Professors Barton Beebe and Jeanne C. Fromer of NYU School of Law present the results of their empirical study regarding fraudulent specimens of use in applications originating in China. [pdf available here].
This Article reports the results of new empirical work showing that an appreciable number of U.S. trademark applications originating in China include fraudulent specimens of use, despite the law's requirement that these marks be used in U.S. commerce to proceed to registration. In particular, with respect to use-based applications originating in China that were filed at the U.S. Patent and Trademark Office (PTO) in 2017 solely for apparel goods, we estimate that 66.9% of such applications included fraudulent specimens. Yet 59.8% of these fraudulent applications proceeded to publication and then 38.9% proceeded to registration. If these applications are representative of the overall population of Chinese-origin applications in that year, then approximately 14.0% of the total use-based applications filed in 2017 were fraudulent. Fraudulent registrations worsen the problems of trademark depletion and clutter, undermine the integrity of the trademark register, and hurt legitimate businesses that would like to use these marks. We therefore recommend legislative action to make it easier for third parties and the PTO to cull these marks from the register and systematic improvement by the PTO to ensure that applications with fraudulent specimens are not registered in the first instance.
Three earlier articles by these co-authors have made an appearance at the TTABlog: "The Scope of Strong Marks: Should Trademark Law Protect the Strong More Than The Weak?," 92 N.Y.U. Law. Rev. 1390 (November 2017). [pdf here]; "Are We Running Out Of Trademarks: An Empirical Study of Trademark Depletion and Congestion", 131 Harv. Law Rev. 948 (February 2018) [pdf here]; and ""Immoral or Scandalous Marks: An Empirical Analysis," N.Y.U. Journal of Intell. Prop. & Ent. Law, Vol. 8, No. 2 (Spring 2019). (link here).
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TTABlogger comment: In mid-2019, the USPTO began to require that foreign applicants be represented by United States counsel. Has that reduced the size of the problem? BTW: I have suggested that the TTAB adopt a streamlined procedure to allow a challenge to a dubious specimen of use, rather than require a challenger to institute an opposition or cancellation proceeding.
Text Copyright John L. Welch 2020.
Who are the attorneys behind these filings?
ReplyDeleteWe discovered an application using what were obviously computer mockups of garment tags as specimens that was confusingly similar to one of our marks. We made the office aware of the fraudulent specimen during prosecution of the application. It was allowed, and we were forced to oppose. But there's a 100% chance my specimen of a website that is currently live on the Internet will be rejected if it doesn't have a date on its face.
ReplyDeleteProblematic for counsel hired by these actors. Perhaps holding counsel accountable for an expanded scope of diligence?
ReplyDeleteSpecimens have always been of great interest to me even before the current Tsunami. I agree that a stream-lined procedure should be considered.
ReplyDeleteThe most fraudulent specimen ever. It was accepted - under the "old" system. It should win a Leo Stoller award.
ReplyDeletehttp://tsdr.uspto.gov/documentviewer?caseId=sn78268180&docId=SPE20050628084152#docIndex=3&page=1