The Office has recently implemented a more rigorous examination for specimens when it suspects that the specimen has been digitally created or altered or otherwise a mock-up. Such examination has implications for all filers and practitioners at the Office.
It has been long settled that mock-ups and provisional samples do not satisfy the specimen requirements because they do not show “use in commerce”. cf. In re Chica, Inc., 84 USPQ2d 1845, 1848 (TTAB 2007) (holding that “a mere drawing of the goods with an illustration of how the mark may be displayed” was not an acceptable specimen because it did not show actual use in commerce); In re The Signal Cos., 228 USPQ 956, 957-58 n.4 (TTAB 1986) (noting that a printer’s proof of an advertisement would not be an acceptable specimen because it does not show actual use in commerce).
With the widespread use of Photoshop and availability of images on the Internet, mock-ups are increasingly easier to create and harder to detect. To this end, examination of specimens now includes Internet searches to determine if the submitted image is an altered photograph from the Internet.
When an Examining Attorney discovers an apparent alteration of an existing photograph from the Internet, the current practice is to present the original photograph and refuse registration based on lack of “use of commerce.” The Examining Attorney then permits the Applicant to present a verified “substitute specimen” or permit the Applicant to amend to an intent-to-use basis.
At this time, the Examining Attorney will not declare an application void for submitting an altered photograph.
By making the true photograph of record, however, the Examining Attorney has created potentially damaging evidence should someone wish to challenge the application or resulting registration at a later date.
In addition, when the Examining Attorney believes the submitted specimen to be “digitally created or altered, or otherwise a mock-up,” it may request additional information to confirm that the specimens meets the “use in commerce” requirements.
Here are some of the questions and requests found in such Office Action:
(1) How are applicant’s goods sold? Specify the retail, wholesale, or other sales environment in which the goods are sold.
(2) Please provide copies of invoices, bills of sale, or other documentation of sales of the goods.
(3) Was the specimen created for submission with this application?
(4) Does the specimen show applicant’s product as it is currently being sold to consumers?
(5) How do applicant’s goods appear in the actual sales environment? If sold in stores, provide photos showing the goods for sale in the stores. If sold online, identify the websites and provide copies of the webpages showing the goods for sale. And if sold in another type of sales environment, provide photos and/or documentation showing the goods for sale in that environment.
(6) If the information in question (5) about how the goods appear in the actual sales environment is not available to applicant, then please describe how applicant’s goods are transported for sale and provide photos and other documentation showing how applicant’s mark appears on the goods and/or its packaging when the goods are being transported for sale.
By responding to these inquiries, the filer creates a record that may be potentially relied upon by someone seeking to challenge the application or subsequent registration. An election not to respond to these inquiries and, instead, amend to an intent-to-use basis also presents a subject of further inquiry in a subsequent challenge of the application or resulting registration.
The increased rigor for examination of specimens falls squarely within the Office’s mission to preserve and maintain the integrity of the registry. It follows other recent Office initiatives such as the post-registration auditing program and the efforts to implement a new expedited cancellation-type proceeding.
It is increasingly important that Applicants provide relevant information regarding the origin of specimens to experienced trademark counsel. Counsel evaluation is also recommended for review of specimens and file histories, whether you are defending or challenging an application or registration, clearing a mark for filing or considering the validity of a likelihood of confusion refusal.
- MG-IP Trademark Group