Requirements for Multiple Specimens are on the Rise at the Trademark Office
Sherman IP helps applicants respond to Trademark Office Actions for applications they filed on their own. (Sherman IP Office Action Services) A Stanford Law School analysis shows that over 50% of self-filed trademark applications get rejected, and Sherman IP’s experience shows that a significant amount of those Office Actions deal with errors by Applicants providing the Trademark Office incorrect specimens. The purpose of a specimen is to show the Trademark Office that the trademark is actually being used with the goods or services claimed in the application or registration.
Prior to 1989, a U.S. trademark application was contingent upon a trademark first being used in interstate commerce on its goods or services. An Applicant’s mark already needed to be “in use” on the claimed goods or services.
When filing the application, it was common practice to just file a single specimen for one of the claimed goods or services in a class as proof of use, even if there were multiple different goods or services being claimed in the same class. Any specimens of use on any of the goods or services in the class were sufficient. Likewise, renewal of a trademark registration also requires proof of continuing use, and a similar practice (filing one specimen for an entire class) was common on renewals as well.
The Trademark Office has now announced enhanced audit requirements reflecting a determination to ensure that the goods or services claimed actually support the registration. See, Federal Register, Vol. 81, No. 120 (Wednesday, June 22, 2016). Further, the Trademark Office has also just announced reformatted oaths and declarations on Verified Statements that accompany specimens. Applicants should expect this initiative of more careful examination of specimens to expand throughout the trademark examination corps. This new emphasis should apply to both traditional “Actual Use” applications and “Intent-to-Use” trademark applications.
The so-called “Intent-to-Use” (ITU) trademark application was created in 1989 to conform to practice in other countries, and allow the United States to join the international Madrid Protocol. If a user intends to use a mark then they are able to file a preemptive trademark application, and thereby “lock up” a name for their goods or services. Applying for an ITU trademark allows a business owner to claim rights to a trademark ahead of the trademark actually entering the market.
Once the ITU application is approved by the trademark examining attorney, the actual registration still remains contingent upon its being used and proof of actual use (verified specimens) being provided to the Trademark Office before the registration will issue. That proof must be filed within a set time after the Trademark Office gives the applicant a Notice of Allowance.
If you are considering applying for federal registration of your trademark, the correctness of your proof of “use” is paramount for validity.
Providing the Correct Proof of “In Use”
Both types of applications (an Actual Use trademark application and an Intent-to-Use trademark application) require a “depiction” (drawing) of the mark be provided upon filing. A use-based trademark application, however, must also include an actual “specimen” of the mark as used in commerce. This is a simple requirement, right? Not necessarily. Not just any use will do, and the Trademark Office has some fairly strict rules as to what it will accept. As with any application, an experienced trademark lawyer can help you choose a specimen likely to pass muster. However, here are some general rules:
-The specimen must show the mark as it appears on the actual goods. A “mock up” is insufficient: For goods, you must submit a sample or photograph of the mark on the product’s label, packaging or other tangible location. For services, the specimen must show the mark being used in selling or advertising the services.
-Appearances of the mark being used but that are not directly associated with the goods (e.g., invoices, letterhead, brochures, “ornamental” uses on promotional clothing or other items) are also generally unacceptable.
-The appearance of the mark on your website alone may not be an acceptable specimen unless you demonstrate that customers can actually order the goods through the site; merely promoting goods available only through the mail or in a store will probably not be enough.
-If the mark is used for a service rather than goods, the specimen must show the mark used in connection with the provision or advertisement of that services. However, unlike a mark for goods, use of the mark on a business card, sign or website may be sufficient.
Other Considerations
Be prepared to submit additional specimens, especially if your mark is used more as a corporate brand used on different goods or services. The experienced trademark practitioners in our firm have found that Trademark Office requests for multiple specimens in such instances have increased in recent years, and we expect this demand to increase further with the Trademark Office’s proposed new rules. This seems to be particularly likely if your goods and services don’t appear to be closely related, even if they are listed in the same Class.
Both use-based and ITU applications must be signed under oath, and the discovery of a deliberately false statement can result in denial of the application and even possible fines or imprisonment. Remember that an ITU applicant attests to having a good faith intention to adopt the mark, while a use-based applicant states that the supporting specimen is a bona fide example of actual use. If it later becomes an issue, the Applicant may be required to provide documentary evidence of either use or intent to use.
At the risk of stating the obvious, no matter how tempting it may be, you should never submit as a specimen an example that hasn’t actually been used in commerce. It’s far better to file an ITU application when you have decided to adopt a trademark, as soon as possible, and then submit a legitimate specimen of actual use when it becomes available.
The Value of an Experienced Trademark Lawyer
While applying for trademark registration through one of the many “do-it-yourself” services found on the Internet, can be tempting, they are not a substitute for the guidance of an experienced trademark lawyer. Working with an attorney can help you avoid the many pitfalls in the application process and ensure that you obtain the full protection of your mark that a federal trademark registration can provide.
In addition to the traditional manner of hiring an experienced Sherman IP trademark attorney to file your trademark application, Sherman IP also supports a very cost effective vehicle for Applicant’s wishing to hire an attorney to file their Trademark application. The AKeyMark Platform, at AKeyMark.com, allows an Applicant to hire an attorney to file their trademark application for a low flat fee of $399.00 per application, plus government filing fees. Each application goes through a systematic audit, The AKeyMark Audit, to make sure that items like the specimens should pass muster and includes a short consultation with an experienced Sherman IP Trademark attorney.