USPTO’s Recently Announced Pilot Program on Fraudulent Specimens

This is Part III in a series on establishing use in commerce in the US for federal trademark purposes. Part I was “Common Questions: How to Establish US Trademark Rights.”  Part II was “Common Questions: How to Prove Use in Commerce (Specimens)“. This Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.

On March 6, 2018, the USPTO announced that it was launching a pilot program to uncover fraudulent specimens filed in support of use-based applications. The USPTO described these specimens as “digitally altered” or manipulated. For instance, the USPTO recently refused registration to the following use-based applications for which the specimens were held to be fake: Continue reading

Common Questions: How to Prove Use in Commerce (Specimens)

This is Part II in a series on establishing use in commerce in the US for federal trademark purposes. Part I was “Common Questions: How to Establish US Trademark Rights.” Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.

Clients frequently ask for guidance about what specimens (i.e., examples of current use of their trademarks or service marks) to submit in support of their applications for registration with the U.S. Patent & Trademark Office (USPTO). The answer, to some degree, is “it depends.”

What Specimens are Acceptable for Which Goods/Services?

For additional information on this topic, see also Common Questions: What’s the Difference Between a Trademark and a Service Mark?

The basic guidance from the USPTO’s Trademark Manual of Examining Procedure (TMEP) is as follows: Continue reading

Common Questions: How to Establish US Trademark Rights

This is Part I in a series on establishing use in commerce in the US for federal trademark purposes. Part II will discuss how to prove use in commerce and what kinds of specimens qualify. Part III will discuss a recently announced pilot program of the USPTO to minimize the submission of fraudulent trademark specimens in support of applications for registration.

Clients frequently ask for guidance about how to establish use in commerce to support their applications to the U.S. Patent & Trademark Office (USPTO) for registration of their trademarks and service marks. This post will address establishing use in commerce, generally, including why it is necessary to evidence such use and how much use would be sufficient. Continue reading

Don’t Assume Post-Registration Invoices for Trademark Fees Are Legitimate

Yesterday, the U.S. Patent & Trademark Office (“USPTO”) and the Trademark Public Advisory Committee (“TPAC”) held a public roundtable on the topic of “Fraudulent and Misleading Solicitations to Trademark Owners” to discuss the pervasiveness of fake “invoices” being sent by third parties to trademark owners seeking to collect additional fees, while appearing to be official notices from the USPTO.  (See also Meeting Notice, 82 Fed. Reg. 29535 (June 29, 2017)).

However, these “invoices” are NOT official notices from the USPTO. Depending on the results of your due diligence (see below for “What Can You Do?”), disregarding them should not have a negative impact your trademark application or registration with the USPTO.  Continue reading

What do Barber Poles and Lapel Pins Have in Common?

Both can serve as examples of trademark use in connection with membership in an organization. In May, the Wall Street Journal reported on enforcement actions by the New Hampshire Board of Barbering, Cosmetology & Esthetics to fine the unauthorized use of a barber pole by a hair salon that did not have any barbers on staff. Jennifer Levitz, “Barber Poles Have Their Own Police Force, With Badges and Everything,Wall Street Journal (May 2, 2017) (subscription may be required). The article also reported on the enforcement actions by the Arizona State Board of Barbers carried out by their state inspectors against salons for unlawful displays of barber poles or its likeness, without a licensed barber on duty (a violation of the Arizona Administrative Code). Id.

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