The Impact of Non-Compliant Specimens on Brands (Part 1)

I. Introduction

The previous report discussed the USPTO's investigations into compliance of practicing attorneys and three potential solutions after an Amazon trademark brand registry application is rejected. Since the USPTO required representation by a US licensed attorney, its examination of trademarks has become increasingly strict. Among these, specimens of use, as a crucial part of the entire trademark application, registration, and maintenance process, have seen a particularly high incidence of rejections by examiners due to issues.

II. Impact of Non-Compliant Specimens under the First-to-Use Principle

What are specimens of use? Simply put, they are samples demonstrating the genuine use of a trademark in US commerce, accurately reflecting how the trademark is used on the specified goods or services in the US market. Acceptable specimens must show the trademark used on the goods or services. The type of specimen required depends on the goods/services specified in the application. Generally, at least one specimen corresponding to the actual use for one product in each class is required.

Unlike most 'first-to-file' jurisdictions, the US adopts a 'first-to-use' principle, where priority of rights is determined by the date of first use in commerce. Therefore, providing evidence of earlier use gives the trademark owner a significant advantage in maintaining trademark rights.

In 2021, the USPTO Director noted in a blog post [1] that the historic surge in US trademark applications in 2020, driven by cross-border e-commerce growth, government subsidies, and fee adjustments, revealed challenges from an increase in suspicious applications ranging from inaccuracies to fraud. Many applicants, eager to register, submitted unproper used evidence. To protect applicants seeking legitimate registration, examination standards have tightened, making non-compliant specimens a frequent ground for refusal.

During examination and maintenance, whether specimens meet requirements is a key factor in determining registrability and long-term validity. Non-compliant specimens will likely lead to refusal. Initially submitting false or forged specimens can create an impression of bad faith. If non-compliant specimens are submitted again, further refusals prolong the examination cycle and reduce the likelihood of registration.

Moreover, non-compliant specimens can become grounds for opposition or cancellation by a third party. During such proceedings, if the applicant cannot provide evidence supporting the earliest use date when required, it places the applicant at a significant disadvantage.

Thus, non-compliant specimens severely impact registration and maintenance, potentially preventing applicants from fully protecting their rights and even leading to loss of the trademark.

III. How to Provide Compliant Specimens

Always provide genuine, effective, and compliant specimens during the application process.

According to the USPTO's Trademark Manual of Examining Procedure (TMEP) §904.03, acceptable specimen forms and requirements include:

(1) Product photos showing labels/tags with complete product info and the logo.

(2) Photos showing the mark applied directly to labels/tags on goods/containers.

(3) Photos showing the mark on normal commercial packaging.

(4) Photos/screenshots of downloadable/recordable software, or evidence from a website.

(5) Point-of-sale displays like banners, shelf displays, menus.

(6) Catalog pages featuring the goods (including image/description, mark, ordering info).

(7) Webpages offering goods for sale (including image/description, mark, ordering method). URLs and access/print dates are required. The site must be accessible and ship to the US, featuring elements like:

① 'Shopping cart'/'bag' buttons.

② Phone number/email address.

③ 'Contact Us,' 'Customize,' or 'Configure' buttons.

(8) Instruction manuals bearing the logo.

(9) If the mark cannot be placed on goods/packaging, invoices, bills of lading, or shipping documents showing the mark.

Carefully preserve specimens during use for future needs.

Seek reliable agencies/attorneys for professional advice.

If compliant specimens cannot be provided at filing, consider other filing bases:

① 1(b) Intent-to-Use: File first, submit specimens after approval and publication.

② 44(e) Foreign Registration: Based on a home-country registration; specimens not required pre-registration.

③ 44(d) Foreign Application Priority: Based on a pending home-country application; specimens not required pre-registration.

IV. Conclusion

This report discussed the impacts of non-compliant specimens and provided suggestions for submitting compliant ones. But how can one proactively use specimens to enforce trademark rights when infringed? The next report will reveal this. Stay tuned.

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Pengzhuyun Policy Research Department

June 20, 2023

References:

[1] USPTO's 2021 Comprehensive Strategy to Combat Trademark Fraud: https://www.uspto.gov/blog/director/entry/uspto-s-comprehensive-strategy-to...

[2] TMEP Specimen Examination Guidelines: https://tmep.uspto.gov/RDMS/TMEP/current#/result/TMEP-900d1e489.html