|The US Trademark Office uses federal law when developing examination guidelines. The federal Lanham Act, 15 U.S.C. §1051, states that the “owner of a trademark used in commerce may request registration of its trademark….” ‘Use in Commerce’ is defined in 15 U.S.C. §1127 as the “bona fide use of a mark in the ordinary course of trade.”
The Trademark Office determines a trademark is actually ‘used in commerce’ by requiring an applicant to submit specimens showing actual use of the claimed trademark with the applied for goods or services in the stream of commerce. Submission of fake, or doctored, specimens is considered fraud on the Trademark Office which invalidates any resulting trademark registration at any time.
Imagine spending all the time registering the trademark, building a brand around the trademark, and then seeking to enforce the trademark years later only to be kicked out of Court for fraud simply because someone in your company thought it expedient to create some specimens to get a quicker registration issued instead of actually providing real specimens of the trademark as used in commerce. Yes, this happens often! The Trademark Office has even created a program for third parties to invalidate applications and registrations for fake specimens by submitting protests to TMSpecimenProtest@uspto.gov.
The US Trademark Office has explained that specimens consisting of digital drawings, digital alterations, and digital or non-digital renderings (e.g., printer’s proofs) do not show a mark actually ‘used in commerce’ as contemplated by the Trademark Act. Accordingly, the Revised Examination Guide spells out a new procedure for examining attorneys and applicants when signs indicate that a specimen may have been digitally created/altered or is a mock-up.
The Trademark Office has elevated its standards with respect to specimen review. Some specimens which may have been approved in the recent past, are now likely to be more carefully scrutinized and refused. Previously submitted specimens which consist of digitally created images, not actual specimens used in commerce, are time bombs potentially waiting to destroy a company’s brand protection sometime in the future.
Not only are specimens critical to trademark prosecution (registration), but in inter partes proceedings and litigation specimens are crucial evidence which often determine whether parties can establish and enforce claims of exclusive use. The heightened examination requirements are only one more indicator why Applicants are well served by hiring an experienced trademark attorney to represent them in their trademark applications before the US Trademark Office. It really is not a good idea to “go it alone.” A failure to actually understand the US Trademark Office requirements (as opposed to simply following the online instructions to completion of the application) can really come back to haunt you.
At Sherman IP LLP, our expert trademark attorneys are constantly monitoring and adapting to the Trademark Office’s changing examination guidelines and well versed on the underlying rules and requirements. We are regularly counseling clients on the intricacies of proper evidence in protection and enforcement of their intellectual property. Unlike the many non-lawyer services, self-filing services, and referral services who outsource your case, our U.S. licensed and domiciled lawyers specialize in trademark prosecution and personally handle your case from top-to-bottom.