The United States Patent and Trademark Office (USPTO) will not issue a federal trademark registration without the applicant first proving the mark (brand) being protected is actually being used in commerce. Whether the proof is submitted with the initial application (for actual use applications) or later in the application process (for intent to use applications), the applicant will need to submit specimen of use for the brand. The types of evidence varies depending on the type of class associated with the brand. For products, the specimen must be on the product itself, the packaging, or manuals. While service based classes can use marketing materials, such a flyers, websites, and signage.
On February 15, 2020, the USPTO is updating the rules of specimen that are submitted to prove use in commerce. The rules are becoming stricter. For goods, the goods themselves must be included with the packaging, labels, or displays. For apparel, hang tags or labels must actually be connected to the apparel, not merely next to the products.
Screen shots of websites showing the mark and detailing the services provided have been relatively standard as specimen over the years. Under the new rules, any such screenshots will now require the URL and a date of the screen print.
The purpose behind the new rules is to prevent the submission of fraudulent specimen for marks that actually are not in use. This is why digital images and mock ups of marketing materials are often rejected by the USPTO.
While the purpose of the rules is to help thwart fraud, one of the rule updates requires the inclusion of an applicant’s email address, not only the attorney’s email address. This was optional in the past. There is a known issue with companies mining the USPTO public records for applicant physical addresses and mailing official looking invoices that mislead applicants to pay fees that provide little to no value.
While the intent of the USPTO to require applicant email addresses is to help communication channels between the USPTO and applicants, the result will be greater access to applicants to those companies that mine USPTO databases trying to mislead applicants directly. As a result of significant push back from practitioners and the public at large, the USPTO is presently looking at ways to “mask” the applicant’s email addresses from public viewing.
For any questions about the new trademark rules or to look into protecting your brands, contact Greg Popowitz.
Registered Patent Attorney / Partner
Intellectual Property Litigation
213 East Sheridan Street, Suite 3
Dania Beach, Florida 33004