Don't Be Tricked By Fraudulent Specimens

While it may not be Halloween season, you can still be tricked by a fraudulent specimen submitted to the United States Patent and Trademark Office (USPTO). The issue of fraudulent specimens in trademark applications has become a growing concern for both the USPTO and businesses. In recent years, the USPTO has observed an increase in the submission of fraudulent specimens related to trademark applications and renewal filings.

What is a Specimen in Trademarks?

A "specimen of use" in a trademark application or registration serves as evidence of how the trademark owner is actually using the mark in commerce. This specimen acts as proof that the trademark is not just a theoretical concept but is actively being used in a way that connects the mark with the goods or services it represents. The USPTO has specific requirements for specimens; one may take the form of photographs of the mark on products bearing the mark, screenshots of websites constituting point of purchase material, or screenshots constituting advertising material showing use of the mark. Whatever is submitted, the specimen must be a true and accurate representation of the mark in commerce at the time the specimen is submitted to the USPTO. The submission of fraudulent specimens can lead to serious consequences, including the rejection of a trademark application, cancellation of a trademark registration, and reputational damage.

In the context of trademark law, fraud occurs when an applicant knowingly makes a false representation to the USPTO with the intent to deceive the USPTO into approving a trademark registration that would not otherwise have been granted.¹ According to In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), fraud requires clear and convincing evidence that the applicant knowingly made false, material representations of fact. A mere misunderstanding or mistake is not enough to establish fraud, but an intentional act of misrepresentation is. In other words, without the intention to mislead the USPTO, even a material misrepresentation would not qualify as fraud under the Lanham Act warranting cancellation.²

When Does a Specimen Become Fraudulent?

Fraudulent specimens typically arise when an applicant submits doctored or fabricated evidence showing the trademark in use. These specimens can include manipulated images, photoshopped labels, or the use of a mark on goods never sold in United States commerce. The USPTO has heightened its scrutiny of specimens in light of the rise in these fraudulent activities, particularly from foreign applicants attempting to circumvent U.S. trademark requirements. The consequence of submitting fraudulent specimens can be severe. Under the Lanham Act, a trademark registration can be canceled if it was obtained through fraud. If a third party discovers that a registration was obtained by submitting fraudulent specimens, that third party may file a petition for cancellation with the Trademark Trial and Appeal Board (TTAB). Courts have also weighed in on cases of fraudulent specimens. In Nationstar Mortgage LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014), the TTAB clarified that fraudulent intent must be established by showing that the applicant knowingly submitted a false specimen with the intent to deceive the USPTO.

The USPTO is increasing enforcement against fraudulent specimens and encourages third parties to challenge applications or registrations suspected of using invalid specimens from "e-commerce specimen farms," which are websites selling fabricated evidence of trademark use.³ Filing firms that establish specimen farms often register trademarks with nonsensical names for common, mass-produced consumer goods such as clothing, toys, and electronics. They then create e-commerce sites featuring product listings that display digitally imposed trademarks on product images. Although these listings may appear legitimate, they often contain inconsistencies like typos, mismatched product descriptions, or images of products taken from other retailers with the trademark added digitally. These issues raise red flags about the authenticity of the trademark use. In response to this practice, the USPTO has provided guidance on identifying invalid specimens of use originating from a specimen farm and what steps to take if a specimen farm is discovered.⁴

It is crucial to understand the options available when disputing the validity of a trademark application or registration and to avoid being tricked by a fraudulent specimen. Before you find yourself in a sticky situation with trademarks, contact a McBrayer intellectual property attorney today!

[1] Lanham Act, §14(d), 15 U.S.C.A. § 1064(3).

[2] King Auto., Inc. v. Speedy Muffler King, Inc., 667 F.2d 1008, 1011 n. 4 (CCPA 1981).

[3] https://www.uspto.gov/trademarks/protect/challenge-invalid-specimens

[4] Id.

Katherine Moore Donnelly is an Associate of McBrayer PLLC, practicing in the firm's Lexington office. Her law practice primarily focuses on intellectual property, DMCA Agent Services, and transactional matters. Ms. Donnelly can be reached at kdonnelly@mcbrayerfirm.com or (859) 551-3660.

Services may be performed by others. This article does not constitute legal advice.