On March 6, 2018 the USPTO announced that it has started a pilot program that makes it easy to report specimens that have been digitally created, altered or fabricated. Third parties that believe that an application contains suspect specimens can now send an email to TMSpecimenProtest@uspto.gov to report such issues.
The complaint must contain “objective evidence” of either of the following:
1. 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
2. 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.
The USPTO’s pilot program appears to be a reaction to several recent high profile situations involving high volume trademark filer The Trademark Company, PLLC and several individuals who have been excluded from practice before the USPTO. In the case of The Trademark Company, PLLC the USPTO issued an exclusion order against Matthew Swyers who, in addition to numerous other activities, was found to have aided in the filing of “multiple fraudulent or digitally manipulated specimens of use” with the USPTO that potentially jeopardized the trademark applications of his clients.” See Final Order In Re Matthew H. Sweyers (Proceeding No. D2016-20 issued on January 26, 2017) https://e-foia.uspto.gov/Foia/RetrievePdf?system=OED&flNm=0900_DIS_2017-01-26. In the cases of Samen Chen, this individual was excluded from participating as an attorney of record, correspondent, domestic representative or signatory in any trademark application or registration before the USPTO as Chen was not a licensed attorney. However, a review of some of Chen’s filings also show what appear to be falsified specimens.
The pilot program fills in a gap in an area where the only remedy was previously to oppose the application and raise the specimen issues as fraud in an opposition. Previously, a Letter of Protest was unavailable to raise such an issue. Section 1715.01(b) discusses issues that are not appropriate to raise in Letters of Protest and #5 states “A third party claims that the applicant has committed fraud against the USPTO”. Now with this new program, the USPTO has lowered the bar and will permit challenges based on fraud in a streamlined protest procedure. It should be noted that, outside of a fraudulent specimen, an opposition attacking a specimen on the ground that it should not have been accepted by the Examining Attorney is typically futile as the decision whether to accept a specimen is an Examining Attorney decision that is not a ground for opposition. However, if the specimen was fraudulent, then the specimen can be attacked in an opposition. The new pilot program may yield the same result, but in a much more streamlined and cheaper approach.
Presumably, if an email is accepted by the pilot program, the application will be returned to the Examining Attorney for review of the specimens and likely the issuance of an Office Action refusing the specimen as “a digitally altered image or a mock-up” under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). A mock-up of a product or its packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
An applicant can cure this issue by submitting a proper substitute specimen or, if the issue is raised pre-publication, amending to Intent-to-Use. Even if an applicant can cure the issue with the Examining Attorney, the application could still be subject to challenge on the ground of fraud if it was a use-based application and there was no use at the time the application was filed.
The USPTO’s new pilot program indicates that emails must be received no later than the 30th day after publication for opposition. As such, this program is available to published applications within the 30 day opposition period. However, the USPTO requests that emails be submitted prior to publication whenever possible.
Even if a protest email is sent under the program against a published application, it would still be advisable to file an extension of time to oppose or an opposition to preserve rights to object to an application if the specimen protest is not acted on.
Although the USPTO did not set a deadline for the program, it did reserve the right to alter this pilot program based on operational need, including termination of the program at any time.