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Patents Q&A Trademarks

What Is a File Wrapper?

A file wrapper, synonymously called a file history, is the written record associated with a given patent or trademark application and any resultant granted patent or trademark registration. It is the official record for a given matter. Generally, the file wrapper includes more information than is formally published by a patent or trademark office in patents, published patent applications, or trademark registration certificates.

The sorts of materials maintained in file wrappers, the period of time those materials are retained, and the level and ease of public accessibility to them varies by jurisdiction. For instance, in the USA, patent application information is kept confidential initially and generally only made publicly available for published applications and granted patents, with pending applications normally published 18 months from the earliest filing or priority date (subject to potential non-publication requests). (35 U.S.C. § 122).

How & Where to Obtain a File Wrapper

In the past, file wrappers were only available as hard copies in on-site storage at official offices. Today, many patent and trademark offices make at least some file wrapper contents available online—though whether online versions are the official ones or not and whether the online versions are complete or not are questions that can vary by jurisdiction. File wrapper materials are generally also available as certified copies that must be specially ordered (and may have to be physically mailed). Usually a given file wrapper must be obtained from the relevant patent or trademark office that maintains it, although centralized file wrapper access for a few global patent offices is available.

The U.S. Patent & Trademark Office (USPTO) has “Patent Center” and Trademark Status and Document Retrieval (TSDR) online portals. Very old materials are not always available through these portals. Moreover, some materials are not accessible through Patent Center to the general public, like copies of non-patent literature. The USPTO also has a separate Certified Copy Center that allows officially-certified copies of file wrappers or specific documents from them to be ordered, upon payment of required fees. Certified copies of file wrapper may include materials that are not otherwise publicly available, and include official seals and signatures attesting to their authenticity.

The European Patent Office (EPO) has a European Patent Register with file wrapper information. These materials are also accessible via the Espacenet portal, by clicking the “Register” link within a given record.

There are also separate systems for file wrappers for PCT international patent applications and Madrid Protocol trademark registrations. These are the Patentscope and Madrid Monitor online portals maintained and administered by the World Intellectual Property Organization (WIPO). It is also possible to order certified copies of Madrid international trademark registration materials from WIPO, or for applicants to order certified copies of PCT applications from individual PCT receiving offices.

Additionally, Global Dossier portals provide access to file wrapper contents from a number of the most active patent offices worldwide, together with machines translations. Global Dossier has gone by other names in some jurisdictions, like “One Portal Dossier” in Japan and South Korea. Because of the availability of machine translations, these portals can be highly convenient for gathering information about foreign patent applications in other languages. But some documents may not be immediately available through these portals, either due to technical glitches or database update lags.

Why Might You Need a Wrapper?

There are many reasons a file wrapper might be consulted. For instance, they can provide a record of the prosecution history that may inform the status or interpretation of something related to a given patent or trademark. A record of official actions like rejections/refusals and/or applicant amendments or arguments might be found in the file wrapper. Particular documents within a file wrapper might be relied upon for various purposes, or might be needed for submission in other contexts. For instance, in U.S. patent law, the file wrapper might be relied upon for claim construction, doctrine of equivalents analysis, inequitable conduct inquiries, and more.

File wrapper materials in informal, online formats might be sufficient for many purposes, and may be free and easy to access. Information materials might be used for competitive intelligence purposes or as a reference example for work on an unrelated matter, for example. Certified copies or an entire file wrapper, or one or more selected documents from it, might be required for certain formal uses, such as to make priority claims in foreign applications or to be relied upon in legal proceedings where authentication of the materials is important.

The legal important of a file wrapper often depends on the substantive law of the relevant jurisdiction. Under U.S. patent law, prosecution history estoppel or prosecution disclaimer found in a file wrapper might arise and bind the patentee. But many other jurisdictions do not have any such patent prosecution estoppel doctrines, making file wrappers less formally significant. And, moreover, the USPTO does not accept formal file wrapper estoppel in trademark matters.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Patents Q&A Trademarks

What Is Prosecution History?

For patents and trademarks, the term “prosecution history” refers to the back and forth between an applicant and the patent or trademark office. It includes submissions by the applicant, starting with an original application and extending though any amendments or arguments the applicant might later make during official examination of the application. It also encompasses official communications, like office actions, and the particular rejections, objections, refusals, and other notifications that may be contained in them. Oral communications like interviews are a part of it too.

But “prosecution history” refers to more than just a set of documents or particular communications. It is a blanket or umbrella term that refers to all the actions and events involving the patent or trademark office from the time a new application is filed to through grant or registration and even beyond that to post-grant or post-registration actions involving corrections, maintenance or renewals, and the like. So, even if a particular document is purged or deleted or never made part of the permanent record, such a document and the events surrounding it are still part of the prosecution history.

Prosecution histories are important for many reasons. As reflected in “file wrappers,” they are often consulted to understanding the status of a pending application or of a granted patent or issued trademark registration. They can provide insight into why a patent or trademark registration was issued in a particular form, or why a application was abandoned. Sometimes events or materials from the prosecution history of a given patent or trademark registration can even impact the scope or validity of enforceable legal rights.

The prosecution history tends to matter most where prosecution history estoppel or prosecution disclaimer might arise and legally bind the applicant later on. In the U.S., it tends to be more important for patents than for trademarks. Many other countries have different laws that make prosecution history less consequential.

Have an invention you would like to patent? Have a brand you would like to register as a trademark? Concerned about infringing someone else’s intellectual property? Is someone else infringing your IP? Need representation in an IP dispute? Austen is a patent attorney / trademark attorney who can help. These and other IP issues are his area of expertise. Contact Austen today to discuss.

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Articles

New and Upcoming Changes in U.S. Patent & Trademark Law for 2023

Important Developments

At the beginning of 2023, following a year in which new filings declined, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.

Patents

Reduced official fees for small and micro entities

A change in the U.S. patent laws governing fee reductions for small and micro entities was passed as a small part of a wide-ranging legislative budgetary package at the very end of 2022.  The relevant portion was titled the Unleashing American Innovators Act of 2022.  It is characteristic of U.S. politics that certain non-budgetary matters like this are appended to budgetary legislation shortly before passage during a holiday season with little public discussion.  These patent fee reductions therefore came as somewhat of a surprise.  As of December 29, 2022, most official patent fees are now discounted by 60% for small entity applicants (previously this was only a 50% reduction) and by 80% for micro entity applicants (previously this was only a 75% reduction).  These reductions apply to most official fees associated with initial filing fees for new applications, actions during examination (such as extension of time fees, request for continued examination [RCE] fees, etc.), as well as fees after grant such as maintenance fees.  The requirements to qualify as a small or micro entity are unchanged. 

