U.S. Trademark Office Heightens Scrutiny of Trademark Applications and Registrations
October 7, 2020
A relative outlier compared to the trademark regimes in most of the world, the United States Patent and Trademark Office (“USPTO”) only permits registrations to be maintained for goods and services that are actually being provided in the U.S. and only allows registrations to issue based on a future “intent to use” in limited circumstances. In other words, under the U.S.’s trademark system, trademark owners are not entitled to grab additional registered rights beyond the scope of their actual business activities in the U.S. While previously the Office was somewhat lenient in accepting claims, more recently the USPTO appears to be cracking down on applicants to ensure consistency on the U.S. Register. A few emerging examination trends demonstrate this trend:
BROAD CLAIMS BASED ON INTENT TO USE
Previously: Applications based solely on the applicant’s stated bona fide intent to provide all claimed goods and services were accepted based on this representation alone.
Recently: The USPTO has started requiring applicants of seemingly unrelated goods and/or services to justify how they could have a bona fide intent to provide various, disparate goods and/or services and explain to the office their business plans to support such a claim.
BROAD CLAIMS BASED ON ACTUAL USE
Previously: When filing the required example of use during the application stage, the USPTO accepted as sufficient evidence of continued use one example showing the mark used on any one good or service of the registrant’s choosing in each class covered in the registration.
Recently: The USPTO has started requiring applicants of seemingly unrelated goods and/or services to provide specific additional examples of use for all or a USPTO-selection of claimed goods and/or services covered in the application.
AFFIDAVITS OF CONTINUED USE
Previously: When filing the required Affidavit of Continued Use during the maintenance or renewal windows for registrations, the USPTO accepted as sufficient evidence of continued use one example showing the mark used on any one good or service of the registrant’s choosing in each class covered in the registration.
Recently: While only one example of use per class is required when filing the Affidavit of Continued Use, these Affidavits are subject to the USPTO’s audit program where the Examiner can require the registrant to provide specific examples of use as to goods and services selected by the Examiner.
SPECIMENS OF WEBSITES
Previously: When filing examples of use (called “specimens”) consisting of print-outs or screenshots of websites, the USPTO accepted the print-out or screenshot as captured.
Recently: In addition to the print-out or screenshot, the full URL for the web page as well as the date the print-out or screenshot was captured or accessed must be provided.
SPECIMENS OF PRODUCT PACKAGING, HANG TAGS AND LABELS
Previously: When filing specimens consisting of product packaging, hangtags, or labels, the USPTO accepted an image of the packaging, hangtags, or labels alone, provided the applicant further explained that each was used with the product claimed in the trademark application.
Recently: The USPTO requires that an image of the actual claimed product appear either on the packaging or in addition to the branded packaging itself. Specimens consisting of hangtags or labels must now be shown to be physically affixed to the claimed product.
All trademark owners should take heed to carefully tailor its trademarks with the USPTO to reflect only those goods and services it actually provides under the mark in the U.S. In the case of foreign trademark owners who may base their registrations off their intent to use only for the first few years of a registration, they should be prepared to justify how all claimed goods and services will be provided during the application process, even though they are not yet required to provide evidence of actual use in the U.S.
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