The first US trademark application I ever filed on behalf of a client was in 1996. In the seventeen years that have passed since then, I’ve seen ups and downs in various parts of the trademark office. Many parts of the trademark office do very well. But this post observes a few lapses in the Post Registration Division (“PRD”).
For the owner of a US trademark registration, the first brush with the PRD usually comes between the fifth and sixth anniversaries of the date of registration. To avoid cancellation of the registration, during this interval the owner must file a Declaration of Use (“DOU”). The Declaration provides one or more “specimens of use” showing the mark as used in connection with the goods and/or services that are in commerce. If fewer than all of the goods/services are in commerce, then the owner must cancel the not-in-commerce goods. The great majority of DOUs are filed using the USPTO’s TEAS e-filing system.
The task of reviewing the DOUs falls to the PRD. It is the PRD that decides whether the specimen is “good enough”. Does the mark in the specimen match the mark in the drawing of the registration? Does the specimen make sense given the type of goods or services to which it relates? Do all of the necessary “magic words” appear in the DOU? Does name of the party filing the DOU match the name of the record owner in the assignment records of the USPTO?
The day-to-day work in the PRD is carried out by non-attorneys. This is different from the way that trademark applications are examined — that work is carried out by Examining Attorneys.
What I’ve seen in the past year or so is a notable decline in the quality of work carried out by the PRD. In a recent case, we e-filed a six-year Declaration signed by the trademark owner in which some of the goods were canceled. The Declaration, filed using USPTO’s TEAS system, expressly lists the goods that are being canceled in one place and lists the goods that are to be renewed in a second place. This is a standard thing in the TEAS form. The signer of the form (the trademark owner) was among other things expressly stating that certain goods were being canceled from the registration.
Importantly, to the extent that there are any needed “magic words”, the words are automatically present in the Declaration because TEAS puts the magic words there.
Objectively the Declaration was free from defects and what PRD ought to have done is renew the registration for another four years.
After we e-filed the Declaration, we received an Office Action finding fault with the Declaration. A “Trademark Specialist” (read “non-attorney”) expressed bafflement that the goods which the Declaration says are to be renewed amount to less than all of the goods listed in the registration. The Trademark Specialist says that if we wish to renew less than all of the goods, we must expressly cancel whichever goods we wish to cancel, and we must provide “magic words” saying that we are canceling those goods.
The underlying significance of any post-registration Office Action is that if the filer somehow fails to satisfy the Trademark Specialist, the consequence will be that the Trademark Specialist will cancel the registration.
The chief problem here is that the Trademark Specialist should not have been baffled at all. We expressly stated that we are canceling particular goods. This then explains exactly why the new list of goods (to be renewed) is smaller than and different from the original list of goods.
To the extent that this bafflement is somehow connected with a mistaken impression that some or all of the necessary “magic words” were missing from the Declaration, there is the simple fact that (a) the “magic words” are indeed present, and (b) when a filer files such a Declaration using TEAS, the TEAS system always automatically provides all needed “magic words”.
This would not be so bad if the Trademark Specialist could return a telephone call. When we received this Office Action we hoped that we might get things cleared up in an amicable way by means of a telephone call. Maybe this Trademark Specialist is new at her job and with a telephone call we could nudge her in the right direction to better understand the parts of a TEAS six-year Declaration. We reached her voice mail and we left a detailed message.
But two days passed and we did not hear back from the Trademark Specialist. We called her again, again reaching her voice mail and leaving a detailed message. Another day has gone by and we have not heard back from her in response to either of our telephone messages.
In another PRD case we listed the goods to be canceled in the correct place, and the goods to be renewed in the correct place. The PRD got it backwards, canceling the goods that should have been renewed and renewing the goods that should have been canceled. It was quite a fuss getting the trademark office to correct this mistake, since apparently it is almost impossible in USPTO’s database to undo this type of mistake once it has been made.
The E-Trademarks listserv is a meeting place for trademark practitioners. Recent postings in that listserv discuss other problems in the PRD. One long-time listserv member described a case where the specimen was an invoice. Now, normally according to trademark office rules an invoice is not accepted as a specimen. But TMEP § 904.03(k) provides an explicit exception for bulk goods that are not sold in containers. The listserv member knew from experience that if he provided an invoice without any explanation, the Trademark Specialist would have a knee-jerk reaction to bounce the specimen. So he cited the TMEP section in the “remarks” section of the TEAS form. Indeed to be sure, he even quoted it.
You can guess where this is going. The Trademark Specialist bounced the specimen. The Trademark Specialist did not apparently even look at the “remarks” section. Now, at some further and quite unnecessary expense to the client, this listserv member is going to have to fight with the Trademark Specialist to get the Office Action withdrawn.
Another long-standing listserv member was renewing a registration where the goods were “concrete”. He filed a specimen that was a photograph of the concrete truck showing the mark on the barrel of the truck. The Trademark Specialist bounced the specimen, demanding that the filer provide a photograph of a bag containing the cement.
Still another long-standing listserv member was renewing a registration where the services were “waste hauling”. She filed a specimen that was a photograph of a garbage truck showing the mark on the side of the truck. The Trademark Specialist bounced the specimen.
Yet another long-standing listserv member was renewing a registration for downloadable computer software. The specimen was a screen shot of a web page where the user could download the software. It showed the mark next to a big green “download” button. The Trademark Specialist bounced the specimen saying it was nothing more than “advertising material”. Even after a telephone discussion pointing out the big green “download” button, the Trademark Specialist did not withdraw the Office Action. It took an appeal to a supervisor to get things straightened out.
Hopefully to the extent that these lapses are due to a Trademark Specialist being newly hired and perhaps inexperienced, eventually the Trademark Specialist will gain experience and will not make so many mistakes.
As the e-trademarks list member who cited the TMEP provision regarding invoices and still got his declarations bounced, I’m happy to report that I was able to get the specimen accepted by merely copying the text I had written into the miscellaneous section of the TEAS form into the argument section of the response to office action form, and the declarations were thereafter approved.
Still, whether the “trademark specialist” is an attorney or not, these unwarranted rejections are very frustrating. If you are “trademark specialist” in the post-reg division, pretty much your only job (apart from the occasional change to the listed goods/services) is to review specimens in declarations. You would think that they would know the various specimen requirements backwards and forwards if that’s all they had to do all day, but apparently they can’t be bothered to learn them until an attorney has to cite chapter and verse from the TMEP to convince them that a specimen is, in fact, allowed.