Sympathy for the Regulator

The Difficulties Facing the US Patent & Trademark Office in Examining Specimens

The trademark community has been mildly frustrated with the Trademark Office in 2020 and into 2021 for two related reasons:

  • the feeling that a lot of crap has gotten onto the trademark registry, largely weird marks originating from China. Many of these are alleged to have dubious specimens or other issues with use claims, e.g. claiming use on a broad swathe of goods.
  • the feeling that otherwise perfectly valid specimens are getting caught up needlessly by new examination standards, increasing prosecution times and costs.

Let’s look at this from the Trademark Office’s perspective, and take a look at some examples of the sorts of applications that tend to generate practitioner discontent.

I. Spot-Checking New Applications For Specimen Issues

I focused on 1-word, use-based US filings without design elements filed by Chinese applicants in December 2020. I further restricted to just those that have the text “no meaning” to avoid translation/transliterations. The types of marks this generates – TERIQO, BEIYEIDEI, FABSMURD, MIZILI, URCHESE, FEOICH, and GOMNOA, are the sort of marks that tend to generate a skeptical eyebrow raise from practitioners. It’s a little ironic that these marks that generate practitioner skepticism are the most inherently distinctive marks on the protectability spectrum, since they’re gibberish in the first place.

Let’s take a look at these seven examples.

  • TERIQO for scissors, tweezers, etc. (specimen)
    • I’m not sure; it’s a screenshot and invoice from SellersGlobal. The photo of the hand actually holding the tweezers is the easiest to see, and looks legit. The shipping address on the invoice is partially redacted, but seems to be missing an actual street address anyway.
  • BEIYEIDEI for toys (specimen)
    • The photo looks pretty gritty/real.
  • FABSMURD for toys and pet toys (specimen)
    • Looks real; used on a tag. Multiple angles help and demonstrate “reality” well.
  • MIZILI for paper products (specimen)
    • Used on a point-of-sale eBay website. Probably “real,” although the page doesn’t show if the mark is also used on the physical product.
  • URSCHSE for various sorts of bags (specimen)
    • From an online receipt shipping to the US. Receipts are a bit weird, since it should be the customer getting the receipt not the intermediary vendor (CoolMall), but it does at least seem to show shipping to the US.
  • FEOICH for cosmetics (specimen)
    • Same as above – CoolMall receipts.
  • GOMNOA for candles and gasoline (specimen)
    • Amazon sales pages for candles. Candles and fuel usually aren’t provided under the same mark, so the scope of the goods covered in the use claim seem more debatable than the specimen itself.

None of these seem to be clear problems taken on their own merits. But, what about in the aggregate?

II. The Broader Question — What Kind of Registry Do We Want?

There were 32,986 applications that met these narrow criteria in just December 2020. That’s a TON of applications. For comparison, in December 2015, there were 30,098 US applications filed in total. That’s 2,000 less than just this this subset of China-based 1(a), 1-word, not-a-translation, standard character marks applications!

Let’s assume that many of these sales/shipments are pretty low-volume, at least at the time of registration. What could be done to preserve a smaller registry that reflect the marks that US consumers are actually likely to encounter? One option might be to require a certain volume of commercial activity. This could avoid the issue of sellers obtaining registrations for de miminis sales through online platforms that aren’t very big in the US. This would obviously have some serious impacts, cutting off registration as an option for new ventures, or at least pushing more small businesses to “sit on” an ITU application while building up their commercial presence. It would also raise difficulties for non-commercial brands that don’t generate sales. Some of these could be addressed by evidence other than sales, like website visits from US IP addresses or the like (potentially game-able, but more work), or just by having different use standards for domestic and foreign applicants (though that may raise equal protection issues).

We certainly don’t have a perfect solution — we’d love to hear your thoughts as the Office continues to grapple with these examination complexities.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out /  Change )

Google photo

You are commenting using your Google account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )

Connecting to %s