480 (Fed. Cir. 2003) 
(noting that no USPTO equal-
protection violation could 
occur "unless the agency acted pursuant to some 
impermissible or arbitrary 
standard").   Moreover, even regardless 
of standards, constitutional 
challenges have been rejected in the trademark registration 
context where a determination 
not to register a mark does not foreclose use of that mark. See 
In re Mavety Media Grp. Ltd., 
33 F.3d 1367, 1374, 31 USPQ2d 1923, 1928–29 (Fed. 
Cir. 1994); In re McGinley, 
660 F.2d 481, 484, 211 USPQ 668, 672 (C.C.P.A. 1981).  
 The USPTO is amending 
§ 2.173(b)(3) to clarify that 
where an amendment involves 
a change in the mark, a new specimen must be provided for 
each class in a multiple-class 
registration, and additional specimens may be required 
when necessary, and to add 
§ 2.173(b)(4) to provide that the USPTO may require such 
specimens, information, 
exhibits, and affidavits or declarations as the USPTO 
deems reasonably necessary to 
the proper examination of the proposed amendment. The 
term "specimens" is added to § 
2.173(b)(4) to clarify that the standards applicable to § 
2.173(b)(4) are contained in 
§ 2.173(b)(3). The previously 
proposed provision that a requirement for additional 
information may issue, for the 
USPTO to assess the accuracy 
and integrity of the register, is not included in the final rule.  
 Comment: Two 
commenters noted that because claims of use as to all goods 
and services are not at issue 
when a request for amendment of a registration is sought, they 
do not support the proposed 
changes to § 2.173.  
 Response: As claims of use 
as to all goods and services do 
not accompany amendments to 
registrations, the pilot to assess 
the accuracy and integrity of the register will be conducted 
with the filing of mandatory 
Section 8 or 71 affidavits and not optional Section 7 
amendments. The revisions to 
§ 2.173(b)(3) clarify that where an amendment involves a 
change in the mark, a new 
specimen must be provided for each class in a multiple-class 
registration. This will allow the 
USPTO to assess that the amended mark is being used on 
or in connection with each 
class of goods or services in the registration. The addition 
of § 2.173(b)(4) similarly 
assists the USPTO by 
providing a means for 
additional information to be requested, as a post registration 
corollary to § 2.61(b). The 
additional previously proposed language allowing the USPTO 
to "assess the accuracy and 
integrity of the register" was deleted and is not included in 
the final rule.  
 
Overview of the Pilot  
 
 As set forth above, the USPTO intends to conduct a 
two-year pilot program to 
verify the accuracy of post registration claims that a 
trademark is in use on 
particular goods/services. The 
USPTO will randomly select IP/N/1/USA/G/2 
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  approximately 500 trademark 
registrations for which a 
Section 8 or 71 affidavit was 
filed and issue an Office action requiring proof of use of the 
mark on two additional 
goods/services per class. Although a declaration will be 
required to verify the proof of 
use, one declaration may support all the additional proof. 
The random selection will 
include all types of registrations and will represent 
less than 1% of the total 
number of affidavits usually 
processed during a typical six-
month period.   Owners of the registrations 
selected for the pilot will be 
afforded the usual post registration response period to 
the Office action requiring 
additional proof of use and an accompanying standard 
declaration. Specifically, a 
response will be due within six months of the Office action, or 
before the end of the filing 
period for the Section 8 or 71 affidavit, whichever is later (37 
CFR 2.163(b), 7.39(a)). 
Specially trained senior attorneys will conduct the 
examination for the pilot, 
reviewing the proof of use 
according to the generally 
accepted standards for use in commerce. The assigned senior 
attorneys may address specific 
questions or concerns about particular cases. The USPTO 
also will establish a dedicated 
mailbox, TMPostRegPilot@uspto.gov 
for more general questions and 
concerns relating to the pilot.   If a response is filed but 
fails to include the required 
evidence or specimens, the USPTO will deem the 
Section 8 or 71 affidavit 
unacceptable as to the goods or services to which the 
requirement pertained and 
delete them from the 
registration. Such a response may also trigger a further 
requirement for proof of use as 
to some or all of the remaining 
goods/services. However, assuming the Section 8 or 71 
affidavit is otherwise 
acceptable, and any requested proof of use as to remaining 
goods/ services is satisfied, the 
remaining goods/services will be unaffected. By contrast, if 
no response to the Office 
action is filed within the response period, and no time 
remains in the statutory filing 
period, the registration will be 
cancelled (37 CFR 2.163(c), 
7.39(b)).   After the conclusion of the 
pilot, the USPTO will share the 
results as a basis for further consideration and discussion of 
the level of accuracy of the 
register. The results of the pilot will help inform whether and 
to what extent it may be 
appropriate to request additional information or 
specimens on a more routine 
basis to ensure accuracy.  
 
