[E-trademarks] No Specimen Ever Filed for Registration

[Pamela Chestek]

I don't believe it threatens it. I believe it is an administrative error 
by the Office, which can't be challenged in a proceeding.* An adversary 
could instead challenge whether the mark was in use, since there was no 
specimen, but it sounds like the mark was in use so it would be 
fruitless exercise.

Pam

*https://propertyintangible.com/2015/10/never-underestimate-the-burden-of-proof/ 
See the footnote listing Office errors that cannot be challenged. I 
compiled this in 2015 and there may be more since then. But there are a 
couple cases where the insufficiency of the specimen could not be 
challenged, and one for a foreign registration not provided, so between 
those two I think an altogether missing specimen would be treated the 
same way.

Pamela S. Chestek
Chestek Legal
300 Fayetteville St.
Unit 2492
Raleigh, NC 27602
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com



On 10/23/2024 9:28 AM, Welch, Kat via E-trademarks wrote:
>
> Weird situation that I’m wondering if anyone else has seen. A client 
> filed their own 1(a) application about three years ago but didn’t 
> include a specimen. Trademark Office issued an OA requesting evidence 
> of use, but then sent a notice of publication less than 24 hours 
> later. Application matured into a registration even though no specimen 
> was ever submitted. Does this threaten the client’s registration? What 
> do we even do in this situation? Call the USPTO? Wait for the Section 
> 8 filing? Never heard of this happening to anyone before. I assume it 
> was an administrative error but don’t want client being knocked for it.
>
> *Kat**​**​**​**​** Welch***
>
> /(she/her/hers)///
>
> *Attorney***
>
> *HUSCH BLACKWELL***
>
> 8001 Forsyth Boulevard,
> Suite 1500
> St. Louis, MO 63105
>
> Direct: 314-345-6272 <tel:314-345-6272>
>
> Fax: 314-480-1505 <fax:314-480-1505>
>
> Kat.Welch at huschblackwell.com <mailto:Kat.Welch at huschblackwell.com>
>
> huschblackwell.com <https://huschblackwell.com/>
>
> *General Assignment***
>
> *Intellectual Property***
>
>
> *Husch Blackwell is a different kind of law firm—structured around our clients’ industries and built on a culture of selfless service.**
> **​**Our 1000+ lawyers collaborate across the U.S. from more than 20 offices and our virtual office, The Link, to provide uncommon solutions**
> **​**to our clients’ most complex challenges.***
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20241023/40470a31/attachment.html>