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26 April 2021
As trademark owners seek new and effective ways to protect their valuable brands, many owners have turned to Amazon's popular Brand Registry programme, which gives participants access to:
Such tools are essential, especially during the COVID-19 pandemic, as consumers are increasingly choosing to make purchases on e-commerce platforms. In 2020 Amazon's sales increased by 38%.(1)
However, parties must own a registered trademark to participate in Amazon's Brand Registry programme. This requirement may have contributed to the increase in foreign trademark applications submitted to the United States Patent and Trademark Office (USPTO) in recent years.(2) Many of these applications are accompanied by fraudulent specimens in an attempt to satisfy the requirement that the goods be used in commerce.(3) A review of applications and specimens submitted in 2017 that originated in China and covered goods solely in the apparel class found that approximately two-thirds of these use-based applications included fraudulent specimens.(4)
In recent years the USPTO has introduced various policies and measures to combat this increase in fraudulent specimens. In 2018 the USPTO launched a pilot programme to enable the public to report fraudulent specimens via a dedicated USPTO-monitored email address. The pilot reporting programme enabled brand owners to flag problematic specimens and obtain trademark application refusals effectively without incurring the time and costs associated with filing a formal opposition. However, on 16 February 2021 the USPTO discontinued the pilot programme.
Instead, trademark owners can now report fraudulent specimens to the USPTO by submitting a traditional letter of protest. Trademark owners will be charged a $50 filing fee for such letters. However, they remain a more cost-effective way to flag fraudulent specimens than filing a formal opposition, which carries a $600 filing fee.
For further information on this topic please contact Sarah S Brooks, Marjorie Norman or Alicia Sharon at Venable LLP by telephone (+1 310 229 9900) or email (firstname.lastname@example.org, email@example.com or firstname.lastname@example.org). The Venable LLP website can be accessed at www.venable.com.
(1) See Amazon's press release, 2 February 2021.
(2) Various other factors have also contributed to the increase in trademark applications submitted to the USPTO. For example, according to Trademarks and patents in China: the impact of non-market factors on filing trends and IP systems (USPTO, January 2021), the following factors have contributed to the increase in trademark applications submitted by Chinese applicants:
(4) Barton Beebe and Jeanne C Fromer, '"Fake trademark specimens: an empirical analysis", 121 Columbia L Rev Forum 217, 2020.
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