Specimen Rule Changes at the USPTO

On February 16, 2021, The USPTO discontinued its specimen protest program. This pilot program was implemented in March 2018, to allow third parties to report on specimens that were potentially fabricated and not in use in commerce. The Trademark Office is still actively seeking to identify suspicious and fraudulent specimens and is using an alternative method to accomplish this objective. Trademark owners can submit a Letter of Protest to alert the USPTO about an improper specimen of a third-party. The Trademark Modernization Act provides statutory authority for the Letter of Protest practice. Although, a trademark owner must now pay a filing fee of $50 to submit a Letter of Protest, it is still a cost-effective measure compared to filing an opposition proceeding with the Trademark Trial and Appeal Board.

When submitting a Letter of Protest, one must provide the Trademark Office with evidence about the registrability of a trademark in a pending application of a third-party. The party submitting the letter must include evidence supporting an acceptable reason to refuse registration or to issue a requirement for the third-party application. For example, the source for the mark contained in third party application is likely to be confused with a trademark in a U.S. registration or pending application, the proposed mark is merely descriptive or generic of the identified goods or services, the proposed mark will suggest a false connection with the protester, or the specimen(s) of use in the third-party application is fabricated.

It has been reported that a reason for the rise in submission of fake specimens not in use in commerce is possibly due to the desire to join Amazon’s Brand Registry program. The Brand Registry gives trademark owners access to brand protection tools. These tools facilitate in providing brand owners with a means to improve brand visibility and to fight infringers and counterfeiters. To enter Amazon’s Brand Registry program the enrollee must be the owner of a federally registered trademark. See our webpages, Amazon’s Brand Registry Requires Federal Trademark Registration and Amazon’s Project Zero Gives Control To Brand Owners for more information on Amazon’s brand programs.

Since applicants have continued to submit specimens that are not in use in commerce, the Trademark Office has continued to focus its attention on specimen review. This ongoing focus on specimens will foster integrity in the Federal Trademark Register. However, sometimes an over-zealous Examining Attorneys can require a lengthy response from an applicant that has legitimately used its mark in commerce. Examining Attorneys are seeking to eliminate applications containing specimens that are either digitally created, digitally altered or mock-ups. A digitally created specimen consists of a digital drawing of the goods or packaging for the goods. A mockup specimen is one that demonstrates what a mark would look like on a product, display or website, and typically created solely for the submission with the application.

If an Examining Attorney suspects a fabricated specimen, it will conduct further investigation such as reviewing applicant’s website or the e-commerce platform where the product is for sale such as www.amazon.com. If there are still questions or suspicions about the specimen, the Examining Attorney will request additional information from the applicant. The request may require information regarding the goods or services, whether the specimen was created merely for submission with the application, the source of the image depicting the goods, how the mark is used on the goods in a sales environment or in rendering the services, proof of sales in the U.S. including dollar amounts, and proof of use on other goods or services listed in the application. If the applicant successfully responds to all of the inquiries, the specimen will be accepted.

Lastly, when submitting Internet specimens, please remember you must include the URL and the date you accessed or printed the webpage. The TEAS form can now accommodate this information and multiple URLs and dates can be submitted. If you have questions concerning trademark specimens, please feel free to contact the firm for a courtesy consultation.