USPTO Updates Rules Regarding Proof of Use of Trademarks

Synopsis: Beginning December 21, 2019, trademark owners will face increased proof of use/trademark specimen requirements with respect to trademark applications before the US Patent and Trademark Office (“USPTO”).

The USPTO has made significant revisions to its rules recently in an effort to combat fraudulent filings. Changes already in effect include a requirement to have an online account for completing maintenance filings, and a requirement that foreign applicants designate a US attorney as an agent. On December 21, 2019, additional changes to 37 C.F.R .§ 2.56 go into effect. Although the main purposes of this latest rule change are to mandate that trademark applications be filed electronically and that each applicant must include an email address, there are also changes to the rules regarding acceptable specimens of use of trademarks.

There are two main components to the changes for specimens of use: (1) specimens that are screenshots of websites must show the full URL of the web page on which the goods are offered for sale (or where the services are advertised and described), and must show the date that the screenshot was taken; and (2) product packaging specimens must now also include an image or description of the product, either on the packaging or in addition to the packaging itself. For example, if the mark appears on a plain box, the trademark owner must also include a picture of the product next to the box. Similarly, applicants will no longer be permitted to submit hangtags and labels alone: the tags and labels must be affixed to the actual goods in order to be accepted as specimens of use.

These increased requirements are not entirely unexpected. In Trademark Trial and Appeal Board proceedings, the standards for usage evidence for trademarks has been higher for some time now, so the rule change brings the trademark prosecution requirements in line with the trademark dispute requirements. Also, the USPTO believes it has detected a recent influx of fraudulent filings in which applicants have attempted to fabricate specimens of use in a number of different ways. The new requirements should help the USPTO combat these fraudulent filings.

If you are preparing a trademark application, statement of use, or renewal for an existing application and have questions about acceptable specimens, feel free to contact Julia Sutherland, Jay Myers, or Becki Lee.