The newly amended law further gives the USPTO power to impose fines for false assertions of small or micro entity status of no less than three (3) times the fee underpayment—with no pre-defined upper limit on that amount.  Such fines are not yet in effect and will require the USPTO to first issue implementing regulations that will establish exactly how they will be assessed.  However, depending on the scope of later regulations, this creates the possibility of significant penalties for innocent or negligent errors.  Historically, a fraudulent assertion of small or micro entity status, done knowingly or willingly with intent to deceive the USPTO, would qualify as inequitable conduct that renders the associated patent unenforceable.  But the appeals court responsible for all patent appeals set the threshold for the required intent to deceive extremely high.  While the possibility for unenforceability due to intentional fraud will remain, the USPTO will have new authority to impose fines if the assertion of entitlement to small or micro entity fee reductions was merely “false”.  There is no explicit statutory requirement for such a “false” assertion to be made with intent to deceive.  Thus, the USPTO can potentially impose fines without establishing intent to deceive, potentially including even good faith mistakes.  Failure to pay such fines will likely have an impact of the enforceability and/or abandonment/lapse of an associated patent or application.  It is unclear how the USPTO will discover or otherwise come to know about false assertions of entity size in order to subject applicants and patentees to fines.  It will therefore be important to monitor subsequent USPTO regulations regarding these fines and to see how existing safe harbor provisions for correction of good faith errors will be affected, if at all.  In the meantime, this highlights the need to accurately determine entity size status and to notify the USPTO at the appropriate time if entitlement to reduced fees is lost. 

Non-DOCX filing format requirements postponed (again)

The highly unpopular surcharge for U.S. non-provisional utility patent applications in a non-DOCX file format has been postponed until January 17, 2024 [Update: this deadline has been again postponed beyond a previously-announced April 3, 2023 and June 30, 2023 implementation deadlines].  Although even when in effect this surcharge will not apply to PCT national phase entries, provisional applications, plant applications, or design applications.   Additionally, the USPTO has extended a highly limited opportunity to file a back-up applicant-generated “Auxiliary PDF” version of an application filed in DOCX format indefinitely, in order to potentially allow for later correction of USPTO-side conversion errors involving the DOCX version. These postponements and extensions are the result of many objections from U.S. patent practitioners and practitioner organizations

The non-DOCX surcharge is part of the USPTO’s plans to automate certain administrative tasks to reduce administrative overhead costs and staffing associated with legacy systems for processing application materials.  While touted as providing benefits to applicants and practitioners, the reality is that there are no meaningful benefits to applicants or practitioners.  But, alarmingly, the USPTO has pushed forward with its cost-cutting objectives despite substantial problems apparent with its new Patent Center platform used for DOCX format filings and its tendency to introduce errors.  In effect, the USPTO has prioritized budgetary cost-cutting over maintaining the integrity of the contents of newly filed patent applications.  This is what has troubled practitioners most of all. 

In brief, the Patent Center system alters uploaded DOCX-format patent application files and has been shown to introduce errors in the substantive content of some uploaded applications.  These errors occur only some of the time, but in a significant enough percentage of cases for it to matter.  This creates new burdens on applicants and their U.S. patent counsel to review uploaded applications to try to identify errors introduced by the USPTO’s electronic filing platform.  These burdens are particularly difficult to manage for U.S. applications based on a Paris Convention foreign priority claim, where U.S. counsel did not prepare the original application and is therefore less familiar with the intended contents.  In addition, the USPTO has greatly limited opportunities to correct errors resulting from the way its (proprietary) systems process, convert, “validate”, and alter uploaded application documents.  In many circumstances (when a priority claim cannot be relied upon), corrections must be made within one year of initial U.S. filing and will require a petition fee larger than the non-DOCX surcharge.  The USPTO has indicated it will deny petitions filed more than a year after initial filing seeking to correct errors that its proprietary computer systems introduced.  Moreover, the non-DOCX surcharge is essentially punitive.  It far exceeds the estimated administrative savings of $3.15 per application that the USPTO has been able to quantify.  Most problems with the roll-out of the non-DOCX surcharge are the result of the USPTO committing to adopt certain proprietary computer systems based on a cursory and inadequate initial investigation of alternatives, greatly misunderstanding the stability and capabilities of the DOCX file format (and its alleged status as a “standard”), and having unrealistic goals for software development associated with implementation of a new proprietary filing platform (and unrealistic projections of net cost savings), coupled with a Kafkaesque disregard for the burdens imposed on applicants and the general public by its actions. 

Guidance for creating application documents (hopefully) compliant for USPTO DOCX filing is available here.  Bu applicants with complex application content should consider the possibility of paying the non-DOCX official surcharge and filing applications in PDF format to avoid the risks associated with USPTO-generated errors in substantive application content. 

Hard copies of patents still being issued (for now)

[UPDATE: The USPTO has announced that electronic patent grants, now being called “eGrants”, will begin April 18, 2023. There will also be a transition period of unspecified duration during which paper ceremonial copies (with a certification statement and a special ribbon and seal) will still be issued in addition to an eGrant electronic copy. A paper presentation copy, certified copy, or ceremonial copy can be ordered for a fee after the transition period.] The USPTO previously announced that sometime in 2022 it would cease issuing paper patents and would issue only digital patents instead.  However, the USPTO has continued to issue hard copies of granted patents and has made no further announcements about the date after which only electronic patents will be issued.  Presumably, the USPTO will eventually cease to issue hard copies of patents (except upon an express request) but it is unclear exactly when that will occur.

Patent public search tool

The USPTO’s legacy open-access patent and published patent application search tools (PatFT and AppFT) have been retired. The PubEAST and PubWEST systems previously only available in-person (and to examiners) have also been retired.  In their place a new Patent Public Search tool is now freely available online. It is based on the old PubEAST/PubWEST tools.  Its new USOCR database allows U.S. patents granted before 1970 to be keyword searched—the old PatFT system previously had a 1970 cut-off for keyword searching. The launch of this new tool was rather awkward, with little training or instructional information initially provided on how to use it.  But, since its launch, training guides and frequently asked questions (FAQs) have become available.  This tool currently exists with two different interfaces:  Patent Public Search Basic (PPUBS Basic) and an advanced search. Both allow U.S. patents and published applications to be searched simultaneously.

The Basic search interface allows granted U.S. patents and published patent applications to be fetched by number, and allows some keyword-based searches, but returns only PDF copies. 

As the name implies, the advanced search includes advanced search functionality.  Although the advanced interface is highly esoteric and non-intuitive, and the interface may not display properly on all computers (in particular, primary the input field near the upper left sometimes appears hidden when the tool is opened on computers with small display screens like laptops).  The advanced interface is currently the only way the USPTO provides “full text” of published patent documents.  PDF image versions are also available by clicking the “T / [camera icon]” button at the top left of the “Document Viewer” panel that normally appears at the right-hand side of the screen along with the text.  Toggling that button allows switching between text or PDF image displays of a given patent document.   

Fetching a particular patent or published application by number is surprisingly difficult with the “advanced” interface.  A given patent can be queried using the “.pn.” field code or by typing in an “external search” URL to a web browser. But expect some frustration because these “external search” URLs do not seem to consistently work at all.

An alternative way to reach a particular U.S. patent or published application is to utilize the Patent Center interface and enter a patent or published patent application number.  From the resultant record, there are links available to the Patent Public Search text versions of the published application and granted patent (if any) under the Patent Center “Application Data” tab.  The button with the “T/[camera icon]” label can be clicked to toggle between a text view and a PDF image of the patent document in Patent Public Search. While navigating to patent documents through Patent Center requires many clicks, you might say too many, using it may still be easier than the other alternatives available through the USPTO.

More information about using Patent Public Search is available here.

More U.S. patent filing information

Please also see the Guide to Foreign Priority Patent Filings in the USA for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.


