Fake Trademark Specimens: An Empirical Analysis

Abstract

United States trademark law requires that a mark be used in commerce for it to qualify for registration at the U.S. Patent and Trademark Office (PTO). Applicants prove that they have met the use requirement by submitting to the PTO photographic specimens of their use of the mark in commerce. This Piece reports the results of new empirical work showing that an appreciable number of U.S. trademark applications originating in China include fraudulent specimens of use. In particular, with respect to use-based applications originating in China that were filed at the PTO in 2017 solely for apparel goods, we estimate that 66.9% of such applications included fraudulent specimens. Yet 59.8% of these fraudulent applications proceeded to publication, and 38.9% then proceeded to registration. If these applications are representative of the overall population of Chinese-origin applications in that year, then approximately 14.0% of all such use-based applications filed with the PTO in 2017 were fraudulent. Fraudulent registrations worsen the problems of trademark depletion and clutter, undermine the integrity of the trademark register, and hurt legitimate businesses that may benefit from using these marks. We therefore recommend legislative action to make it easier for third parties and the PTO to cull these marks from the register and systematic improvement by the PTO to ensure that applications with fraudulent specimens are not registered in the first instance.

Keywords: Trademark, Trademark Modernization Act, Fake, Specimens, China, Registration, PTO