Fake Trademark Specimens at the USPTO
Fake
trademark specimens have become a significant issue at the United States Patent
and Trademark Office (the “USPTO”). Over the past few years, the USPTO has had
to deal with an increase in the number of fake specimens submitted with
trademark applications, particularly those made by Chinese applicants.
In
the United States, trademark registration is use-based. An applicant must
provide evidence that its mark is being used in commerce before that mark can
be federally registered. The evidence must show the applicant’s mark being used
on or in connection with the applicant’s goods or services. This evidence that
the applicant provides is referred to as a specimen. A specimen may take the form of photos of the
actual goods on which the mark is displayed, a tag that is affixed to the
goods, or a website advertising the applicant’s services.[1]
Notably, the USPTO does not accept specimens that are digitally created,
altered, or mock-ups.[2]
Since
at least 2012, the USPTO has voiced its concerns with Chinese foreign
intellectual property filing subsidies.[3]
Generally, the trademark subsidies award money to Chinese businesses after they
register a trademark abroad.[4]
For example, in 2014, Shenzhen Province approved a
subsidy scheme whereby businesses registered in Shenzhen would receive RMB 5,000
(around $738) per U.S trademark registration. If Chinese businesses are paying a trademark filing
fee of $225 – $275, they would be taking home a profit of $463 – $513.
Registering a handful of trademarks ends up being a relatively lucrative
venture.
While
the subsidies purportedly encourage the development of Chinese businesses
abroad, there is speculation that the subsidies were created to throw a wrench
in the U.S trademark registration process.[5]
A large influx of applications may cause delays in trademark examination which
may potentially delay U.S businesses from expanding their brand. Further, many
of these applications are filed without the assistance of a U.S attorney and include
fake specimens.
On
March 6, 2018, the USPTO revealed a pilot program that would allow third parties to
report fake specimens filed in connection with marks that have yet to be registered.
A report, made via email to TMSpecimenProtest@uspto.gov,
must contain 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 have
been submitted to the USPTO.”
Prior
to the pilot program, third parties could oppose applications submitted with
fake specimens on the basis of fraud.[6]
Fraud, however, is notoriously difficult to prove. The pilot program makes it
significantly easier for third parties to report fake specimens.
Even
though it has been almost a year since the launch of the pilot program, the
USPTO appears to be silent as to the program’s effectiveness. Chinese
applicants do not seem to be deterred. A search on the USPTO’s trademark
database for recent applications filed by applicants with an address in
Shenzhen, China revealed the existence of numerous fake specimens.
For
example, on February 13, 2019, Shenzhen Youyuku
Technology Co., Ltd filed an application for the mark “TENTKING” (Serial No.
88/299,171) for use in
connection with “All-purpose tarpaulins of plastic; Awnings of textile; Bags
for washing hosiery; Brattice cloth; Cotton netting; Fishing nets; Hammocks;
Nets for camouflage; Outdoor blinds of textile; Sails; Tarpaulins; Tents; Twine
for nets; Vehicle covers, not fitted; Awnings of textile or synthetic materials”
in International Class 022. The specimen filed in connection with this
application is:
A
reverse image search reveals that the tent pictured above is in fact a Coleman
brand tent:
Additionally,
on January 25, 2019, Shenzhenshixujingjiakejiyouxiangongsi
filed an application for the mark “WINPOK” (Serial No. 88/276,083)
for use in connection with “Baby
layettes for clothing; Gloves; Hats; Leggings; Rainwear; Scarves; Shirts; Ski
gloves; Skirts; Snow boots; Socks; Swimwear;….. Rain hats; Small hats; Woolly
hats” in International Class 025. The specimen filed in connection with this
application is:
The
“WINPOK” mark on the tag pictured above has been photoshopped.
In
order to combat this influx of fake specimens, the USPTO is going to have to
make some major changes to the trademark registration process. On February 15,
2019, the USPTO released a proposal requiring
foreign-domiciled trademark applicants and registrants to use a U.S.-licensed
attorney. This
proposal is a response, in part, to the inaccurate and fraudulent submissions
coming from Chinese businesses who are filing pro se. Although this proposal may make it more
difficult and expensive for foreign applicants to get their trademarks
federally registered in the U.S, it is suggested that, given the extent of the
problem, that this is an appropriate measure. Having a U.S attorney file the
application arguably makes it less likely that a fake specimen will be
submitted which would lessen the burden on the USPTO examining attorneys.
It remains to be seen whether the USPTO will impose even more stringent requirements on foreign applicants in the future.
Aidan Murray is an L.L.M. candidate, 2020, at NYU School of Law.
[1] Specimens, United
States Patent and Trademark Office, https://www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal.
[2] Id.
[3] Josh
Gerben, Massive Wave of Fraudulent US
Trademark Filings Likely Caused by Chinese Government Payments, Gerben
Law Firm PLLC (April 4, 2018), https://www.gerbenlaw.com/blog/chinese-business-subsidies-linked-to-fraudulent-trademark-filings/.
[4] Id.
[5] Id.
[6] Jonathan Hyman, New USPTO Specimen Pilot Program, Knobbe Martens (March 14, 2018), (https://www.knobbe.com/news/2018/03/new-uspto-specimen-pilot-program.
