How to File a Cannabis Trademark in 2020: New USPTO Filing Rules
TRADEMARK FILING RULES HAVE BEEN UPDATED IN 2020
Much to the chagrin of trademark lawyers and applicants alike, the USPTO has recently instituted a series of new rules and procedural updates with the superficial goal of making the trademark application process more uniform and accountable.
These rules officially took effect in February of 2020 and by and large, primarily relate to communications and Statements of Use/Specimens.
As we shall see, these updates are not excessively onerous although one particular requirement which mandates the recording of the applicant’s email address in the application, and thus the USPTO record, should cause applicants to evaluate what they find comftorable with having on record.
REQUIREMENT TO FILE TRADEMARK APPLICATIONS ELECTRONICALLY
The shift from paper filings to electronic filings is not all that surprising but starting February 15th, all “Formal correspondence” pertaining to trademark registrations must now be filed electronically through the TEAS system. While the new rule allows for limited circumstances whereby communications may be made through paper filings, if an applicant does not satisfy the necessary criteria to be eligible for the paper filings, he/she will receive a notice from the USPTO which indicates that the application has been rejected.
Exemptions Include:
- Applicant is a member of an exempted treaty country
- Applicant is “grandfathered” in
- A serious national emergency mandates paper filings
- Specimens for Non-Traditional Marks, which can only be filed with paper filings
- Accepted Petition to the Director to file by Paper
- TEAS is Unavailable on the prospective date of Filing Deadline
- TEAS system unavailable to technical difficulties/system outage
TRADEMARK SOU/SPECIMEN FILING UPDATES
Remember, a central feature of the trademark application is the Statement of Use and the submission of the specimen, which illustrates the mark’s use in commerce. Without Use, the mark does not serve as a trademark.
Trademarks must be used in conjunction with the sale of goods/services in commerce.
Fundamentally, the specimen which the applicant submits in the application must show a clear and compelling nexus between the trademark and the goods/services listed in the trademark application. If the specimen does not sufficiently show the trademark’s use in commerce, the specimen will be rejected. The February 2020 rules have seemingly ratcheted up the USPTO’s demands for a straightforward nexus between Mark-goods/services and in particular, in regards to specimens which are tags, labels, and webpages.
Trademark Specimens for Goods
Labels/Tags Specimens
Consider for the moment a trademark applicant who seeks to register a trademark for the in CL 025, Apparel. So, perhaps this trademark applicant has applied for the mark ALFA and lists in the application, T-SHIRTS and PANTS as the good. Prior to February 2020, what precisely qualified as a satisfactory “nexus” between the trademark and the goods was not as clear. However with the Feb 2020 update, Rule 2.56 (covering Specimens) was updated to more articulate the Use in Commerce requirement.
Indeed, according to the USPTO’s Examination Guide 1-20 (Revised)
“With respect to specimens for goods, the specimen must show actual “use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on displays associated with the goods.” 37 C.F.R. §2.56(b)(1). Specimens of the mark as used for goods may include, for example, a photograph or photocopy of (1) the actual goods bearing the mark, (2) an actual container, packaging, tag, or label for the goods bearing the mark, or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §§904.03(a)-(m).”
Thus, for the ALFA trademark applicant, he/she may consider using Labels/Tags bearing the trademark which are attached to the T-Shirt/Pants as satisfactory specimens. 37 C.F.R. §2.56(a), (b)(1); TMEP §904.03(a). Critically, the label/tag is designed to show that the mark is in use in commerce and thus ideally, the label/tag should be directly attached to the product (T-Shirt/Pants). In the event that the label/tag for some reason cannot be attached directly to the product, applicant may demonstrate that the label/tag sufficiently illustrates Use In Commerce by including on the tag label detailed information about the product (ingredients, weight, size etc.). However, if it is apparent that the label/tag is a computer rendering or markup rather than an actual Specimen showing Use in Commerce, the trademark examiner will likely issue a rejection, in the form of an Office Action, requesting additional information seeking clarification on whether or not the goods have actually been sold.
Webpage Specimens
Webpage specimens for trademark applications under the new guidelines are again designed to strengthen the nexus between the trademark, the goods, and the sale of those goods in commerce. In our example, if the owner of ALFA clothes chooses to use a webpage as a specimen (rather than a label/tag), he must ensure that the chosen webpage contains the mark, the goods being sold under the banner of the mark, the URL of the webpage, AND the date the webpage was accessed or printed. 37 C.F.R. §2.56(c).
Unacceptable Specimens
According to the updated guidelines, proposed “specimens” which merely depict the mark’s use in commerce or prospectively, the mark may be used in commerce at a later time, do not qualify as specimens. Examples of these non-specimens include a printer’s proof, a digital image or mockup, a computer illustration and/or an artists rendering. 37 C.F.R. §2.56(c).
FILING A TRADEMARK APPLICATION: THE NEW EMAIL ADDRESS REQUIREMENT
This new filing update is perhaps the most controversial and now requires an applicant to include an email address IN ADDITION to the name, address and email address of the attorney (if the application is filed by an attorney). One can imagine why applicants are not thrilled with this inclusion; many applicants are private and simply do not want their email address listed publicly. However, taking this concern into account, the USPTO has explicitly stated that an email address may specifically be created for this unique purpose i.e. created a new Gmail account that you only use for correspondence with the USPTO.
