New Rule Regarding Specimens for Trademark Registration

Effective this week on June 21, 2012, the United States Patent and Trademark Office (“USPTO”) will begin a two-year pilot program that allows them to require additional specimens in connection with various trademark filings.

The public relies on the USPTO’s database of registered trademarks to clear trademarks that they may wish to adopt or are already using. When a potential trademark applicant searches the database and uncovers a similar registered mark, that party may feel compelled to change its plans to use the mark, or may incur costs and delays in determining whether the registered mark is still in use. The potential applicant may also incur costs in resolving a dispute over the mark. If a registered mark is not actually in use in the U.S., or is not in use on all the goods/services recited in the registration, these potential problems and costs may be incurred unnecessarily. Thus, accuracy and reliability of the USPTO database is critically important to trademark applicants. But there is a growing sense among practitioners that the USPTO’s register of trademarks does, in fact, contain many registrations for marks not in use on the full range of goods/services claimed – or not in use at all.

In response to this concern, the USPTO will be experimenting with requiring additional evidence that applicants are actually using their trademarks in commerce as they claim on the documents they file with the USPTO. The USPTO is implementing a two-year study during which they will randomly select 250 cases per year for additional audit. In those randomly selected cases, the USPTO can require that the registrant provide up to two additional specimens for each class of goods and/or services for which a mark is registered. Currently, applicants and registrants need only provide one specimen and are not required to provide specimens for every class of goods or services covered by their registration. These additional requirements may be imposed at the time of filing a use-based application, or when a registrant files its Section 8/Section 71 affidavits on already registered marks. The registrant will have six months to respond to such requests from the USPTO. No additional fees will be required from the registrant. The USPTO hopes that the program will enable it to assess the accuracy of the trademark database in order to determine whether new policies are required in order to ensure the accuracy of the trademark register. The full text of the new rule is available here. If you have questions about trademark registrations, please feel free to contact Barry Strike or Katherine Robb at Strike Kerr & Johns.

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alcohol advertising Trademarks United States Patent Trademark Office

This entry was posted on June 19, 2012.