To reduce fraudulent trademark registrations, the USPTO initiated a pilot program that streamlines the procedure for third parties to report improper trademark specimens during the opposition period.
The United States Patent and Trademark Office (USPTO) is given the duty and responsibility to review trademark applications and register trademarks as outlined under the Lanham Act. One of the requirements to receive a trademark registration is to prove the trademark is “used in commerce” in connection with the goods or services applied for in the application. To show use, the trademark applicant must submit an acceptable specimen of use.
In recent years, trademark attorneys and USPTO Examining Attorneys have noticed trademark application filings, especially foreign filers, submitting specimens that are fabricated for the sole purpose of “showing” (pretending) the trademark is currently being used in commerce. Submitting fake specimens is not only a fraud on the USPTO, but creates a problem for trademark owners who actually use or intend to use a trademark. There is currently strong evidence that the U.S. is running out of good trademarks so it is important that the USPTO is not registering trademarks obtained through fraud.
Examples of Altered Specimens and Bad Trademark Attorneys
A common trend that has emerged is creating a digitally fabricated specimen. In other words, a trademark applicant, or maybe even their dishonest trademark attorney, digitally imposes the trademark onto a product or webpage to make it appear to be an acceptable trademark specimen. Most of the altered images that have been discovered have been filed by a few attorneys and bad actors.
One example of an attorney accused of manipulating specimens is Matthew Swyers, founder of The Trademark Company, PLLC. Mr. Swyers is currently not allowed to practice trademark law before the USPTO for, amongst other allegations, submitting “multiple fraudulent or digitally manipulated specimens of use were filed with the Office, which potentially jeopardized the trademark applications of his clients.”
Another trademark practitioner accused of altering trademark specimens is Samen Chen. It is unclear if he was even an attorney, yet he was the attorney of record for over 900 trademark applications and registrations, most of which belonged to foreign owners. Examples of two doctored specimens filed by Samen Chen can be seen below.
On the left are the trademark specimens submitted by Samen Chen and on the right are the source images found online by the Examining Attorney.
USPTO Pilot Program to Combat Doctored Specimens
To help combat fraudulent trademark filings, and in particular fake and doctored trademark specimens, the USPTO launched the trademark specimen protest pilot program. The program launched on March 6th, 2018 and is designed to streamline the process for third parties to stop fraudulent trademark specimens from proceeding to registration.
Before the launch of the pilot program, the only way for a third party to prevent a trademark application from being registered on the grounds of submission of a doctored specimen was to file a trademark opposition and raise specimen fraud as an issue. Filing an opposition is costly, especially when the issue may be as cut and dry as the two clearly doctored specimens shown above.
To streamline the process, the USPTO only requires that a third party sends an email to TMSpecimenProtest@uspto.gov during the thirty day publication period (also known as the opposition period). The subject line of the email must include the serial number of the application in question, and:
1) objective evidence of 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.
For the examples above of Samen Chen's doctored trademark specimens, a third party would need to enter the trademark application number(s) in the subject line of the email. In this case the application numbers are 87294473 and 87294501. In the body of the email, the third party should attach images of the original photos found online and the URLs where the images were found.
This process takes a little bit of time, but is much quicker than hiring an attorney, giving him or her the background of the case, then submitting a trademark opposition and the required USPTO fees to file it.
The USPTO automated response to anyone who reports specimen fraud through the program
The USPTO pilot program to combat fake and altered trademark specimens is good policy. Some people already argue the U.S. is running out of good trademarks and the USPTO needs to clear the “deadwood” from the trademark register by conducting more rigorous reviews of trademark renewal filings. Another method of keeping the trademark register clear of deadwood is stopping fraudulent applications before they register in the first place.
Before this program was launched, the only way for a third party to prevent a trademark application with a fraudulent specimen was to file an opposition. The claim in the opposition would be fraud was committed on the trademark office by submission of a doctored specimen. The filing of a trademark opposition costs $400 in USPTO fees alone, and attorneys charge a fee on top of that. The new system allows third parties who do not have the means to file an opposition help the USPTO prevent bad faith trademark applicants from receiving trademark registrations.
It will be interesting to track the results of this pilot program. The Granite Trademark Blog will keep the internet informed of any news or data that comes from the USPTO regarding the program. It will be interesting to know how many complaints will be filed. Will there be trademark sleuths combing published applications for doctored specimens?
Do you have any questions about the USPTO’s new trademark specimen protest pilot program? Have you spotted any specimens you believe to be doctored and want to report them? Contact us for a free trademark consultation and we will contact the USPTO on your behalf, pro bono, as we have an interest in keeping the register clear of any and all fraudulent trademark filings.