As more companies have stressed the importance of brand protection, the USPTO has seen an increase in trademark applications. Often, Applicants apply for trademarks with a broad scope of goods and services, as they do not know how they are going to grow and expand as a company. When filing an in-use application, some Applicants, deliberately or intentionally, file specimen of a mark in-use that can be doctored or fake to ensure protection in a certain classification.
However, as more and more trademark applications enter the USPTO database, the Office has decided to take action against fraudulent specimen. In early March 2018, the USPTO announced a new pilot program regarding specimen submission. The goal of the pilot program is to stop fake specimen from being filed by Applicants, nationally or internationally, that are not actually using the marks in U.S. commerce. Rather, these specimen are used as a place holder to reserve a particular classification for a mark. This program is specifically for 1A, in-use trademark applications. As noted above, an in-use application requires a specimen to be submitted in support of each classification at the time of filing.
To report an Applicant’s filing of fraudulent specimen for the benefit of filing an in-use application, the Office has encouraged those with an issue to contact them by email (TMSpecimenProtest@uspto.gov). The Office has requested specimen opposers provide evidence of the website, photograph or other digital content where the mark is said to appear, without the mark. Also, if the Applicant has prior trademark registrations or prior pending application with the same specimen, this can also be submitted as valid evidence as “Duplicative Specimens”. This report must be filed in the 30 day publication for opposition period.
It is important to note that if you are protesting another mark’s specimen, the USPTO will not follow up with you regarding your complaint. Rather, you will have to manually follow the status of that particular application in the USPTO TSDR Database.
If you are a trademark Applicant that wants to avoid receiving a letter from the Office regarding fake specimen, this can be easily avoided. If you are unsure how many classifications your mark will be used in, Applicants may file an intent-to-use application. An intent-to-use application allows Applicants to receive a Notice of Allowance (which means that a trademark passed through the Notice of Publication period without opposition) of their trademark before filing evidence of use in commerce.
While this program is a great idea for in-use applications, it will not completely eradicate the use of doctored specimen. As Applicant’s can still file an intent-to-use application, and a Notice of Allowance issues after the publication period, Applicants can still get away with filing altered specimen because time would have passed to file a doctored specimen under the pilot program.
If you or your business have questions about the new USPTO Pilot Program and you require advice regarding trademarks, contact the Business Law and Business Litigation Attorneys at The Jacobs Law LLC at 1-800-652-4783 or email TRADEMARKS@THEJACOBSLAW.COM.