The U.S. Patent and Trademark Office (USPTO) announced a new pilot program on March 6 to allow protests against specimens that have been digitally created, altered, or fabricated. The program is intended to combat the increasing instances of fraudulent submissions filed on behalf of applicants—in particular, individual applicants—from foreign countries.

The United States operates on a use-based trademark registration system, meaning that before an applicant can obtain a federal registration, it must provide evidence that the trademark is in use in commerce, such evidence is called a "specimen of use." Acceptable specimens include, for example, photos of product packaging bearing the mark (for trademarks) and advertising or marketing materials (for service marks).

Specimens must show the mark as it is actually used in commerce. Mock-ups, printer's proofs, and the like are therefore not acceptable to show use. While the USPTO can often detect when a specimen is a mock-up, it is sometimes difficult to determine if a specimen of use has been digitally created or otherwise doctored.

The pilot program will help identify such fraudulent submissions by allowing any interested party to report an improper specimen—one created for the purpose of establishing use in a use-based application. Once a report is filed, there is no ongoing involvement for the protestor. Protestors wishing to know the outcome of the USPTO investigation or inquiry can follow the status of the application at http://tsdr.uspto.gov/.

The key requirements for filing a report are:

  • Form: Via e-mail to TMSpecimenProtest@uspto.gov. Include in the subject line of the e-mail the serial number of the application being protested. If you are reporting a duplicate specimen—i.e., one that was previously submitted with a different application—the subject line must read "Duplicative Specimens," followed by the serial number of one of the protested cases. All other serial numbers must be listed in the e-mail body.

  • Content: The e-mail report must 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—that have been submitted to the USPTO.

  • Time: Email reports can be filed at any time until the 30th day after publication for opposition.

This pilot is part of the USPTO's current initiatives to ensure that federally registered trademarks are indeed in use, which is important to maintaining the integrity of the Federal Register. After assessing the pilot's success, the USPTO will decide whether to continue the program.

It is key for the Federal Register to include only marks that are actually in use in commerce. Trademark owners and potential applicants rely on the accuracy of the Register to determine whether a trademark is available for registration, or decide whether enforcement action is needed to protect their trademark rights.

Attorneys in Ballard Spahr's Trademarks Group work with clients to protect their brands around the world. We have significant experience with strategic trademark portfolio creation and protection, clearance, registration, licensing, and litigation.


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