Earlier this month the PTO announced the inception of its Trademark Specimen Protest Email Pilot Program; as the name suggests, the program encourages the public to report any specimens that do not appear to exhibit marks as actually used in commerce. The program covers pending applications, and was instituted to remedy a spike in digital imagery suspected of having been created simply for the purpose of obtaining U.S. trademark registrations.

Imaging software has made it easier than ever to create and alter images for use as specimens. The PTO has recently seen situations where trademarks are noticeably added to electronic imagery; in the most egregious cases, the same imagery – with only the mark modified — has been used to support numerous applications by ostensibly different applicants. The PTO is asking for help from stake holders to help police the use of such fraudulent specimens.

The PTO’s pilot email program allows users to email specimen concerns to a single email address: TMSpecimenProtest@uspto.gov. Submissions should include either:

  • Objective evidence of third party use of the identical image as that shown in the specimen or record without the mark in question, or
  • prior registration or serial number(s) of applications in which identical images or mocked up websites, all with different marks, have been submitted to the PTO

For more information on the submission process and requirements, click here.

The institution of this pilot program will not only assist the PTO in ensuring the integrity of the Register, but will also help applicants address uncertainty in the clearance and prosecution process. At any time during the pendency of an application – and up to 30 days after publication – interested third parties can submit evidence that a specimen is fraudulent. The program provides a streamlined pathway for clearing a mark for use and registration, and for overcoming citations based on fraudulent filings.

With an engaged user base, the pilot program will hopefully allow the PTO to say “Hasta la vista, baby!” to marks registered based on fake trademark specimens.

This article appeared in the March 2018 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.