Some filing firms are creating e-commerce websites solely for the purpose of creating specimens to attempt to meet the USPTO’s application specimen requirement. We call these websites “specimen farms,” because they’re made up of webpages created to display hundreds of products with various trademarks that appear to be for sale. Here’s what they are doing.
The filing firms apply to register a trademark (frequently made up of nonsensical wording) for a standard set of consumer goods, such as eyeglasses, clothing, toys, electronics, or hand tools—all types of goods that are typically mass-produced. They then create an authentic looking e-commerce site where each trademark gets its own product listing, along with a picture of the goods with the trademark digitally superimposed. The listings may look legitimate when viewed in isolation, or they can look hastily created (e.g., they may include typos, pictures of other retailers’ goods with the trademark digitally applied to those goods, or descriptions of goods that do not match the pictures).
The filing firms submit the product listings to the USPTO as specimens of a trademark’s use in commerce in order to obtain registration. Such specimens, however, do not support registration, because they do not show a bona fide use of the trademark in the ordinary course of trade, which is a requirement of our law.
Why specimen farms are problematic for legitimate applicants
Often, USPTO examining attorneys detect when a specimen of use is invalid and issue a refusal. Sometimes an invalid specimen looks legitimate, and the trademark becomes registered.
There are potentially tens of thousands of registrations that were supported by invalid specimens of use from specimen farms. Unless these improper registrations are canceled, they can block other applicants from registering their trademarks.
These registrations are also being offered for sale on auction sites that cater to people who want a trademark registration to participate in certain online platform seller programs. Those buyers should beware.
You can challenge applications and registrations that have invalid specimens if you know what to use as evidence.
How to spot an invalid specimen of use originating from a specimen farm
Specimen farms have characteristics atypical of legitimate e-commerce websites:
- The “Contact Us” page on the website only identifies a location of “USA.”
- The phone number on the website doesn’t have enough digits for a U.S. phone number or the number appears to be a place holder, such as “123456789.”
- The main webpage of the e-commerce website isn’t reachable by shortening the URL provided for a specific product. For example, you get the link “www.example.com/specimenexample123,” but when you try to go to the homepage “www.example.com,” you get an error message.
- The e-commerce website has a variety of products and brands that are not organized by category or brand.
- The product listings don’t include any product descriptions.
- Multiple product listings include identical language or digitally altered versions of images from well-known third-party product listings.
- The description of the product does not match the product shown.
- The product information includes unusually priced items or discounted items.
- Photographs of other goods on the submitted specimen (that have different trademarks than the specimen) appear to be digitally altered or fake. For example, the trademarks appear in unusual locations on the goods.
- The typeface and fonts are uniform for each of the products, which may also contain misspellings or awkward language that suggests they were hastily created.
- The product cannot be purchased on the site or the product is not available for sale in U.S. currency.
What to do if you identify a specimen farm
If you believe you’ve identified an application or registration that includes an invalid specimen from a specimen farm, this can be strong evidence to raise an inference of non-use. You can challenge that application or registration on this basis.
You can consider the following options:
- File a Letter of Protest if the specimen farm application is still pending.
- File a petition to cancel a registration or a notice of opposition to prevent a published trademark in an application from registering through the Trademark Trial and Appeal Board (TTAB).
You might choose this option, for example, if your application to register your trademark is refused because it’s blocked by a trademark registration that has invalid specimens.
- File a petition requesting institution of expungement or reexamination proceedings for trademarks that weren’t in actual use at key times during the application process or post-registration.
You might choose to petition for reexamination if you notice that the specimen for the registered trademark that’s blocking your application was filed before the trademark was actually being used in commerce.
If you decide to file a petition requesting institution of an expungement or reexamination proceeding, you must provide evidence to support your petition. You can find examples of different types and sources of evidence on the USPTO implements the Trademark Modernization Act webpage. You also can check out an example of a Director-initiated reexamination proceeding that includes evidence identifying the characteristics of a specimen farm.