In January 2021, the USPTO published an official report on trademarks and patents in China. The report concludes that many Chinese trademarks and patents have no commercial value and have been filed for the sole purpose of artificially bolstering Chinese IP metrics. The report raises an alarm that many fraudulent Chinese trademarks are making their way into the U.S.
To combat this increased fraudulent activity, the USPTO has adopted new rules and policies. Specifically, the USPTO has increased scrutiny applied to trademark specimens. This heightened scrutiny has important implications for legitimate U.S. trademark applicants. This post provides some first-hand trademark attorney insights and practical recommendations in light of these changes.
New trademark rules at the USPTO
Recently, the USPTO tightened its rules on what constitutes an acceptable trademark specimen. For example, a website screenshot filed as a trademark specimen must include the URL and the access date. Also, for packaged goods, a trademark specimen must include a photograph displaying both the product and the packaging. The objective of these rules is to ensure that only the trademarks actually used in commerce become registered. Furthermore, the U.S. Congress recently passed the Trademark Modernization Act of 2020, which makes it easier to cancel a fraudulently registered trademark.
Longer examination times
To obtain a federal trademark registration, a trademark applicant must provide a specimen showing the trademark being used in commerce. Usually, when a trademark application is filed as “intent-to-use,” substantive examination of the trademark application concludes before a specimen is filed. However, to complete the trademark registration, the applicant must still submit a specimen to the USPTO showing the trademark being used in commerce. The window for filing a specimen in an intent-to-use trademark application is six months after the allowance. If the initial six-month period is insufficient, the trademark applicant can keep the application active by paying for an extension. Five six-month extensions are available, but each entails a separate fee.
To combat fraudulent Chinese trademark filings, the USPTO began to meticulously examine all filed specimens. Increased scrutiny means prolonged examination, which is an unfortunate side-effect of trying to weed out fraudulent trademark filings. In the past, trademark examiners would routinely approve or reject specimens in one or two weeks. However, recently, specimen approvals have been taking significantly longer–in some cases, up to six months.
What happens if the filed specimen does not pass the heightened review at the USPTO? If the trademark application is still active, the applicant can simply submit another specimen. However, if at the time of the rejection, the trademark application is no longer active, then the applicant cannot file a new specimen that postdates the application expiration date. This means that if the applicant cannot produce a specimen from the timeframe during which the application was still active, the entire trademark application dies.
To avoid this from happening, if the trademark application might expire prior to receipt of USPTO approval of the filed specimen, an experienced trademark attorney will usually advise a client to pay for an additional extension. This “insurance” extension ensures that, even if the USPTO rejects the original specimen, the trademark application will remain active, providing the trademark applicant with an opportunity to submit a new specimen.
In the past, when the USPTO would approve or reject a specimen in a few weeks, “insurance” extensions were rarely needed and were filed only when the specimen was submitted right before the deadline. However, now that the USPTO often takes several months to examine specimens, “insurance” extensions have become more prevalent.
Unless you are 100% confident that the USPTO will accept your original specimen, we strongly recommend filing an “insurance” extension, if the deadline for filing the specimen is set to expire while waiting for the specimen approval.