Fake trademark specimens have become a significant issue at the United States Patent and Trademark Office (the “USPTO”). Over the past few years, the USPTO has had to deal with an increase in the number of fake specimens submitted with trademark applications, particularly those made by Chinese applicants.
In the United States, trademark registration is use-based. An applicant must provide evidence that its mark is being used in commerce before that mark can be federally registered. The evidence must show the applicant’s mark being used on or in connection with the applicant’s goods or services. This evidence that the applicant provides is referred to as a specimen. A specimen may take the form of photos of the actual goods on which the mark is displayed, a tag that is affixed to the goods, or a website advertising the applicant’s services.[1] Notably, the USPTO does not accept specimens that are digitally created, altered, or mock-ups.[2]
Since at least 2012, the USPTO has voiced its concerns with Chinese foreign intellectual property filing subsidies.[3] Generally, the trademark subsidies award money to Chinese businesses after they register a trademark abroad.[4] For example, in 2014, Shenzhen Province approved a subsidy scheme whereby businesses registered in Shenzhen would receive RMB 5,000 (around $738) per U.S trademark registration. If Chinese businesses are paying a trademark filing fee of $225 – $275, they would be taking home a profit of $463 – $513. Registering a handful of trademarks ends up being a relatively lucrative venture.
While the subsidies purportedly encourage the development of Chinese businesses abroad, there is speculation that the subsidies were created to throw a wrench in the U.S trademark registration process.[5] A large influx of applications may cause delays in trademark examination which may potentially delay U.S businesses from expanding their brand. Further, many of these applications are filed without the assistance of a U.S attorney and include fake specimens.
On March 6, 2018, the USPTO revealed a pilot program that would allow third parties to report fake specimens filed in connection with marks that have yet to be registered. A report, made via email to TMSpecimenProtest@uspto.gov, must contain either:
- “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
- 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.”
Prior to the pilot program, third parties could oppose applications submitted with fake specimens on the basis of fraud.[6] Fraud, however, is notoriously difficult to prove. The pilot program makes it significantly easier for third parties to report fake specimens.
Even though it has been almost a year since the launch of the pilot program, the USPTO appears to be silent as to the program’s effectiveness. Chinese applicants do not seem to be deterred. A search on the USPTO’s trademark database for recent applications filed by applicants with an address in Shenzhen, China revealed the existence of numerous fake specimens.
For example, on February 13, 2019, Shenzhen Youyuku Technology Co., Ltd filed an application for the mark “TENTKING” (Serial No. 88/299,171) for use in connection with “All-purpose tarpaulins of plastic; Awnings of textile; Bags for washing hosiery; Brattice cloth; Cotton netting; Fishing nets; Hammocks; Nets for camouflage; Outdoor blinds of textile; Sails; Tarpaulins; Tents; Twine for nets; Vehicle covers, not fitted; Awnings of textile or synthetic materials” in International Class 022. The specimen filed in connection with this application is:
A reverse image search reveals that the tent pictured above is in fact a Coleman brand tent:
Additionally, on January 25, 2019, Shenzhenshixujingjiakejiyouxiangongsi filed an application for the mark “WINPOK” (Serial No. 88/276,083) for use in connection with “Baby layettes for clothing; Gloves; Hats; Leggings; Rainwear; Scarves; Shirts; Ski gloves; Skirts; Snow boots; Socks; Swimwear;….. Rain hats; Small hats; Woolly hats” in International Class 025. The specimen filed in connection with this application is:
The “WINPOK” mark on the tag pictured above has been photoshopped.
In order to combat this influx of fake specimens, the USPTO is going to have to make some major changes to the trademark registration process. On February 15, 2019, the USPTO released a proposal requiring foreign-domiciled trademark applicants and registrants to use a U.S.-licensed attorney. This proposal is a response, in part, to the inaccurate and fraudulent submissions coming from Chinese businesses who are filing pro se. Although this proposal may make it more difficult and expensive for foreign applicants to get their trademarks federally registered in the U.S, it is suggested that, given the extent of the problem, that this is an appropriate measure. Having a U.S attorney file the application arguably makes it less likely that a fake specimen will be submitted which would lessen the burden on the USPTO examining attorneys.
It remains to be seen whether the USPTO will impose even more stringent requirements on foreign applicants in the future.
Aidan Murray is an L.L.M. candidate, 2020, at NYU School of Law.
[1] Specimens, United States Patent and Trademark Office, https://www.uspto.gov/trademark/laws-regulations/specimen-refusal-and-how-overcome-refusal.
[2] Id.
[3] Josh Gerben, Massive Wave of Fraudulent US Trademark Filings Likely Caused by Chinese Government Payments, Gerben Law Firm PLLC (April 4, 2018), https://www.gerbenlaw.com/blog/chinese-business-subsidies-linked-to-fraudulent-trademark-filings/.
[4] Id.
[5] Id.
[6] Jonathan Hyman, New USPTO Specimen Pilot Program, Knobbe Martens (March 14, 2018), (https://www.knobbe.com/news/2018/03/new-uspto-specimen-pilot-program.