Rulemaking Requirements  
 
 Executive Order 12866: 
This rule has been determined 
not to be significant for 
purposes of Executive Order 
12866.   Executive Order 13563: 
The Office has complied with 
Executive Order 13563. Specifically, the Office has: (1) 
Used the best available 
techniques to quantify costs and benefits, and has 
considered values such as 
equity, fairness and distributive impacts; (2) provided the 
public with a meaningful 
opportunity to participate in the regulatory process, including 
soliciting the views of those 
likely affected prior to issuing a notice of proposed 
rulemaking, and provided on-
line access to the rulemaking 
docket; (3) attempted to promote coordination, 
simplification and 
harmonization across 
government agencies and identified goals designed to 
promote innovation; (4) 
considered approaches that reduce burdens and maintain 
flexibility and freedom of 
choice for the public; and (5) ensured the objectivity of 
scientific and technological 
information and processes, to the extent applicable.  
 Administrative Procedure 
Act: This rule merely involves 
rules of agency practice and 
procedure within the meaning of 5 U.S.C. 553(b)(A). See 
Cooper Techs. Co. 
v. Dudas, 
536 F.3d 1330, 1336–37 (Fed. Cir. 2008) (stating that 5 
U.S.C. 553, and thus 35 U.S.C. 
2(b)(2)(B), does not require notice and comment 
rulemaking for "interpretative 
rules, general statements of policy, or rules of agency 
organization, procedure, or 
practice") (quoting 5 U.S.C. 553(b)(A)); Inova Alexandria 
Hosp. v. Shalala, 244 F.3d 
342, 350 (4th Cir. 2001) (rules for handling appeals were 
procedural where they did not 
change the substantive 
standard for reviewing claims); 
Bachow Commc'ns Inc. v. 
FCC, 237 F.3d 683, 690 (DC 
Cir. 2001) (rules governing an 
application process are procedural under the 
Administrative Procedure Act). 
Therefore, this rule may be adopted without prior notice 
and opportunity for public 
comment under 5 U.S.C. 553(b) and (c), or thirty-day 
advance publication under 5 
U.S.C. 553(d).   However, the USPTO 
chose to seek public comment 
before implementing the rule and is providing thirty-day 
advance publication notice.  
 Regulatory Flexibility Act: 
The final rule involves rules of  IP/N/1/USA/G/2 
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 Page 13 
 
 
  agency practice and procedure. 
As prior notice and an 
opportunity for public 
comment are not required pursuant to 5 U.S.C. 553 or 
any other law, neither a 
Regulatory Flexibility Act analysis nor a certification 
under the Regulatory 
Flexibility Act (5 U.S.C. 601 et 
seq.) is required. See 5 U.S.C. 
603.  
 A Final Regulatory Flexibility Act Analysis 
("FRFA") of the final rule is 
not required; nevertheless, the 
USPTO has undertaken this 
FRFA to further describe the minimal effects on any small 
entities.  
 
1. Description of the Reasons 
That Action by the Office Is 
Being Undertaken  
 
 The USPTO is requiring: 
(1) Any specimens, information, exhibits, and 
affidavits or declarations 
deemed reasonably necessary to examine an affidavit or 
declaration of continued use in 
trademark cases; and (2) upon request, more than one 
specimen in connection with a 
use-based trademark 
application, an allegation of 
use, an amendment to a registered mark, or an affidavit 
or declaration of continued use 
in trademark cases.   These revisions will 
facilitate the USPTO's ability 
to verify the accuracy of identifications of 
goods/services. Specimens of 
use in use-based trademark applications illustrate how the 
applicant is using the proposed 
mark in commerce on particular goods/services 
identified in the application. 
Post registration affidavits or declarations of use and their 
accompanying specimens 
demonstrate a trademark 
owner's continued use of its mark in commerce for the 
goods/services in the 
registration.  
 
