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New Trademark Rule for Use Requirement Begins on March 21, 2017

Daniel Mills, Trademark Attorney

Posted Friday, February 24, 2017 by Daniel Mills

The key to trademark rights is use in commerce. With or without federal registration, rights are created by use. The rights are stronger with federal registration, but nonetheless, if there is not proper use, there are no rights. When applying for a trademark at the USPTO, an applicant is required to submit a specimen of use showing the mark used in commerce in the category of goods or service for which it had applied before a registration is granted.

A common example is a broad category of Clothing. You can find registrations where the goods description contains every article of clothing imaginable; e.g. (shirts, hats, sweatshirts, pants, socks, and ties). You can also find registrations where the description is “tops”. This is significant because when one applies for a trademark, whether under existing use or intent to use, the applicant is only required to submit proof of use in commerce for one good in its description. So, in the above example, proof of use on a bow tie would satisfy the requirement for the entire description. This will continue to be the rule for new applications

Beginning on March 21, 2107 that requirement will change when it comes time for filing the affidavit of continued use under section 8 or section 71 as part of trademark maintenance. Under the new rule, the USPTO has the right to request further documentation, proof, and declarations for ALL the goods listed in the description. Under the previous example, the trademark owner may have to submit proof of use on each article of clothing listed in its description.

It will be interesting to see the effect this will have on goods and services descriptions, line expansion, and foreign trademarks coming into the US where standards are different.

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
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