USPTO Pilot Program Regarding Specimen Authenticity

U.S. trademark practitioners have long dealt with the issue of applicants, either deliberately or innocently, claiming use of a mark with a far broader scope of goods than is actually the case. This results in a "bloat" of the trademark registry, making it harder and thus more expensive to clear new marks. In an effort to address deliberate overreaching, on March 6, 2018, the United States Patent and Trademark Office (USPTO) announced a new pilot program to allow streamlined and simple objections to specimens submitted by third parties in support of a use-base application. A specimen of use must be submitted for each class of goods or services claimed in an application; and thus, while the pilot program does not address the common problem of "too many items" in one class, it is a step in the right direction.

Under the pilot program, any interested party may send an email to the Trademark Office ([email protected]) including either:

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 (in which case the subject line must read "Duplicative Specimens").

It is not necessary to attach copies of the specimens to the email. The Trademark Office will acknowledge receipt of the email, but the submitter will not receive any other response. Ideally, emails will be submitted prior to publication, and must be submitted no later than 30 days after publication. The Trademark Office may alter or terminate this program at any time.

If you become aware of any applications that contain suspicious specimens of use, we can assist in notifying the Trademark Office, which may result in a very low-cost way of preventing registration of a mark to which the applicant is not entitled. If you have any questions, please let us know.