How Practitioners Should React to the New Trademark Examination Guide
Following the USPTO Director’s comments regarding an “uptick in foreign applications with inaccurate or possibly fraudulent claims of use of the mark for the goods or services specified in the application,” the USPTO published a final rule implementing a requirement on trademark applicants not domiciled in the U.S. to be represented by U.S. practitioners, among other things. Days later, the USPTO published Examination Guide 3-19, which discusses digitally created and altered specimens, as well as mockup specimens—highlighting the USPTO’s ongoing review of attorney and applicant submissions that it deems suspect.
Changes Made by the Examination Guide
The Examination Guide is meant to provide Trademark Examining Attorneys with further guidance regarding identifying, evaluating, and responding to submissions that may contain suspect specimens. Specifically, the Examination Guide discusses certain characteristics that might indicate whether a specimen should be refused. For example, the USPTO notes that pixelization, superimposition, and other factors may indicate that a specimen does not show the use of the mark in commerce. Trademark Examining Attorneys are encouraged to enter notes to the file to indicate what steps were taken to ensure that a product exists bearing the mark. When no evidence or suspect evidence is found, the Trademark Examining Attorney is required to enter a specific refusal, along with a Request for Information under 37 CFR § 2.61(b)—a stark contrast from previous practice.
Impact on Trademark Practitioners
Trademark practitioners should be keenly aware of many implications of the Examination Guide. Beyond the fact that Requests for Information are required to be issued for specimen refusals, practitioners should be mindful of potential referrals of specimen refusals and allegations of “fraudulent” specimens to the Office of Enrollment and Discipline (OED). In 2019, OED appears to have taken a concerted effort to investigate allegations against trademark practitioners, including for issues related to specimens, signatures, and the support of goods or services.
Of course, when a “declaration” is filed with the USPTO, including those required when submitting a specimen, the applicant (or in many cases the trademark practitioner), is certifying the submission under penalty of perjury. In order to ensure practitioners are providing their clients with valuable legal services, and that they do not feel the wrath of OED, trademark practitioners should evaluate each specimen carefully. In fact, trademark practitioners should consider obtaining multiple specimens, including ones that overlap multiple goods and services.
While the additional specimens need not be submitted to the USPTO, practitioners may desire to keep them on file to ensure that their submissions have the requisite support. This is true especially because trademark attorneys may not be adept at understanding the technical aspects of doctored images. Therefore, practitioners should be mindful of steps to take to ensure the requisite support for each filing made with the USPTO.
For additional information and practice tips related to best practices for ethical trademark prosecution, contact Carr Butterfield, LLC at 503-635-5244.
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