26 Jul Trademark Office aims to undo digitally created specimens.
A United States trademark registration requires proof that the mark applied has been used in commerce, which refers to the type of commerce that federal law may regulate: interstate commerce, or the sale of goods or services between one US state and at least one other state.
This requirement stems from the underlying authority for federal trademark law—The Commerce Clause in Article I, Section 8 of the Constitution, which grants Congress the power to “regulate Commerce . . . among the several States.” The trademark specimen provides the necessary proof by showing a marketplace example of the mark being used with the goods or services claimed in the trademark application.
As the US Patent and Trademark Office (“USPTO”) explains, the specimen is “what consumers see when they are considering whether to purchase the goods or services you provide in connection with your trademark. For example, a specimen could be a photo of a label or tag used on your goods, a photo of outdoor signs for services provided at that location, a website where your goods can be purchased or ordered, or a website advertising your services.”
Digital technology, however, has created an increasing problem for the Trademark Office, as well as for brand developers and branding studios. The issue is fake specimens: digital mockups submitted as “proof” of phony goods and services. Advanced skills using Adobe Photoshop or other design applications are hardly needed to realize photo-realistic images of products, websites, or signage that, for busy USPTO examiners, may easily appear to meet the specimen requirement. Product mockup digital templates are widely and cheaply available. One online vendor hosts over 23 thousand for immediate download, with many selling for under $20.
Similar numbers illustrate why is an issue for US brands seeking to protect valuable marks properly. Foreign trademark applications have increased close to 200% over the past five years. According to the USPTO’s 2018 Performance and Accountability Report, the Trademark Office processed 192,906 foreign applications last year. Applications filed by US residents added another 445,941 to the workload. All must include genuine specimens, which means finding the fakes—an increasingly difficult task in the digital age. The USPTO this month released new guidelines on examining “specimens that appear not to be in use in commerce because they are digitally created/altered or otherwise mocked up.”
In one sense, the new focus on fake specimens is a plus for brand developers. Fraudulent marks that make it through can prompt registration refusals under Section 2(d) of the Trademark Act for legitimate marks based on likelihood of confusion that does not actually exist. They can even lead to abandonment of promising marks at the design stage after an initial clearance search shows the potential conflict. As if brand naming was not already a challenge enough. Greater scrutiny of specimens that are not the genuine article (from obviously retouched images on white backgrounds or showing pixelization around a mark to subtler instances of images that “suggest that the goods are used while the tag or label to which is the mark is applied appears new”) should help reduce this possibility.
Even so, the application of greater scrutiny means that genuine specimens will also be examined more closely—and could be erroneously rejected. Examining attorneys may have neither the time nor the digital resources to uncover sophisticated digital manipulation. If legitimate specimens are rejected, the result is increased delay, additional expense, and potentially even loss of market opportunities while working to resolve the perceived problem and move the application forward.
The takeaway? Brand owners and developers should be aware of the problems caused by digital fakes and take appropriate steps. Proper preparation of genuine specimens can minimize their potential to raise concerns. And thorough legal analysis of potentially-conflicting marks may uncover fake specimens that can be successfully challenged, clearing the path toward registration.