|Gas station and general store shack in the Wild West|
Trademark Office hammers down on fake uses!
by Susan Basko, esq.
see also: Legal Checklist for Apps, Websites, SaaS
The U.S. Trademark Office has just instituted two new procedures that are meant to weed out fake uses or non-uses of a trademark. These two changes are bound to leave a lot of people losing their trademarks.
First up, the trademark office has instituted new procedures for detecting fake specimens. Up till now, the U.S.Trademark Office has been like the Wild West with trademark applicants providing fake specimens -- but there is a new sheriff in town now, or at least, there are new specimen examinations procedures. A while back, the trademark office noticed that quite a few trademark applicants were submitting specimens that appeared to be digitally created or digitally altered specimens or mock-ups. Specimens are supposed to be pictures of the real goods with the trademark on them or on the tags, etc. The goods are supposed to actually exist, and some applicants were faking that or were submitting fake specimens because they thought they looked better or something.
For example, let's say a person wants a trademark on a certain saying or logo for use on t-shirts. The person might go to a website that prints anything on anything, such as t-shirts, mugs, etc., and create a digital picture of their saying or logo on a t-shirt, mug, etc. If that picture is submitted as a specimen, it is a a digitally-created specimen, a fake, and cannot be accepted.
Mock-ups are also unacceptable specimens. That's when you create a picture that shows what something would look like if it was ever made. That is not good enough for the Trademark Office! To get a trademark, the goods must actually exist and you must actually be selling the goods in commerce, for real.
What's the problem here? Many one-off printers have sprung up online. These companies print anything on any of a whole line of products. They don't print the item until someone orders it. What this means is that if a trademark applicant wants a trademark for each of those items, the applicant is going to have to get printed up and made at least one of each thing on which they plan to get a trademark. You want to get a trademark for your logo on t-shirts, hoodies, and hats? You cannot submit digitally-created pictures of your logo on a t-shirt, hoodie, and hat. Instead, you have to have at least one of each of those printed and sent to you, take a picture of them, and submit those pictures as your specimens.
This is a situation created by trademark law not keeping up with real life. There are many such examples of this lag time between the trademark rules and practices and the way things are done now. With an online one-off printer, the items really are for sale. Anyone can order any of the items, and the companies print them up and fulfill the order by shipping them to the buyer. There is nothing fake or unreal about this. But the trademark office exists in the olden days, when, in order to sell a t-shirt with a particular logo on it, you had to first have a batch of those printed up, have them in stock, and then sell them.
The only way to deal with this issue is by having at least one of each item you hope to get trademarked, take pictures, and use those pictures as your specimens. If you try to use digitally-created specimens, your trademark application will be denied.
The booklet below, published by the U.S. Trademark Office, explains the procedures the examiners will use to weed out fake specimens. They plan to use such top secret tricks, such as searching images in Google.
The second big thing being implemented by the Trademark Office is the Post Registration Proof of Use Audit Program. This is a program where some people who have been granted trademark registration are going to have to prove that they are actually using the trademark in commerce on all the categories of goods or services for which the mark is registered.
For example, some people or companies will register a trademark on many categories of goods or services, but are not really offering for purchase at least several of those goods or services. Let's say a trademark owner registered a trademark for women's clothing, hats, wallets, bedsheets, linens, perfume, shoes, stationery, and dishes. Maybe they are only actually using the trademark in commerce on clothing and perfume. The audit will show that the other categories are not in use, and then those trademark categories can be cancelled, so the trademark is freed up so someone else can use it.
Always keep in mind, the main rule about trademark is that you must be using a trademark in order to have a trademark. Using it is everything.
I'll be attending a seminar run by the Trademark office that will tell about the audit process. After that, I'll let you all know more about it.
This is the booklet that tells trademark examiners how to detect a digitally created specimen, a digitally altered specimen, and a mock-up. If you would like to see the booklet full-screen size, click in the lower right-hand corner of the booklet on the "full screen" icon, which is four arrows pointing out.
Trademark Specimens Must Be... by Sue Basko on Scribd