Why do we need so many specimens of use nowadays?

Nowadays when the time comes to do a six-year or ten-year renewal of a US trademark registration, I find that I often need to spend a lot of extra professional time explaining to the client why I feel we need to have lots of extra specimens of use. And I find I often need to spend a lot of extra professional time explaining to the client why I feel we need to work harder than ever before on canceling goods and services from the registration as part of the renewal process. I’ll explain why this is.

First a bit of background.  If you were to click around in TSDR to look at actual specimens of use that were filed over the past several decades in a hundred randomly selected trademark filings, what you would find is that in 99 cases out of one hundred, the filer filed exactly one specimen of use per trademark class.  For many decades the Trademark Manual of Examination Procedure has been clear about this:

Generally, if more than one item of goods, or more than one service, is specified in one class in an application, it is usually not necessary to have a specimen for each product or service.

(TMEP § 904.1(a).)  To say this plainly, for many decades the observed behavior of trademark filers at the USPTO has been that the number of specimens per class set by the USPTO as the minimum necessary (that is, one) has also been the maximum number of specimens per class actually provided by filers.

It is one thing to talk about the observed behavior of trademark filers over these many decades.  What about the observed behavior over these many decades of the Trademark Office people whose job it is to review the trademark filings that contain specimens of use?  Yes the reader might believe me when I report that if you were to click around in TSDR to look at actual specimens of use that were filed over the past several decades in a hundred randomly selected trademark filings, what you would find is that in 99 cases out of one hundred, the filer filed exactly one specimen of use per trademark class.  But the alert reader will also be aware that the subsequent sentence in the cited TMEP section says:

When the range of items is wide or contains unrelated articles, the examining attorney may request additional specimens.

The alert reader might thus wonder, in those 99 filings randomly selected over the past several decades in which the filer provided only a single specimen of use per class … in what fraction of those cases did the examining attorney go to the trouble to actually request additional specimens?  Or to ask this question in a second way, in what fraction of these cases did the examining attorney simply approve the filing that had only one specimen per class, rather than asking for more specimens?  And the observed behavior of the Trademark Office over many decades has been that in 98 cases out of 99, one specimen per class is sufficient.  In maybe only one case out of 99 is the observed behavior of the examining attorney that the examining attorney does to to the trouble to request additional specimens.

And so it has been through most of the career of most US trademark practitioners for many decades.  Arguably the US trademark practitioner who would ask (or require) a client to provide anything more than just a single specimen per class would be criticized for putting the client to completely unnecessary extra work and trouble.

But everything about this changed about two years ago.

Starting about two years ago, the Trademark Office decided to make a lot of big changes about its scrutiny and examination of specimens of use.  We could talk about why the Trademark Office decided to make these changes, but that would call for an entire separate blog article or perhaps several separate blog articles.  For the purposes of this blog article, suffice it to say that the Trademark Office has within the past two years become increasingly concerned about trademark filers who abuse the US trademark system in any of several ways:

• some trademark filers use specimens of use that are not photographs of real goods but are instead created using image editing tools;
• some trademark filers use specimens of use that show goods that are not really sold in commerce to real customers but are instead manufactured by printing-on-demand service providers specifically to facilitate US trademark filings in which it is necessary to provide specimens of use;
• some trademark filers who list many items of goods in a class are not really telling the truth when they say that all of the items of goods are in commerce.

The latter point — that some filers will list far more goods in a class than are actually in commerce in that class — deserves a bit of discussion.  There are several filing paths that make it very easy for a filer to end up, perhaps inadvertently, with a list of goods that is much longer than it should be.  One of the filing paths uses Article 6quinquies of the Paris Convention, and in the US is called a “44e filing basis”.  The way it works for a 44e filing in the US is that the filer, whose country of origin is not the US, files a new US trademark application but does not provide any specimens of use at all at the time of filing.  Instead, the filer provides a copy of a foreign trademark registration from the trademark office in the filer’s country of origin. 

A key thing about this is that in many trademark offices outside of the US, it is commonplace for a filer to list many dozens or even hundreds of items of goods per class.  Indeed it may well be that in some countries it is considered malpractice if the practitioner fails to do anything other than listing every conceivable item of goods in a class.  What happens in most 44e cases is that the entirety of the super-long list of goods from the foreign registration gets copied verbatim into the to-be-filed new US trademark application.  Such a US case gets examined for most of the usual things (descriptive?  confusingly similar to some earlier US filing?) but the 44e filing basis excuses the filer from having to profess any actual use of the mark in commerce in the US.  The 44e filing basis only requires the filer to profess a mere intention to use the mark on the identified goods in the US, but does not require the filer to say that every item of goods (or indeed even any one of the items of goods) is in actual commerce in the US, as a precondition to the grant of the US registration.  The 44e filing basis excuses the filer from having to provide any specimens of use as a precondition to the grant of the US registration. 

For any 44e filer, the first time that any US rules actually require the filer to come out and say which goods are actually in commerce in the US is at the time of the six-year renewal.  Only then would the owner of the US trademark registration be required to pare down the list of goods from the hundreds of items of goods that were originally listed down to the (perhaps) only one or two items of goods that actually got shipped to the US during those six years.

