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:

OVEN MITT

Specimens appear digitally altered – thus permitting at least three different applications submitted by different applicants (compare the specimens submitted in connection with the each of the following applications):

  • HOONAO, Ser. No. 87/259,898
  • WHOBUY, Ser. No. 87/282,485
  • VALOURGO, Ser. No. 87/293,287 (see 11/20/17 Office Action for a detailed analysis of the other variations of this application filed by different applicants – this application ultimately registered following the submission of a substitute specimen)
HEADPHONES

Specimens appear digitally altered – again allowing for multiple applicants to submit identical specimens that only change the name of the mark applied to the goods.

  • FONLLAM, Ser. No. 87/299,991
  • LAUVA, Ser. No. 87/303,636 (this application sailed right through, achieving registration as Reg. No. 5,284,590)
  • FETANTEN, Ser. No. 87/342,935 (see 5/9/17 Office Action for additional detail about the many applications filed containing variations of this exact specimen)
USB CABLE

Again, the specimens for these applied-for marks were digitally altered

  • IGOEZI, Ser. No. 87/355,439
  • MERBYE, Ser. No. 87/386,209
  • GBATERI, Ser. No. 87/362,495 (see 5/19/17 Office Action for a detailed analysis of the other applications that relied on this same (altered) specimen)

In the case of the GBATERI application for registration in connection with USB cables and other goods, the USPTO not only rejected the specimens as digitally-altered mockups that fail to show use in commerce of the actual mark, the USPTO required the applicant to submit additional detailed information proving use. Such additional proof is not normally required in support of an application, but applicants should ensure that they have information like this available to submit promptly (to avoid delaying the prosecution of the application) if the USPTO requests it.

The Examining Attorney explained,

A specimen must show the mark as used in commerce, which means use in the ordinary course of trade (not merely to reserve a right in the mark). 15 U.S.C. §§1051, 1052, 1127. A specimen shows a mark used in commerce for goods only if it shows the mark placed on the goods, packaging, tags or labels affixed to the goods, or displays of the goods at their point of sale, and the goods are actually sold or transported for sale in commerce. 15 U.S.C. §1127. Because the specimen of record appears to be digitally created or altered, or otherwise a mock-up, it does not appear to show the mark as actually used in commerce. Therefore, to permit proper examination of the application, applicant must submit additional information for the record about the specimen and how the mark as shown in the specimen is in use in commerce with applicant’s goods. See 37 C.F.R. §2.61(b); TMEP §814.

The Examining Attorney thereafter asked the following questions and indicated that the applicant was required to respond to all and provide documentary evidence “to satisfy the following requests for information:”

  • Applicant must specifically state for the record whether the goods shown in the specimen submission actually bear the proposed mark on the hangtag and the label as shown when sold in U.S. commerce.
  • Please provide copies of invoices, bills of sale, or other documentation of sales of the goods.
  • Applicant must specifically state whether the specimens show the applicant’s product as it is currently being sold to consumers in U.S. commerce.
  • Applicant must state whether it is aware of the attached pending U.S. Trademark Application Serial Nos. 87386209 (MERBYE) and 87355439 (IGOEZI) which contain specimens that are identical or similar to the product specimen submitted with this application, and which are filed by different third parties. (Attaching copies.)
  • If Applicant answered in the affirmative to the previous question, please explain in detail the nature and extent of this awareness, including any connection between Applicant and the other third-party applicants.
  • If the identified goods bearing the mark are sold in stores, Applicant must provide photos showing the goods in store locations. If these goods are sold in another type of sales environment, Applicant must provide evidence showing the goods for sale in that environment. If these goods are available for sale online, Applicant must provide images of websites showing the goods for sale.
  • If the information in question (6) about how the goods appear in the actual sales environment is not available to applicant, then please describe how applicant’s goods are transported for sale and provide photos and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are being transported for sale.”
    • Note that each of these additional questions can also be instructive to legitimate applicants regarding the types of information that can be used to support a new application.

In another case, an applicant submitted clear printer’s proofs in support of its application. See specimens submitted in support of Serial No.: 87/297,677 (below are copies of the actual specimens submitted). For comparison purposes, the applied for mark appears on the far left, but the center and right-hand pictures show mockups actually submitted to the USPTO in support of its application. Note the use of “Packaging Mock-Ups Vol. 1” and “Your Awesome Design HERE” or “Replace Your Design Here” in these drawings.

