The United States Patent & Trademark Office (USPTO) launched a pilot program allowing users to protest trademark applications filed with improper specimens that are digitally created, altered, or fabricated.
This program was implemented to combat the growing problem with illegitimate filings, particularly those from China. Many of these fraudulent applicants are not actually using their marks in the United States. Instead they doctor specimens to reserve the rights to the mark, often by adding text to a stock photo.
Trademark owners who monitor the use of their trademarks in commerce may find this new program to be a cost-effective way to challenge a pending application that could conflict with a previously registered trademark or common-law trademark.
Guidelines for Filing a USPTO Specimen Protest
Users must email [email protected] within 30 days of the trademark’s publication for opposition and submit a report. Here is what the report should include.
Email Subject Line
The subject line should be the application’s serial number (a two-digit series code followed by a six-digit serial number which is assigned by the USPTO).
If you are reporting duplicate specimens, the subject line should include the words “Duplicative Specimens” before the serial number, and then include the serial numbers of the protested applications in the body of the email.
Email Body
The report should include either:
- “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;
- “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.”
If you need help submitting your report or want more information about monitoring and protecting your trademark rights, reach out to Crystal Broughan and the Marks Gray Intellectual Property Team.