And for any 44e filer, the first time that any US rules actually require the filer to actually provide a specimen of use is at the time of this same six-year renewal.

Suppose we were to take a look in TSDR to see what has gone on in these six-year renewals in 44e cases over the past few decades.  What would we see?

For many decades, the observed behavior of registrants in 44e cases, doing six-year renewals was to do little or nothing in the way of canceling items of goods.  The problem with this is that the person signing the renewal papers is stating under penalty of perjury that any items of goods that are not being canceled in the renewal really are in commerce in the US.  And I suspect that over the course of many decades, there are many six-year renewals in 44e cases where the signer was not really telling the truth — renewals in which the true situation is that not every item listed in the renewal was actually in commerce in the US.

And in such six-year renewals, as mentioned above, the Trademark Office only required a single specimen of use per class.  And the observed behavior of filers was to provide only the single specimen of use.

What about the observed behavior of the examining attorneys in the Trademark Office with respect to these six-year renewals in 44e cases?  The observed behavior (until within the past two years) was that it was quite rare for an examining attorney to request any additional specimen of use beyond the single specimen of use per class provided by the filer.  And the observed behavior (until within the past two years) was that it was quite rare for an examining attorney to second-guess in any way a renewal of a list of many dozens or even hundreds of items of goods in a class.

Then the US joined the Madrid Protocol.  This led to a second filing path that shared these peculiar aspects of the 44e filing path, namely:

• the starting point for a Madrid filing would be a basic filing in some non-US trademark office;
• in such a office it would be customary to list many dozens or hundreds of items of goods per class;
• the super-long list of goods from the basic filing would get copied into the Madrid filing;
• the Madrid filing would designate the US;
• the super-long list of goods would get copied from the Madrid filing into the US case (called a “66 filing basis” case);
• US rules in 66 cases do not require the filer to profess that all of the items of goods are in actual commerce in the US as a precondition of a grant of the US trademark registration;
• US rules in 66 cases do not require the filer to provide any specimens of use as a precondition of a grant of the US trademark registration;
• the first time that any US rules require the registrant in a 66 case to actually state which items of goods are actually in commerce in the US is at the time of the six-year renewal;  and
• the first time that any US rules require the registrant in a 66 case to actually provide any specimen of use is at the time of the six-year renewal.

I will make a couple of points here.  A first point is that in this blog article I talk over and over again about six-year renewals.  The alert reader will appreciate that of course the exact same issues come up in the decade renewals as well.  If the six-year renewal happened, say, three years ago, then that renewal happened back when the USPTO was very lax about all of these things.  In such a case, it will be the ten-year renewal that will require everyone involved to pay attention to the issues raised in this blog article.

A second point is that in this blog article I talk over and over again about goods.  The alert reader will appreciate that of course the exact same issues come up for services.  It is just that I do not want to clutter up every sentence in this article with “items of goods and/or services” over and over again.  I will just talk about goods.  And the reader will understand that of course we are also talking about services.

Returning to the main flow of the discussion … this situation for 44e cases and 66 cases led to what I have termed “the balaclava problem” namely that if the foreign filing had been done in a trademark office where it is malpractice not to list every conceivable item of goods in the class, and if the class is class 25 (clothing), then it is very predictable that the foreign filing will list balaclavas.  And it is likewise predictable that the US registration resulting from the 44e or 66 filing will lend up listing balaclavas among perhaps two hundred other types of clothing (feather boas!  smoking jackets!  kimonos!). 

Until about two years ago, I think most US trademark renewals in 44e and 66 cases were renewals in which the filer did not go to the trouble to consider whether or not the filer’s clothing product line actually included balaclavas or feather boas or smoking jackets or kimonos.  And (although I do think it is regrettable) I think most US trademark practitioners turned a blind eye to this question.  I think that many, many trademark renewals have taken place during the past many decades in 44e and 66 cases in which the US practitioner should have pushed the client on this point and instead took the lazy path and did nothing about it other than including a few words in a boilerplate paragraph in a standard letter to the client.  A few words that said little more than that it is important that the renewal list no more than the actual goods in commerce in the US, or some other opaque language.

One of the main points of this blog article is that starting about two years ago, the Trademark Office decided to become much more strict about these things.  The observed behavior of the examining attorneys at the Trademark Office includes several new kinds of scrutiny.

Pixel-by-pixel analysis of specimens.  Examining attorneys at the USPTO are receiving training on ways to use image editing and viewing tools to try to identify specimens that are not really photographs of goods showing the mark on the goods, but that instead had the mark placed upon the goods by means of image editing.  The examining attorney will zoom in on the part of the image that shows the mark, to see if there are irregularities in the boundary of the mark, or stray pixels of an inappropriate color nearby to the mark.

If the item of goods has a curved surface, the examining attorney will look to see if the actual shape of the letters of the mark is curved in a way that matches the curve of the underlying surface.  If the letters of the mark are too straight, then this might be a telltale that the mark got there through image editing rather than by photography of a physical mark on physical goods.

