It’s finally happening.
The United States Patent and Trademark Office (USPTO) has recently launched a new effort to identify fraudulent trademark applications.
(As I write this, I can practically hear a collective sigh of relief and satisfaction among creatives across the country.)
Scroll to the bottom if you want to get right to the juicy update. But first, let me bring you up to speed with why this matters.
Here’s the problem.
The USPTO receives hundreds of thousands of trademark applications each year, and the number is growing.
As I wrote about in a past blog post, “Your Business Needs to Break Up with Etsy,” all of these trademark applications are creating a huge problem in the creative industry, especially the online retail industry.
Many of these trademark applications are fraudulent, frustrating attempts to monopolize common phrases or sayings. The big problem is that these trademark applications are often trying to claim trademark rights to what is in fact “ornamental use.”
Why “ornamental use” matters.
Time for a quick legal lesson.
In order for a trademark to be a trademark, there must be source identification. You hear/see/observe the trademark, and that makes you think of the specific business that owns the trademark. Think Target, Starbucks, Nike.
Now think about the online retail industry. What’s very “in” right now is phrase-based items. You’ve seen it: shirts, mugs, and jewelry with phrases on them.
When a word or phrase is used “ornamentally,” or in a decorative way on the item, then the word or phrase really isn’t acting as a trademark. People don’t see the word or phrase and think of a particular business. They just see it and think, “Oh, another thing with a cute saying on it.”
So, if a word or phrase is used ornamentally on an item, then it’s not really a trademark.
Got it? Good. Now moving onto the second legally-loaded term: specimens.
What “specimens” are and why they matter.
When you apply for a federal trademark, you need to include in that application something called a “specimen.”
A specimen is a piece of evidence, usually an image, showing the use of your trademark in commerce.
The specimen needs to meet certain requirements or it can cause the whole application to get rejected.
Specimens showing ornamental use are a no-no.
Let’s put these two legal concepts together.
A trademark is not a trademark if there’s just ornamental use.
Therefore, your specimen cannot just show ornamental use.
In other words, you can’t just attach a picture of a shirt with your “trademarked” phrase written across the front. Instead, the USPTO prefers that the word/phrase be shown on a label or tag attached to the item.
Clever business owners find a loophole.
Okay, so the USPTO refuses specimens showing ornamental use. Lots of refusals have been made on these grounds.
And applicants have become smarter.
Here’s the loophole: you can just print off a tag or label, put it one of your items, and BOOM, now you have an acceptable specimen.
But that’s a problem.
Now, lots of businesses are seeking trademark protections for ornamental use. And they’re getting away with it by filing these fraudulent specimens that aren’t actually showing how the word/phrase is really being used—in an ornamental way.
Finally, the USPTO is now taking action against fraudulent specimens.
The trademark office recently launched a program that is addressing the issue head on.
To clarify, this program doesn’t specifically go after specimens that are using this ornamental loophole, but it does give businesses who are negatively impacted by these fraudulent applications a way to conveniently challenge the application.
If you discover a trademark registration application that you think is leaning on a fraudulent specimen, you can now take action.
You can send an email to TMSpecimenProtest@uspto.gov.
In order to send the email, you must either:
- have “objective evidence of third party use of the identical image without the mark in question, such as the URL and screenshot from an active website or a digital copy of a photograph from a print advertisement and the publication in which it was featured,” OR
- be able to identify “prior registration numbers and/or serial numbers of applications in which identical images of objects, mock ups of websites, etc., all bearing different marks[,] have been submitted to the USPTO.”
As is typical of the USTPO, timing matters here. Such emails must be sent within 30 days after the trademark in question is “published for opposition” — one of the final stages of the trademark application process.