Rule Regarding Specimens of Use for U.S. Trademarks

U.S. trademark registrants and applicants may soon face additional hurdles in proving use of their marks, due to a final rule and pilot program implemented by the United State Patent and Trademark Office (USPTO) beginning today, June 21, 2012.

The new rule allows the USPTO to require additional use specimens per class in connection with trademark applications, maintenance and renewal of registrations, and amendments to registered marks. The additional information will be reviewed by an examining attorney rather than a paralegal, and thus may be subject to stricter scrutiny than in the past. Depending upon the registrant’s or applicant’s response to a request, the USPTO may require further specimens.

The USPTO claims to have codified existing practice in the context of pre-registration review. However, the USPTO infrequently issued such requests to applicants in the past. Now that the rules explicitly provide for such requests, there is some risk that they will occur more often, resulting in additional Office Actions and corresponding costs.

Registrants and applicants may avoid some additional expense by providing their counsel with at least three (3) acceptable specimens of use for different goods/services in each class before filing any documents alleging use or continued use, and by considering strategically the timing of submission of these documents.

This is just portion of a longer article published in the World Trademark Reporter (Registration Required).