What does the Chinese government’s decision to pay its citizens to apply for and register trademarks with the USPTO have to do with IP attorney ethics? Plenty, as it turns out.
As recently reported by the American Bar Association, see article doctored-trademark-specimen, the USPTO is experiencing “a plague of fake, doctored and digitally altered specimens” filed with new Section 1(a) “use based” trademark applications. Many of these applications originate from international applicants, particularly those located in China, which is paying a “subsidy” to its citizens who succeed in obtaining a registered trademark from the USPTO. This reward-based system, coupled with the relative ease with which computer software enables the preparation of convincing fakes or altered specimens that look very much like genuine articles, has resulted in a huge increase in improper trademark filings.
To help combat the issue, the USPTO recently announced a pilot program to allow the public to submit notices to the Office alerting it to potentially fake specimens in applications that have yet to register.
In addition to seeking public help, the USPTO has also turned to its internal ethics experts, the Office of Enrollment and Discipline (OED), for help in policing the practice. While OED does not have jurisdiction over clients, it certainly has the power to require that trademark attorneys answer questions regarding possibly bogus trademark filings. In recent months, the OED has devoted substantial resources to investigating U.S. attorneys–particularly those who represent Chinese applicants–in cases where the Office has rejected multiple trademark filings made by such attorneys based on a false or digitally-altered specimen.
Why is this a matter of ethics?
When a trademark attorney files an application, he or she certifies, pursuant to 37 C.F.R. 11.18(b)(2), that “To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,” that the paper is not being presented for an improper purpose and that the factual contentions have support. What this means in layman’s terms is that, as part of the duty to provide competent representation (37 C.F.R. 11.101), counsel must be careful in reviewing the specimens that are provided by their clients to ensure they are not apparent fakes (noting that some altered specimens may be easier for counsel to spot than others). In addition, as part of their duty to communicate (37 C.F.R. 11.104), trademark attorneys should counsel their clients regarding what constitutes a proper specimen.
How to Spot a Bad Trademark Specimen
The ABA proposes the following guidance on how software may help practitioners identify a digitally-altered or otherwise improper trademark specimen:
One method is through a reverse image search, such as Google Image Search or Tin-Eye. These services compare the specimen against millions of images online and return likely matches. This method is effective in identifying doctored images based on stock images, but is less effective against images that are doctored images of prior specimens. Other websites use computer algorithms to view metadata and signs of manipulation automatically, including Izitru, ImageEdited, and PixelPeeper.
In addition, the ABA notes, manual inspection of a specimen may show “lighting anomalies” that could at least raise a question in the mind of the trademark attorney as to whether a client-provided specimen is in fact a mock-up or is otherwise not a genuine reflection of the mark as used in interstate commerce.
Of course, many trademark applicants have trouble knowing what constitutes a proper specimen. It is quite common for them to send things to counsel as evidence of use that plainly do not satisfy the PTO’s specimen requirements. While attorneys are generally permitted to rely upon the veracity of a client’s representation, there is an exception to that general rule that applies where counsel is aware that the client’s representation is or may be untrue. In the case of potentially false information, counsel should seek more information from the client to confirm the validity of the specimen.
The takeaways from this are that TM counsel are reminded to exercise caution when reviewing trademark evidence of usage or specimens. If something does not seem right, then ask questions of the client. In addition, ensure the client understands the requirements of an adequate trademark specimen. If still in doubt, require the client to provide an alternative specimen or utilize Google Image Search or a similar program to determine yourself if the specimen is potentially problematic. Taking these proactive steps may help counsel to avoid a fictitious or digitally-altered specimen rejection.
And these extra steps may help trademark practitioners avoid an ethics investigation by the OED.