In its ongoing quest to preserve the integrity of the register, the United States Patent and Trademark Office (the “PTO”) has published new guidelines for the examination of specimens of use.
This examination guide was prompted by the proliferation of submitted specimens that appear to have been digitally fabricated or modified. Such an image could show how the mark might be used in the future, but does not reflect actual, current use, which is what must be shown in a specimen submitted to support a statement of use or a declaration of use.
We are confident none of the readers of this blog would intentionally submit a fabricated or modified specimen of use. But knowing something about the new examination guide may be helpful to all applicants who wish to avoid arguments about whether a proffered specimen is fabricated or digitally altered.
The PTO examination guide identifies certain features that might suggest a specimen was digitally created/altered specimen. For example, if the packaging does not contain notices typically used in the trade, if there is pixelization around the mark, or if the depiction appears to be a digital rendering rather than a real product, there may be grounds for an examining attorney to be skeptical of the claim that the proffered image is an actual specimen showing current use of the mark in commerce. However, some of the criteria that might be used to assess the legitimacy of a specimen might be concerning to the average trademark applicant. For example, if the mark is on goods marketed under a third party’s mark, or if the website screenshot does not include a browser tab, the examining attorney may perceive the proposed specimen as one warranting further examination. One can certainly imagine scenarios in which screenshots taken from an active website might not include the relevant browser tab. Similarly, if the mark is for goods comprising ingredients of other goods, one can also imagine a scenario in which the specimen showing the applicant’s mark on a container for goods marketed under a third party’s mark would be legitimate (and that it might be difficult to find a different kind of specimen). Hopefully the examining attorneys will be mindful of the nature of the goods and the context in which they are sold and marketed when applying the guidance set forth in the new examination guide.
If the examining attorney reviews a specimen that appears to be digitally-altered, the examining attorney must issue an office action refusing registration on the grounds that the digitally-altered specimen fails to show that use of the mark is being made in commerce. The office action should also request more information about use of the mark in commerce and detailed information about the submitted specimen. The examination guide identifies eight possible questions that could be included in the request for information, but also emphasizes that the request should be tailored to the facts of the case. The objective is to seek information relevant to a determination of whether the mark is actually in use in commerce.
Alternatively, if the specimen appears to bear certain kinds of features (for example, that an image appears to be retouched), and the examining attorney is able to verify through independent research (eg, by visiting the applicant’s website) that the mark is actually in current use with the goods or services as depicted in the originally proffered specimen, the examining attorney may accept the specimen and should make notes in the file to confirm what resources were checked.
If an applicant submits both acceptable specimens and specimens that were digitally fabricated or altered, the examining attorney must refuse registration because the doctored specimens raise questions about whether the remaining specimens are legitimate as well.
Of course, when an examining attorney issues an office action refusing registration because of an improper specimen, the applicant will have a chance to respond. But this response itself takes time and effort. Therefore, applicants would be well-advised to submit specimens of use that clearly comply with the requirements. Applicants may also want to consider submitting more than one specimen to show the mark used in different ways. And applicants should be cautious about specimens in the form of particularly artistic photographs that might be perceived as digitally-altered. Hopefully these strategies will help applicants navigate the new guidelines and allow their applications to proceed to publication and registration more quickly.