Trademarks

Shortened response periods in effect

The time period for responding to U.S. trademark office actions is now only three (3) months.  This shortened response period is indicated in new office actions.  Applicants can, however, request a single 3-month extension of time by paying an official fee (currently $125 if filed electronically). An extension must be expressly requested by the original 3-month deadline.  This shortened response period does not apply to Madrid Protocol extensions, which will still enjoy a full 6-month office action response period.  Moreover, shortened response periods will not apply to post-registration office actions until October 7, 2023. 

Unlimited window for expungement requests still open

Any party may request cancellation by expungement of some or all of the goods or services in a U.S. trademark registration because the registrant never used the mark in commerce with those goods or services.  Normally an expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, a temporarily unlimited expungement filing period is in effect until December 27, 2023 during which expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit.  In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023.  Expungement proceedings are available for all U.S. registrations but are especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required prior to registration.  Additional general information about expungement proceedings is available here, and a listing of reexamination and expungement requests made to date is available here

More U.S. trademark filing information

Please also see the Guide to Trademark Registration in the USA for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.

January 2023
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Agreements Copyrights Patents Q&A Trademarks

How Can I Correct An Assignment?

Assignments of intellectual property (IP) such as for patents, trademarks, and copyrights are sometimes signed and then an error is later discovered. This is often due to a clerical or typographical error or other inadvertent mistake. For instance, there might be a typo in the number identifying a given patent, patent application, trademark registration, or trademark application in a schedule listing many. It is possible—and beneficial—to correct an assignment to fix such errors, which can then allow correction of any prior recordation of the original assignment. But how can such a correction properly be made? There are a few different possibilities, including using mark-ups or creating a new corrective document.

Marking-Up and Approving Corrections

One approach suggested by the U.S. Patent & Trademark Office (USPTO) (in MPEP 323 & 323.01(b) and TMEP 503.06(b)) and the U.S. Copyright Office (in Compendium 2308.1) for making corrections to an assignment is to have each of the parties conveying the property in question, that is, all of the assignor(s), make and approve corrections on the original signed assignment. This involves the following steps:

  1. Cross out the incorrect text or number (using strikethrough or a conventional proofreader’s delete/dele/deleatur mark through the text with a protruding loop)
  2. Write in the the correct text or number next to the crossed-out information (ideally immediately above it) using printed or typed lettering; use a caret mark or similar line or arrow to show the proper place of insertion, if helpful (a suggested practice if the only or best available space for newly inserted material is in a nearby area spaced from the crossed-out information, such as at a page margin)
  3. Have each and every assignor initial (or fully sign) and date the marked-up corrections; full signatures are also acceptable and are appropriate if multiple signatories have the same initials; if the assignee originally signed the document then the assignee should initial/sign and date the changes too

An example excerpt of a marked-up patent assignment document to correct an error on the original is provided below. In this example, the city of residence (Paris) of one inventor-assignor was incorrect and has been crossed out and the correct city name (Neuilly-sur-Seine) written immediately above it (using deleatur and caret proofreading symbols). Both of the two inventor-assignors (Joe Public/J.P. and Jane Doe/J.D.) have initialed and dated the marked-up change.

Scanned excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials
Excerpt of example marked-up corrections of error on patent assignment with dated inventor-assignor initials

An advantage of marking up the original assignment is that doing so leaves no doubt that terms of the original assignment are still effective. The mark-ups make explicitly clear what specifically has been corrected. The adjacent initials/signatures and dates also clarify who approved the corrections and when. With the error in the original corrected, the chances that anyone might later cast doubt on the assignment due to that error are reduced or eliminated.

The retroactive (nunc pro tunc) effect of the corrections to the date of the original transfer of rights is inherent in the nature of marking-up and initialing/signing (and dating) changes on the original assignment document. This might be significant if something occurred between the time the original was signed and the time the error was discovered and corrected. For instance, if the original assignment with the error was already recorded, making marked-up corrections on the original facilitates recording the corrected document while making clear what specifically has changed.

The USPTO and the Copyright Office do not expunge or delete the previously recorded document, but instead further record corrected document(s) while noting that it is a corrective recordation. Although, uniquely, the Copyright Office will allow substitution of a corrected assignment within ten (10) business days of the original submission.

Keep in mind, however, that many aspects of assignments are a matter of state (or foreign) contract law, not USPTO or Copyright Office administrative procedure or even U.S. Federal patent, trademark, or copyright statutory law. Under black letter U.S. contract law, and presumably that of most other countries, it is not permitted to unilaterally modify or alter a contract after it has been signed. That may make the original voidable and may even be considered forgery, unless the assignment expressly permits a particular change (like later inserting application filing details). But having initials/signatures next to the changes from all the parties that originally signed the assignment removes doubt about their recognition of an error in the original and the fact that the correction/amendment was later made with their knowledge and approval. Although any material changes negatively affecting rights of the assignee or others will merit further attention, despite assignor approval.

However, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. Marked up corrections are not needed in that scenario, because the assignment with the error was not yet effective.

Newly-Created Corrective Assignment

Marking up and approving corrections to the original assignment is not those only way to correct errors. An alternative approach is to create a new corrective assignment document and have it signed by all the parties (meaning at least all the assignors). Federal agency guidebooks, in MPEP 323.01(b) (for patent assignments), TMEP 503.06(b) (for trademark assignments), and Compendium 2308.1 (for copyrights), recognize the possibility of such an approach for correcting previously-executed assignments.

For instance, if errors in a signed assignment are lengthy/voluminous, there is little available space to mark-up corrections, or the number of signatories does not leave enough space to add all their initials and dates, then a preparing and signing a new corrective assignment might be preferable to mark-ups. But if the original assignment containing the error was already recorded, or there has already been some reliance on that original assignment, any new “corrective” assignment may need its terms written to explicitly be retroactive to the effective date of the original. It is helpful if the title is identified as a “corrective” assignment too—although more than just the title should be changed. But the effort to create a new corrective document might be greater than using mark-ups.

A retroactive assignment is called a nunc pro tunc assignment, which is latin for “now for then”. These are widely used to correct errors in a prior assignment. The USPTO’s electronic assignment recordation systems EPAS and ETAS even have a special option for these, allowing the earlier date to be specified.

The USPTO describes a nunc pro tunc patent assignment recordation request as “[a] request to record an assignment, which includes documentation of transactions which occurred in the past but have not been made a matter of record in the USPTO.” This description implicitly treats nunc pro tunc patent assignment recordations as being (only) for corrective, confirmatory, or supplementary assignments. It means such a recordation request normally requires attaching additional documentation supporting the earlier claimed date of transfer or assignment (that is, the effective date prior to the execution date on which the new assignment document was fully signed).

The USPTO describes a nunc pro tunc trademark assignment as “an assignment that was prepared recently and is being recorded now, but the actual transfer occurred in the past. It is a complete transfer of ownership of trademark rights from the assignor/ (conveying party) to the assignee/ (receiving party). Use this conveyance type if the document being recorded was prepared after the time when ownership was actually transferred and after the time it should have been prepared and recorded, and has a retroactive effect. The execution date is usually later than when the actual transfer of ownership occurred.”

