Wednesday, 5th June, 2013
Trade marks in the US are a different beast
Increasingly New Zealand businesses are looking at how they can expand their businesses internationally. A small share of a big market can offer up significant growth potential.
Any business contemplating international expansion should consider what steps they need to take to protect their intellectual property in that new market. At the very least, most businesses have a trade mark that links their business and product with their customers.
It is also important to realise that different rules apply in different countries. This also applies to time frames, costs and registration requirements. There is no 'one size fits all' regime!
In the United States
Just because you hold a registration for your trade mark in New Zealand does not mean that you will automatically be able to register it in any other country.
The US is a popular market for New Zealand businesses to consider entering. Its sheer size presents many opportunities, but it also has its challenges.
Any business looking to operate in the USA should recognise that the USA plays by their own rules. And this equally applies to trade marks.
Unlike most other countries, owners of trade marks in the United States will, at times, be required by the United States Trade Mark Office (USPTO) to supply specimens of use of the trade mark in order to register or maintain their trade mark.
Sound easy? It does - but often meeting the USPTO's requirements as to what constitutes "use" can be fraught.
Failure to meet the USPTO's use requirements can result in the loss of trade mark rights. It is therefore important to get it right if the investment you have made by registering your trade mark in the USA is to be kept.
So what constitutes use?
A specimen of use is a sample showing how the trade mark is used in commerce in the US marketplace on the goods or in connection with the services as listed with your trade mark registration.
Below we give some guidance on what is considered acceptable specimens of use in the USA.
Specimens of use on goods
For a trade mark used on goods, the USPTO will want to see examples of the mark on the actual goods or on the packaging. The USPTO will generally accept:
- a tag or label for the goods showing the trade mark
- a photograph of a container or packaging for the goods
- a photograph of a display associated with the goods
- a photograph that shows the mark on the goods themselves.
The USPTO may accept:
- a catalogue or webpage that shows the mark sufficiently near the goods and a means for ordering the goods
- a relevant manual, such as an instructional manual, that forms a part of the goods.
For a trade mark used on goods, the USPTO will not generally accept:
- order forms
- bills of lading
- leaflets, brochures, publicity releases
- letterheads, business cards.
Specimens of use in connection with services
For a trade mark used in connection with services, the USPTO will want to see the mark used in the sale or advertising for the services. The USPTO will generally accept:
- a photograph of a sign or billboard displaying the mark and the service
- a brochure, leaflet or pamphlet about the service
- an advertisement for the service
- an extract of relevant web pages about the service.
The USPTO may accept:
- an invoice for the service
- a letterhead or a business card showing the mark in connection with the service.
For a trade mark used in connection with services, the USPTO will not generally accept:
- internal documents relating to marketing plans
- articles in magazines or newspapers
- printer's proofs for advertisements.
Deal to the beast
Any business that either has a trade mark registration in the USA or is contemplating registering their trade mark, should set up a system early to capture the use of its trade mark in the USA. While meeting the USA use requirement might sound easy, often it is not. It is not uncommon to have specimens of use rejected. The USPTO is getting tougher about what it will accept as acceptable use. Recognising that this is a hurdle that you will have to overcome to register or maintain your trade mark in the USA, get organised now so that when the use requirement needs to be met, it is not an onerous task.