New USPTO Specimen Pilot Program

| Jonathan Hyman

On March 6, 2018 the USPTO announced that it has started a pilot program making it easy to report specimens that have been digitally created, altered or fabricated. Third parties that believe an application contains "suspect" specimens can now send an email to to report such issues.

The complaint must contain “objective evidence” of either of the following:

1. 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.

The USPTO’s pilot program appears to be a reaction to several recent high profile situations involving high-volume trademark filer The Trademark Company, PLLC, and several other individuals who have been excluded from practice before the USPTO. In the case of The Trademark Company, PLLC, the USPTO issued an exclusion order against Matthew Swyers who, in addition to numerous other activities, was found to have aided in the filing of “multiple fraudulent or digitally manipulated specimens of use” with the USPTO that potentially jeopardized the trademark applications of his clients.” See Final Order In Re Matthew H. Sweyers (Proceeding No. D2016-20 issued on January 26, 2017) An individual named Samen Chen, who was excluded from participating as an attorney of record, correspondent, domestic representative or signatory in any trademark application or registration before the USPTO because he was not a licensed attorney, also appears to have falsified specimens in a number of filings.

The pilot program provides a long-needed solution for situations when problematic specimens are submitted to the USPTO. Previously, the only remedy was to oppose the application on the basis that the submission of such specimens constituted fraud. It was not possible to file a Letter of Protest to raise fraud as an issue, See. Section 1715.01(b). Now, with this new program, the USPTO has lowered the bar and will permit challenges based on fraud in a streamlined protest procedure.

It should be noted that, outside of a fraudulent specimen, an opposition attacking a specimen on the ground that it should not have been accepted by the Examining Attorney is typically futile. The decision as to whether a specimen is acceptable or not lies solely within the discretion of the Examining Attorney. The acceptability of a specimen cannot be the basis for an opposition, unless the specimen is fraudulent. The new pilot program may yield the same result, but in a much more streamlined and cost effective manner.

Presumably, if an email submission is accepted in the pilot program, the application will be returned to the Examining Attorney for review of the specimens. The Examining Attorney may then issue an Office Action refusing the specimen as “a digitally altered image or a mock-up” under Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). A mock-up of a product or its packaging that has been digitally created or otherwise altered to include the mark does not show actual use of the mark in commerce. See 15 U.S.C. §1127; TMEP §§904.04(a), 904.07(a); cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).

An applicant can cure this issue by submitting a proper substitute specimen or, if the issue is raised pre-publication, amending its application to an Intent-to-Use basis. Even if an applicant can cure the issue with the Examining Attorney, the application could still be subject to challenge on the ground of fraud if it was a use-based application and there was no use at the time the application was filed.

The USPTO’s new pilot program indicates that emails must be received no later than the 30th day after publication for opposition. However, the USPTO requests that emails be submitted prior to publication whenever possible.

If a protest email is submitted against a published application, it would still be advisable to file an extension of time to oppose the application. Doing so would preserve the challenger's right to object to an application in the event the email submission was not successful.

Although the USPTO did not set a deadline for the program, it did reserve the right to alter this pilot program based on operational need, including termination of the program at any time.

If you have any questions on this new program, please contact us.