While the implications of the final SKYKICK decision are still resonating in the UK, US attorneys might consider the outcome fairly irrelevant and might be heard to say: "how were you filing before?"
Trade Mark scope: U.S. vs. UK/EU
US trade mark specifications are narrow and
specific. The reason for this traces back to the US Constitution,
which, as far as IP is concerned, only regulates patents and copyright. The ability of the Federal
Government to establish a trade mark registry had to be found in
the power granted by the Constitution to Congress, to
"regulate commerce". The registration of a trade mark is
thus inextricably linked to usage, especially as far as US domestic
applicants are concerned. Foreign applicants get an initial pass,
due to Congress' ability to regulate commerce with foreign
nations but still require a bona fide intention to use. For the
most part therefore, US trade mark specifications mirror actual
usage and are accordingly, very narrow by UK and European
standards.
When US trade marks are filed in the UK, there has been a practice,
historically, of broadening these narrow specifications. A
discussion could take place to determine what broader scope of
goods and services may correspond to the broader category of
"bona fide intention to use". The final decision in
SKYKICK has complicated this discussion.
By way of example, a US specification for a narrow type of computer
software should not be expanded to software generally. The SKYKICK
decision makes it clear that such an expansion could open the
application to a challenge that it was filed in bad faith. This is
certainly an error to avoid. Does it still make sense to expand US
specifications to UK practice? There may still be some safe
territory between actual use (which is the US criteria for
registering) and bona fide intention to use, the US criteria for
filing.
From US use to UK intention
A starting point might be to ask whether the US specification
was narrowed in the final Statement of Use. If so, the UK
specification could possibly be expanded to the original US Intent
to Use spec, subject to a check that this still corresponds to a
bona fide intention to use.
Given that SKYKICK provides for the survival of narrower terms, it
could be unwise to replace or reword any existing US specification
terms. Any new specification terms should be separated firmly by a
semicolon.
Class heading terms should be used with caution. Again, an item
like "software" would be bad but an item like
"clothing" might be safe.
The practice of "evergreening", namely refiling a trade
mark when the existing registration exits the grace period for
non-use, so as to establish a new grace period, is firmly to be
avoided in the wake of SKYKICK. Evergreening is however still
around in other parts of the world and it may be worth checking the
intention behind new instructions.
Specifying Carefully After SKYKICK
The difference between how UK attorneys draft specifications and
how US attorneys draft specifications, is probably
narrower now than it has ever been and this can only be good for
business.
The SKYKICK decision has prompted a necessary recalibration of UK
trade mark practice. While US attorneys may be unaware of these
changes, they are unwittingly in a better position than before,
given that UK attorneys are now also applying closer scrutiny to
both the language used and the intention behind a trade mark
application. Careful assessment is, however, essential when
expanding US specifications for UK filings, to avoid allegations of bad faith
around the intention to use.
The key takeaway is communication. Keep within the intention to use
and avoid bad practices like overly broad class headings and
evergreening.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