Lastly, if an error is identified in an assignment document before all parties have signed or provided notice to the assignee, it is usually preferable to discard the erroneous draft and provide a new copy with all the errors corrected for signature. A nunc pro tunc assignment or other explicit terms to provide a new, retroactive corrective assignment are not needed, because the assignment with the error was not yet effective.

Standing Limitations on Retroactive Patent Assignments

Corrective patent assignments, when necessary, should be completed before commencing a lawsuit for infringement. Courts generally do not allow nunc pro tunc patent assignments to provide retroactive standing to sue for infringement. The execution date on which a nunc pro tunc patent assignment was signed—or the date on which the last signature was obtained if multiple parties sign on different dates—is normally the effective date that controls for matters affecting standing. According to one district court, this also means that any subsequent assignments in a chain of title that were executed before a corrective nunc pro tunc assignment require further corrective action as well, because other purported assignments downstream in the chain were ineffective when executed (nemo dat quod non habet — one cannot give what one does not have). Clearing up chain-of-title issues before bringing suit allows the intended plaintiff(s) to be named, averting a possible ground for dismissal of the lawsuit due to the absence of a necessary party.

But not all nunc pro tunc assignments implicate standing. Minor corrections and supplemental terms may be given retroactive effect. At least one district court has held that correcting a drafting error in a prior assignment with respect to identification of a patent intended to be assigned did not deprive the assignee of standing in a pending lawsuit. And the Federal Circuit has held that retroactively adding the right to sue for pre-assignment infringement does not affect standing.

Practical Tip

There is an old saying that the best time to plant a tree was twenty years ago but the second best time is now. This provides a good analogy here. For assignments, the best way to correct them is to carefully check the information in them to fix any errors before they are presented for signature. In other words, be diligent and try to avoid errors from the start! That sometimes means verifying information provided by others, such as to ensure that legal names are used not nicknames or assumed names, corporations have not merged, dissolved, or changed names, addresses are current, etc. But the next best time to correct errors is as soon as they are discovered. Fortunately, there are ways to do that. Although doing so can become more difficult as time passes. For example, the original signatories can die, dissolve (if a corporation), or become uncooperative, and issues of standing can arise and later chain-of-title corrections might also become necessary that require additional corrective efforts.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

How Does a Trademark Office Action Extension of Time Work?

For U.S. federal trademark applications, the standard deadline to make a response to an office action is three (3) months from the date the office action was sent. Failing to respond by the deadline will result in abandonment of the trademark application. However, it is possible to obtain an extension of time to respond.

How to Obtain a Trademark Extension of Time

An extension of time to take action following a trademark office action—whether non-final or final—requires filing an explicit request for an extension by the original 3-month deadline and paying an official fee (currently $125 if filed electronically). The official fee is a fixed amount and it does not matter how many classes of goods or services are in the application. The extension is basically automatically granted upon filing the request and paying the fee. It provides a single 3-month extension of the original deadline to make a substantive response or appeal. In other words, after obtaining an extension the applicant is able to substantively respond to the office action, or to appeal from a final office action, up to six (6) months from the date the office action was sent.

Only one extension of each office action deadline is possible, however. Six (6) months is the maximum period to take action when such a response is necessary. Although it is still possible to separately obtain extensions for each of the different deadlines associated with different office actions.

Also, the extensions discussed here only apply to office action response deadlines. For instance, extensions of time to file a statement of use (SOU) following allowance of an intent-to-use (ITU) application are treated differently—those are for six (6) month periods and up to five (5) such extensions are available.

Additionally, the shortened 3-month response deadline, and the possibility of requesting a 3-month extension of time, will only arise for post-registration office actions beginning sometime in the spring or early summer of 2024. Until then, post-registration office actions will have 6-month response deadlines.

Extensions Inapplicable to Madrid Protocol Extensions

For Madrid Protocol extension applications based on foreign priority rights the response deadline for an office action is instead always six (6) months. There are no extensions available to that 6-month response deadline in Madrid Protocol extension trademark applications.

Missed Deadlines

If a response deadline is missed, it may be possible to file a petition to revive an application with the payment of an official fee. Alternatively, an applicant can often re-apply and start the application process over again after abandonment.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

What is the Process to Register a Trademark?

The process to register a trademark (or service mark) involves submitting an application, which is then substantively examined and a registration is ultimately either issued or refused.  Post-registration action is required to maintain a registration, which can potentially last indefinitely provided that the registered mark is still in use.  Both federal and state trademark registrations are available in the USA, and registration is also available in foreign countries.  In many jurisdictions, including for U.S. federal applications, marks are published for potential opposition by others prior to registration.  Trademark registrations are also subject to cancellation (or expungement, etc.) under certain circumstances. 

Federal registrations are handled by the U.S. Patent & Trademark Office (USPTO), which oversees two registers: the Principal Register and the Supplemental Register.  Only registration on the Principal Register establishes a presumption of exclusive rights in a mark. 

Not all Registrations are Equal in the U.S.: Federal trademark registration on the Principal Register is almost always preferable to state registration because much more expansive national rights are obtained, which is significant in the age of the Internet.  Also keep in mind that a federal registration on the Supplemental Register does not by itself establish exclusive rights, although it can block a later conflicting registration. The value of state-level registrations varies. Some state trademark registrations provide no presumption of exclusive rights.

Basic Requirements of a Federal U.S. Trademark Application

A U.S. federal trademark application must identify the mark, the associated goods and/or services, and a filing basis. 

Identification of Mark

The identification of the mark establishes what, exactly, constitutes the mark, which can include words (e.g., in “standard characters”) and/or graphical elements (e.g., color, stylized typeface/font, design element(s)), depending on the nature of the mark.  Importantly, a mark must be one specific thing. Different spellings or different visual depictions potentially represent different marks. A trademark application must be limited to one mark, with any other potential marks pursued in separate applications.

Identification of Goods and Services

The goods and services must be identified and grouped according to a classification system, with filing fees calculated based on the number of classes of goods/services included.  There is some skill involved in wording these identifications of goods and services appropriately. One important consideration is that for U.S. federal registrations it is not possible to simply “reserve” a mark, that is, merely to block others from using it. Use of the mark with all the identified goods and services must have already occurred or at least be intended in the future. Therefore, crafting a proper identification of goods and services requires first understanding how the applicant is currently using and/or legitimately intends to use the mark.

Filing Basis

As to filing bases, first, an application can be based on actual use in commerce, that is, the mark is already in use.  Evidence of use in the form of a “specimen” must be submitted with such an application and the date of first use in commerce must be specified. 

Alternatively, a federal application can be filed based on a bona fide intent-to-use (ITU).  In this case, the mark has not yet been used in commerce but the applicant has a good faith intention to do so.  The ITU application filing date establishes constructive use in commerce.  But a statement of use (with a specimen) is still eventually required in an ITU application in order to obtain a registration—with paid extensions of time the applicant has up to about three years to do so. 

Federal U.S. registrations based upon prior foreign registrations and applications as well as Madrid Protocol extensions based on a foreign application or registration are also possible. 

Lastly, it is possible for a given application to include multiple filing bases. This is most common when a mark has already been used with some but not all goods or services, but use with the further goods/services in the future is intended. It is also common when priority to a foreign trademark registration or application is involved.

