Intellectual Property Law Knowledge Center

U.S. Trademark Office Makes Process Changes to Combat Bad Faith Filings

May 12th, 2020

By Bridget Labutta

The ongoing pandemic of COVID-19 has changed the way the United States Patent and Trademark Office (USPTO) operates, but the work of protecting intellectual property continues, albeit in a different manner. So, when a public meeting of the Trademark Public Advisory Committee (TPAC) was held on April 17, 2020, it was held online.

Much of the meeting focused on new rules at the Trademark Office that have taken effect over the past year or so. Most of these rules are an attempt by the USPTO to combat bad faith filings, examples of which include:

  • Registration with no intent to use a mark, only to sell it.
  • Registration with intent to put into only token use in order to sustain registration.
  • Registration with intent to use the mark to trade on the goodwill of another party.

Below is a summary of the new rules.

  • U.S. counsel now is required to file documents with the Trademark Office for any foreign applicant, registrant, or party before the Trademark Trial and Appeal Board (TTAB).
  • Specimens of use cannot be fake or look fake. This means digitally created images (i.e., most of the product photographs or brochures that a trademark attorney might cut and paste from a client’s website) might not be accepted. Website printouts must display an accurate URL and the date of printing.
  • Every application and registration must include an email address for the client, which must be different than the email address for the attorney of record and correspondent.
  • Every applicant and registrant must provide a physical mailing address; applicants may not use a P.O. Box. This applies to every applicant and registrant.

In addition to the above points, the Trademark Office has started to conduct random audits of registration maintenance filings. The point of the audit is to determine whether the trademark really is in use with all of the goods/services identified in the Declarations of Use filed to maintain registration. The selection of marks to be audited is entirely random; it is not an indication that the Declaration of Use filing was deficient or otherwise improper.

A registration is eligible for audit if it includes at least one class with four or more goods/services, or at least two classes with two or more goods/services. When submitting a Declaration of Use, trademark owners are required to submit only one specimen per class. However, the audit requires proof of use for at least two additional goods/services per class as chosen by the Trademark Office. This can be a heavy burden and it may be best addressed with the assistance of US counsel.

If you have any questions about or need assistance with an application for registration of a U.S. trademark, please contact me at 888.291.5676.

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