New U.S. Patent and Trademark Office Guideline Issues: Guide 3-19
Trademark “Specimens of Use” Examination Guide Updated
The United States Patent and Trademark Office (“USPTO”) issues new guidelines for acceptable specimens of use. Specifically, the guidelines focus on “Digitally Created/Altered or Mockup Specimens.” Furthermore, the new guidelines guard against growing fraudulent trademark activity before the USPTO.
“Trademark Use” – A Prerequisite for U.S. Trademark Registration (with exception)
U.S trademark law requires that a trademark be put to genuine use before a U.S. trademark registration can issue. Furthermore, to show genuine use, an applicant must provide a specimen use (or an example of how the mark is used).
- To learn more about acceptable specimens of use, click here.
However, an exception to that rule is if a U.S. trademark application filing basis corresponds to a foreign trademark registration.
Massive “Specimen of Use” Fraud on USPTO Causes Alarm and Action
In recent years, a massive wave of fraudulent trademark filings has flooded the USPTO from China. For instance, the applicants file fraudulent use affidavits and faked specimens of use to secure registration without actually using the mark. Also, it’s quite striking that the Chinese government may fund those filings, based on various reports.
Legitimate Brand Owners Suffer Consequences of Colossal Fraud on USPTO
The massive assault of these fraudulent filings causes legitimate brand owners to suffer the consequences. For example, the consequences include the refusal of applications based upon likelihood of confusion with marks in fraudulent filings, an increase in costs and not securing registration.
USPTO Takes Aggressive Actions to Combat Fraud
To combat the onslaught of those fraudulent filings, the USPTO has issued new strict rules governing trademark application filings. Those rules include the requirements of listing applicant’s physical address, using a U.S.-licensed attorney and meticulously reviewing specimens of use.
Good News for the Long Run?
We are pleased that the USPTO is now “locked and loaded” to snuff out the fakes and clear the register. However, it will be a long haul to clear the thousands of fraudulent trademark registrations.
The good news is that a registrant must file a use affidavit between the 5th and 6th of and every ten years from registration to maintain a trademark registration.
However, with new technologies creating ever so life-like fakes and with fraudsters finding new ways to beat the system, we can at least remain hopeful.
trademark “Specimens of Use” Examination