The Examination Process

Trademark office examination involves a search for conflicting registrations and an analysis of whether the applied-for mark meets applicable legal criteria.  This is called trademark “prosecution”. Applicants can respond to any refusal sent in an “office action” by making amendments and arguments.  Appeals from refusals are also possible. Additionally, even if a trademark examiner believes a mark is registrable, third parties can oppose registration and can later challenge an issued registration.

Federal registrations can take anywhere from a matter of months to years to obtain, provided that the mark is registrable at all.  The timeline tends to be longer when there is a refusal (for instance, based on a prior conflicting registration or application) or an opposition to registration is lodged. State registrations may take only a matter of days to weeks, provided the mark is registrable.  Foreign registration timelines vary widely. 

Helpful Tips:

  • Although U.S. applicants can apply for registration themselves, subject to identity verification, legal advice from a knowledgeable attorney can help in obtaining the best and most appropriate coverage. Foreign trademark applicants are generally required to hire a licensed U.S. attorney.
  • Registrations of word marks in “standard characters” are usually the broadest because they do not include any limiting claim as to color, font, or other graphical elements in a mark that includes one or more words.  On the other hand, words that are unregistrable in standard characters alone can sometimes become registrable when distinctive graphical elements are added as part of a “composite” mark that includes both word(s) and graphical element(s). 
  • Consider the effect of expanded, reduced, or otherwise changed use of a mark over time. Such changes may may suggest pursuing one or more additional registrations. Some changes may also affect the ability to maintain an existing registration (e.g., due to a substantial changes to a graphical logo or ceasing use with certain goods/services).
  • State-level registration might be worthwhile if usage does not qualify for federal registration, such as purely local usage that is not part of interstate commerce.
  • Trademark registrations are territorial. A registration in one country will generally not provide exclusive rights in any other country. Consider foreign registration(s) if a mark is or will be used in multiple countries.
  • Registrations are generally even more important in other countries, where trademark rights are often determined on a first-to-register basis—sometimes without regard to priority of actual use.
    • For example, unrelated companies concurrently using similar brands in two different countries but later expanding to a common third country can sometimes lead to disputes.
    • As another example, outsourced manufacturing can also sometimes lead to trademark disputes. Export-only manufacturing in a foreign country of goods having trademarks applied to them may still be considered trademark use under foreign law (e.g., “OEM” manufacturing in China), even without any local commercial sales in that foreign country.
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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

What Should I Do Now That My Trademark is Registered?

Maintaining a U.S. trademark registration requires certain post-registration action. The following is a brief summary of the most important actions a registration should take or consider taking to maintain a trademark (or service mark) registration.

Continue Using the Mark

Continue using the mark in commerce in a consistent and non-generic manner.  Such usage should be prominent enough to be recognized as a distinctive mark by consumers.  Also ensure use is proper trademark usage, as an adjective that modifies a noun rather than as a noun or verb.  Abandoned marks are subject to cancellation.  For marks registered based solely on foreign priority, use in or with the USA must begin within three years of registration or be subject to cancellation or expungement. 

Use Registration Symbol

It is recommended to use the registration symbol ® with a mark in jurisdictions where registered, or alternatively the ™ symbol.  At least the first or most prominent appearance of the mark on a given article, advertisement, etc. should carry such a symbol.  Use of “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” is also permitted for U.S. federally registered marks as well. For U.S. federal rights, there is no legal requirement to use ® or ™ symbols or the like (that is, marking is not required) in order to preserve rights in a mark. However, U.S. federal law does say that failing to use the ® symbol or an equivalent phrase can limit monetary recovery for infringement of a registered mark.

Note that some jurisdictions prohibit the use of the ® symbol with an unregistered mark. So be careful about usage across multiple jurisdictions—the ™ symbol can be used instead with a mark that is unregistered in a given jurisdiction. Moreover, registration in one or more U.S. states does not permit use of the ® symbol.

Maintain Control

If a mark is licensed for use by another, the mark owner must maintain control over the quality of the associated goods and services.  Any such license should be in writing and should include an explicit quality control provision. 

Retain Evidence of Use

It is recommended to periodically collect and retain in your records evidence of use of the registered mark in commerce in the U.S., particularly if not routinely documented in the ordinary course of business.  Such evidence can be useful as a specimen of use or to defend against a challenge to the registration by another entity.  If registration was filed on an intent-to-use (ITU) basis, or a foreign priority basis with an intent to use in the USA, it is further recommended to retain written records of that intent at the time of U.S. filing, such as detailed business plans. 

Evaluate Expanded or Changed Use Over Time

If your use of the mark has expanded to encompass new or different goods/services that are not identified in the registration, it may be worthwhile to pursue an additional registration to ensure full protection.  If use has ceased with some but not all of the goods/services identified in the registration, an amendment can be filed to delete only the unused goods/services.  If your branding has changed, such as a “refresh” that materially alters the commercial impression of a graphical logo or the wording of a mark, it is important to evaluate whether the that new usage supports the existing registration and whether a new application should be filed. 

Make Required Filings and Renew the Registration

If the owner’s name or address has changed, official records must be updated. 

Maintaining a U.S. federal registration also requires submission of a Declaration of Use, with supporting evidence, between the 5th & 6th years of registration.  Additionally, renewal is required between the 9th and 10th years of registration and at ten-year intervals after that, each such requiring a Declaration of Use and supporting evidence.  Madrid Protocol extensions to the USA further require that the underlying international registration be maintained. 

Beware of misleading, official-looking notices sent by private entities seeking payment of trademark-related fees as scams. Have a trusted trademark attorney review such notices if in doubt about whether they are a scam.

More Information

More information about maintaining trademark rights is available here.

More information about strengthening protection of a registered trademark is available here.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Articles

New and Upcoming Developments in U.S. Patent & Trademark Law for 2022

Important Developments to Note

At the beginning of 2022, some recent and upcoming changes in practice at the U.S. Patent & Trademark Office (USPTO) for patent and trademark matters merit attention.


Patents

“DOCX” filing format deadline extended

The deadline for the implementation of a surcharge for non-DOCX patent application filings has been extended until January 1, 2023.  In recent years, most U.S. patent applications have been filed electronically in PDF format.  DOCX-format filings are currently possible but non-DOCX PDF-format filings are still permitted without any surcharge.  The non-DOCX surcharge will eventually be $400/$200/$100 for large/small/micro entities.  Note that the non-DOCX surcharge will not apply to PCT national phase entries into the USA. The applicability of the non-DOCX surcharge to U.S. applications filed in a language other than English is still rather unclear (it is not clear if a DOCX copy of only the English translation, only the non-English original, or both the original and translation is required to avoid the surcharge). 

In general, the greatest concerns about DOCX format have to do with rendering of complex application content, such as embedded mathematical equations created with a word processing program’s equation editing functionality, which may not render as the applicant intended at the USPTO side.  The official reason given for the implementation delay is to “provide the public an opportunity to more fully comprehend the nature of, and prepare to comply with, the DOCX format[.]” But while the DOCX format is an administrative convenience for the USPTO, its mandated use is a more of a burden than a benefit for applicants.  The need for applicants and their counsel to review and correct potential USPTO-side DOCX rendering errors (which may occur more frequently than with certain PDF-format filings) may make PDF-format filing and payment of the non-DOCX surcharge preferable in some situations.  Though for applications containing only simple text, without complex or unusual formatting or embedded equations (other than equations inserted as images), DOCX-format filing should not pose any major problems. 