Provenance analysis of specimens.  There are image search engines on the internet.  You can take an image that is of interest and paste it into an image search engine and it might lead you to web sites where that same image appears.  A person who is considering going on a date with a candidate from a dating web site may use such a search to try to see if the candidate is using a photograph that was “borrowed” from someone else’s listing.  It is fascinating and, I think, amusing to learn that examining attorneys at the USPTO are actually receiving training to use just such image search engines not to smoke out a potentially disappointing dinner partner but instead to try to expose a fraudulent trademark applicant!  And indeed there have by now been many dozens of real-life cases where examining attorneys have found, for example, a specimen of use that the applicant copied from a web site of a competitor of the applicant, and then it is clear that the applicant retouched with an image editor to superimpose the applicant’s own mark onto the image.  Some of these cases are so blatant that the clouds in the sky behind the building look the same in the two images, or the position of the fingers on the hand of the person holding the cell phone case look the same in the two images.

Use-in-commerce audits.  About two years ago the Trademark Office started doing what it calls “random” audits of six-year trademark renewals.  Since its inception in early 2018, this Post Registration Proof of Use Audit Program has led to the cancellation of many US trademark registrations.   I suspect that the supposedly random audits are sometimes triggered by things like balaclavas and feather boas and smoking jackets being listed in class 25.  I also suspect that examining attorneys sometimes get suspicious and will click around on the Internet to see if a company’s publicly advertised product line really comes close to matching the list of goods in the company’s trademark registration that is being renewed.  If the registration lists one hundred kinds of electrical and scientific apparatus in class 9, and if a cursory web search finds that the company only actually seems to sell a single electrical product then I think this sometimes triggers an audit.

Which then brings us to the main point of this blog article.  Within the past couple of years, I have started handling six-year trademark renewals very differently than I did previously.  These days when I have a renewal coming up for a client, I will take the client’s list of goods in the registration and I will make it into a numbered list.  I will very directly ask that the client work through the list, item by item, to check to see which items are actually in commerce in the US.  If we get down to item 103 and it is a balaclava or a feather boa or a smoking jacket, I will sometimes point to item 103 as a specific example of an item that would need to be canceled if the client is not actually shipping feather boas to the US.

In the renewal discussion with the client, I will also suggest in strong terms that we hand in at least one specimen of use for each listed item of goods in the class.  Thus if we are in class 25 and one of the items that is not being canceled is (say) feather boas, then I will ask that we please provide a photograph of a feather boa showing the mark on or in connection with the goods (in the case of a feather boa, maybe on a hang tag or on the product packaging).  

I sometimes communicate this message by saying “at least as many specimens as there are semicolons”.  If the identification of goods in class 10 has thirty-nine semicolons, then I ask that we please provide forty specimens of use (one for each item of goods in the list).

The way I look at it, if the renewal is for a registration having forty items listed in class 10, then this renewal is “audit bait”.  I figure that if there is only a single specimen of use, then this renewal is very likely to receive one of the dreaded “random audits”.  And I figure that if instead we provide forty specimens of use, this will make the examining attorney realize that he or she will accomplish nothing by invoking an audit that requires a specimen for each item of goods, because we already provided a specimen for each item of goods.

What I am talking about here is not so much what the law requires, or what the rules require.   What I am talking about is more along the lines of:

• What filing approach will reduce the risk that an examining attorney will get suspicious and think that we created our sole specimen through image editing rather than old-fashioned photogaphy?
• What filing approach will reduce the risk that an examining attorney will get suspicious and think that we lifted our sole specimen from some competitor’s web site?
• What filing approach will reduce the risk that an examining attorney will get suspicious and think that we should have canceled lots of our goods because we were not really shipping all of the items of goods in commerce?
• What filing approach will reduce the risk that an examining attorney will think that we have a “balaclava problem” or a “feather boa problem”?

And there is a meta-problem that I am talking about.  Think of the examining attorney who might be suspicious that the US practitioner who is handling the renewal failed to counsel the client properly about such things.  Think of the examining attorney who might be suspicious that the US practitioner handling the renewal was doing a “hear no evil see no evil” approach to the client counseling.  

Canceling items of goods.  When I beat up my client with a long numbered list of goods, asking that some of the goods be canceled if they are not really being shipped to the US, the result might be that the renewal will have some goods that are being canceled.  This might signal to the examining attorney that the registrant is making a good-faith effort to renew the correct goods and cancel other goods. 

Providing much more than just one specimen per class.  When I beat up my client to provide as many specimens of use as there are semicolons, the result might be that the renewal will have a generous number of specimens of use.  This might signal to the examining attorney that the examining attorney is not going to “win” if the examining attorney tries to kill the renewal using the audit process.  This might signal to the examining attorney that the registrant is probably not one of the “bad actors” that the audit procedure was designed to try to weed out.

In your trademark practice, have you recently changed how you counsel your clients in six-year renewals?  Please post a comment below.