2. Succinct Statement of the 
Objectives of, and Legal 
Basis for, the Final Rule  
 
 The objective of the final 
rule is to facilitate the USPTO's ability to verify the 
accuracy of identifications of 
goods/services in trademark applications and registrations. 
The rule ensures that the 
USPTO may properly examine 
the nature and veracity of 
allegations of use made during the trademark application or 
post registration phase, and 
upon request, may require additional specimens or other 
information or exhibits, such as 
a photograph of the mark appearing on certain goods. 
Another purpose of the rule is 
to harmonize the requirements that can be made as part of the 
examination of use allegations 
made in post registration maintenance documents, which 
are currently more limited, 
with the requirements authorized in the examination 
of use allegations made prior to 
registration.  
 The Trademark Act gives 
the Director of the USPTO discretion regarding the 
number of specimens to require 
(15 U.S.C. 1051(a)(1), (d)(1), 1058(b)(1)(C), 
1141k(b)(1)(C)). Moreover, it 
requires applicants to comply with rules as prescribed by the 
Director (15 U.S.C. 1051(a)(4), 
(b)(4)). Additionally, the Director and USPTO may 
establish regulations governing 
the conduct of proceedings in the Office (15 U.S.C. 1123, 35 
U.S.C. 2(b)(2)(A)). The current 
Trademark Rules of Practice and the Rules of Practice for 
Filings Pursuant to the Madrid 
Protocol mandate the 
submission of one specimen per class in connection with 
use-related filings (37 CFR 
2.34(a)(1)(iv), 2.56(a), 
2.76(b)(2), 2.86(a)(3), 2.86(b), 2.88(b)(2), 2.161(g), 7.37(g)). 
Similarly, the current rules 
require one specimen to be submitted in connection with a 
proposed amendment of a 
registered mark (37 CFR 2.173(b)(3)). In addition, 
although the current 
Trademark Rules of Practice 
allow the USPTO to require 
additional information or 
exhibits deemed reasonably 
necessary to the examination of 
a pending application (37 CFR 2.61(b)), no counterpart rule 
exists in the post registration 
context to facilitate proper examination of an affidavit or 
declaration of continued use or 
excusable non-use.  
 
3. Description and Estimate 
of the Number of Affected Small Entities  
 
 The USPTO does not collect or maintain statistics in 
trademark cases on small 
versus large entity applicants, and this information would be 
required in order to estimate 
the number of small entities 
that would be affected by the 
final rule. However, the USPTO believes that the 
overall impact of the rule on 
applicants and registrants will be relatively minimal.  
 The final rule applies to any 
entity filing a use-based trademark application and to 
any entity filing trademark 
registration maintenance filings or amendments. With respect 
to allegations of use in 
trademark applications, the rules merely codify existing 
practice, whereby the USPTO 
already occasionally requests additional specimens or other 
information under 37 CFR 
2.61. Thus, because no change 
in practice will result from the IP/N/1/USA/G/2 
IP/N/1/USA/T/6 Page 14 
 
 
  rules in this regard, they will 
have no impact in the 
trademark application context. 
 After registration, registrants must make periodic 
filings with the USPTO to 
maintain their registrations. A Section 8 or 71 affidavit of 
continued use is a sworn 
statement that the mark is in use in commerce, filed by the 
owner of a registration (15 
U.S.C. 1058, 1141k). The purpose of the Section 8 or 71 
affidavit is to facilitate the 
cancellation of registrations for 
marks no longer in use. With 
respect to post registration maintenance filings, the Office 
estimates that only a small 
subset of trademark owners will be required to provide 
more than one specimen, or 
information or exhibits in connection with a Section 8 or 
71 affidavit. The USPTO is 
unable to estimate what subset of the owners will be small 
entities impacted by the rules. 
In Fiscal Year 2011, 114,808 Section 8 or 71 affidavits were 
filed.  
 
4. Description of The 
Reporting, Recordkeeping, 
and Other Compliance 
Requirements of the Final 
Rule, Including an Estimate of the Classes of Small 
Entities Which Will Be 
Subject to the Requirement and the Type of Professional 
Skills Necessary for 
Preparation of the Report or Record  
 
 The final rule imposes no new recordkeeping 
requirements on trademark 
applicants or registrants.  Regarding compliance with 
the final rule, as an initial 
matter, the USPTO does not anticipate that the rule will 
have a disproportionate impact 
upon any particular class of 
small or large entities. Any entity that has a registered 
trademark could potentially be 
impacted by the rule.  
 Based on additional comment from the proposed 
rule, the USPTO estimates that 
in those post registration cases where a requirement for 
additional information, 
exhibits, declarations, or specimens is issued, it will take 
one hour to comply.  
 While the statement of use is a similar type of filing to 
those at issue in the final rules 
applied in the post registration 
context, as the statement of use 
involves providing one or more specimens of use and an 
accompanying declaration, the 
compliance time for the final rules should be less. Under the 
final rules applied in the post 
registration context, the type of fact gathering and review of 
the nature and extent of the use 
of the mark that underlies a statement of use will already 
have occurred. Compliance 
with the requirement will only necessitate gathering and 
submitting the evidence to 
demonstrate what has already been assessed.  
 Assuming the mark is in 
use, as claimed, the compliance 
time involves the length of 
time to secure a specimen, exhibit (such as taking a digital 
photograph), information, or 
declaration, plus any time it takes an attorney to 
communicate with the client in 
order to obtain what is required and make the necessary filing 
with the USPTO. In reality, 
approximately one third of applications are filed pro se. 
These applicants and 
registrants, therefore, will likely have a lower compliance 
time than the USPTO has 
estimated, which assumes the involvement of counsel. These 
rules do not mandate the use of 
counsel.   The Office does not 
estimate any change in 
compliance cost associated 
with the final rules with respect to allegations of use in 
trademark applications, since 
the USPTO's current practice already allows for this. The 
rule change merely codifies 
existing practice.  
 
