Brands Dodge Specimen Rejection with Creative Photography

Fenwick trademark partner Karen Webb spoke with Managing IP about how the USPTO’s changes to curtail fraudulent trademarks have also made registration harder on legitimate filers.

To target fraudulent trademarks where applicants provided fake specimens, the USPTO implemented a specimen examination guide and the requirement that foreign applicants be represented by U.S.-based counsel the following month.

“The new rules are a huge step in the right direction,” Webb said.

However, even with the USPTO’s extra scrutiny, some fraudulent specimens are still getting through. Webb noted she has noticed an uptick in specimens on e-commerce platforms, and advocated that the trademark office be more attentive when the breadth of products in a description is clearly too broad.

Webb also offered guidance for companies filing legitimate trademark applications, given the USPTO’s increased watchfulness.

For example, Webb notes that she normally does not recommend submitting screenshots as specimens as they are typically rejected by the USPTO. Instead, she advises clients who operate mobile applications to take a photo of a phone with the app on it to help prove their use of a mark in commerce, and to submit as early as possible.

The full article is available on Managing IP (subscription required).