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The USPTO Is Strictly Reviewing Specimens

In recent years, the USPTO’s review of specimens for Statements of Use, Allegations of Use, and post registration filings has become more stringent. Applicants are well advised to carefully consider the types of specimens to submit to the Trademark Office in order to acquire or maintain trademark rights. It is best to submit specimens that show the mark in use with the goods and/or services in a sales environment or in a real-world setting. It must be an authentic example of how you use your trademark in commerce in providing your goods and services. For more information on specimens, see our webpage entitled, Specimens – Look Simple But Can Be Tricky.

The Trademark Office is concerned about the accuracy and integrity of the Trademark Register. A couple of years ago, the USPTO initiated an audit program to review post registration filings. This stringent review for post registration proof of use appears to have impacted specimen examination for Statements of Use and Allegations of Use recently. Specimen refusals are becoming more common in everyday practice. Practitioners and applicants must now pay more attention to the types of examples of use used to substantiate claims of use in commerce.

According to the USPTO, the audit program for post registration maintenance has been a success. It has been reported that the program has allowed the Trademark Office to remove goods or services from about fifty percent of the audited trademark registrations. This has led to a more accurate Trademark Register. The audits are randomly selected. A trademark registration may be audited if it contains at least one class with four or more goods or services or if it has two classes with two or more goods or services. If your trademark registration is selected for an audit, you will receive an Office Action from a Post-Registration Examiner. Typically, the Office Action will identify two goods or services for each audited class and require an applicant to submit proof of use for those additional goods or services.

For goods, its recommended that the applicant submit photos of the goods with the branding at the point of sale. In addition to showing the mark, the tag or label should have information commonly displayed in a particular industry, such as a list of contents or ingredients, net weight, volume, UPC bar codes, or other information common to that industry. Keep in mind that if you submit a screenshot of a webpage for goods there has to be sufficient ordering and purchasing information. For example, a specimen for downloadable software must show a means of downloading or purchasing the software.

If your mark is used in connection with services, an appropriate specimen may be a copy of a brochure or promotional material where the mark is used in advertising the services. Other acceptable specimens for services may include, photographs of the mark on business signs for a retail store or restaurant, a copy of a menu from a restaurant, a business card showing a direct association between the trademark and the services, and contact information for the source, photographs of the mark on a business vehicle, or screenshots of webpages where the mark is used in the sale or advertising of the services. If you choose to submit a screenshot of a webpage, you must also comply with the recent rule change requiring additional information for the webpage. You must include the url and the date you accessed or printed the webpage in your submission. This can be shown directly on the specimen itself or you can include this information in the TEAS form.

If you respond to the Office Action and meet the requirements, the USPTO will issue a notice of acceptance. However, if the applicant merely deletes the goods or services requested to be audited, the USPTO will respond by issuing a second Office Action requiring proof of use for all the remaining goods or services in the registration. Instead, should the applicant not be able to provide proof of use for the goods or services in the audit, the applicant should delete ALL goods or services for which it cannot provide proof of use, not just the ones selected for audit and submit additional specimens for any remaining goods or services where proof of use has not previously been submitted. This action will avoid a second or third Office Action. If your registration is selected for an audit or if you have questions regarding proof of use, please feel free to contact our office for a courtesy consultation.