USPTO PILOT PROGRAM FACILITATES THIRD PARTY NOTIFICATION OF TM SPECIMENS WHICH APPEAR TO BE FABRICATED

The USPTO has launched a new pilot program as a means for third parties to lodge informal protests about applications with specimens that appear to be improper. This pilot program is the latest in a series of steps taken by the USPTO to ensure the integrity of the trademark register by preventing the registration of marks for which the evidence of use has been fabricated. The new pilot program appears to be a response to recent concerns about a dramatic rise in applications that contain digitally altered or otherwise questionable specimens of use.

Prior to announcing the program, it was not clear whether there was an available means of reporting such improper specimens. Although the USPTO has indicated at times that stakeholders could file a letter of protest in these cases, improper specimens (and fraud, in the extreme case) are not included among the eligible bases for such a complaint.

To streamline the protest procedure for reporting improper specimens, the USPTO has created a special email address to which information about improper specimens can be sent. According to the notice announcing the program, the PTO requires any emails sent to the new address to meet one of two criteria. The email should contain either:

1. objective evidence showing third party use of an identical image to that used in the specimen (without the applied-for mark) such as the relevant website URL or a screenshot from an active website, or
2. the prior registration numbers or serial numbers of registrations or applications in which identical images of objects, mock ups of websites, etc., all bearing different marks have been submitted to the USPTO.

According to the USPTO, email submissions will be acknowledged with an automatic reply that indicates the email has been received, but the USPTO will not notify the submitter about the outcome. To see what comes of the report, the submitter will have to track the status of the application. The USPTO will accept reports prior to publication or after publication up to the 30th day of the opposition period. Accordingly, the program only applies to applications based on actual use (or amended to be based on actual use prior to publication), and notably does not allow for action against intent to use applications that have been allowed for registration pending acceptable evidence of use.

It is not yet clear how the USPTO will respond to submitted reports, or the timeline for the USPTO to take action. Ladas & Parry attorneys sent several reports to the USPTO on March 8, 2018, but we have not received the automatic acknowledgement as of this writing. We are monitoring the reported cases as suggested by the USPTO and will provide a further update on the pilot program in due course.