5. Description of Any 
Significant Alternatives to the Final Rule Which 
Accomplish the Stated 
Objectives of Applicable 
Statutes and Which 
Minimize Any Significant Economic Impact of the Rule 
on Small Entities  
 
 The USPTO has considered 
whether and how it is 
appropriate to reduce any 
burden on small businesses 
through increased flexibility. 
The following options have been considered, but rejected, 
by the USPTO as ineffective. 
 The alternative of never requiring additional specimens 
or other information in 
connection with Section 8 or 71 affidavits or exempting 
small entities from such 
requirements would have a 
lesser economic impact on 
small entities, but would not accomplish the stated objective 
of verifying the accuracy of 
identifications of goods/ services in trademark 
registrations. As set forth 
above, the USPTO will rely on the final rule to assess the 
accuracy of use allegations. 
This assessment may provide a better sense of whether 
significant problems may exist 
with the accuracy of identifications of goods and 
services. Thus, exempting 
small entities would prevent the potential consideration of 
all Section 8 or 71 affidavits 
for this purpose, and therefore, 
would not achieve the stated  IP/N/1/USA/G/2 
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 Page 15 
 
 
  objective of verifying 
accuracy.  
 The stated objective of the 
final rule also facilitates the cancellation of any 
registrations for marks that are 
no longer in use, the policy underlying the statutory 
requirement for Section 8 or 71 
affidavits. Exempting small entities from any possible 
scrutiny regarding use 
allegations would fail to reach non-use of marks by small 
entity owners, thereby failing 
to achieve the objective.  
 Other options to potentially 
lessen the impact on small entities have been rejected as 
ineffective. For example, the 
USPTO deems unnecessary extended time periods for small 
entity compliance because 
there appears to be no reason that compliance with the 
requirements in the rules would 
be more time-consuming for small entities, and because the 
USPTO's standard time period 
for responding to trademark Office actions allows sufficient 
time regardless of small entity 
status.   The USPTO deems any 
streamlined or simplified 
compliance mechanism for 
small entities unnecessary, 
given the ease of responding to trademark Office actions 
electronically. Thus, 
compliance will be as streamlined and simplified as 
possible for all affected 
entities. Moreover, where the objective is to verify the 
accuracy of a claim of use in 
an affidavit, the requirements of one or more additional 
examples of the manner of the 
claimed use, or of other information such as 
photographic proof already 
seem to be the least burdensome and complex way 
to achieve the objective. 
Additionally, the requirement 
for submissions in order to assess the accuracy and 
integrity of the register will 
expire two years from the 
effective date of the rule. Accordingly, these post 
registration requirements will 
not have a significant economic impact on small 
entities. Any more minimal 
requirement would not demonstrate use, and therefore, 
would not meet the objective to 
verify use claims.   Use of performance rather 
than design standards is not 
applicable to the final 
rulemaking because the 
USPTO is not issuing any sort of standard. Rather, the rules 
will require applicants and 
registrants to furnish evidence of use, rather than comply with 
a performance or design 
standard.   Finally, with respect to 
allegations of use in trademark 
applications, the final rules merely codify existing practice, 
whereby the USPTO already 
occasionally requests additional specimens or other 
information under 37 CFR 
2.61. Thus, because no change in practice would result from 
the rules in this regard, any 
different treatment of small 
entities in this context would 
fail to meet the stated objective and likely would generate 
concern and confusion about a 
change in practice.  
 
6. Identification, to the 
Extent Practicable, of All Relevant Federal Rules 
Which May Duplicate, 
Overlap, or Conflict With the Final Rule  
 
 The final rule will not duplicate, overlap, or conflict 
with any other Federal rules.  
 Unfunded Mandates: The 
Unfunded Mandates Reform 
Act requires, at 2 U.S.C. 1532, 
that agencies prepare an 
assessment of anticipated costs and benefits before issuing any 
rule that may result in 
expenditure by State, local, and 
tribal governments, in the aggregate, or by the private 
sector, of $100 million or more 
(adjusted annually for inflation) in any given year. 
This rule would have no such 
effect on State, local, and tribal governments or the private 
sector.  
 Executive Order 13132: This rule does not contain 
policies with federalism 
implications sufficient to 
warrant preparation of a 
Federalism Assessment under Executive Order 13132 
(Aug. 4, 1999).  
 Paperwork Reduction Act: 
This rule involves information 
collection requirements which 
are subject to review by the Office of Management and 
Budget (OMB) under the 
Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq. ). 
An information collection 
request was submitted to OMB under control number 0651–
0055 at the time of the Notice 
of Proposed Rulemaking, and a pre-approval was given. Since 
that time no substantive 
changes to the burden have 
been made. Additionally, the 
agency will follow up with a change worksheet submission 
to make all the necessary 
burden estimate adjustments.  This rulemaking provides 
for the USPTO to require: 
(1) Any specimens, information, exhibits, and 
affidavits or declarations 
deemed reasonably necessary to examine an affidavit or 
declaration of continued use or 
excusable nonuse in trademark cases, or for the USPTO to 
assess the accuracy and 
integrity of the register; and (2) upon request, more than 
one specimen in connection 
with a use-based trademark 
application, an allegation of IP/N/1/USA/G/2 
IP/N/1/USA/T/6 Page 16 
 
