New PTO Interface Clarifies Applicant's Factual Representations

January 17, 2017
Michael Atkins

The U.S. Patent and Trademark Office recently revised its online interface. It now requires applicants for federal trademark registration to check boxes confirming the representations they’ve always made when filing new applications.

I like what they’ve done, since it forces applicants to consider the factual and legal basis for their filing.

Applicants now must confirm:

If the application is based on existing use in customer sales

• The applicant believes he/she/it is the owner of the trademark or service mark sought to be registered;
• The mark is in use in commerce on or in connection with the goods/services listed in the application;
• The proof of use shows the mark as used on or in connection with the goods/services listed in the application; and
• All facts stated in the application are true.

If the application is based on intended future use

• The applicant believes he/she/it is enttitled to use the mark sought to be registered;
• The applicant has a bona fide intent to use the mark in customer sales; and
• All facts stated in the application are true.

For both types of applications

• To the best of the applicant’s knowledge and belief, no other persons have the right to use the mark in commerce in the identical form or such a similar form that the use would be likely to cause consumer confusion; and
• The applicant makes its statements under penalty of perjury.

Again, these factual representations are nothing new. However, the new filing format helpfully clarifies the representations that applicants for federal trademark registration make. If any are not true, it’s not appropriate to file the application. And if the applicant falsely makes a factual representation, he/she/it risks having the resulting registration be invalidated.

Article originally appeared on Michael Atkins (http://seattletrademarklawyer.com/).