New Rule Regarding Specimens of Use for U.S. Trademarks

by Ladas & Parry LLP

U.S. trademark registrants and applicants may soon face additional hurdles in proving use of their marks, due to a final rule and pilot program implemented by the United State Patent and Trademark Office (USPTO) beginning today, June 21, 2012.

The new rule allows the USPTO to require additional use specimens per class in connection with trademark applications, maintenance and renewal of registrations, and amendments to registered marks. The additional information will be reviewed by an examining attorney rather than a paralegal, and thus may be subject to stricter scrutiny than in the past. Depending upon the registrant’s or applicant’s response to a request, the USPTO may require further specimens.

The USPTO claims to have codified existing practice in the context of pre-registration review. However, the USPTO infrequently issued such requests to applicants in the past. Now that the rules explicitly provide for such requests, there is some risk that they will occur more often, resulting in additional Office Actions and corresponding costs.

Registrants and applicants may avoid some additional expense by providing their counsel with at least three (3) acceptable specimens of use for different goods/services in each class before filing any documents alleging use or continued use, and by considering strategically the timing of submission of these documents.

Who May Be Affected?

From June 21, 2012 through June 21, 2014, the USPTO will require additional proof of use for approximately 500 randomly chosen registrations for which allegations of continued use are due.

Marks last registered or renewed between December 21, 2001 and June 21, 2009 may be affected, depending on how the USPTO determines the relevant dates.

• June 21, 2003 - December 21, 2003: will be subject to the pilot program, if selected
• December 22, 2003 – June 20, 2005: may be subject to the pilot program, potentially depending on date of submission of renewal application
June 21, 2005 – December 20, 2005: not subject to the pilot program because no filings are required during the relevant period
• December 21, 2005 – June 20, 2007: may be subject to the pilot program, potentially depending on date of submission of maintenance documents
• June 21, 2007 - December 21, 2007: will be subject to the pilot program, if selected
• December 22, 2007 – June 21, 2009: may be subject to the pilot program, potentially depending on date of submission of maintenance documents, if the pilot program is not extended under a new rulemaking
• Any Date: an amendment involving a change in the mark will require at least one (1) use specimen per class showing the mark as amended and possibly additional specimens on request.

However, upon expiration of the pilot, additional specimens and information may be requested whenever the USPTO deems it “reasonably necessary” for examination, in the pre- or post-registration context. Therefore, registrants who are able to file documents after June 21, 2014 to avoid the pilot may nonetheless receive additional information requests, although the likelihood of receiving additional requests outside of the pilot may be lower. All registrants and applicants should therefore prepare for the possibility of additional information requests moving forward.

How Can Trademark Registrants and Applicants Avoid Unnecessary Expense?

Registrants and applicants may avoid some additional expense by providing additional acceptable specimens of use for different goods/services in each class before any of the following:

• Filing an affidavit or declaration of continued use in a registration for which such document is due
• Filing a use-based trademark application
• Filing an amendment to allege use or a statement of use in an intent-to-use application
• Filing an amendment of registration that involves a change in the mark at any time: Under the new rule, registrants must submit at least one (1) new specimen per class showing the mark as amended, and additional specimens may be required.

A proper use specimen for goods (Classes 1-34) must generally show the mark affixed on the outside of the goods or packaging (typically a label or tag) or on a point of sale display associated with the goods. A proper use specimen for services (Classes 35-45) must show the mark as actually used in the sale or advertising of the services recited in the application or in the course of performing the services.

When one is armed with extra specimens at the outset, additional requests for evidence of use by the USPTO can be addressed more swiftly without additional correspondence, reducing the risk of potential delay and expense.

For further information about these developments, please contact us.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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