 
  use, or an amendment to a 
registered mark.  
 There is no fee impact for 
submission of specimens. Additional burden due to 
postage costs for paper 
submissions for the post-registration Office actions is 
estimated at $90, for a total 
increase in fee burden by an estimated $90. The agency 
estimates the following overall 
impact on burden: An increase of responses of 500; an 
increase in burden hours of 
485; and an increase in burden 
hour costs of $164,900.  
 Comments were invited on: (1) Whether the collection of 
information is necessary for 
proper performance of the functions of the agency; (2) the 
accuracy of the agency's 
estimate of the burden; (3) ways to enhance the quality, 
utility, and clarity of the 
information to be collected; and (4) ways to minimize the 
burden of the collection of 
information to respondents.   In response to the first 
inquiry, whether the collection 
of information is necessary for proper performance of the 
functions of the agency, the 
USPTO received three 
comments.  
 Comment: One comment 
noted that based on the U.S. 
trademark system, the 
commenter could understand the contents of the revision, but 
the commenter indicated that 
the revision may contradict the Trademark Law Treaty 
prohibition against submitting 
evidence of use with a renewal application.  
 Response: Evidence of use, 
or excusable non-use, is not a requirement for renewal 
applications under Section 9, 
and therefore, the revision does not contradict the Trademark 
Law Treaty (15 U.S.C. 1059). 
To renew a registration under 
Section 9, the owner must submit the requisite fee with 
the signed renewal form (15 
U.S.C. 1059). Evidence of use, 
or excusable nonuse, is separately required under 
Sections 8 and 71 between the 
fifth and sixth year anniversaries after registration 
and every ten years after 
registration, or with payment of an additional fee, during the 
six-month grace period that 
follows (15 U.S.C. 1058(a), 1141k(a)).  
 Comment: Another 
commenter expressed that the 
collection of additional 
specimens would ensure a more accurate register and thus 
benefits the public and brand 
owners.   Response: The USPTO 
appreciates the commenter's 
support of the rule changes and agrees with the commenter 
regarding the benefit of a more 
accurate register.   Comment: A third 
commenter agreed that 
collecting information regarding the accuracy of the 
marks on the trademark 
register is a necessary and proper performance of the 
USPTO's functions. The 
commenter noted that an up-to-
date register reflecting marks 
that are actually in use would benefit everyone. The 
commenter further stated that 
the USPTO should ensure that the information is gathered 
consistently and without 
singling out any particular classes of applications, 
registrations, or mark owners.  
 Response: The USPTO 
appreciates the commenter's 
support of the information 
collection. In conducting the pilot, the USPTO will collect 
the information regarding the 
accuracy of marks on the register consistently, without 
singling out any particular 
classes of applications, 
registrations, or mark owners. The USPTO intends to ensure 
consistent information 
collection by having a small 
group of specially trained senior attorneys examine the 
registrations selected for 
participation in the pilot. As the USPTO also intends to 
randomly select the 
registrations examined in the pilot, no type of application, 
registration, or mark owner 
will be singled out.  
 Regarding the accuracy of 
the agency's estimate of the 
burden, comments were 
received from three parties.  
 Comment: One commenter 
noted that due to the limited 
nature of the rule changes, they 
will not affect the scope of pre-registration trademark 
searches; and costs will be 
incurred when attorneys submit the additional evidence 
required. The commenter 
additionally requested that foreign applicants be allowed 
to maintain broader 
identifications of goods and services when filing a new 
trademark application based on 
a home-country registration.   Response: The rule changes 
codify current pre-registration 
practice. The USPTO's pilot 
program will be conducted post 
registration, and the limited nature of the pilot will alleviate 
the potential burden on 
trademark owners. The rule changes will not affect the 
USPTO's standards for 
determining the acceptability of identifications of goods and 
services, which are applied to 
all applicants and registrants.   Comment: Another 
comment noted that the burden 
on applicants to produce additional specimens is not 
terribly significant in the age of 
electronic specimens and filings. The burden of 
producing additional 
specimens is far less than the 
burdens imposed on the public  IP/N/1/USA/G/2 
 IP/N/1/USA/T/6 
 Page 17 
 
