USPTO Updates Examination Guide for Proof of Trademark Use

Seyfarth Shaw LLP

As we reported in November 2019, the USPTO has been making significant revisions to its rules to combat an influx of fraudulent trademark filings.

Some of the biggest rule changes last year were to specimen requirements. The USPTO required that screenshots of websites needed to show the full URL and date, and that product packaging needed to be accompanied by an image or description of the product. In other words, hangtags by themselves or empty boxes were no longer acceptable.

In the wake of these new rules, practitioners and pro se trademark applicants also saw an increase in refusals on the basis that a specimen was a “mockup” or something that “only exists in cyberspace.” Until recently, a “mockup” refusal could be issued where, for example, a trademark owner submitted a proof of an advertisement or website, but did not submit the final in-use version. Now that technology applicants have started creating credible specimens with improved technology even where a mark is not actually in use, the USPTO must issue these refusals more frequently. Although these refusals may occasionally trip up trademark owners who are actually using their marks in commerce, they are designed to keep trademarks off the registry where the applicant has merely created a digital file that makes it look like the mark is in use.

To help examining attorneys navigate a situation where the specimens appear suspicious, and to help trademark owners navigate the process of submitting an acceptable specimen of use, the USPTO has issued a revised examination guide.

The guide runs through a number of ways the USPTO identifies a digitally created or altered specimen, or a mockup, such as “the mark appears to float over the product or container” and “the mark appears superimposed onto signage or other advertising or marketing materials for service.” The guide also gives examining attorneys some paths for requesting information to determine the authenticity of the specimen, like asking the applicant for proof of sales or the source of the image submitted as a specimen of use. Examining attorneys are also permitted to search the internet for extrinsic evidence where the specimen appears suspicious. For example, if an examining attorney believes the mark has been superimposed on another party’s image, the examining attorney can conduct a reverse image search on Google. If she finds the original image and it appears to support a specimen refusal, she can add that information to the prosecution record.

Based on this new examination guide and our experience, we have compiled a few tips for avoiding a refusal for mark owners who are legitimately using their marks in commerce:

  • If the mark is in use in connection with services, find a website that clearly displays the mark in close proximity to a description of the services.
    • If providing a PDF printout of a webpage, the printout should already include the full URL and date. If taking a screenshot, include the date from the corner of your computer screen and make sure the full URL is visible at the top of the webpage.
    • Make sure the description in the specimen easily matches the description of services in the application. The USPTO description likely will not match the website verbatim, but the examining attorney should be able to review the specimen and immediately understand what the mark owner is offering.
    • Avoid, if possible, submitting a PDF file of an advertisement or brochure. Instead, submit a picture of the printed file displayed in public in the exact manner that it is used in commerce, or show the advertisement as it ran in a publication.
  • If the mark is in use in commerce in connection with goods, make sure your specimen clearly displays the mark as it appears in the drawing in the trademark application.
    • If the mark is printed on packaging or a hangtag, try to include the goods in the picture. For example, show the shirt with the hangtag attached, or take the product out of the box and set it beside the box before taking the picture.
    • If the goods cannot be removed from the packaging, make sure the packaging includes a description of the goods. For example, if the mark owner uses the mark in connection with insect repellents, the specimen would be a picture of the spray can showing the mark and “insect repellent” on the can.

If you have a non-traditional type of good or service that requires some special considerations, for example you sell large industrial equipment and it is impractical to submit a specimen according to the guidelines above, explain those considerations in your application in the “Miscellaneous Statement” field so the examining attorney has that information up front. And if you receive an Office action refusing your application, call the examining attorney to talk it through.

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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