Digital-only patents

Starting sometime in 2022, the USPTO will cease issuing paper patents and will issue digital patents instead.  However, paper “presentation copies” (also called ribbon copies) of patents (on heavy paper with an embossed gold seal and the USPTO Director’s signature) will still be available upon request for a $25 (US) official fee per copy.  The USPTO says that digital patent issuance will speed up the process of issuance after payment of the issue fee, with a target of one week to issuance.  This will shorten the time available to file a divisional or continuation patent application, which must be filed no later than the day of issuance of the parent patent.  Though it has always been—and will remain—a recommended best practice to file any desired divisional/continuation application no later than the date of issue fee payment. 

Bilateral exchange of certified priority documents with EPO ending

The USPTO’s bilateral electronic priority document exchange (PDX) program with the European Patent Office (EPO) is ending.  For any U.S. applications filed on or after January 01, 2022 with a priority claim to an earlier EP application, a WIPO Digital Access Service (DAS) code will need to be provided in order to electronically retrieve a certified copy through PDX.  This will require registering the EP application with the WIPO DAS exchange.  This change will not affect PCT national phase entries into the USA where the EP priority document is made available under PCT Rule 17. 

More U.S. patent filing information

Please also see the “Guide to Foreign Priority Patent Filings in the USA” (available for download as a set of condensed presentation slides titled “Patent Filings in the USA: Important Considerations”) for in-depth discussion of requirements for foreign applicants to file U.S. counterpart patent applications with a foreign priority claim.


Trademarks

“Flexible” (shortened) response periods

Starting December 1, 2022, the time to respond to trademark office actions (under 37 C.F.R. § 2.62(a)) will be shortened to three (3) months.  A single three-month extension of time to respond can be requested, which will carry an official fee of $125 (US).  The extension must be affirmatively requested within the original three-month period.  However, the shortened response periods will not apply to Madrid extensions to the USA.  For refusals in Madrid extension cases (§66), the applicant will still have a full six-month response period available without paying any extension fees.   

Digital-only registration certificates

Starting in spring 2022 the USPTO will cease issuing paper trademark registration certificates and will issue digital certificates instead.  [UPDATE: the USPTO began issuing only electronic registration certificates on May 24, 2022.] However, paper “presentation copy” trademark registration certificates (on heavy paper with an embossed gold foil seal, the name(s) of the owner(s), the mark, bibliographic data, and the classes of goods and/or services) will still be available upon request for a $25 (US) official fee per copy.  Registrants who filed an initial trademark application before the implementation date (a date that is not yet fixed) will be able to order presentation copies with no official fee.  Additionally, certified copies of U.S. trademark registration certificates with current title and status information are also available with payment of an official fee, currently $30 (US).

Filer Identify Verification

[UPDATE: the USPTO has postponed the deadline for filer identity verification to August 6, 2022.] By April 9, 2022, persons filing trademark applications, responses, and the like must complete identity verification in order to electronically file with the USPTO.  These identity verification procedures will be available starting January 8, 2022.

New expungement and reexamination proceedings

Two new proceedings are available for an existing trademark registration to be challenged.  Both of these new proceedings are conducted on an ex parte basis.  That is, a challenger files a petition to request expungement or reexamination and, if granted, the rest of the proceeding is conducted only between the USPTO and the registrant in a manner similar to original examination.  Unlike traditional cancellation (or opposition) proceedings, after institution of an expungement or reexamination proceeding, the challenger cannot substantively participate.  Summaries of the two new proceedings follow, but more details about applicable procedures can be found in the USPTO Examination Guide 1-21.  In addition to the two new types of proceedings, expungement is also available as a new ground for a traditional cancellation proceeding after three years of registration (15 U.S.C. § 1064(6)). 

Expungement proceedings: Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the mark in commerce with those goods or services.  The official filing fee for an expungement proceeding is currently $400 (US) per class.  An expungement proceeding must be requested in a period from three to ten (3-10) years after the registration date. However, there is currently an extended expungement filing period.  Until December 27, 2023, expungement may be requested for any registration at least three (3) years old, regardless of the ten-year limit.  In other words, the ten-year time limit for expungement proceeding requests will only go into effect after December 27, 2023.  Expungement proceedings are available for all registrations but will be especially significant for foreign-originating registrations (Madrid [§66] or Paris Convention [§44] cases) where proof of use is not required to initially obtain a U.S. registration. 

Reexamination proceeding: Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before either (1) the application filing date (when the underlying application was initially filed based on use of the trademark in commerce under §1(a)) or (2) the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired (when the underlying application was filed with an intent-to-use basis under §1(b)).  Reexamination proceedings are available for registrations under 15 U.S.C. §1051 (§1) but are not available for marks registered under the Paris Convention (§44) or the Madrid protocol (§66).  The official filing fee for a reexamination proceeding is currently $400 (US) per class.  Reexamination must be requested within the first five (5) years after registration.

More U.S. trademark filing information

Please also see this “Filing Guide for Trademark Registration in the USA” for in-depth discussion of requirements for foreign applicants to file U.S. federal trademark applications.


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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

How Can a Brand Be Protected as a Trademark?

Trademarks (and service marks) serve to identify a particular source of a product or service. The purpose of trademark law is tied to that source-identifying function. Trademark rights arise through use. Registration is optional. What matters most in terms of a brand eligibility for trademark protection is its strength or distinctiveness, together with any any prior conflicting uses of identical or similar brands already taken by others.

Generally, a brand can be protected under trademark law if it is distinctive enough to serve such a source-identifying function—and it is actually used for that purpose. There is a continuum of kinds of marks that separates distinctive ones capable of exclusive rights and ones that are not distinctive and do not entitle the user to any exclusive rights. The possibility of exclusive trademark rights depends first of all upon selecting a mark that is distinctive enough. Doing that properly requires some understanding of the strength continuum of mark distinctiveness.

Continuum of trademark strength/distinctiveness
Pyramid Illustration of the Strength Continuum of Marks

Brands and marks are categorized along the following range or continuum of increasing conceptual distinctiveness: (1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful. A mark that is fanciful, arbitrary, or suggestive is considered to be inherently distinctive and automatically is eligible for federal trademark protection—long ago these were referred to as technical trademarks. While these categories are well-established now, there may be dispute as to where any given mark falls on this continuum. Changes in how a mark is used over time can also complicate these determinations.

A fanciful mark is a non-dictionary word concocted by the user. These are sometimes referred to a coined marks. Some examples are EXXON® for petroleum and petroleum products, and many pharmaceutical brands that are completely made-up names.

An arbitrary mark is a known word used in an unexpected or uncommon way. An example is APPLE® for computers.

A suggestive mark is one for which a consumer must use imagination or any type of multistage reasoning to understand the mark’s significance. A suggestive mark does not directly describe features of the product or service but instead suggests them. Example are ESKIMO PIE® for frozen confections and KITCHENAID® for small household devices and utensils.

