Entries in USPTO (2)

USPTO Invites Reports of Phony Trademark Specimens

After starting to audit trademark registrations, the U.S. Patent and Trademark Office has rolled out a pilot program inviting trademark owners to rat out their competitors’ filing of fraudulent specimens.

Specimens are proofs of use that a trademark owner submits to show its mark is being used in customer sales — usually a prerequisite to registration. Apparently, some file bogus proof in order to get a registration.

I didn’t realize this was a problem. The USPTO seems to think so. It identifies two scenarios in which it invites notice of a suspicious filing: when the reporting party (1) has “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) can identify “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.”

In these cases, the USPTO asks that notice be sent to: TMSpecimenProtest@uspto.gov.

Timing is key. The USPTO states that emails must be received no later than 30 days after the date the subject mark is published for opposition. It doesn’t say what it will do in response to the notices. Apparently, it will decide whether (and what) action is warranted. The USPTO states the program will continue based on “operational need,” and may be discontinued at any time.

As with its auditing program, I support efforts that promote honesty in trademark filings and the accuracy of our trademark registers. It doesn’t benefit bona fide trademark owners to have fraudsters lurking in their midst. It’s just curious that there apparently are enough bogus filings that the USPTO believes there is a problem. 

If the USPTO is correct, rat ‘em out!

Patent and Trademark Office Offers Excellent Trademark Resources

Screen shot from the U.S. Patent and Trademark Office’s Web site

The PTO has some excellent resources for learning about trademark law. Videos, even. They’re all free and are collected here.

My favorite tool is the Trademark Electronic Search System (TESS) database. I use it constantly. It’s accessible here.

Click the “Basic Word Mark Search (New User)” hyperlink, click the “Live” radio button, type the desired trademark into the search box, and click the “Submit Query” button. The results will give you hyperlinks to all pending trademark applications and registrations in the PTO’s system. The hyperlinked pages provide basic information about each trademark — the owner, the associated goods and services, the application date, etc. And best of all, you can drill down further from that page by clicking the blue “TDR” button, which provides links to the various documents in the application file — from application to registration certificate. It’s an invaluable tool that I use every day.

The database has its limitations. For example, it doesn’t provide information about a party’s use of the trademark, and you must include confusingly similar trademarks in your search for the results to be meaningful. But it’s a heck of a resource that shouldn’t be limited to trademark attorneys. Anyone can use it, and they should.