Heightened Scrutiny of Specimens of Use at U.S. Trademark Office

Unlike in most countries, in the United States trademark registrations are supposed to reflect marks actually in use in commerce. Trademark rights in the U.S. are earned through use, not simply purchased. Nonetheless, there has been a growing problem at the U.S. Trademark Office regarding the submission of specimens of use that in fact do not represent actual use of the mark in U.S. commerce. On the heels of announcing a new rule requiring all foreign-domiciled applicants to be represented by a U.S. licensed attorney to try to combat this issue, in July 2019 the U.S. Trademark Office released a new guide instructing its examining attorneys to carefully review specimens of use that appear to be digitally created/altered or mere mockups.

Examining attorneys may conduct their own research to substantiate the authenticity of specimens. Applicants who submit screen shots of websites may be able to help avoid being questioned by including in the specimen the URL for where the original may be located on the Internet. If a specimen appears to be digitally created/altered or merely a mockup, the examining attorney must issue a refusal on the grounds that the specimen does not show actual use of the mark in U.S. commerce. The examining attorney must also issue a request for detailed information about the specimen to help determine whether the mark is actually in use in U.S. commerce. Evidently, examining attorneys themselves will not raise the issue of fraud, though that is ultimately the underlying concern and could be raised by a third party in filing an opposition to an application or a petition to cancel an issued registration.

Requiring additional information about suspicious specimens of use is an important step in maintaining the integrity of the federal trademark register. Trademark applicants and their U.S. attorneys should be sensitive to the heightened scrutiny devoted to the review of specimens and avoid whenever possible the submission of specimens that even "hint" they may not be authentic.

Author: Keith A. Barritt