Responding to Surge in Fraudulent USPTO Specimens

By on June 27, 2019

Executive Summary of an article written by
Tamar Niv Bessinger and Jessica Vosgerchian, Fross Zelnick Lehrman & Zissu

The USPTO has recently seen a surge in fraudulent trademark applications relying on digitally altered specimens of use. Rather than providing an image of the genuine goods bearing the trademark, applicants use graphics software to digitally place an image of the trademark on an image of the goods. The sudden and significant increase in seemingly fraudulent trademark applications by Chinese applicants is likely motivated by government subsidies offered in certain regions of China.

Most fake specimens exhibit telltale traits that make them easy to identify. The USPTO has been proactive in rejecting applications based on altered specimens, and third parties can take action to prevent fraudulent applications and registrations or to remove fraudulent registrations. A dedicated email address to receive reports of suspected false specimens from concerned third parties has been set up: TMSpecimenProtest@uspto.gov

Another method for challenging a specimen of a published application is initiating an opposition before the TTAB. Anyone who believes they would be damaged by the registration of a mark has standing to file an opposition or cancellation as long as they have a real interest in the proceedings and a reasonable basis for the belief of damage. Whether through the new email notice system or traditional TTAB actions, there are effective strategies for a concerned third party to alert the USPTO of fraudulent applications based on altered specimens that impact their business interests or trademark rights.

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