US Sections 8 (and 9 and 15) and 71 - practice, audit program, fake specimens
Daniel Smart, COLMAN+SMARTdaniel.email@example.comCITMA Paralegal Seminar – 12 October 2018
Use in the USA – when is it required?
Application filed onSection 1(a)‘Use in Commerce’ basis – use to be included in applicationApplication filed onSection 1(b)‘Intent to Use’ basis – use needed to secure registration once Notice of Allowance issued (six months - extendable)NOTE: Section 44(e) ‘Foreign Registration’ and Section 66(a) ‘Application based on the Madrid Protocol’= no use neededSection 44(d) is a priority claim and, usually, gets converted to a 44(e) basis when the priority application registersUnderSection 8andSection 71(our focus this afternoon)Use = providing the date of first use of the mark anywhere and the date of first use of the mark in commerce (application) or confirming use in commerce (registration), as well as submitting a specimen (example) per class showing how the mark is actually used in commerceFiled withUSPTO(nationals and IRs)
Sections 8 and 71
Between thefifth and sixth yearof the anniversary ofregistrationBetween theninth and tenth year*of the anniversary ofregistrationBetween the19thand 20thyear*of the anniversary ofregistration, and so onGrace period = six monthsSection 8= fornationalregistrationsCombined with Section 9 when mark is due for renewal *Section 71= for US designations ofInternational RegistrationsFor IRs,renew at WIPO(N.B. IR renewal calculated from different date, the IR registration date) so never combined with Section 9When there’s five years continuous use, can file aSection 15 Declaration of Incontestability(nationals and IRs) – simple statement, no evidence – combined Sections 8 & 15 and 71 & 15 forms available
Excusablenonuseunder Sections 8 and 71
The purpose of Sections 8 and 71 are to remove'deadwood'registrations from the Register. They are not intended, however, to cancel registrations because of atemporaryinterruption in the use of the mark due to circumstancesbeyond the controlof the ownerIf a mark is not in use in commerce but the owner believes the registration should not be cancelled, they can file an affidavit or declaration showing thatnonuseis due tospecial circumstancesthat excuse thenonuseand not due to any intention to abandon the markShowing =prove; a mere statement is not sufficient
Excusablenonuseunder Sections 8 and 71
The affidavit or declaration must state when use in commerce stopped and give the approximate date when use is expected to resumeIf the mark was registered under Sections 44(e) or 66(a) and the owner was unable to commence use due to special circumstances beyond their control that excuse thenonuse, the owner should state that the mark was never in use and give the approximate date when use is expected to beginAffidavits or declarations should also specify the reason fornonuse, the specific steps being taken to put the mark back in use, and any other relevant facts to support a finding of excusablenonuseSufficient facts must demonstrate clearly thatnonuseis "forced by outside causes"
Use in foreign countryUse on differentg+sUse of mark in another formNegotiations with distributorsBusiness decisionDecreased demandRetoolingIllness, fire & other catastrophesOrders in handSale of businessTrade embargo
Use in commerce
Section 45 of the Trademarks Act defines"use in commerce"as follows:The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purposes of this Act, a mark shall be deemed to be in use in commerce--(1) on goods when—(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and(B) the goods are sold or transported in commerce, and(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.
Use in commerce
Must be interstate, territorial, orbetween the United States and a foreign countryIntrastate use (i.e. in a single state) not accepted as such, but can be. For example, automotive service station located in one state was providing services “in commerce” because services were available to customers travelling interstate on federal highwaysTerritorial refers to US territories (e.g. Puerto Rico)Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone lines to access a website
Use should be onALLgoods/services
or the unused goods/services should bedeletedfrom the registrationThe Declaration submitted would be false if the applicant claims use on certain goods/services when there is not useWhat’s good practice?(imho)Cut-and-paste the specification on to a blank pageSeparate each item (i.e. after each semi-colon) on to a separate lineHave an additional column for client/business colleague to confirm use (and that they can provide evidence of use on that good/service if required) ornonuse
“Trademark owners submit one specimen per class with six and ten-year declarations of use filed pursuant to Trademark Act Section 8 or 71. During a pilot program, we randomly selected 500 trademark registrations for which owners filed six-year declarations of use. We audited these registrations by requiring the owners to submit proof of use for at least two additional goods or services per class.The program improved the integrity of the trademark register by allowing us to cancel audited registrations with unsubstantiated use claims or remove unsupported goods and services from others.Trademarks that are not in use on all registered goods and services may unnecessarily block future applications. They also allow trademark owners to maintain rights they are not entitled to maintain. Because removing these registrations or deleting goods or services not in use is crucial for maintaining an accurate register, we made the program permanent.”
Post Registration Proof of Use Audit Program
Began in November 2017All single-class registrations with four or more goods/services in the class and multiple-class registrations in which at least two classes have two or more goods/services in each class are potentially subject to auditAll declarations of use are examined anyway, but auditing increases the possibility of an Office Action (six-month deadline)If you receive an Office Action based on the audit it will identifytwoadditional goods or services for each audited class. You must submitproof of usefor each identified good or service
Proof of use isdifferentfrom a specimen
Proof of use requires additional evidence that demonstrates that you actively use your mark in commercewiththe goods identifiedFor example, the following types of specimens wouldnotmeet the criteria for proof of use:A hangtag by itself that doesnotidentify the goodsA label by itself that doesnotidentify the goodsPackaging by itself that doesnotidentify or show the goodsFor services, proof of use is the same as a specimen
Responding to the Office Action
Submit proof of use for the audited goods/services; orDeleteallgoods/services that the trademark is not used on; orDeleteonlythe audited goods/services if there is no use…Then the USPTO will issue a second Office Action requiring proof of use forallof the remaining goods or services for which you have not provided proof of useNice try, dude!
Office Actions being issued for renewals are quite unusual in most countriesMake clients aware of potential additional costs with US TM renewals for responding to Office Actions$$$$$
Mocked-up or fake specimens are increasing with greater sophisticationApplicants pasting their marks on products or services of others to show use in commerceUSPTO are aware and are doing their best to refuse the fraudulent specimensThey have also launched the 'TM Specimen Protests Email Pilot Program'
EmailTMSpecimenProtest@uspto.govand include either:objective evidence of third party use of the identical image without the mark in question, such as the URL and screenshot from an active website or a digital copy of a photograph from a print advertisement and the publication in which it was featured, orthe prior registration numbers and/or serial numbers of applications in which identical images of objects, mock ups of websites, etc., all bearing different marks have been submitted to the USPTOhttps://www.uspto.gov/sites/default/files/documents/Specimen%20Protests%20Email%20Pilot%20Program.pdf
Emails must be received no later than the 30th day after publication for opposition or, in other words,by the opposition deadlineCurrently only applies toSection 1(a)‘Use in Commerce’ applicationsPotential to roll out to other times when specimens are filed, including under Sections 8 and 71______________________________________________Submitting a fake specimen could subject an attorney to discipline by the OED (Office ofEnrollmentand Discipline)
Over to Kane and then over to you…
Questions?Comments?Suggestions?Your best practicerecommendations?
Removing ‘deadwood’ in EU/UK
Shorter non-use period?Shorter registration terms?Mandatory use of TM to renew/maintain?Relative grounds examination?