USPTO outlines efforts to protect the register’s integrity

In January 2021 WTR published an in-depth look at USPTO operations and strategic priorities for the year ahead. In the following extract, USPTO Commissioner for Trademarks David S Gooder highlights what the office has been doing to protect the register.

To keep the US trademark register accurate and reliable, registered marks must be proven to have “use in commerce”. Registrations without the requisite use can result in dead wood, meaning that the registered mark is not actually being used in commerce for all the goods or services listed in the registration.

Dead wood registrations interfere with trademark clearance and can block new trademark applications – including those for which there is demonstrated use – from registration. Registrations obtained without actual use in commerce may also be fraudulent. From my time in the private sector, this issue is near to my heart, and we are committed to increasing the integrity of the trademark register. To do so, we are ramping up efforts to fight fraudulent activities that include:

  • doctored and digitally created specimens of use;
  • false claims of use in commerce;
  • false corporate existence and domicile;
  • unauthorised changes to the files of others;
  • misappropriation of US attorneys’ names and bar information; and
  • third-party solicitations designed to appear as official USPTO correspondence (eg, the US Trademark Agency).

The following programmes are among those designed to combat these nefarious acts.

Post-registration proof of use audit programme

Our statistics show that when audited during the course of maintenance filings, over 50% of all audited registrations delete some goods or services because they are no longer in use. About 8% of audited registrations are cancelled for failure to respond. Trademark owners and practitioners are clearly part of the problem, but they can also be part of the solution by ensuring that when they make their maintenance filings (as well as filing applications) the goods and services covered by the registration are in use in commerce and that specimens showing that use are submitted as required. For more on the audit programme, please see the USPTO’s Post Registration Proof of Use Audit Program webpage.

US Counsel Rule

In an effort to combat bad-faith filings and fraudulent activities, on 3 August 2019 we introduced what has become known as the US Counsel Rule. Under this rule, foreign-domiciled trademark applicants, registrants and parties to TTAB proceedings must be represented before the USPTO by a US licensed attorney. This rule is much the same as those in many countries around the world, including at the EUIPO. Implementing it required extensive coordination within the USPTO and with bar associations and other government agencies.

Over one year in, I believe that this rule has made a significant contribution to fighting bad-faith filings of many kinds. We can see this in the significant reduction in refusals based on specimen and use issues. I have also been told by a number of companies that they believe they have to oppose fewer applications. While the rule is having the intended effect, efforts to circumvent it, while anticipated, have required a focused and dedicated drive to stop such conduct. At the tip of that spear is the Special Task Force.

Special Task Force

Like many companies have done with regard to brand protection, in 2019 we established a dedicated unit called the Special Task Force. This team of attorneys, technical staff and representatives from across the USPTO analyses various reports, responds to problems reported by examining attorneys and other trademarks staff, conducts appropriate investigations and takes action as required. The task force has proactively identified suspicious surges in foreign representation, networks of false applicants, the use of mail drops or false domiciles, the unauthorised use of US attorneys’ bar credentials and attempted unauthorised changes to trademark ownership records.

To date, we have issued almost 500 show-cause orders to applicants believed to be attempting to circumvent the US Counsel Rule. A show-cause order requires the receiving party to establish the legitimacy of its activities and to explain why it should not be excluded from appearing before the USPTO. Additionally, the task force has referred a number of matters to the USPTO Office of Enrolment and Discipline for further action.

To help trademark practitioners and owners monitor their applications and registrations, various monitoring features are available via their myUSPTO accounts and on the USPTO mobile app.

Development of automated tools

Speaking of myUSPTO accounts, at the beginning of FY 2020, we implemented the first phase of our mandatory login system to enhance data security. Users are now required to log in to their myUSPTO account with a two-step authentication process to access Trademark Electronic Application System forms. In FY 2021 we are looking to add two additional phases to protect filing records from unauthorised third-party interference. Future iterations will require user identity verification and allow delegation of access to other authorised parties.

Even more exciting is the recent launch of an AI-aided tool that enables the task force and managing attorneys to quickly identify potentially altered specimens. This tool, known as ASAP (Automated Specimen Analysis Project), can identify the use of the same specimen on different trademarks across multiple applications. With this, we will now be able to more effectively and efficiently detect these types of filing patterns as they emerge.

Training and education

Like any well-planned brand protection strategy, education and training are key components. In FY 2020 we trained USPTO examining attorneys, as well as professional and technical staff, on how to detect fake specimens. We have also been educating applicants, registrants and their representatives, through a variety of channels, on US use in commerce requirements and the US rules that require filers to confirm the accuracy of their submissions to the USPTO.

Additionally, in response to feedback from the trademark community, in early October (although technically FY 2021) we issued a revised specimen examination guide to give our examining attorneys more discretion in assessing the application record to prevent the registration of suspect or fake specimens of use without creating an unnecessary burden on legitimate filers.

And since we are all in this fight together, we encourage trademark owners and practitioners to notify us at [email protected] when they believe that fake specimens are being submitted with applications or maintenance filings. In addition, the letter of protest procedure is another informal way to allow third parties to bring evidence bearing on the registrability of a mark to the attention of the office. More information on letters of protest can be found on the USPTO’s Letter of Protest Practice Tips webpage.

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