What happens when a company seeking a trademark registration in the US learns a company already registered their trademark? Take a look at how that exact issue played out for a Granite Trademark Services client.
A recent client of Granite Trademark Services (GTS) was researching how to apply for and obtain a trademark registration with the United States Patent and Trademark Office (USPTO). When conducting a trademark search, the client realized a Chinese company applied for and obtained a trademark registration for the client’s company name.
Confused about how this was possible, considering my client was unaware and nearly positive there was no Chinese company or any third party using their trademark, they reached out to GTS to see if GTS could find a way to: a) remove the Chinese company’s trademark registration from the USPTO trademark register; and b) obtain their own trademark registration.
Before the client could obtain their own trademark registration, GTS told them the previous registration would need to be dealt with. GTS told the client it would conduct an investigation into the Chinese company and their trademark registration and see what could possibly be done.
Granite Trademark Services Investigation
GTS first searched the internet for any indication that the Chinese company existed and came up empty. GTS then carefully reviewed the trademark application filed by the Chinese company and quickly realized some serious issues with the application, most notably, the specimens submitted were clearly doctored and fraudulent.
A crucial component of the trademark application process is applicants must submit an acceptable trademark “specimen” showing use of the trademark in commerce. For example, a specimen for sneakers may be a shoebox showing the trademark on the box or the trademark on the actual sneaker.
When GTS viewed the specimens submitted by the Chinese company, it was clear they were photoshopped, and photoshopped poorly. GTS then ran the images through the Google image search engine and found the original images without the poor photoshopped logos on them. In other words, GTS found the original images online that were later photoshopped by the Chinese company to include their trademark.
Trademark Fraud Committed
Once GTS identified the doctored and photoshopped specimens submitted by the Chinese company, it was obvious that they committed trademark fraud on the USPTO. Anytime a trademark applicant commits trademark fraud on the USPTO, their subsequent registration is always subject to cancellation based on the trademark fraud.
In this case, GTS uncovered an increasingly common problem where Chinese companies apply for and register trademarks by submitting photoshopped images. The Chinese companies are likely willing to commit fraud on the USPTO because the Chinese government offers its citizens $800 to apply and register trademarks with the USPTO. An $800 incentive is attractive for anyone, especially in a country such as China where the median income is $1,000 per month. Subtracting the $225 USPTO fee form the $800 government payment means, Chinese citizens make up to $575 for each trademark they register with the USPTO.
To combat the increasing trend of companies submitting fraudulent trademark specimens, the USPTO instituted a Trademark Specimen Protest Program. The program allows trademark owners to protest fraudulent specimens submitted by trademark applicants during the application process for no cost rather than filing an expensive Opposition.
Above is an example of a Chinese company submitting a photoshopped image of a specimen. This was a good photoshop, as it is hard to tell which image is the original. The image on the right is the original and the one on the left is the doctored image. The Chinese company that registered GTS's client's trademark submitted specimens that were much more obviously photoshopped.
However, GTS could not utilize this program on behalf of its client because the trademark already registered.
GTS reached out to the Chinese company hoping they would voluntarily surrender their trademark registration after being confronted with the facts they committed trademark fraud and never used the trademark. As it turns out, that was wishful thinking.
After GTS received no response from the Chinese company, GTS filed a Cancellation proceeding on behalf of its client at the Trademark Trial and Appeal Board, a subdivision of the USPTO that oversees trademark disputes.
GTS argued the Chinese company’s trademark registration should be cancelled because: a) it was obtained fraudulently because of the photoshopped specimens; b) the Chinese company never used the trademark; and c) even if they did use the trademark, GTS’s client used it first and continuously and therefore had trademark priority.
Despite GTS expecting no response from the Chinese company defending their trademark application in the Cancellation proceeding, it still filed the most comprehensive Cancellation it could in the event the other side would actually respond. As expected though, the Chinese company never answered the Cancellation and the trademark registration was cancelled and abandoned by the USPTO.
As indicated through the USPTO website, the Cancellation proceeding in this case was filed on July 18, 2018 and the company's trademark was not cancelled until November 7th, 2018. The end result was a positive, however the delay in time is frustrating in such cases.
What started with a simple trademark search by GTS’s client so they could apply and obtain a trademark registration so they could gain access to the Amazon Brand Registry led to the discovery of a fraudulent trademark registration obtained by a Chinese company. Unfortualently for GTS's client, this meant the need to file a Cancellation proceeding before they would be able to register the trademark they rightfully owned.
GTS ultimately won the case and its client is well on the way to procuring their own trademark registration. So if you are a trademark owner and realize a Chinese company, or some other third party, registered your trademark with the USPTO, there are mechanisms to cancel their registration to clear the way for your own trademark application.
If you have any questions about trademark cancellations or securing your own trademark registration, contact us today for a Free Trademark Consultation and one of our attorneys will contact you within twenty-four hours.