 
  and trademark community 
from an inaccurate register. 
Any evidence required under 
the rule changes relates to something an applicant or 
registrant should possess or 
easily document in carrying out existing duties of confirming 
that goods and services are 
currently in use.   Response: The USPTO 
appreciates the commenter's 
support of the rule changes and concurs that the rule changes 
create minimal burdens on 
trademark owners.  
 Comment: A commenter on 
the time burden agreed that the time to actually submit 
specimens or additional 
evidence will likely be an hour, but stated that the time 
involved in making the request 
to a client and reviewing the client's responses will be 
substantially greater. For mark 
owners and their counsel, compliance time with the 
additional requirements may 
depend on factors such as whether the client is foreign or 
domestic, the degree of 
explanation necessary for the client, and the length of the 
identification. The commenter 
noted that the USPTO may 
help alleviate the burden by 
requiring only one additional specimen or minimal 
additional information, and by 
foregoing the need for verifications of the specimens 
or other information.  
 Response: The USPTO 
notes that the estimated time 
burden for Paperwork 
Reduction Act purposes is an average encompassing the 
response time for all trademark 
owners, taking into account that trademark owners 
comprise large and small 
entities, with and without counsel. The USPTO 
acknowledges that the 
compliance time for the pilot 
may be greater than the compliance time for a typical 
post registration response, and 
based on the commenter's 
feedback, the USPTO has increased the estimated burden 
time for submissions under the 
pilot to an hour. While the USPTO concurs with the 
commenter that compliance 
time may be greater for larger, represented entities, the 
average also encompasses pro 
se owners, for whom the compliance time will likely be 
lower than the USPTO has 
estimated. The USPTO also 
notes that as trademark owners 
are already required to ascertain whether a mark is 
currently in use with all the 
goods/services in connection with the filing of a Section 8 or 
71 affidavit, any additional 
requirement to provide proof of such use with select 
goods/services should not be 
unduly burdensome.   As an additional means of 
alleviating the potential burden 
to trademark owners, only approximately 500 
registrations will be selected to 
participate in the pilot assessing the accuracy and 
integrity of the register. 
Moreover, only proof of use of 
two additional goods/services 
per class will be required of participants in the pilot. 
Although a declaration will be 
required to verify the proof of use, one declaration may 
support all the additional proof. 
Owners need not preemptively submit multiple specimens 
with all trademark filings since 
the approximately 500 registrations selected to 
participate in the pilot 
represent less than 1% of the total number of Section 8 and 
71 affidavits processed during 
a typical six-month period.   In response to the third 
inquiry, whether there are ways 
to enhance the quality, utility, 
and clarity of the information to be collected, the USPTO 
received two comments.  
 Comment: One commenter 
suggested that the USPTO could publish more guidance as 
to when specimens are required 
and the type of specimens that are generally acceptable. The 
commenter additionally noted 
that the USPTO should provide guidance to both applicants and 
examiners that specimens for 
goods that appear to be merely digital mock-ups may be 
insufficient.  
 Response: The USPTO 
intends to provide additional 
guidance for those trademark 
owners chosen to participate in 
the pilot and continue its 
efforts to provide both internal and external gu idance, through 
the TMEP and examination 
guides, regarding the general acceptability of specimens. It is 
long-standing Office policy 
that a submission that appears not to be actually used in 
commerce is unacceptable as a 
specimen. See, e.g., TMEP sections 904.03(i) and 
904.04(a) regarding beta Web 
sites and printers proofs.   Comment: Another 
comment stated that the 
USPTO should publicize the 
nature of the specimens and 
additional information that will be required to support requests 
for information under the rule 
changes. The commenter noted that loosening the restrictions 
on catalog submissions could 
assist mark owners requested to provide additional 
specimens. Moreover, the 
USPTO should clarify whether requests for additional 
information will apply to entire 
classes or specific goods or services within a class. If 
declarations will be required to 
support additional specimens, having a uniform format will 
help ensure higher-quality 
submissions. Additionally, 
ensuring uniform levels of IP/N/1/USA/G/2 
IP/N/1/USA/T/6 Page 18 
 
