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The USA is a market of huge commercial significance (actual or potential) to many businesses, and in order to help create or preserve a share of that market some intellectual property rights, whether patents, designs or trade marks, can be essential.

The USA is, in some respects, a little out of step with much of the rest of the world in relation to trade mark matters. For example, most countries do not require a trade mark applicant to prove that they are using a mark before that mark can be successfully registered, but this does pertain, in many instances, in the USA.  In addition, the US Patent and Trademark Office (USPTO) requires owners of registered marks to provide “specimens” showing the mark in use in relation to the goods and/or services for which the mark is registered.

The USPTO has just issued some new guidelines concerning applications for US trade mark registrations, and these guidelines come into effect from 15 February 2020. The new guidelines set out requirements for what constitutes acceptable trade mark specimens, and take official notice of online sales.

Trade mark specimen requirements

For goods, the specimen must show actual “use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on displays associated with the goods”. Specimens for goods may include, for example, a photograph or photocopy of (1) the actual goods bearing the trade mark, (2) an actual container, packaging, tag, or label for the goods bearing the mark, or (3) a point-of-sale display showing the mark directly associated with the goods.

A label or tag that is not shown physically attached to the goods may be accepted if, on its face, it clearly shows the trade mark in actual use in commerce. However, in order to clearly show actual use in commerce, the tag or label would, in addition to showing the mark, be expected to include information that typically appears on a label for the relevant type of goods, such as net weight, volume, UPC barcodes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.

For services, the specimen must show “a direct association between the mark and the services” through use “in the sale of the services, including use in the performance or rendering of services, or in the advertising of the services”.

When webpages are used as a specimen, the URL of the page, and the date on which the page was accessed or printed, must be provided to the USPTO with the filing of the specimen.

Requirement for applicant email address

Another feature of the new USPTO guidelines is a requirement that all trade mark applicants must provide an email address. This is in addition to any attorney email address. Accordingly, in future we shall be asking clients for this information when we are instructed to file a new US trade mark application.

Further information

If you have any questions concerning these new guidelines, or US trade marks in general, please do not hesitate to get in touch with your regular contact at Nash Matthews.