Copy to clipboard 
The United States Patent and Trademark Office (USPTO) has enacted policy changes that focus on post-use audits and foreign applications. These changes may affect when you file for trademark protection, and present a need for device companies to implement a best-practice policy to maintain your current registered trademarks.
Before we get into the policy changes, let’s start with a brief five-point review about trademarks and how they can be best used and protected by your company.
5 Trademark Best Practices
First, trademarks function as an identifier of the source of the product or services. This means that a consumer associates a trademark to a specific manufacturer or seller of a product or the source of a service. (e.g., Diet Coke (product) to Coca Cola Company (source)).
Second, trademarks must be used as an adjective. For example, Kleenex® Soft Tissues or ROSA® Knee System. Never use a trademark as a noun or you will put the mark registration at risk of cancellation.
Third, one needs to use the registered mark in a consistent manner and in the same form as it was registered. For example, hypothetically, your registered mark is “Tic Tac”® Fresh Mints. When using your mark in marketing collateral you should not use any variation of the mark (i.e., Tic-Tac Fresh Mints or TicTac Fresh Mints). You must always use your trademark in the same format as registered, or risk having the mark deemed unenforceable because of the difference in form.
The fourth point is, always use the registration symbol with your trademark. Consistent use of the R with the circle (®) ensures that all others are on notice that you own the mark, and that it’s Federally registered. Failure to provide notice may lead to a reduction in damages if you were to sue for infringement, or you can suffer a decrease in value of your mark if not properly marked.
Finally, the fifth review point is that in order to keep your registration of a mark in effect, you have to consistently use the mark. The saying “use it or lose it” is directly applicable when talking about trademarks.
Importance of Consistent Use
Trademarks must be continuously used to be enforceable. This also means that you need to have evidence to prove use of your trademark, because if challenged, you will need to produce this evidence to the USPTO to avoid cancellation. The U.S. Trademark law requires an owner of a trademark to file a “declaration” of use between years five and six post-registration. At the time of registration renewal, the owner must also produce a “specimen” that shows one is actually using their trademark properly in commerce. Examples of acceptable specimens for trademarks used in association of products/goods include:
- A photograph showing the mark on a tag or label attached to the product;
- Actual labels or tags with the mark on it;
- Screenshots of a webpage showing the mark in connection with the product at the point of sale (e.g., an online order form or 800 telephone number for ordering);
- A photograph of the packaging label or the actual label with the mark and the products included in the packaging; and
- A product with the mark directly on it.
Importantly for your products, invoices, sales brochures and general product catalogs usually will not qualify as an acceptable specimen.
For services associated with a mark, the acceptable specimens are different than for products/goods. For example, a brochure or flyer where the mark is used to advertise the services would qualify. Other examples of acceptable specimens include a photograph of the mark on a store or restaurant sign, a photograph of the mark on a service vehicle, a photograph of a billboard with the mark on it advertising the service, and screenshots of a website where the mark is used in advertising the services.
Trademarks can last forever (just ask Coca Cola or Ford) so long as the owner continues to consistently use it in commerce and is able to provide direct proof of the use. A suggested best practice for device companies is to perform an annual inventory of your trademarks to confirm that all marks are still being used in the proper form and acceptable specimens can be produced to evidence this use.
This use factor is important because an owner of a mark can’t register the mark until it is actually used “in commerce.” Again, the “use” of the trademark is proven by submitting a specimen to the USPTO. When one decides they want to move forward and protect their trademark, they can file either an “in-use” application or an “intent-to-use” application. The “in-use” application is filed if the applicant is already using the trademark in commerce and can produce an acceptable specimen at the time of filing. An “intent-to-use” application is just that; the applicant intends to use a certain trademark in the future and wants to be first in line for registration of the mark. The applicant will have three years from the date that the USPTO approves the application to start using the trademark. If the applicant fails to use the mark within the three-year period, they will lose the mark.
New Trademark Laws
The USPTO recently performed a survey and found that over 50% of the registered marks surveyed were not in use, even though declarations of use had been filed by the owners. In response, the Trademark Office in 2017 instituted the “Post Registration Proof of Use Audit Program.” The purpose is to “promote the accuracy and integrity of the U.S. Trademark Register.” The implementation of this program may impact all owners who file a declaration of use, because upon filing you may then be subject to an audit if your registration is selected. If selected, the owner of the trademark must prove use by showing at least two additional specimens for each product classification. Failure to produce the additional specimens will result in the cancellation of the owner’s trademark registration. This is a pretty harsh end result, but given the number of registered marks that are not actually in use, it is a necessary step to clean up and free up unused trademarks for others to use in the future.
In August 2019, the USPTO also took another step to improve the quality and integrity of trademark applications (and ultimately the quality of the Trademark Register) by passing a rule that requires all foreign applications to be handled by a U.S. licensed attorney. This rule also applies to foreign-based companies with U.S. affiliates. The reason for the rule enactment is the increased number of foreign trademark applications and pro-se parties who file inaccurate and possibly fraudulent submissions with the USPTO that do not comply with U.S. trademark law. It should be noted that most foreign countries, including Canada, already have such a rule in place, with most requiring local attorneys to represent foreign applicants.
The goals of this new “quality” rule are to:
- Ensure full compliance with U.S. Trademark law and U.S. Trademark Office regulations;
- Improve the accuracy of all trademark submissions (applications and office action responses) to the USPTO; and
- Safeguard the integrity and quality of the U.S. Trademark Register.
The result of this new rule is that any foreign domiciled applicant must now retain a U.S. licensed attorney to file a trademark application and/or prepare any responses, including filing renewal documents with the USPTO. Given the high level of fraudulent and incorrect filings that the USPTO has seen these past few years, this will benefit U.S. based applicants (both companies and individuals) because it will ensure that all applicants have an equal opportunity to get their trademarks registered.
Trademarks are critical to every company’s branding strategy. These important assets must be monitored to ensure correct and consistent use (e.g., always use ®). Implementing a best practice policy in your company to accomplish these goals will go a long way to keeping the value of these trademarks high and avoiding cancellation issues and the possible loss of a trademark that may result from the recently implemented new “proof of use” audit program.
This article was written for informational purposes only and should not be interpreted as legal advice. Please consult with a licensed attorney if you have any questions.
John W. Boger is a partner with the boutique Intellectual Property Law Firm of Heslin Rothenberg Farley & Mesiti P.C. and is the Chairman of the firm’s Medical Products and Technology Practice Group. Before attending law school, Mr. Boger worked for eight years with a large orthopedic device manufacturer in various product development and marketing positions.
