Trademark registration is crucial for companies to protect their brand name and avoid illegal use. In 2020 and 2021, the United States Patent and Trademark Office (USPTO) adopted new rules that affect the trademark filing process, particularly around proof of use standards.
Mandatory Requirements for Trademark Filings
The United States Patent and Trademark Office (USPTO) introduced new required standards for trademark filings in 2020. Applicants filing new patent applications after February 15, 2020, must include their own email address, not that of outside lawyers or a foreign law company. If the candidate is represented by a U.S. attorney, the name, address, and email of the attorney must also be given. These changes aim to ease end-to-end computer processing of trademark applications and registrations, resulting in faster processing times and fewer mistakes.
Changes to Specimen of Use Requirements
The USPTO made changes to the example of use standards in 2020 that apply to trademarks used on goods. The goal is to ensure a stronger link between the brand and the goods it represents. The new rules particularly affect labels, tags, websites, and digitally made examples. Applicants must now show the brand directly connected to the goods or packaging or at least closely associated with the products. The webpage sample must include the URL and entry date. Digitally made or changed pictures that do not show real use of the mark in trade are no longer accepted as examples. These changes aim to provide better proof of brand use.
Labels and Tags
The new example of use standards places a greater focus on showing the brand directly attached to the goods or packing. For labels and tags, the best method is to present examples that clearly show the mark connected to the product or its package. However, the USPTO may take detached labels or tags in some cases, as long as the specimen shows the brand along with other relevant product details such as net weight, UPC codes, or contents. While this offers a bit more freedom, candidates are still advised to submit examples that show the closest possible link between the mark and the goods it represents. Attached stickers and tags remain the preferred and most safe choice.
Webpage Specimens
When sending webpages as examples of use, applicants must now include both the full URL of the webpage and the exact date the webpage was viewed or copied. This information is needed to provide a clear record of how the brand was used on the website at a particular point in time. Failure to include both the URL and entry date may result in the samples being rejected.
Unacceptable Digitally Created Specimens
The USPTO has explained that certain digitally made specimens are no longer allowed under the new rules. Artist’s drawings, printer’s drafts, and computer images are considered mere depictions that do not show real use of the trademark in business. These types of digitally made or changed pictures fail to provide sufficient proof of real-world use of the mark on the goods.
Impact of New Rules
The new trademark specimen standards expect greater care from candidates. Digitally made or changed pictures that do not show real use will likely be denied. Applicants must provide examples that show a clear, close link between the trademark and the things it represents, whether through connected labels/tags or other means that meet the USPTO’s standards.
Conclusion
In summary, the key changes to trademark filing rules in 2020-2021 include required email address requirements, updated specimen of use standards, and limitations on digitally made specimens. Following these new test standards is important for successful Trademark applications. Applicants must carefully analyze their models to ensure they meet the USPTO’s standards for showing real use of the mark in trade.
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