Warning over trademark hijackings after USPTO applications targeted

The USPTO has warned of efforts to corrupt the US trademark register in an effort to game marketplace brand registries. In an email sent to users, the office pointed to unauthorised changes that have been made to a number of active trademark applications and registrations. It noted that unauthorised parties have filed forms through the office’s Trademark Electronic Application System (TEAS) to make changes, which it suggests could be part of a scheme to register marks on third-party brand registries.

Currently, applicants and registrants receive an email message from the office to notify them of a requested change, the USPTO explains: “When we receive a request to change the primary email correspondence address of record, we may send this email alert to the prior primary email correspondence address to alert the applicant, registrant, or attorney of the change.” The office is thus warning users to be on the lookout for unexpected notices of change requests, which may be triggered by third-party attempts to corrupt USPTO files.

Where such a message is received unexpectedly, the USPTO advises that users should confirm that the change was not authorised and report unauthorised requests by forwarding the original ‘alert’ email message to [email protected] with the following information: “your name and your direct telephone number; the application serial number(s) and/or registration number(s) affected by the allegedly unauthorised change; the date and time of the alert message; a brief explanation of your relationship to the named applicant or registrant of record; and, any other information believed to be pertinent”.

Speaking to World Trademark Review, Josh Gerben, principal of Gerben Law Firm, noted that he had observed suspicious activity: “We immediately notified the PTO and within a couple of hours an official called us and said they were aware of this problem. They are getting these things in batches. They have had a couple of instances in the last month where they received batches of correspondent changes. They are attempting to weed them out and look for the ones they feel are suspicious. But it’s a big problem.”

As noted, the USPTO suggests that the spike in requests “may be part of a scheme to register the marks of others on third-party brand registries”. Gerben concurs, specifically pointing to Amazon’s offering as one being targeted: “With Amazon’s brand registry, you can get them to send you a code as the trademark owner so you can get your items in the brand registry. If that code gets into the wrong hands it could potentially be used to shut down a legitimate seller on the site.”

While the USPTO is aware of the problem and has notified users, Gerben suggests that more should be done to minimise the danger for rights holders, concluding: “The PTO is operating off an antiquated system. There is no security – anyone with an internet connection can go online and upset the system. We are supposed to be the example for the world on how to operate a strong and reliable trademark database. But at the moment, any two-bit hacker can upset the validity of records by submitting something that doesn’t even require a password. It’s amazing that we are in 2018 and this is the level of security in place – we are failing here. You can easily circumvent our system and sow all kinds of confusion without even needing a password.”

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