Descriptive terms define qualities or characteristics of a product in a straightforward way that requires no exercise of the imagination to be understood. Merely descriptive terms are not entitled to trademark protection. Only marks that have acquired secondary meaning through extensive and substantially exclusive use over a sufficient period of time attain acquired distinctiveness to potentially be protectable as trademarks. Simply being the first to use a descriptive term is not enough. An example of a merely descriptive term is “cotton” for t-shirts made at least partly from cotton, or the term “large” to describe the size of the t-shirt. An example of a descriptive mark that has acquired secondary meaning in the USA is AMERICAN AIRLINES® for air transport of passengers and freight.

Generic terms are what the public understands to be the common names of associated products or services. Another way of stating this definition is that a generic term denotes a category (genus) of goods/services of which a particular brand is one species. A generic term does not signal any particular source and can never serve as a protectable mark under trademark law. Usage and advertising can never make a generic term protectable. Some examples of generic terms are “breakfast cereal” or “television” for those same goods. Some terms that were at one time protectable can also become generic, such as “escalator” for moving walkways.

The distinctiveness of a mark depends on how it is being used. The same mark might fall in different distinctiveness categories in different contexts. For example, the mark APPLE® may be arbitrary when used to identify a source of computers but “apple” is generic when applied to the fruit widely known by that name.

When it comes to trade dress, a form of trademark protection, functional aspects are not protectable. In this sense, functional aspects of things themselves are treated like generic terms—alone they are ineligible for trademark protections. An example of a functional feature is the shape of a key that allows it to fit into a corresponding lock.

A “trade name” is somewhat different from a trademark. A trade name is the formal legal name of a corporate entity, or its formal assumed name (DBA). For instance, “Acme, Inc.” a hypothetical corporation registered in a particular U.S. state, is a trade name. While it is possible that such a company sells ACME or ACME, INC. brand widgets, it might instead sell EXAMPLE brand widgets. Trade name and trademark usage may not be the same. There tend to be different (and less stringent) legal standards applied to securing trade names than to securing trademark rights. A common mistake is to believe that forming a corporation or registering an assumed name with a state—alone—creates trademark rights, when trademark rights in the U.S. require both use of the mark (as a mark) and a sufficient level of distinctiveness.

Also keep in mind that registering an Internet domain name does not by itself establish any trademark rights. While the availability of a suitable domain name is often an important consideration when selecting and adopting a brand, domains can be registered without regard for the use and distinctiveness requirements that apply to trademarks. Moreover, using a domain URL merely as an Internet address is not the same as trademark use as a source identifier.

When selecting a mark, it is common for businesses to gravitate toward conceptually weak marks as brands because they “sell themselves” and are immediately recognized by consumers for what those marks represent. So there is less investment required at the outset to establish consumer recognition of the brand. But some things are too weak to even function as marks and will not be protectable at all. Selecting a merely descriptive term as a brand will not allow for any exclusive rights unless and until secondary meaning (acquired distinctiveness) is achieved over a significant period of time. But even descriptive marks that have acquired distinctiveness are still subject to descriptive fair use defenses that limit the scope of exclusivity. And a generic term is never entitled to exclusivity, regardless of usage or advertising effort. Anyone who wants to have exclusive rights in a brand needs to select a mark that is distinctive enough to merit trademark protection.

Also, trademark strength can actually be assessed in different ways, to refer to either protectability or scope of exclusivity. There is inherent or conceptual strength, which categorizes how a mark naturally is or is not capable of serving as a source identifier. That is about protectability, and whether there can be any exclusive rights for a given mark when used with particular goods/services. But there is also commercial or marketplace strength, which refers to the level of exclusive use as a brand by a particular entity (secondary meaning). That is generally about the scope of exclusive rights. For instance, a suggestive mark may be conceptually/inherently strong (distinctive) enough to be protectable, but if there are many other entities using similar marks due to similar suggestive connotations then the commercial strength and degree (scope) of exclusivity in the coexisting marks is lessened. Likewise, a fanciful/coined term may be conceptually strong as a mark but may still be commercially weak if its usage has been limited in duration and there has been negligible advertising.

Lastly, recognize as well that many marks are already taken by others, which limits the universe of marks freely available for another business’ use at the time of adoption.   It is not unusual for a first-choice mark (and second-choice…) to be already taken. Conducting a legal clearance when adopting a brand is recommended to avoid conflicts with someone else’s preexisting trademark rights.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.

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Q&A Trademarks

What is an Acceptable Trademark Specimen?

Federal trademark rights in the United States are based on use in commerce. A specimen is evidence of actual, real-world use of a trademark (or service mark), such as a photo of a product bearing the mark. It is evidence of what consumers encounter when considering whether to purchase the branded goods or services. The U.S. Patent & Trademark Office (USPTO) generally requires specimens both to initially obtain a registration and to maintain an existing registration to keep it active. The Trademark Office will scrutinize a specimen to ensure that it is acceptable under current guidelines. So you need the right specimen(s). A knowledgeable trademark attorney can help identify suitable specimens.

General Requirements for Specimens

There are some general requirements that apply to all specimens. What all the requirements have in common is that they look at the branding a U.S. consumer is presented with when considering purchasing the goods or services. These considerations take into account industry norms.

First, an acceptable specimen must show the mark used in a way that consumers would perceive it as a source indicator—something that allows consumers to identify and distinguish goods or services emanating from different manufacturers, sellers, or producers. In that sense it must function as a mark.

One consideration is whether usage of the mark is prominent enough. If the mark is used only in passing or is difficult to identify amidst other things then the specimen is probably not acceptable. There must also be a direct association between the mark and the identified goods or services. A label or tag unattached to anything that shows only the mark but no other information fails to make that association.

Another consideration is proper usage. A term used generically or merely to provide information about the goods or services, or a graphic used merely for ornamentation or decoration, is not functioning as a mark.

graphic of example acceptable and unacceptable specimens on shirts
Examples of acceptable (left) and unacceptable (right) mark usage for shirts

In the graphic above, the specimen on the left represents a hypothetical photo of a shirt with an attached tag bearing the EXAMPLE mark. This would be an acceptable specimen of use of the EXAMPLE mark because the goods (a shirt) is visible, and a tag bearing the mark is attached inside the shirt at the collar in a customary way. This same specimen would not be acceptable to show use of “large” or “100% Cotton” as marks, however, because those are merely pieces of information about the size and materials of the shirt itself, in a generic sense. The specimen on the right is usually unacceptable because it shows ornamental (or aesthetically functional) use of the word “Example” rather than use as a mark. Acceptability depends on context.

It is necessary for a specimen to show a real use. A specimen cannot be a mock-up, printer’s proof, digitally altered/fabricated image, rendering of intended packaging, or draft of a website that shows how a mark might appear. Similarly, a copy or reproduction of a drawing of the mark in isolation (for instance, a logo alone), and not actually applied to commercial goods or service advertisements, is insufficient. A specimen must provide enough context for someone to understand how it specifically shows usage with the relevant goods/services. In general, you can think of a specimen as representative evidence of actual use that is already occurring. But anything that only portrays planned, hypothetical, or theoretical use is not acceptable as a specimen.

photo of pill bottle with digitally altered label text
Unacceptable digitally altered specimen

The example above shows a photo of a pill bottle with a label that has been digitally altered to add the EXAMPLE mark. The digital alternation of the photo is clear because the text does not wrap around the bottle like the rest of the label. There is also no other information or decoration on the label that would normally appear on a commercial product like this, such as to convey the number of pills contained or the net weight of the contents. The digitally altered image above would not be acceptable as a specimen of use.

