The USPTO has recently updated its requirements for ITU trademark applications and specimens and increased its scrutiny of them during examination. Applicants who provide a statement of use should understand these new requirements in order to prevent a refusal of their trademark application.
Trademarks Generally
Trademarks in the United States are earned through use — that is sale of goods or services bearing the trademark or service mark. US Applicants seeking federal registration of their trademark with a trademark application to the USPTO can generally file their trademark application in one of two ways. Applicants already using their mark may submit a use-based application, or a Section 1(a) actual use trademark application. Applicants with a bonafide intent to use the trademark on goods and services may request examination of their application prior to using it with an intent-to-use trademark application, or a Section 1(b) trademark application. The primary difference between a Section 1(a) and 1(b) application is the requirement that Section 1(a) trademark applications MUST include a statement of use and a specimen. A specimen usually shows the applied for trademark as it appears to consumers purchasing the goods or services. In order for Section 1(b) trademark applications to be registered, those applicants must also submit a statement of use and a specimen, though they are granted additional time to do so.
These new changes are thought to be in response to a discovery of an overwhelming number of what are suspected to be fraudulent applications. Many of these applications contained disparate or unrelated goods and provided specimen which were very suspicious. Allegedly, many of them originated from China. In response, the USPTO updated its rules to increase the scrutiny of trademark applications.
Changes to ITU Trademark Applications
Previously, applicants were only required to provide a statement that they had a bona fide intent to use their mark with all the goods applied for in an ITU trademark application (Section 1(b)). Now, applicants who ask their mark be registered for a broad range of “seemingly unrelated” goods and/or services, may be refused unless they can provide an explanation of a business plan to support how or why such goods would be offered under the same trademark.
Changes to Actual Use Trademark Applications
Goods and services are classified into 45 classes. These broad categories are broken down into highly specific goods descriptions which can be found in the Trademark Identification Manual. Previously, an applicant claiming a variety of goods or services in a single class would only need to show one example of their trademark on a good or service in that class. The USPTO accepted that one example as sufficient to prove use in commerce. Now, when a USPTO Trademark Examining Attorney identifies a broad range of goods, but the specimen fails to sufficiently show use of the trademark on that broad range, it may refuse the application and require evidence of use on the broader range of goods.
For example, if an applicant filed a Trademark Application in International Class 25, they may claim “Socks; T-shirts; Winter coats; Scarves” as the goods in their application. If the applicant only provided a specimen showing the trademark on a T-shirt, the Trademark Examining Attorney may require the applicant also show examples of the mark on socks, winter coats, and scarves. Additionally, the applicant may be required to submit a verified specimen showing these, one that is certified to have existed prior to the application date or notice of allowance. This can put the applicant in a difficult situation if they have not yet manufactured the additional goods.
