On March 6, 2018, the U.S. Patent and Trademark Office (“USPTO”) announced the launch of a new pilot program permitting third-parties to protest specimens which have been digitally created, altered, or fabricated. The program is intended to combat the increasing number of fraudulent specimen submissions filed on behalf of applicants. Third-parties that believe an application contains a suspect specimen can now report such issues via email to TMSpecimenProtest@uspto.gov.
The complaint must contain “objective evidence” of either of the following:
1. third party use of the identical image without the mark in question, such as the URL and screenshot from an active website or a digital copy of a photograph from a print advertisement and the publication in which it was featured; or
2. the prior registration numbers and/or serial numbers of applications in which identical images of objects, mock-ups of websites, etc., all bearing different marks have been submitted to the USPTO.
The United States trademark registration system is a use-based system. This means that an applicant cannot obtain a federal registration until the applicant has used its trademark in commerce. In order to prove such use, the USPTO requires that he applicant submit a “specimen of use.” Acceptable specimens for goods may include but are not limited to commercial packaging bearing the mark or labels and tags attached to the goods. For service marks, acceptable specimens may include but are not limited to advertising and marketing materials or screen shots of a website evidencing the service being rendered. The specimen must provide evidence of how the mark as it is actually used in commerce. Therefore, mock-ups, printer's proofs, etc. are not acceptable specimens of use. However, the USPTO has discovered that there has been a high-volume of applicants having circumvented this requirement of submitting specimens evidencing actual use by providing fraudulent specimens.
The USPTO’s new pilot program appears to be a response to a dramatic increase of applications which contain these fraudulent specimens. Notably, on March 21, 2017, the USPTO issued, and exclusion order against Samen Chen, prohibiting him from participating as an attorney of record, correspondent, domestic representative, or signatory in any trademark application or registration before the USPTO. In the Chen exclusion order the USPTO found that he was not a licensed attorney. In addition, Chen also appears to have falsified specimens in numerous filings. Below are some examples of Chen’s fraudulent specimen submissions.
The pilot program will provide a much-needed solution to combat blatant violations of this kind. Previously, the only remedy to challenge fraudulent specimens was to oppose the application on the basis that the submission of the specimen constituted fraud which is a time consuming and costly process. The pilot program should be less expensive and provide a faster remedy than traditional opposition proceedings.
The USPTO has not set a deadline for the program; however, it has reserved the right to alter the pilot program based on operational need, including termination of the program at any time.
The USPTO’s mission to preserve the integrity of the trademark register is commendable. And, this program is just one tool designed to assist in achieving that goal.
Contact Cooper Legal, LLC to ensure your specimen do not run afoul of the USPTO's regulations.
This blawg is provided by the firm for informational purposes only and may not be relied on as legal advice. If you have any questions related to your specific business needs, schedule your legal consultation today.