 
  inquiry for specimens during 
prosecution and post 
registration, and publicizing 
them in exam guides or the TMEP, would further the goal 
of an accurate trademark 
register. Having a particular contact person, or dedicated 
mailbox, for issues that arise 
would ensure that practitioners and USPTO employees receive 
consistent guidance. Lastly, the 
USPTO should share any statistics kept on the success of 
the new rule—such as the 
length of descriptions routinely 
queried, percentage of 
applications or registrations queried, and statistics that 
suggest that "deadwood" on the 
register is an issue to be addressed.  
 Response: As noted above, 
in order to assess the accuracy and integrity of the register, the 
USPTO intends to conduct a 
pilot in which approximately 500 trademark registrations 
will be selected to receive a 
requirement to submit proof of use for two additional 
goods/services per class in 
response to an Office action issued after a Section 8 or 71 
affidavit is reviewed by the 
USPTO. The additional proof 
will be reviewed according to 
the same general standards as specimens submitted with a 
Section 8 or 71 affidavit, with 
the standard Section 8 or 71 declaration language required 
to be submitted with the 
additional proof.   In order to ensure 
uniformity within the pilot, a 
small group of specially trained senior attorneys will conduct 
the examination of the 
registrations selected for participation in the pilot. The 
assigned senior attorney 
handling a particular case may address specific questions or 
concerns about the case. As 
suggested by the commenter, 
the USPTO will establish a dedicated mailbox for more 
general questions and concerns 
relating to the pilot. Moreover, 
the USPTO will share the results of the pilot in the 
context of further consideration 
as to whether "deadwood" on the register is an issue. 
 Regarding ways to 
minimize the burden of the collection of information to 
respondents, comments were 
received from two parties.   Comment: A commenter 
proposed additional emphasis 
by the USPTO to educate 
applicants, in advance, 
regarding proper specimens and the difference between 
use-based and intent-to-use 
applications. The commenter also suggested adding 
information and warnings on 
the USPTO Web site and during the electronic 
application process explaining 
the types of specimens that may be acceptable. The 
commenter additionally 
expressed that the USPTO could suggest to applicants that 
they may be able to reduce the 
length of the application process by submitting 
additional specimens with their 
applications.  
 Response: The USPTO 
appreciates the commenter's suggestions regarding ways to 
educate the public regarding 
the trademark process. The USPTO has developed a series 
of "how-to" videos covering 
important topics and critical application-filing and 
registration-maintenance tips. 
One video entitled "Before You File" covers the different 
filing bases, while another 
video focuses exclusively on education about specimens. 
The videos can be accessed on 
the USPTO Web site at http:// 
www.uspto.gov/trademarks/pro
cess/ TMIN.jsp . The USPTO is 
continuously striving to 
improve its electronic systems and to provide helpful 
information and warnings to 
guide users throughout the 
trademark registration process, and provides a link to the 
instructional video accessed 
through the Trademark Electronic Application System 
("TEAS") explaining what 
constitutes an appropriate specimen for a good or service. 
While applicants are always 
welcome to submit additional specimens, the USPTO only 
requires one specimen per 
class, but agrees that by 
submitting additional specimens, applicants may in certain circumstances reduce 
the length of the application 
process by reducing the need for Office actions requesting 
acceptable specimens.  
 Notwithstanding any other provision of law, no person is 
required to respond to nor shall 
a person be subject to a penalty for failure to comply with a 
collection of information 
subject to the requirements of the Paperwork Reduction Act 
unless that collection of 
information displays a currently valid OMB control 
number.  
 
List of Subjects  
 
37 CFR Part 2  
 
 Administrative practice and procedure, Trademarks.  
 
37 CFR Part 7   
 Administrative practice and 
procedure, Trademarks, International registration.  
 For the reasons stated in the 
preamble and under the authority contained in 15 
U.S.C. 1123 and 35 U.S.C. 2, 
as amended, the USPTO amends parts 2 and 7 of title 37 
as follows:  
  IP/N/1/USA/G/2 
 IP/N/1/USA/T/6 
 Page 19 
 
 
  PART 2—RULES OF 
PRACTICE IN 
TRADEMARK CASES  
 
■ 1. The authority citation for 
37 CFR part 2 continues to 
read as follows:   
 Authority: 15 U.S.C. 1123, 
35 U.S.C. 2, unless otherwise noted. 
 
■ 2. Amend § 2.34 by revising 
paragraph (a)(1)(iv) to read as 
follows:  
 
§ 2.34 Bases for filing.  
 
 (a) * * *  
 (1) * * *  
 (iv) One specimen per class showing how the applicant 
actually uses the mark in 
commerce. When  requested by 
the Office, additional 
specimens must be provided.  
 * * * * *  
 
■ 3. Amend § 2.56 by revising 
paragraph (a) to read as 
follows:  
 
§ 2.56 Specimens.  
 
 (a) An application under 
section 1(a) of the Act, an 
amendment to allege use under § 2.76, and a statement of use 
under § 2.88 must each include 
one specimen per class showing the mark as used on or 
in connection with the goods or 
services. When requested by the Office as reasonably 
necessary to proper 
examination, additional specimens must be provided.  
 
* * * * *   
■ 4. Amend § 2.61 by revising 
paragraph (b) to read as follows:  
 
§ 2.61 Action by examiner.  
 * * * * *  
 
 (b) The Office may require 
the applicant to furnish such information, exhibits, affidavits 
or declarations, and such 
additional specimens as may be reasonably necessary to the 
proper examination of the 
application.   
* * * * *  
 ■ 5. Amend § 2.76 by revising 
paragraph (b)(2) to read as 
follows:  
 
§ 2.76 Amendment to allege use. 
 
 * * * * *  
 (b) * * *  
 
 (2) One specimen per class showing the mark as actually 
used in commerce. When 
requested by the Office, additional specimens must be 
provided. See § 2.56 for the 
requirements for specimens; and  
 
* * * * *   
■ 6. Amend § 2.86 by revising 
paragraphs (a)(3) and (b) to 
read as follows:  
 
§ 2.86 Application may 
include multiple classes.  
 
