USPTO Strengthens Review of Trademark Use Evidence: How Should Chinese Enterprises Prepare?

Summary of Contents

To improve the accuracy and integrity of trademark registrations, the United States Patent and Trademark Office (USPTO) has announced adjustments to its post-registration audit procedures. In addition to the existing random audits, the USPTO will implement targeted audits, focusing on the reliability of certain submitted declarations of use or specimen evidence. This measure aims to crack down on the submission of fraudulent trademark use evidence.

Background & Reasons

Since the implementation of the post-registration audit program in 2017, the USPTO has identified instances of fraudulent use evidence in trademark registrations, including digitally altered specimens and fake documents from so-called "specimen farms1." These issues have undermined the credibility of the trademark registration system. To address this, the USPTO has decided to introduce targeted audits in addition to random checks, focusing on identifying and addressing suspicious registrations.

Key Changes

● Random Audits of Trademark Use Evidence The USPTO will regularly conduct random audits of registered trademarks, requiring trademark owners to provide additional evidence of use. Failure to submit genuine and adequate evidence may result in the cancellation or invalidation of the trademark.

For example, if a company submits a fake product photo when registering a trademark for electronic goods but does not actually use the trademark in the market, the USPTO may later request further evidence, such as inventory records, sales contracts, or advertisements, to prove actual use.

● Enhanced Scrutiny of Use Evidence USPTO examiners will rigorously review trademark use evidence, particularly when there are doubts or irregularities. If the examiner suspects the authenticity of the evidence, applicants may be required to submit additional documents and undergo further examination regarding the timing and method of submission.

For instance, if an applicant submits a website screenshot displaying the trademark but the website does not actually feature the trademark or conduct sales, the USPTO may request additional evidence, such as order records or customer contracts, to verify trademark use.

● Strict Penalties for Fraudulent Evidence Submission Applicants who intentionally submit fraudulent trademark use evidence will face stricter penalties from the USPTO. These may include the cancellation of trademark registrations, suspension of examination, or even legal action. These measures aim to curb trademark abuse and maintain fairness in the registration process.

Recommendations

1. Submit Genuine and Reliable Evidence of Use Ensure that all submitted specimens of use are authentic and reflect actual commercial use. Avoid using dubious or unverifiable samples, as they may be deemed fraudulent, jeopardizing the stability of the registration.
2. Focus on High-Risk Goods or Services Categories Certain categories, such as digital products and services, apparel, accessories, low-cost goods, and emerging fields like blockchain, cryptocurrency, and AI, are more likely to be audited. When submitting evidence for these high-risk categories, ensure that the specimens are genuine and sourced reliably.
3. Maintain Comprehensive Records of Use Develop a habit of keeping detailed records of trademark use, such as invoices, product packaging, and advertising materials. These records will be invaluable during audits and can substantiate ongoing use in commerce.
4. Avoid Using Third-Party Specimen Services Refrain from relying on third-party services to submit specimens, especially those associated with "specimen farms." Such practices may not only lead to the cancellation of registrations but also expose applicants to legal risks.

By actively complying with the USPTO's new policies, Chinese applicants can better protect their trademark rights and lay a solid foundation for international brand development.

Specimen Farms1: Websites or platforms designed to fabricate fake trademark use evidence. These sites are not genuine commercial platforms and do not engage in normal trade activities. Instead, they provide seemingly legitimate documents or specimens for applicants or registrants to submit to the USPTO as evidence of trademark use in commerce.