What Trademark Owners Need to Know About the New Trademark Rules

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

Owners of U.S. trademark registrations need to know about a few recent rule changes and be mindful of the changes and U.S. Patent and Trademark Office requirements whenever a declaration of use is due.

U.S. Trademark Office Rule Changes Regarding Showing Use of Registered Marks in U.S. Commerce

In the past, owners of trademark registrations that set forth a long list of goods or services in a single class would typically only submit a single specimen along with a declaration of use. For example, if a trademark registration identified “clothing, namely, shirts, pants, socks, and hats” in class 25, trademark owners were only required to submit evidence that the mark was in use on one of the items (e.g., shirts). While owners were also supposed to delete any items that were no longer in use, often this did not occur.

On February 17, 2017, new rules went into effect at the U.S. Trademark Office concerning declarations of use.[1] In particular, the U.S. Trademark Office may now require additional proof that trademarks are actually in use in connection with each good or service identified in a declaration of use. Such additional proof may include, according to the amended rules, submission of additional specimens of use or additional information, such as exhibits, affidavits, or declarations.

What does this mean? Specifically, trademark owners need to be more careful when signing declarations of use in order to ensure that the list of goods or services accurately lists only items that are actively used in U.S. commerce. Owners would also be well served to collect evidence of use for each item that remains in the description of goods or services, because an examining attorney at the U.S. Trademark Office is now much more likely to ask for such evidence.

The purpose behind the rule amendments is to encourage accuracy in the goods and services for which use is claimed and to promote the integrity of the trademark register. More practically, according to the amended rules, the public should be able to rely on the trademark register to accurately identify those marks in use when attempting to determine which marks may be available for registration.

Background to the Rules Amendments

The amended rules grew out of a pilot program that began in 2012 and that randomly selected 500 registrations for which declarations of use had been filed. The U.S. Trademark Office required owners of the selected trademarks to submit proof of use for each good or service identified in the registration, instead of the standard requirement of one specimen of use per class.

The results of the pilot program were instructive:

·       in 51% of the selected registrations, trademark owners failed to provide additional proof of use on specific goods or services for which owners initially claimed use;

·       of this 51%, in 35% of the selected registrations, owners requested deletion of specific goods or services for which owners initially claimed use; and

·       for the remaining 16%, the Office ended up cancelling the selected registrations because owners failed to respond with additional proof or failed to address other issues raised during examination of the declaration of use.

In sum, the pilot program appeared to succeed in identifying trademark registrants that claimed use on more goods or services than they had a right to. That success, in turn, led to the new rules allowing the Office to scrutinize more closely claims of use when registrants submit declarations of use.

In light of the increased scrutiny, we thought it instructive to review U.S. Trademark Office requirements regarding submissions of declarations of use, including when registrants must show use to maintain registrations, requirements for declarations of use, and appropriate specimens for submission in a declaration of use.

(1) When Must a Registrant Show Use of a Mark in Commerce

The U.S. Trademark Office periodically requires mark owners to submit evidence of current use of a registered mark.

Initially, between the fifth and sixth anniversaries of registration, a registrant must file a declaration of use in commerce, a specimen, and a fee (per class). For an extra fee, a registrant may file within a six-month grace period following the sixth anniversary date. Failure to file a declaration of use will result in cancellation of the registration.

Going forward, between the ninth and tenth anniversaries of the registration, and each successive ten-year period thereafter, a registrant must file a declaration of use in commerce, a specimen, and a fee (per class), as well as a renewal application. For an extra fee, a registrant may file within a six-month grace period following the tenth (or successive ten-year) anniversary date. Failure to file will result in cancellation/expiration of the registration.

(2) Use in Connection with All Identified Goods or Services

As noted above, when filing a declaration of use, the registrant must either:

·       declare that the mark is in current use in U.S. commerce in connection with all of the goods or services identified in a particular class;

·       delete a class, or delete those goods or services within a class, for which the mark is not in current use in U.S. commerce; or

·       claim excusable non-use for those goods or services for which the mark is not in current use in U.S. commerce.

We note that claiming excusable non-use is somewhat rare. To claim excusable non-use, a trademark owner must show that there is no intention to abandon the mark and that non-use is due to special circumstances beyond the owner’s control. The U.S. Trademark Office has provided some guidelines on circumstances that may or may not excuse non-use.[2]

(3) Use in U.S. Commerce

To qualify as use in U.S. commerce, a trademark registrant must meet the following requirements:

·       for goods: the mark should be used in connection with goods that are sold or transported in the United States and across state lines; and

·       for services: the mark should be used in connection with the sale or advertising of services that are rendered in the United States and across state lines.

In other words, use of the mark must be in a type of commerce that the U.S. Congress can regulate.

(4) Appropriate Specimens of Use

The U.S. Trademark Office is very particular about what material it will accept as specimens—or proof—of use of a mark in U.S. commerce. Below we provide some guidelines:

·       for goods: scanned images or digital photographs showing the mark being used on the actual goods themselves, on commercial packaging for the goods, or on point-of-sale materials for the goods.

·       for software: screenshots of software showing the mark, or a digital photograph of a display screen using the software and showing the mark can be appropriate specimens for software.

·       for downloadable software: a scanned image of a website can also be a proper specimen if it (1) includes a picture or description of the goods; (2) shows the mark sufficiently near the picture or description of the goods to associate the mark with the goods; and (3) includes information necessary to order the goods (e.g., an order form, an order link, a phone number, a mailing address, or an email address for placing orders). If the website simply advertises the software without providing a way to download it, the specimen would be unacceptable for goods.

·       for services: web pages, brochures, or other advertisements that show the mark as well as perform or describe one or more of the identified services.

In any case, we recommend allowing counsel to review any potential specimens before they are finalized and used in commerce, to help ensure that a registrant creates acceptable specimens and uses the mark in a manner that complies with appropriate trademark usage.

(5) Use of a Trademark Must Be Under the Control and Direction of the Registrant

When filing a declaration of use, a trademark registrant should also ensure that the declared use of the mark is by the owner of record or its written licensee.

If ownership information at the Trademark Office is not current at the time of filing a declaration of use, counsel should also obtain from the registrant the documents needed for recording an ownership change at the Trademark Office. Such documents become publicly available, so, to the extent necessary and possible, counsel should redact confidential material.

Further, should use of a mark be by a licensee of the registrant, counsel should work with registrant to ensure that an appropriate license agreement exists that grants registrant control over the use of the mark.

* * *

The above points are not exhaustive of all considerations that could arise when preparing a declaration of use. They do, however, highlight some important requirements for keeping trademark registrations in force. Further, as a best practice, registrants should review these considerations with counsel periodically during the life of a mark, and not just as declaration of use deadlines approach.

© 2017 McDonnell Boehnen Hulbert & Berghoff LLP

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[1] See 37 C.F.R. § 2.161 and 37 C.F.R. § 7.37.

[2] See TMEP §§ 1604.11 and 1613.11.