The U.S. Court of Appeals for the Federal Circuit recently confirmed a significant change in the requirements applicable to specimens submitted to the U.S. Patent & Trademark Office with applications for trademark registration. As many trademark owners and practitioners know, in order to ensure that an applicant is using its mark in commerce to identify the source of its goods or services, the USPTO requires submission of a specimen that shows the mark used on or in connection with those goods or services. In the past, for marks used in connection with tangible goods, as opposed to services, the USPTO has applied a rule that specimens consisting of pages from catalogs or web sites are acceptable only if they show the mark sufficiently near a picture of the relevant goods to associate the mark with the goods. Mere descriptions were insufficient, making it difficult for many trademark owners to produce the specimens necessary to obtain federal trademark protections.

In the case of In re Sones, decided December 23, 2009, the Federal Circuit held that the USPTO’s Trademark Trial and Appeal Board had misinterpreted prior case law on the issue of appropriate specimens. The Court stated:

[A] picture is not a mandatory requirement for a website-based specimen of use, and…the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is “associated” with the goods and serves as an indicator of source… It might well be that the absence of a picture will render website specimens ineffective in many cases and will be, as the PTO argues, “[a] crucial factor in the court's analysis.” But a picture is not the only way to show an association between a mark and the goods, and we cannot approve of the rigid, bright-line rule that the PTO applied here.

Many businesses in the past have learned, upon filing an application for trademark registration, that the specimens they intended to submit to support their claims of use in commerce have failed to meet the USPTO’s standards. In response, those applicants have been forced in many cases to convert their applications to an “intent-to-use” basis that delays the registration process until an acceptable specimen is available. For some of those applicants, the availability of an acceptable specimen has hinged on new or revised marketing campaigns or other changes that only increase the not-insignificant costs required to obtain the registration. The Federal Circuit’s decision in the Sones case should make it easier for many applicants to obtain registration on the first attempt.

The trademark registration process includes a number of important considerations and potential pitfalls that may not be obvious to an applicant. Businesses should consult with knowledgeable trademark attorneys before submitting their applications in order to reduce the risk that an application will be rejected or, if accepted, that the resulting registration is inadequate to protect the business against potential infringers.