The U.S. Patent and Trademark Office recently launched a pilot program to address an increasing number of altered or fabricated specimens submitted with use-based trademark applications. Fake specimens can now be reported via email to the USPTO during the examination phase, but no later than 30 days from the date the application publishes (i.e., the first deadline to oppose or request an extension of time to oppose).
As background, to obtain a registration, most U.S. applicants are required to submit proof of use of their marks, along with a verification or declaration confirming the use under penalty of perjury. There are exceptions, including filings based on foreign registration or extensions of protections of international registrations via WIPO, but applicants typically submit this proof (commonly called specimens) with use-based applications or post-publication for intent-to-use applications. For many products, the owner can simply fulfill the specimen requirement with a photograph of the product or its packaging, provided the mark is clearly visible, but some applicants, who may not be able to prove use, manipulate the system by digitally altering photos or creating mock-ups in which they add or change marks or logos. This is a problem for legitimate brand owners who are blocked from registering their own marks by prior registrations obtained fraudulently through the use of fake specimens.
To lodge a complaint through the new program, a brand owner must identify the serial number of the application in question in the subject line of an email and include evidence showing the specimen is fake. The evidence can take the form of (1) the source of the image used, such as a screenshot of the product without the trademark; or (2) other applications or registrations where the same image was used as a specimen for different marks. Those who submit protests will not receive any notice of the outcome, only an acknowledgment that the protest was received; however, anyone interested in finding the status of an application can access the relevant record through the USPTO’s website.
The program has its limitations. It only covers applications based on use, not intent-to-use, and even assuming that the USPTO takes the complaint under consideration and rejects an application on the basis of a bad specimen, in all likelihood, the applicant gets another bite at the apple. In other words, the USPTO will likely object and give the applicant six months to submit an acceptable substitute specimen or to amend the basis of the application (from use-based to intent-to-use).
The pilot’s impact remains to be seen. No data is yet available on the number of applications rejected based on specimen protests under the program, but anecdotal evidence so far suggests that applications have continued to publish, even where the specimen appears doctored and a protest is submitted in a timely manner.
The pilot does give brand owners an opportunity to flag fraudulent specimens without having to go through the time and expense of filing a formal opposition, but, given the limited information on the program’s efficacy, brand owners should plan to oppose or take an extension of time to oppose the application once it publishes. If possible, brand owners should consider appending a copy of the specimen protest to the opposition. The bar for fraud in the U.S. is high and requires a showing of clear and convincing evidence, but it may be worth asserting, especially if an altered or fabricated specimen helps show a willful intent to deceive the USPTO.