Friday, 7th September, 2012
New specimen rules for US trade marks
Owners of United States trade mark applications and registrations may be called upon to provide additional examples of use under new rules announced by the United States Patent and Trademark Office (USPTO).
The new rules allow the USPTO to request additional examples of use of a trade mark in the United States before a trade mark is registered, or when a trade mark registration is being maintained or renewed.
Evidence of use is already required for trade marks in the United States but typically the USPTO will accept minimal examples of use in order to support trade mark applications and registrations covering a broader range of goods and services.
From the USPTO's perspective, the new rules are designed to ensure that the United States trade marks register remains an accurate reflection of marks that are actually in use in the United States for the goods or services claimed. If use cannot be shown, the trade mark will be restricted or cancelled.
At this stage the number of applicant and registrants likely to be affected is small. However, if the initial project shows the reliability of the register to be an issue the project may be expanded or further measures implemented to address that issue.
These new measures will not affect those applying to register in the United States on the basis of their Australian or New Zealand registrations. However, those with existing trade mark registrations in the United States might find that they are being asked to supply additional examples of their trade marks in use to maintain or renew their registrations.