In order to register a trademark based on use in commerce, or to renew a registration based on a foreign or international registration, trademark owners are required to verify that the mark is in use in U.S. commerce with all goods or services listed in the application or registration. In addition, the mark owner must file proof of use (a “specimen”) that demonstrates use of the mark in commerce in connection with at least one good or service in each International Class.
The USPTO has announced that it will be rolling out new regulations in October 2019 that will tighten proof of use requirements for electronic submissions of trademark specimens in an effort to combat the rise of fraudulent, digitally altered specimens. While the details of the new regulations have not been released, we already know the new requirements will impact two popular forms of specimens, website screenshots and packaging/labels.
- Screenshots are commonly used as “displays associated with the goods” for trademarks or examples of advertising for service marks. The current regulations do not discuss the format of website screenshots, but the new regulations will require that all screenshots include a URL and access or print date.
- Packaging and tag specimens for goods will need to include both the packaging/tag and the covered goods. In other words, it will no longer be acceptable to submit the exterior packaging of a good – the packaging and the good itself must appear as part of a specimen. Close-up of clothing tags will also be rejected – the photograph must include the covered item (e.g., a t-shirt) as well as the label displaying the trademark.
The USPTO has also indicated that it will be expanding its post-registration audit program, which requires selected trademark owners to submit proof of use in connection with additional goods and/or services covered by an existing registration. Since the program’s inception, the program’s examiners have audited about 5,500 trademark registrations, and the expectation is that 5,000 registrations will be audited annually in the future.
We recommend that trademark owners keep the following considerations in mind:
- Ensure that you are using your trademark with all goods or services covered by an application or registration, or have a bona fide intent to use the mark with these goods or services. If use or a bona fide intent to use cannot be demonstrated, it would be best to proactively delete these goods and/or services from the application or registration
- Maintain up-to-date specimens for all goods and services with which a mark is being used. Whereas it was once common practice to re-submit a specimen that was used to support a prior renewal or during the application phase, the USPTO has clarified that “stale” specimens are unlikely to be accepted, even if the mark is being used in an identical manner.
- If you receive an audit request, make sure that a timely response is filed to avoid cancellation of the entire registration.