Strategies for Squashing Sketchy Specimens


So your time-of-filing trademark watching service [1] warned you that someone filed a use-based application to register a mark that’s awfully close to your mark.

You drill into their application file history and notice that their proof of use of their trademark looks like this:

Sketchy, right?

Worse, you check into other applications filed by the same company, and the proof of use they filed for a totally different trademark looks like this:

Even sketchier!  (Would anyone really buy that stuff?)  We’ve noticed this happening more and more lately, sometimes from US applicants, but more often from other countries.  Applicants also shamelessly copy well-known retailers’ or manufacturers’ ads or photos, use software to paste in new brand names, and then submit that to the PTO as so-called proof of use.  Um, bad guys, if you are going to do that, you might want to pay attention to details.  For instance, if you’re claiming use of the mark in the USA, probably best not to submit a storefront photo where the signs  are in Swedish, and the Swedish flag is flying atop the store.  Ahem.

In any event, no need to let the bad guys get a leg up.  You might even be able to avoid spending money on opposing their application, if you send a little old email to no later than the 30th day after publication.  See here to learn what you need to include in your e-mail.  The PTO won’t update you as to whether it’s going to reject the bad guy’s application, though, so better mark your docket to check on it occasionally, in case you end up having to oppose (booooo, hisssss).

Hooray for the PTO for giving us an option other than an opposition!

[1] You do have a time-of-filing watching service, right? Here is why you need one.

This entry was posted in Enforcement, Letters of Protest, Specimens, Trademark Portfolio Management, Trademark Prosecution, USPTO Tips and Tricks, Watching Service.
Date Published: October 26, 2018
Jennifer L. Dean is a partner and vice-chair of the firm's Intellectual Property Practice Group, and the chair of Drinker Biddle's Trademarks practice team. The World Trademark Review 1000 survey has described Jennifer as the “smart, fast and practical” chair of a “proactive, extremely knowledgeable and timing-sensitive” group that provides “incomparably good” service. In addition, Managing Intellectual Property has repeatedly named Jennifer among the “Top 250 Women in IP,” and identified her as an “IP Star” on numerous occasions. Jennifer's practice encompasses trademark clearance, registration and enforcement, focusing in particular on brand selection and management, and on litigation before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. She manages global trademark portfolios in fields ranging from soft drinks to reinsurance, and also advises clients on copyright and licensing issues.