The US Patent & Trademark Office just came out with a new Examination Guide covering digitally altered specimens. Examination Guide 3-19 Examination of Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens (USPTO, July 2019).

TM TKO has full, searchable prosecution histories as a part of the research platform, so I searched for any Office Actions related to this type of refusal. Although the Examination Guide is new, the refusal is not – it really started appearing in 2015, when the refusal was made about 1,000 times, and the refusal rates has continued to spike in each year since; 2019 is on pace for over 20,000 refusals. Since 2016, more than half of these refusals have been issued to Chinese applicants. However, a surprisingly small number of refusals have, to date, “held up” and resulted in the abandonment of the application – about 70% of the applications that have been finally disposed of have moved forward to registration, a far higher figure that I would have expected.

This raises interesting questions about what sort of conduct should result in an application being invalid. The “fraud” line of cases, like Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), was killed extremely dead via Bose Corp. v. Hexawave, Inc., 88 USPQ2d 1332 (TTAB 2007). The Board has, as a result, been very unwilling to expand revisit the idea of “fraud,” even where the applicant provided a demonstrably false specimen – deceptive intent is required, and so long as the applicant doesn’t say they had deceptive intent, they’re pretty much going to get off the hook. Tommie Copper IP, Inc. v. Gcool-Tech Usa LLC, Opposition No. 91223768 (May 9, 2018) [not precedential]. That a use-based application might be void ab initio due to non-use as of the use date claim might still be tenable, e.g., Parametric Technology Corporation v. PLMIC, LLC, Opposition No. 91174641 and PLMIC, LLC v. Parametric Technology Corporation, Opposition No. 91177168 (February 12, 2010) [not precedential], but the case law seems pretty clear that an applicant that knowingly submits a fake specimen and then cures with a real one prior to registration is basically going to be fine.

On the one hand, if the applicant ultimately can show that it is making real, in-commerce use of the mark, where’s the harm? The applicant got it right eventually and, for the purposes of having a registry that reflects reality, well, it does. On the other hand, there’s some real skepticism in the practice community that the specimens that are eventually accepted are actually real – that, instead, they’re just better fakes. Why would you fake something if you have a real product or service, after all?

Some practitioners take the position that the verified statement of the applicant should be taken at face value. I do not agree. If a simple Google Images or Tineye search can find the original photo that was doctored to match, or it’s otherwise equally blatant (a McDonald’s restaurant photo with “Mary’s Burgers” badly edited in place of “McDonald’s”), I see no reason why the USPTO should have to turn off its brain when examining specimens and ignore obvious fakes.

Represented vs. Unrepresented Applicants

How does being represented by an attorney impact the rate at which these refusals are issued, and the how does it impact the rates at which the refusals are overcome? The data for these queries treats pro se applicants who later add an attorney as “represented.”

Chinese Applicants

It is widely understood in the trademark practitioner community that a significant driver of these refusals are applications with Chinese applicants. That is definitely true – 45% or more of these refusals each year since 2016 are for Chinese applicants. Chinese applicants as a group overcome these refusals at a rate that is better than the norm. Chinese applicants have better success rates than unrepresented parties, although less than all represented parties do.

The issue of digitally altered specimens will undoubtedly continue to grow over time, as the technology becomes ever more omnipresent and the USPTO continues to work to implement its new Examination Guide. As always, TM TKO will be your best resource to research how the Office and other lawyers are addressing these kinds of refusals.