Picking when to hand in a specimen of use?

I will offer a few thoughts on how a trademark practitioner might pick when (during the prosecution of an ITU trademark application) to hand in the specimen of use.  (I will assume the simple case in which a trademark application contains just one trademark class.  In such a trademark application, there is generally a need only to hand in one specimen of use.)

The idea of an ITU application is that the applicant is not claiming to have actually used the mark in interstate commerce, but is merely professing to have a bona fide intention to use the mark in commerce at some time in the future.

It will be recalled that there are several kinds of US trademark applications.  One kind of US trademark application is a so-called “ITU” or “intent-to-use” trademark application.  Some ITU applications are ITU because they were initially filed as ITU applications.  But not every ITU application is an ITU because it was initially filed as ITU.  What might have happened is that an application may have been initially filed as “use-based” and then, for one reason or another, the applicant amended the application to be ITU.  (The technical terminology is that the applicant amended the filing basis from “section 1a” to “section 1b”.)

If the applicant files an ITU case … or files a use-based case and then for some reason amends the case to be ITU … then it is necessary to hand in a specimen of use as a precondition to receiving a trademark registration.  The applicant does not get to pick whether or not to hand in the specimen of use.  (Well, I guess the applicant could choose never to actually hand in a specimen of use, but the result would be the trademark application going abandoned.  For purposes of this blog article I will assume that the applicant does not want to let the application go abandoned.) As I say, the applicant does not get to pick whether or not to hand in the specimen of use.   The only discretion open to the applicant is to pick the timing of when to file the specimen of use.

(When I say “handing in a specimen of use” I mean “filing an Amendment to Allege Use” or “filing a Statement of Use”.)

So far as an ITU application is concerned, the easy and lazy course of action is to keep putting off the handing-in of the specimen of use.  If the applicant puts this off for a long enough time, eventually the Examining Attorney will approve the application to be published for opposition.  Then the application will be published for opposition.  Then assuming that nobody opposes, eventually the USPTO will mail a Notice of Allowance.

The USPTO rules do not permit handing in the specimen of use during a “blackout period” commencing with the event of approval for publication and ending with the date of mailing of the Notice of Allowance.  In other words, if the applicant postpones handing in the specimen of use until the Examining Attorney approves the application to be published for opposition, then the applicant is stuck and cannot hand in the specimen of use for some months until the USPTO mails the Notice of Allowance.

As I say, the easy and lazy course of action is to keep putting off the handing-in of the specimen of use until after the Notice of Allowance arrives.  A main point of this blog article is to highlight what I see as the disadvantages of putting it off this long.  What one must keep in mind is that once the Notice of Allowance arrives, the applicant is on a rather tedious series of six-month “death marches” toward abandonment. The applicant may, if it wishes, purchase up to five extensions of time, each postponing the abandonment by another six months.  This period of time for handing in a specimen of use, after the Notice of Allowance, can drag on for as long as three years.  (The Notice of Allowance itself sets a six-month abandonment period, and the five extensions of six months each can bring the grand total to 36 months, that is, three years.)

The way I look at it, if you are getting ready to hand in a specimen of use after the Notice of Allowance, then no matter when exactly to pick for handing in the specimen of use, you will be somewhere along one of the six-month death marches.  During the particular six-month death march that you have selected, you can never be absolutely certain that your specimen of use will satisfy the person at the USPTO whose task it is is to decide whether or not your specimen is good enough.

(An observer might think that an experienced US trademark practitioner should be able to draw upon his or her experience to predict whether a particular specimen of use will or will not satisfy the USPTO person.  But every experienced US practitioner will have no difficulty enumerating and recounting many applications in which the practitioner would have guessed there would be no problem with the specimen of use, and in which the USPTO person nonetheless bounced the specimen.  Likewise every experienced US practitioner will have no difficulty enumerating and recounting many applications in which the practitioner would have guessed that a USPTO person would likely bounce the specimen of use, and in which the USPTO person nonetheless approved the specimen without comment.)

(There is a practice nicknamed “purchasing insurance” in this situation in which a Notice of Allowance has been mailed.  The way that you “purchase insurance” is that when you hand in a specimen of use for which you lack confidence, at the same time you purchase one last extension of time.  The idea is that if the USPTO person bounces the specimen, you have six more months to keep hunting around for alternative specimens of use in the hopes of stumbling upon a specimen that will satisfy the USPTO person.  In my own personal experience, the cases in which I “purchase insurance” because I lack confidence in the specimen, are the cases in which the USPTO person finds nothing wrong with the specimen.  In my own personal experience, the cases where I end up in big trouble because of a bounced specimen near the end of a death march are the cases in which I never thought there would be any problem, and so I chose not to “purchase insurance”.)

In this blog article I observe that things are very different if somehow you can get your specimen handed in before the Examining Attorney approves the application.  There are a lot of advantages to handing in the specimen of use at this relatively early stage.

For one thing, the Examining Attorney is already familiar with the case, and maybe is already accustomed to returning your phone calls from previous interactions.  And anyway, if you hand in a specimen and the Examining Attorney doesn’t like it, the Examining Attorney will probably be nice about it and will allow you to keep trying again and again until you come up with a specimen that the Examining Attorney is happy with.

Or if you hand in a specimen and the Examining Attorney doesn’t like it, then maybe you can phone up the Examining Attorney and work something out.  Anyway you will not be on a death march to abandonment at that point.  Not like you would be if you had already received a Notice of Allowance.

And assuming that you successfully hand in your specimen before the Examining Attorney approves the case, then this changes everything about what happens if you survive the publication for opposition.  Instead of receiving a yucky old Notice of Allowance, you actually receive a Certificate of Registration.  With the Certificate of Registration in hand you get to relax for some years.

In contrast if you receive a yucky old Notice of Allowance, you then face having to set and clear maybe some dozens of dockets as you agonize your way through the various extensions of time, agonize about whether or not to “purchase insurance”, agonize about when exactly during any given six-month period is the best or worst time to hand in your specimen of use … and so on.

In our office we figure the internal cost to our firm to set and clear a docket is something like $50.  So if we have two workflow paths available to us, and if a first path only requires setting and clearing one docket and if a second path requires setting and clearing multiple dockets … then we like the first path, because it imposes a smaller internal cost upon our firm.

Not to mention that every time we get stuck setting and clearing a docket, it is one more opportunity to screw up and miss a due date or something.  So again a path that requires setting and clearing a smaller number of dockets is a path that we like better.  A path that permits us to reach the happy position of being able to say “it’s done” is one that we like the best.  There’s nothing quite like the happy event of receiving the actual physical Certificate of Registration.

So yes whenever circumstances permit, we try as hard as we can to get any ITU case converted to use-based chronologically prior to the approval for publication.

What do you think about the timing of handing in a specimen of use?  Please post a comment below.