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Tag: Statement of Use

Trademark Specimens

Except in a few cases*, a trademark will not be registered until the mark has been used.  The Trademark Office won’t register a trademark unless the applicant provides proof of how the mark is used in commerce.  This is a reflection of trademark law, which focuses on the fundamental concept that trademark rights arise out of trademark use, because rights are associated with the public’s recognition of a mark – once a mark is used in public, the public has an interest in not being confused by others’ use of similar marks.

In a Section 1(a) trademark application, the applicant must include proof of how the mark is being used in commerce at the time of the filing, because the 1(a) filing basis signifies that the mark is currently being used.  In contrast, with a Section 1(b) trademark application, the applicant can provide proof of use of the mark at some time after the application is filed, as long as, at the time of filing, the applicant had an intent to use the mark in the future.  There are reasons a person might want to file a 1(b) application instead of waiting to use the mark, and there are reasons a person might want to wait until beginning use to file a trademark application.

Use of the mark has to be shown in a particular way.  It has to be use that demonstrates the mark is being used in commerce.  Mere advertising for goods is not enough.  Letterhead, business cards, invoives, etc. typically aren’t enough.  And now, the TTAB has stated that a YouTube video is not enough.  As reported over at the TTABlog, without including in the specimen a means for downloading or ordering the goods or services offered over YouTube or other similar web outlets, use is not established:

We acknowledge the advent and certainly the trend of music being offered in downloadable formats or the equivalent thereof in lieu of the traditional trade channels for tangible sound recordings, e.g., CDs being sold via retail or online stores. But we nonetheless find dispositive that applicant’s specimen does not include a “download” or similar link to put the consumer on notice that the identified goods (“audio recordings featuring music”) are indeed available for download or the equivalent thereof.   In re Rogowski, Serial No. 77083475 (December 11, 2012).

So, care must be taken when submitting proof of use of the mark.  An improper specimen can jeopardize an application, though some actions can be taken to salvage it.  The best practice is to submit a good specimen showing clear use, especially when the use is unquestionable.

* Trademark applications based on foreign registrations do not require proof of use to be registrable.  This article will only discuss applications asserting a domestic basis.  More on foreign trademark bases here.

Insurance Extension Requests in Section 1(b) Trademark Applications

When an Section 1(b) intent-to-use trademark application receives a Notice of Allowance, the applicant has six months to file an acceptable statement of use to prove that the applied-for mark is being used in commerce. Applicants that fail to file by the six-month deadline can request a six-month extension, and indeed, can continually file those requests extending the time for a statement of use out to a maximum of three years from the Notice of Allowance.

A statement of use can be filed anytime during a currently pending six-month period. However, any corrections to a filed statement of use must also be filed within that six-month period or within an extension period following afterward (if available – an extension period can’t extend past the 3-year mark). Applicants place themselves in risky situations when they file on the last day of the six-month period or close to the last day of a six-month period – if anything goes wrong, it will likely be impossible to correct the deficiency within the period.

To dampen that risk, an “insurance extension request” can be filed. An insurance extension request is a hedge against your statement of use. If the request granted, the extension provides you with an extra six months to correct any problems with your statement of use.

Why would you file an insurance extension request, especially there are filing fees associated with it that might be forfeited if you don’t need it? Well, there is a certain amount of processing time in the Trademark Office. It is highly unlikely that a statement of use will be evaluated and accepted or rejected the same day it is filed. The statement of use is first assigned to ITU staff and is then forwarded to the Trademark Examiner assigned to the application. This can take often take a week or two. If you file a statement of use one or two days before it is due, there is little chance that the filing will even land on the Trademark Examiner’s desk before that deadline has already passed. If the statement of use is acceptable, that’s fine. But if the specimen doesn’t show the mark quite right, or the Examiner thinks that the goods shown in the specimen are different from the goods identified in the application, there may be a problem that can’t be cured. So there is a chance that you will lose out the $100 / class fee for the insurance extension request, but failing to file one could cost you the application if there are problems in the statement of use.