By: Connor Edwards
The United States Patent and Trademark Office (USPTO) has made several changes to the trademark application requirements in the United States. This article discusses three need to know changes that are currently in effect.
Even though these changes have been in effect for some time now, many people are still unfamiliar with the changes, or are unaware that they even exist. Because the changes are critical to the success of a trademark application, it is important to understand each of the changes. The first two changes are relatively minor, but the third change requires a few additional items to consider and steps to take when completing your application.
The first change requires that all registrants must make an account on MyUSPTO.gov, which Lilenfeld PC has and maintains. In addition to this account, the user is required to login and provide proof of identity to file any trademark documents at the USPTO. In doing so the USPTO is able to keep registrants more accountable for their filings.
The second change only affects applicants, registrants, or parties to trademark proceedings who are not located within the United States. A person or an entity that fits this demographic is required to be represented by a US licensed attorney. The reason for this change is to ensure that the procedures and rules of the USPTO are more closely followed.
The third change and certainly the biggest change surrounds the specimen portion of a trademark registration. For those who might be unaware, in order to file a trademark, you must submit a specimen. A specimen is essentially a sample of your trademark being used in commerce. People used to be able to provide specimens very easily, and this allowed for many people to file using fake specimens. This new rule is intended to prevent these fraudulent specimens by having two big requirements. The first requirement is that a specimen that is a screenshot of a website, where the mark is being used in commerce, must contain the URL of the webpage as well as the date the screenshot was taken. The second new requirement states that product packaging specimens must also include an image or description of the product, either on the package or in addition to the packaging itself.
The reasons for the changes can be boiled down into two categories: (1) abuse of the system and (2) a lack of education around the rules and procedures of the USPTO. The USPTO perceived that many registrants, both foreign and domestic, seemed to be cutting corners and filing fraudulent trademarks. The additional requirements are here to help crack down on fraudulent filings and maintain the integrity of the trademark registrar.
Contact us if you have any questions about applying to register your trademark.