The USPTO’s final rule change (Changes to the Trademark Rules of Practice to Mandate Electronic Filing, 84 FR 37081) went into effect earlier this year (February 15, 2020). Among other things, this rule impacts the types of specimens that the USPTO will accept. Although the “new” rule has been in effect for awhile, many applicants still aren’t aware of it. Failure to keep up with these changes can mean the difference between approval and refusal. So here are the top 3 things you need to know about submitting specimens under the new rule.
(1) ADDITIONAL INFORMATION IS REQUIRED WHEN YOU SUBMIT
A SCREENSHOT OF A WEBSITE AS A SPECIMEN.
If you submit a screenshot of a website, you must tell the USPTO two things:
a. The URL (website address) of the website depicted;
AND
b. The date accessed (month, date, and year when you visited that website and
created the screenshot).
You have two options of where to put this information:
a. You can put this information directly on the specimen, itself;
OR
b. You can enter it into the textbox to the right of the wording “Description of
Specimen” in the application.
If you don’t include both the URL and access date, your application will be refused, and the USPTO Examining Attorney will not be able to fix this for you by Examiner’s Amendment. That’s because the URL and access date must be verified.
This is a problem that you can easily avoid! So make sure to include this information in the original application. However, if you forget, there are two ways to correct the mistake:
a. If you catch the mistake before your application is reviewed by a USPTO Examining
Attorney, you can file a Voluntary Amendment providing the URL and access date.
Just remember to sign the declaration so that your submission is verified.
OR
b. If the application already has been refused by the USPTO, you can provide the URL
and access date in your Response. Again, remember to sign the declaration so that
your submission is verified.
(2) UNAFFIXED LABELS AND TAGS MUST INCLUDE
MORE INFORMATION THAN BEFORE.
The USPTO distinguishes between labels and tags that are affixed to goods and labels and tags that are unaffixed. A label or tag is affixed to goods if it is physically attached to them (for example, a label glued to a box, a plastic ring that pierces through and connects a tag and a shirt, etc.). Unaffixed labels or tags might be shown on their own or in close proximity to the goods but are not physically attached to the goods.
The new rule impacts unaffixed labels and tags. These may still be acceptable as specimens, but they must now include more than simply the applied-for mark. Unaffixed labels and tags will only be acceptable if they show:
a. the applied-for mark
AND
b. “informational matter that typically appears on” labels or tags “in use in commerce
for those types of goods.”
The exact information that the USPTO expects to see on your labels and tags will vary from industry to industry. For example, labels for food, beverage, cosmetic, and similar goods should include a list of ingredients because labels for goods of that kind typically do. If it is customary to include things like net weight, volume, or UPC bar codes on labels for goods like yours, the USPTO will expect to see that type of information on your unaffixed labels. If you don’t include it, this may signal that you aren’t actually using these labels on your goods in the real-world marketplace; and that may trigger a specimen refusal.
(3) PRINTER’S PROOFS AND MOCK-UPS ARE SPECIFICALLY
CALLED OUT AS UNACCEPTABLE.
Technically, the USPTO was refusing printer’s proofs and mock-up specimens before the effective date of this new rule, but the rule officially calls out several types of specimens as unacceptable:
“an artist’s rendering, a printer’s proof, a computer illustration, a digital image, or a
similar mockup of how the mark may be displayed.”
An example of a printer’s proof is a design for a label sent from your graphic designer to you. The problem here is that the specimen is supposed to show how the consumer in the actual marketplace encounters your mark. A printer’s proof is exchanged between you and your graphic designer and shows only how the two of you see that mark, not how consumers in the public see it. A printer’s proofs also merely show how your mark might appear. It is a record of a design that you and your graphic designer considered using at some point. It is not evidence of how your mark really does appear on your goods in the actual marketplace.
An example of a mock-up is taking an image of someone else’s bottle and using software to remove the mark on that bottle’s label and replace it with your mark. The same reasoning applies, here: this kind of specimen does not show how consumers actually see your mark in the real-world marketplace. It just suggests an idea of how your mark might appear. Note that another problem here is that this kind of specimen does not even show your goods!
ARE MY SPECIMENS GRANDFATHERED IN?
Some specimens are “grandfathered” in. Understand that whether your specimen is “grandfathered” in depends on when you submitted the specimen and NOT on when you submitted the application. If you have a pending application, and you submitted a specimen before February 15, 2020, that specimen does not have to meet the new rule’s requirements for you to reach registration. Instead, if it is otherwise acceptable, it is “grandfathered” in. The new requirements apply only to specimens submitted on or after February 15, 2020. That includes both:
a. specimens submitted for the first time in an application
AND
b. substitute specimens – ones you submitted after your earlier specimen was
refused.
Put a little differently, just because you submitted your application before February 15, 2020, that doesn’t necessarily mean you’re in the clear. There are two common scenarios where the new rule requirements will come into play even for applications filed before February 15, 2020.
First, if the specimen you submitted before February 15, 2020 was unacceptable for another reason, and you now have to submit a substitute specimen, that substitute specimen must meet the new rule’s requirements.
Second, if you filed under Section 1(b) before February 15, 2020 and are preparing an allegation of use (either an Amendment to Allege Use or Statement of Use), then the specimen you submit with that allegation must meet the new rule’s requirements.
And if you submitted a printer’s proof or mock-up as a specimen before February 15, 2020, grandfathering won’t help you. The USPTO already had legal authority to refuse these kinds of specimens and was doing so in practice.
This information was posted on September 16, 2020 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.