Drawing Specimens

The Applicant in this matter ultimately withdrew its “use” filing basis and indicated it only had a bona fide “intent to use” – which will allow the Applicant to begin to actually use the mark in commerce and submit actual specimens once use can be shown.

CONCLUSIONS

There are certain types of specimens that will always be rejected: 1) digitally altered specimens, like the oven mitt, headphones and USB cable shown above; 2) mock ups that have not yet been launched into commerce, like the fish designs above; and 3) printer’s proofs, which show how the mark is intended to be used, but are clearly not the final version of artwork (see USPTO Glossary, under “Printer’s Proofs”).

In all three examples, the specimens do not show actual use in commerce, but instead perhaps show what an applicant might want its use in commerce to look like after a product is launched. As the U.S. trademark system is not a “first to file” system but instead is a use-based system, aspirational submissions like this should be avoided.

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

Common Questions – What’s Involved in Registering a US Trademark?

So, you’ve decided to launch a brand name in the U.S. and are contemplating registering it in the U.S. Patent & Trademark Office (“PTO“). What can you expect? Not every application is the same, so there will be variations in exactly what happens in the prosecution of your application, but hopefully this will serve as a “Trademark 101 Primer” to describe the basic process overall.  (Note – this post is for general information purposes only and does not provide any specific legal advice.  Contact your trademark attorney to discuss any areas of specific concern.)

BASICS

What is a Trademark? It’s a word, phrase, symbol or design, or a combination of words, phrases or designs, that identifies and distinguishes the source of the goods of one party from those of others. A service mark performs the same function as a trademark, but applies to the source of a service rather than of a product. (For simplicity, this post refers to trademarks and service marks collectively as “trademarks.”)

How Valuable is a Good Trademark? The value of a good trademark lies in its ability to convey to the public the source of a particular good or service. The key is to develop a mark unique enough that customers associate it with your goods or services – and only your goods and services. While temptingly simple, choosing a mark that describes your goods and services will not create any trademark value. Customers won’t know to distinguish your goods from others in the same market.

Can  Rights Develop Based on Use? Federal registration is not a requirement to protect trademarks in the U.S. – instead, rights in a particular trademark can be established simply based on use in connection with particular goods or services in the marketplace (aka “common law trademark rights”). Nevertheless, federal registration offers more comprehensive protection than reliance upon common law rights, including providing nationwide notice of the owner’s claim to the mark.

TRADEMARK APPLICATION PROCESS
Continue reading

Proposed Legislation to Address Perceived Misidentification of Geographic Source of Goods

On July 31, 2009, Representative Daniel B. Maffei (D-NY) introduced H.R. 3499, to be called the “Trademark Protection Act” in the House of Representatives. The Bill purports to assess civil liability for unfair competition in the form of misleading the public as to the geographic source of a particular product. This provision would amend Section 1125(a)(1), which prohibits “False designations of origin, false descriptions and dilution” in the use of trademarks in commerce in the U.S. 15 U.S.C. § 1125(a)(1).

Apparent Objection to Relocating Manufacturing to China

Among the findings Rep. Maffei proposes, he explains why he introduced the Bill: “Syracuse China was an upstate New York manufacturer in the city of Syracuse. The company was founded in 1871 as the Onondaga Pottery Co. and was one of the last major china makers in the U.S. On April 9, 2009, after more than 130 years in business, Libbey Inc. (of Toledo, Ohio) halted production in Syracuse, eliminating 275 local jobs. Libbey plans to continue selling dinnerware under the name ‘Syracuse China’ even after they stop production at the New York-based plant, but the company will manufacture the product in other countries and import them into the U.S.” H.R. 3499 § 2 (3).

It appears that the Syracuse China Company (which appears to be a different legal entity than the one identified in Rep. Maffei’s Bill) owns a valid registration in the word SYRACUSE, standing alone, which is registered in connection with “China tableware and ornamental chinaware” (Reg. No. 104,744, registered in 1915, alleging a date of first use in 1897). The registration was renewed in 2005, and could be asserted against a different company seeking to confuse consumers about the source of the goods sold in connection with a confusingly similar mark. (That being said, it’s possible that the Libbey Company referenced in the Bill is somehow affiliated or related to the Syracuse China Company such that litigation would not be considered.)