 (a) * * *  
 (3) Include either dates of 
use (see §§ 2.34(a)(1)(ii) and (iii)) and one specimen for 
each class, or a statement of a 
bona fide intention to use the mark in commerce on or in 
connection with all the goods 
or services specified in each class. When requested by the 
Office, additional specimens 
must be provided. The applicant may not claim both 
use in commerce and a bona 
fide intention to use the mark 
in commerce for the identical goods or services in one 
application.  
 (b) An amendment to allege 
use under § 2.76 or a statement of use under § 2.88 must 
include, for each class, the 
required fee, dates of use, and one specimen. When requested 
by the Office, additional 
specimens must be provided. The applicant may not file the 
amendment to allege use or 
statement of use until the applicant has used the mark on 
all the goods or services, unless 
the applicant files a request to 
divide. See § 2.87 for 
information regarding requests to divide.  
 
* * * * *   
■ 7. Amend § 2.88 by revising 
paragraph (b)(2) to read as follows:  
 
§ 2.88 Filing st atement of use 
after notice of allowance.  
 
* * * * *   
 (b) * * *  
 (2) One specimen of the mark as actually used in 
commerce. When  requested by 
the Office, additional 
specimens must be provided. 
See § 2.56 for the requirements for specimens; and  
 
* * * * *   
■ 8. Amend § 2.161 by 
revising paragraph (g) introductory text and adding 
paragraph (h) to read as 
follows:  
 
§ 2.161 Requirements for a 
complete affidavit or declaration of continued use 
or excusable nonuse.  
 
* * * * *  
 
 (g) Include one specimen 
showing current use of the IP/N/1/USA/G/2 
IP/N/1/USA/T/6 Page 20 
 
 
  mark for each class of goods or 
services, unless excusable 
nonuse is claimed under 
§ 2.161(f)(2). When requested by the Office, additional 
specimens must be provided. 
The specimen must:   
* * * * *  
  (h) The Office may require 
the owner to furnish such 
information, exhibits, affidavits or declarations, and such 
additional specimens:  
 (1) As may be reasonably 
necessary to the proper 
examination of the affidavit or declaration under section 8 of 
the Act; or  
 (2) For the Office to assess the accuracy and integrity of 
the register.  
 (3) The provisions of paragraph (h)(2) of this section 
will no longer be applied after 
June 21, 2014.  
■ 9. Amend § 2.173 by 
revising paragraph (b)(3) and adding paragraph (b)(4) to read 
as follows:  
 
§ 2.173 Amendment of 
registration.  
 
* * * * *  
  (b) * * *  
 (3) If the amendment 
involves a change in the mark: one new specimen per class 
showing the mark as used on or 
in connection with the goods or services; an affidavit or 
declaration under § 2.20 stating 
that the specimen was in use in commerce at least as early as 
the filing date of the 
amendment; and a new 
drawing of the amended mark. When requested by the Office, 
additional specimens must be 
provided.   (4) The Office may require 
the owner to furnish such 
specimens, information, exhibits, and affidavits or 
declarations as may be 
reasonably necessary to the proper examination of the 
amendment.  
 
* * * * *  
 
PART 7—RULES OF 
PRACTICE IN FILINGS 
PURSUANT TO THE PROTOCOL RELATING 
TO THE MADRID 
AGREEMENT CONCERNING THE 
INTERNATIONAL 
REGISTRATION OF MARKS  
 
■ 10. The authority citation for 
37 CFR part 7 continues to 
read as follows:  
 
 Authority: 15 U.S.C. 1123, 
35 U.S.C. 2, unless otherwise 
noted.  
 
■ 11. Amend § 7.37 by 
revising paragraph (g) and 
adding paragraph (h) to read as 
follows:  
 
§ 7.37 Requirements for a 
complete affidavit or declaration of continued use 
or excusable nonuse.  
 * * * * *  
 
 (g) Include a specimen 
showing current use of the mark for each class of goods or 
services, unless excusable 
nonuse is claimed under § 7.37(f)(2). When requested 
by the Office, additional 
specimens must be provided. The specimen must meet the 
requirements of § 2.56 of this 
chapter.   (h) The Office may require 
the holder to furnish such 
information, exhibits, affidavits 
or declarations, and such 
additional specimens:   (1) As may be reasonably 
necessary to the proper 
examination of the affidavit or declaration under section 71 of 
the Act; or  
 (2) For the Office to assess the accuracy and integrity of 
the register.  
 (3) The provisions of paragraph (h)(2) of this section 
will no longer be applied after 
June 21, 2014.   
 Dated: May 15, 2012.  
 
David J. Kappos,  
 
Under Secretary of Commerce 
for Intellectual Property and 
Director of the United States Patent and Trademark Office.  
 
[FR Doc. 2012–12178 Filed 5–21–12; 8:45 am]  
 
BILLING CODE 3510–16–P   
 
 
 
 
 
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