U.S. Trademark Office Becoming More Demanding About Specimens

  1. Introduction

The U.S. Trademark Office (“USPTO”) has recently instituted changes to their policies regarding acceptable specimens of use. The stated aim of these policies is to protect the integrity of the U.S. registry.  As trademark rights in the United States are based on use, the USPTO has become increasingly strict about the goods and services claimed in a Declaration of Use. They have instituted an audit program to ferret out those trademark registrations containing goods and services beyond those that are in use. They have also issued new guidelines under which specimens that were previously accepted will no longer be accepted.

For example, while the USPTO formerly accepted specimens where the goods are shown against a white background, they now question such specimens as computer-generated. And while they formerly accepted pictures of labels used on packaging of goods as specimens for those goods, now they require that the goods themselves be shown along with the packaging. They are increasingly refusing specimens that they considered to be digitally altered.

Under new rules, the USPTO now requires that any web pages used as specimens contain both the web address and the date of printing. And each specimen must be identified as to which goods or services it shows. The USPTO is recommending a list of exhibits be submitted.

The key tool the USPTO is using to force compliance with these more demanding standards is the post-registration audit. Under this program, the USPTO will ask the trademark owner to provide specimens for two randomly-selected items in the identification of goods or services. If the trademark owner cannot provide acceptable specimens, another Office Action is issued in which specimens for all of the goods and services in the registration are required. If the trademark owner fails to respond, the entire registration will be cancelled. Because of this program, it is necessary to delete all goods and services for which a specimen of use cannot be provided when filing any post-registration declaration of use.

Finally, as part of their new requirement that all foreign trademark owners use U.S. counsel in transactions before the USPTO, the USPTO will no longer accept P.O. Box numbers as the trademark owner’s address. The reason is that the trademark owner’s physical address indicates the domicile of the trademark owner. The USPTO uses domicile to determine whether a U.S. attorney is needed. Since anyone could hire a post office box anywhere, a P.O. Box address does not indicate domicile and is no longer acceptable.

  1. Proving use in U.S. commerce.

While we often refer to “specimens of use” or “evidence of use,” what the USPTO is looking for are “examples of use.”  A specimen of use is an example of how the trademark is displayed on the goods or in advertising or providing the services in the United States. The idea is to show how the U.S. buyer sees the trademark when the goods or services are delivered.

  1. The Post Registration audit program.

In 2017 the USPTO rules were changed to allow the Trademark Office to require additional specimens of use for randomly selected maintenance filings. That means that about 10% of registration maintenance filings (those filed 6 and 10 years after registration) will receive an audit letter. The audit will require that the trademark owner show use for two additional goods or services in each class in the registration. The exact goods are chosen by the USPTO.

If the trademark owner cannot provide the requested specimens, they will be deleted from the registration. In that case, the USPTO will issue a follow-up letter in which it requires the trademark owner to show use for all of the goods and services still remaining in the registration for which use has not yet been shown.

When filing maintenance of registrations, it is mandatory that the trademark owner delete every item of goods and services that is not currently being offered in the United States using the trademark. Now, because of the audit program, it is recommended that when filing maintenance for registered marks the trademark owner delete every item of goods or services for which a specimen of use cannot be provided.

Trademark owners should be informed of the possibility of an audit when they file the registration maintenance. They should be advised that if the file is audited (right now about 5,000 registrations a year are audited, but this number could increase at the will of the USPTO) there will be additional work and resulting costs. Failure to respond to an audit results in cancellation of the entire registration (even with regard to the goods or services for which acceptable specimens have already been submitted).

  1. Specimen requirements.

For goods, the best specimen is a photograph showing the mark on the goods or on a label or tag attached to the goods. The USPTO will no longer accept pictures showing only the label or tag. The specimen must show the label or tag attached to the goods. In addition, the USPTO will no longer accept pictures showing the trademark on boxes unless the box states what the goods inside are or the goods are visible inside the box.

Under the new guidelines, if a web page is to be accepted, it must show the internet address (URL) as well as the date the page was printed.

For services, any advertising that refers specifically to the services listed in the registration will be acceptable if it also shows the trademark prominently (usually at the top of the page).

Under new guidelines, each specimen must be identified as to which goods the specimen shows or which services it advertises. The USPTO is recommending a separate list with each filing that identifies each specimen.

  1. Digitally altered specimens.

            The USPTO has issued new guidelines directing examiners to reject any specimen that appears to have been digitally altered or “photoshopped.” The USPTO guidance lists several examples of specimens they will not accept:

  • The depiction of the product looks like a digital rendering rather than a real product. An example is a picture of the goods appearing alone on a white background.
  • The product, label, or packaging is missing information typically included in the trade.
  • The mark appears to float over the product or container.
  • Features of the item disappear near or around the mark.
  • The image includes pixelization around the mark.
  • The mark is not applied to the product in a manner consistent with the material composition of the product.
  • The website screenshot showing the mark includes placeholder text indicating that the website was not in use.
  • Features of the goods suggest that the goods are used while the tag or label to which the mark is applied appears new.
  • The labeling appears to be crudely applied to containers or plain boxes.
  • The mark appears superimposed onto signage or other advertising or marketing materials for services.
  • A webpage for an online marketplace, submitted as a display associated with the goods, includes indicia indicating that the mark is not in use in U.S. commerce or was not in use on the dates of use indicated in the application (e.g., language, currency, price, first available date, ship-to destination).

Because of this issue raised by the USPTO, specimens for goods should always contain “real world” backgrounds such as on a shelf, on a desk, or in a store display.

  1. Potential criminal penalties.

The USPTO is warning that when a trademark owner submits any statement of use, it can be held criminally liable under U.S. law if goods or services that are not in use are not deleted or the specimen is fraudulent.

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