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Expect Increased Scrutiny from the USPTO Regarding Trademark Use Claims

Client Alert | 1 min read | 08.13.14

Trademark applicants and registrants may experience increased scrutiny of their trademark use claims in light of the results of a recent Pilot Program, conducted by the United States Patent and Trademark Office (USPTO), showing that fifty percent (50%) of approximately 500 randomly selected registrants could not support the claims made in previously filed Declarations of Use. See USPTO Report. Each selected registrant had been asked to submit specimens showing use for two additional goods or services per class in addition to the specimen already submitted with the Declaration.

The USPTO is continuing to study the matter and it is unclear what formal actions it ultimately will take. It is clear the USPTO believes this is a problem that needs to be addressed. The USPTO has stated it may conduct other similar audits and there is nothing to prevent it from auditing applications as well. Trademark owners should exercise extra care to insure that a mark is in use for all goods and services listed in an application or registration before filing a Declaration of Use or Statement of Use.

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Client Alert | 3 min read | 04.22.26

Counterfeiting Litigation Targets Online Marketplaces

The landscape of counterfeiting litigation is shifting in ways that place online marketplace operators at the center of disputes from two directions. Brand owners are escalating efforts to hold platforms liable for counterfeit goods sold through their sites, while some marketplace operators have begun joining brand owners as co-plaintiffs to pursue counterfeiters directly. This dual role has significant implications for how platforms manage their legal exposure and their relationships with brand owners....