The United States Patent and Trademark Office (“USPTO”) has made a series of changes to the Trademark Manual of Examining Procedure (“TMEP”) since the beginning of 2017. The first wave of changes was enacted on January 14, 2017, and is primarily documented here. A second major change, effective as of February 17, 2017, concerns what the USPTO may require proving that marks and registrations are actually in use in commerce in the United States. The official press release for this change can be found here.
In January, the TMEP was amended in many small ways. This change included several small, but important, changes. For example, Section 301 has been amended to make it mandatory for documents in Trademark Trial and Appeal Board (“TTAB”) proceedings to be filed using the Electronic System for Trademark Trials and Appeals (“ESTTA”). Similarly, Section 306.01 was amended to update which types of correspondence with the USPTO may not be filed by facsimile transmission. These types of correspondence are applications for registration, drawings submitted under 37 C.F.R. § 2.51, 2.52, 2.72, or 2.173, requests for cancellation or amendment of a registration, certificates of registration surrendered for cancellation or amendment, correspondence that must be filed with the TTAB, Madrid-related correspondence submitted under 37 C.F.R. § 7.11, 7.14, 7.21, 7.23, 7.24, or 7.31, and documents that are statutorily required to be certified.
Another significant January update to the TMEP regards the filing and processing fees the USPTO collects. For example, the fee for electronically filing an application through TEAS Regular was previously $325 (per class) but is now $400 per class. However, an applicant may pay a reduced filing fee of $225 if they file a complete application using the USPTO’s TEAS Plus form, file certain communications regarding the application through TEAS, and agree to receive electronic communications concerning the application according to TMEP Section 819. Filing a Notice of Opposition or Petition to Cancel through ESTTA previously cost $300 per class, but now costs $400 per class. Various miscellaneous service fees were also updated, such as removing the previous fee to establish a deposit account. The January changes also includes changes to the paper filing fees.
The second change, enacted on February 17, allows the USPTO to require more proof of use than before to verify the accuracy of claims that a trademark is used in commerce. Specifically, the USPTO “may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations.” Based on the Department of Commerce’s press release, this will “benefit the public because it will facilitate the USPTO’s ability to assess and promote the integrity of the trademark register by encouraging accuracy in the identification of goods/services for which use in commerce or continued use is claimed.” This will also aid the USPTO in cancelling the registration or marks that either were never used in commerce or are no longer in use.
This change follows the results of an exhaustive “proof of use” pilot program that was completed in mid-2014, which focused on assessing and promoting the accuracy and integrity of the trademark register. This program involved the random selection of 500 registrations and required the owners to “submit proof of use of their marks for additional goods/services per class, in addition to the one specimen per class submitted with their affidavits, and to verify use of the additional goods/services during the statutory filing period.” 51% of the selections registrations failed to supply the additional proof necessary.
Overall, the recent changes to the TMEP are aimed at streamlining the application process and ensuring that newly registered marks are strong and actually in use. By lowering the filing fee for filing using the TEAS Plus form and agreeing to receive electronic communications, the USPTO is incentivizing faster, greener application processes. Requiring additional proof of a mark’s use in commerce will allow the USPTO to conduct a more thorough screening process of new marks, which in turn benefits consumers by providing more clarity with regards to the source of commercial goods.