Clients who are seeking to obtain, maintain or renew a federal trademark registration have always been required to submit “specimens of use” of the trademark to the United States Patent and Trademark Office (“USPTO”). Over the years, the USPTO has become stricter in regard to acceptance of specimens of use.
Effective February 15, 2020, the rules regarding specimens of use become even stricter, particularly with respect to screenshot specimens. Trademarks can be registered for goods, as well as services. The requirements for specimens of trademark use on goods are, and will remain, different for goods, and services.
Until now, specimens of use of a trademark on goods are photographs of the goods showing the trademark attached to the goods. Where that is not practical, or to avoid the issue of “trademark use” versus “ornamental use,” acceptable specimens have been packaging, labels, tags, or point-of-sale displays. Under the new rules, where packaging, labels, or displays are used for the specimen, the goods must be included with the packaging, labels, tags, or displays. Where the specimen will be labels or tags, the specimen must show the labels or tags attached to the goods.
With respect to services, use of the mark is demonstrated by the advertising of the services where the advertising displays the mark and describes the services that have actually been rendered (and will continue to be rendered). Advertising materials typically include flyers, but, more recently, screen prints of website pages displaying the mark describing the services set forth in the application or registration have become acceptable specimens of use with services. Under the new rules, all screen prints of advertising services must include the URL of the website as well as the date of the screen print.
While there are some work arounds to the above new rules for submitting specimens of use of a trademark, those work arounds are better dealt with on a case-by-case basis.
The purpose of the new rules is to eliminate fraudulent specimens of trademarks that are not actually in use in U.S. interstate or foreign commerce. Such fraudulent representations of use of a trademark have included mock-ups, artist’s renderings, printer’s proofs, computer illustrations and digital images.