USPTO Sends Trademark Owners a Strong Message to Use and Prove Usage of TMs
USPTO to Adopt New Requirements for Specimens for Goods
Generally speaking and except in certain limited circumstances, in order to obtain a trademark registration in the United States, the trademark owner must first submit evidence showing that the trademark is being used in commerce. This is different from many other countries. To prove use, the U.S. Trademark Office requires that owners file “specimens,” that is, examples, showing that the mark is in use. In July 2019, the Trademark Office announced it would be implementing new rules to clarify what constitutes an acceptable specimen to show use on goods.
First, if a screen shot from a website is submitted, the Trademark Office will require an image of the website that clearly shows the URL or the print date. This change is intended to curb the submission of digitally altered images.
Second, if an image of the goods themselves or their packaging is submitted, the specimen must show the mark placed on the goods, the containers or packaging, or on labels affixed to the goods. Thus, a shipping label, for example, will no longer be acceptable unless it is affixed to the goods. Likewise, a hang tag must be affixed to the goods to be acceptable. These new requirements are expected to become effective in October 2019.
If you have questions about what may constitute an acceptable specimen for either goods or services, please let us know.
USPTO Adopts a More Aggressive Audit Program
The other significant change at the Trademark Office is with respect to their ongoing audit of post-registration filings. This year, the Trademark Office announced that it intends to double the number of trademark registrations it audits, bringing the number of audits to 5,000. The Trademark Office audits the accuracy of claims made by registrants in their post-registration maintenance filings made between the 5th and 6th years after registration, and every 10 years after registration. If a registration is selected for audit, the owner will be required to submit proof of use of the mark in connection with additional goods and/or services in the registration in addition to what has already been submitted. Audited registrations with unsubstantiated claims may be cancelled in whole or in part. A registrant will learn if it is selected for a random audit by the issuance of a post-registration Office Action. The registrant will then have six months to respond to the audit. The post-registration Office Action is ignored at your peril – if the registrant fails to respond to the Office Action, the registration will be cancelled.
If the registrant responds to the audit by deleting any goods and/or services, the registrant will receive a second Office Action that will require the registrant to submit proof of use of all remaining goods and services. Thus, when filing a maintenance or renewal document, it is extremely important to review all the goods and services in a registration and confirm that the mark is actually in use with all of them. If it is not, those goods and services must be deleted.
We have handled a number of post-registration audits already this year and expect they will become more and more common.