Indeed, it appears that at one time, predecessors of the Syracuse China Company registered variations of the mark “SYRACUSE CHINA” and then let the registrations lapse. Specifically, the following three registrations are marked “dead” in the U.S. Patent & Trademark Office’s database – and therefore cannot be asserted in litigation against some one else’s actual use of the mark in commerce:

* SYRACUSE CHINA (& design), Reg. No. 734,163 applied to “dinnerware and tableware made of China” and was registered in 1962 (alleging a date of first use in 1961). The registration was deemed abandoned in 1987 when the registrant failed to renew it.

* SYRACUSE CHINA 1871 (& design), Reg. No. 841,235 applied to “dinnerware and tableware made of China” and was registered in 1967 (alleging a date of first use in 1966). The registration was deemed abandoned in 1989 when the registrant failed to renew it.

* SYRACUSE CHINA CORPORATION (& design), Reg. No. 975,004 applied to “dinnerware and tableware made of China” and was registered in 1973 (alleging a date of first use in 1972). The registration was deemed abandoned in 1994 when the registrant failed to renew it.

Protection of “Weak” Marks

Also interesting about this proposed Bill is the following draft “finding:” “Trademarks that describe some feature or quality of the goods or that are based on someone’s name or a geographic term are considered to be ‘weak’ and thus are not protectable under trademark law. However, once the trademark owner can demonstrate substantial sales, advertising or other public awareness of a weak trademark, the trademark will be considered distinctive and can be registered with the [US Patent & Trademark Office].” H.R. 3499 § 2 (2).

The statement that “weak” marks are not protectable under U.S. trademark law perhaps goes too far, and despite the second sentence of these draft findings, suggests that these marks may never be protectable. Certainly, in any litigation or other dispute involving a “weak” mark, the parties will debate whether the owner of that mark has demonstrated secondary meaning or acquired distinctiveness, such that the consuming public would automatically associate such a “weak” mark used in connection with the relevant goods or services with the owner of the mark – in other words as a “source indicator”. Descriptive marks such as these can acquire distinctiveness and obtain a level of trademark protection that seems to somewhat be undervalued in the draft “findings” in this Bill.

In addition, this Bill appears to focus only on the ability to register a trademark with the U.S. Patent & Trademark Office. Under U.S. law, trademarks can be protected from misappropriation and confusingly similar use by someone else based on the actual use of the earlier mark in commerce. There is no requirement that every trademark be registered before protection from infringement is available. Instead, senior rights may even exist for unregistered marks in certain circumstances. Notably, the Bill contemplates amending the civil liability provisions relating to marks that are either registered or unregistered – including those known as “common law marks”.

There are definitely benefits to filing an application for trademark registration – including the presumption that the registrant can expand the use of its mark nationwide on the goods or services described in the registration. Even the U.S. Patent & Trademark Office will only register a mark if there has been bona fide use in U.S. commerce, as demonstrated by evidence submitted by the applicant through the application process. See Trademark Manual of Examining Procedure (“TMEP”) § 901.01 (quoting statutory language: “The term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”).

In addition, even after registration, if a registrant stops using the mark in U.S. commerce, the registration can be cancelled or narrowed to only those goods or services on which the mark continues to be in active use. See TMEP § 1604.10 (explaining requirements to maintain a registration, which will be cancelled if continued use cannot be demonstrated).

Conclusions

Upon introduction, the Bill was referred to the House Committee on the Judiciary. At present, no hearings are scheduled for the Bill. It is unclear whether there will be any further action taken on the Bill.

It also appears that this issue of misidentification of geographic source of origin might not be a pivotal issue for Rep. Maffei. Press releases relating to the various legislative initiatives that he has sponsored or speeches that he has delivered are available on his web site, but none of them relate to this Bill (at least, none had been posted at the time that this blog entry was prepared). Instead, the only relevant reference appears to be Rep. Maffei’s June 23rd announcement that the Syracuse China Company was eligible for Trade Adjustment Assistance.

Current status of the Bill can be found through the legislature’s search service, Thomas.gov.