Specimens must also correspond to usage with the particular goods and services identified in an application or registration. Usage with one good or service will not suffice to show usage with an entirely different good or service. If there are multiple classes of goods or services at issue, then multiple specimens are usually required.

The date a specimen was captured matters. For new trademark applications, a specimen should be recent. Specimens used to maintain existing registrations must be current, meaning the specimen must be from the window of time in which proof of current use can be submitted. Whenever a web page screenshot or printout is used as a specimen, the date and URL must be included. Ideally screenshots and printouts should be captured in a way that automatically includes that information.

A specimen must also show the same mark identified in the application or registration. Sometimes marks change over time. Such changes, if material, can mean the old mark is no longer being used. A common problem involves redesigning or refreshing a graphical logo to look more modern, which may affect the ability to maintain an existing registration. Changes to colors and graphical elements of a logo may mean you are using a new and different mark, even if the same words appear in both versions. Inconsistent spelling or wording of a mark may also make a specimen unacceptable.

But the particular sorts of evidence acceptable as specimens will depend on whether it is for a trademark (for goods) or a service mark (for services). Those different goods/services requirements are taken up below.

If a specimen is defective, there may be opportunities to submit a substitute. But failure to submit a proper specimen from the start might lead to loss of priority if a suitable substitute specimen (gathered on or before the date the trademark application was filed) is not available.

Specimen for Goods (Trademarks)

A typical form of an acceptable trademark specimen for goods is a photograph of a product bearing the trademark on an attached label or tag. A photo of the trademark stamped or imprinted on products themselves or on their packaging or container is also common and acceptable. But a package insert bearing the mark that is not visible to customers (unlike a conventional label or tag) is generally not acceptable.

Acceptable as Specimen
for Goods
Unacceptable as Specimen
for Goods
Photo of mark on product itself or attached tag/labelMock-ups/digital renderings/altered images
Photo of mark on product packaging/containerPackage insert not visible at time of purchase
Printout or screenshot of an e-commerce web page where the product can be purchased (for example, showing “Add to cart” or cart/bag icon)Web page, brochure, or catalog with no way to purchase product
Copy from catalog page where ordering information is provided (for example, “Call this number to place an order”)Copy of magazine advertisement
Screen shot of web page for downloading installable softwareReceipt or invoice confirming prior purchase
Installable software in-app screen captureBusiness card
Table of examples of acceptable and unacceptable trademark specimens for goods

A display associated with the goods might be acceptable. Examples of displays include in-store displays, catalogs, and web pages. But to be acceptable a display specimen must show use of the mark (a) directly associated with the goods and (b) that display usage must be at the point-of-sale.

Display specimens often raise acceptability problems. The USPTO looks at “point-of-sale” rather strictly by analyzing whether and how ordering information is provided. Web pages, in particular, sometimes fail to meet all the requirements. Acceptability can sometimes hinge on web page layout.

Typical e-commerce “shopping cart” and “shopping bag” buttons and icons shown near the goods meet point-of-sale requirements. But “contact us for more information” or “where to buy” links are insufficient because they put an extra step between the online display and the ability to purchase the goods. Telephone numbers and email addresses may be sufficient if accompanied by special instructions for placing or accepting orders, such as “call now to buy” or “e-mail your order.” But the mere presence of a phone number or email address is often not sufficient.

For downloadable or installable computer software, an acceptable specimen can be an in-app screen shot showing the trademark. Alternatively, a web page screen shot can be used but only if (a) it creates an association between the trademark and the software and (b) provides sufficient information to enable the user to download or purchase the software from the website—like the point-of-sale display requirements discussed above. Another important distinction here is that cloud computing systems (SaaS, PaaS) used on a temporary basis but not downloaded or installed by a consumer are treated as services rather than goods for trademark purposes.

Various non-traditional trademarks (sounds, scents, etc.) have different specimen requirements. But those sorts of trademarks are rather uncommon.

When it comes to goods, however, mere advertising is generally not acceptable as a specimen. This is probably the most frequent area of misunderstanding. Mere advertising typically does not occur at the point-of-sale for goods. Though there are exceptions, such as an ad that includes purchase instructions, like a TV infomercial. But usually a copy of something in a magazine or online that merely merely tells prospective purchasers about the goods or promotes the goods won’t be accepted as a specimen of use for goods—even though advertising is accepted as specimens for services.

The USPTO provides some examples of acceptable and unacceptable specimens for goods.

Specimen for Services (Service Marks)

A service mark specimen must show the mark as actually used in the sale of the services. But a wider range of specimens are accepted for services than for goods. Acceptable specimens show use in the performance or rendering of the services or in the advertising of the services. A typical form of an acceptable service mark specimen is a web site printout or screen capture that shows the mark in direct association with a description of the services as part of an online advertisement.

Acceptable as Specimen
for Services
Unacceptable as Specimen
for Services
Screen shot of web page mentioning servicesScreen shot of web page that does not mention the services
Copy of magazine ad or brochure mentioning servicesCopy of magazine ad or brochure that does not mention the services
Sign-in screen capture for online, cloud-based software platform (SaaS/PaaS)Screen capture of online software not showing the mark
In-app screen capture showing use of non-downloadable softwareScreen shot of web page to download installable software
Copy of business card or letterhead referencing servicesCopy of business card that does not mention the services
Photo of service vehicle bearing the markPhoto of service vehicle not showing the mark
Invoice with service detailsBlank form for invoice or receipt that does not describe the services
Table of examples of acceptable and unacceptable service mark specimens for services

Even though a broader range of specimens can be used for service marks for services than for trademarks on goods, not anything will suffice. The USPTO provides a number of helpful examples of acceptable and unacceptable service mark specimens.

Common reasons a service mark specimen might be insufficient include a failure to function as mark or an insufficient identification of the applied-for or registered services (in direct association with the mark). For instance, if an application identifies services that are not clearly identified in the specimen it will not be accepted—even if that same specimen might be acceptable for different (but not applied-for) services. And web site screenshots showing vague descriptions of services might not support an application for services identified in a more specific way. For example, a web site saying “we deliver a variety of customer solutions” would not be sufficient for an application identifying “computer programming services.”

annotated web site screenshot specimen
Example service mark specimen for web site

In the example above, a web page screenshot of blueovergray.com would be an acceptable specimen for services identified as “providing a web site featuring legal information.”

Another important requirement is that the URL and date of capture must be provided for web site printout and screenshot specimens. The USPTO’s “TEAS” online system allows the URL and date of capture to be manually entered for a specimen. But ideally a web site specimen should be captured in such a way that the URL and date are directly embedded in the capture or printout. The example above shows the URL and date of capture embedded in the specimen.

State Trademark Specimens

Individual U.S. states also permit trademark registrations. The specific requirements vary by state. Though specimens are usually required. The criteria for determining what is an acceptable will depend on state law. But the guidelines discussed above for federal trademark registration still represent a good starting point when thinking about such things. Though, as you might expect, specimens for a state registration typically must show usage of a mark in that particular state.

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Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.