The Impact of Non-Compliant Specimens on Brands (Part 2)

I. Introduction

The previous report discussed the impacts of non-compliant trademark specimens on the application, registration, and maintenance processes, along with suggestions for providing specimens that meet USPTO requirements. Conversely, possessing genuine and compliant specimens allows applicants to leverage the advantage of 'first use' to protect their trademark rights when infringed, effectively utilizing specimens to counter acts that violate their trademark interests.

II. The Role of Specimens in Trademark Registration and Maintenance

Rooted in USPTO examination requirements [1], trademark use must be demonstrated through specimens of actual use to help protect trademark registration. As mentioned in the previous report, the US follows the first-to-use principle, and its requirements for specimens are stricter compared to other countries. Thus, providing valid and compliant specimens that meet USPTO standards is necessary.

As crucial elements throughout the entire process of a US trademark—from application to registration and subsequent maintenance—specimens are closely linked to the USPTO's examination of the trademark. Examiners use these specimens to better understand and assess the genuine use of the trademark, which also impacts the validity of the trademark registration. To some extent, it can even affect the ownership of the trademark rights.

In summary, whether a trademark is genuinely and effectively used in the US is paramount. It is essential to preserve specimens during the use of the trademark to solidify the foundation for maintaining one's trademark rights, ensuring preparedness. In essence, a trademark is like a weapon that can be actively used to counter infringement by others, and specimens are the 'ammunition' loaded into that weapon, serving both for self-defense and as a deterrent to others.

III. How to Proactively Use Your Specimens to Protect Trademark Rights

For US trademarks, the entire process of application, registration, and maintenance is inseparable from specimens, which play a critical role at key moments. Holding compliant and genuine specimens gives trademark owners more confidence, whether when explaining use to the authorities or in confrontations with others. So, when discovering that your trademark rights are being harmed, with the support of compliant specimens, you need to maximize their advantages to protect your trademark rights.

For a mark not yet registered: File an Opposition with the Trademark Trial and Appeal Board (TTAB) during the opposition period.

According to the Trademark Board Manual of Procedures (TBMP) [2] §102.02, an opposition is a proceeding in which a third party seeks to prevent the registration of a mark in whole or part on the Principal Register. Upon monitoring a trademark that potentially harms your interests and is not yet registered, you can proactively file an opposition with the TTAB within 30 days of its publication date. Additionally, note that pursuant to TBMP [2] §301.02, marks registered on the Supplemental Register cannot be opposed.

For a registered trademark: File a Cancellation petition or utilize the two new ex parte procedures (Ex Parte Expungement and Ex Parte Reexamination).

(1) Cancellation:

According to TBMP §102.02, a cancellation is a proceeding in which a third party seeks to cancel a registration, in whole or part, on either the Principal or Supplemental Register. A cancellation petition can only be filed after a mark is registered. Upon monitoring a registered trademark that is currently harming or may potentially harm your trademark interests, you can proactively file a cancellation petition with the TTAB. Notably, under TBMP [2] §307.02(a), a cancellation petition can be filed against a mark registered for less than five years based on any grounds that could have initially prevented registration. For marks registered for five years or more, grounds such as likelihood of confusion or lack of distinctiveness generally are no longer available.

(2) Ex Parte Expungement and Ex Parte Reexamination:

On December 18, 2021, the Trademark Modernization Act of 2020 (TMA) implemented by the USPTO came into effect [3]. These two new ex parte procedures allow any party to challenge any goods or services in a registered trademark by providing prima facie evidence that the mark has never been used in US commerce for those goods/services [4]. Compared to opposition and cancellation proceedings, these ex parte procedures involve initial review by the USPTO Director to verify the basis of the petition, and their process is relatively less complex and time-consuming.

Leveraging the three methods above, depending on the applicable situation, compliant and valid specimens can, on one hand, dispel any doubts from third parties or the Office regarding the genuine use of the trademark, creating a favorable impression. On the other hand, supported by genuine and compliant specimens, you can proactively challenge acts deemed to infringe upon your trademark rights, effectively preventing and controlling the risk of infringement. It is evident that specimens can serve as powerful support for safeguarding trademark rights, escorting the use and maintenance of the trademark.

IV. Conclusion

This report discussed the role and significance of specimens throughout the entire process of US trademarks, from application to maintenance, and three methods for proactively using specimens to protect trademark rights. This report introduced several professional terms: TTAB, Principal Register, Supplemental Register, Ex Parte Reexamination, and Ex Parte Expungement. The next report will provide detailed explanations of these terms. Stay tuned.

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Pengzhuyun Policy Research Department

June 30, 2023

References:

[1] Why the USPTO Audits Registrations: https://www.uspto.gov/trademarks/maintain/post-registration-audit-program

[2] Trademark Board Manual of Procedures (TBMP): https://tbmp.uspto.gov/RDMS/TBMP/current

[3] USPTO's Trademark Modernization Act Implementation: https://www.uspto.gov/trademarks/laws/2020-modernization-act

[4] Trademark Modernization Act of 2020: https://www.congress.gov/116/cprt/HPRT42770/CPRT-116HPRT42770.pdf#page=2606