Click here for our latest news and resources on COVID-19

News & Events

articles

USPTO Targets Fraud Through Trademark Rule Changes

By Procopio Partner Lisel M. Ferguson and Associate Neil A. Salyards

In an effort to prevent fraudulent filings, the U.S. Patent and Trademark Office (USPTO) has instituted several changes to its trademark application, maintenance, and enforcement procedures that are worth noting for trademark applicants and practitioners both in the U.S. and abroad.

The USPTO is now requiring electronically filed trademark applications using the USPTO’s Trademark Electronic Application System (TEAS). This means that applicants will no longer be able to mail in a trademark application.

Additionally, each application must now include an email address for the applicant. This change was concerning because the applicant’s email address listed in the application became public record, potentially enabling the harvesting of sensitive contact information. After trademark practitioners voiced their concerns, the USPTO just revised the policy change to ensure that owner email addresses will be masked. This is a welcome change that will hopefully reduce the number of third party solicitations received.  The masking of owner email addresses will not apply to the email addresses of applicants not represented by an attorney; these email addresses will remain viewable in the correspondence email address field.

Another change is that any applicant or registrant required to file a document in connection with the prosecution of an application or maintenance of a registration must file the document electronically. This requirement also applies to all parties to a proceeding before the Trademark Trial and Appeal Board (TTAB). For specimens required to be submitted electronically, there are limited exceptions for marks pertaining to scents, flavors, and other marks for which an electronic specimen cannot be created and submitted.

All documents filed with the USPTO prior to February 15, 2020, will be grandfathered in and not subject to the new requirements. However, any document required to be submitted on or after February 15, 2020, for an existing application, registration, or TTAB proceeding, will be subject to the new requirements.

There are also changes to the rules regarding acceptable specimens of use for trademarks in response to the USPTO seeing an increase in fabricated specimens created solely for obtaining registration of a mark when there is no actual use of the mark in commerce in connection with the goods or services claimed in the application. Thus, it is important to comply with these new rules, to make sure that acceptable specimens are submitted and not rejected.

By way of example, the following are some acceptable types of specimens. For specimens that consist of a screenshot of the applicant’s website showing use of the mark in commerce in connection with the goods or services, the specimen must show the full URL of the web page on which the goods are offered for sale, or where the services are advertised and described, and must show the access or print date, i.e., the date the screenshot was taken. The applicant may also provide the URL and access or print date in new application or statement of use submissions.

For specimens that consist of product packaging for goods, the specimen must now also include an image or description of the product to which the mark applies, either on the packaging or in addition to the packaging itself. Therefore, if the mark appears on a box that the product comes packaged in, the applicant must also include a picture of the product next to the box as part of the specimen.

For applications covering articles of clothing, hangtags and labels alone will no longer be acceptable specimens to show use of the mark in connection with the clothing. The hangtags and labels must now be affixed to the clothing in order to be acceptable.

Lastly, as we've reported, an important change that went into law in late 2019 requires foreign applicants to be represented by a U.S.-licensed attorney if they wish to file a trademark application with the USPTO. This requirement applies to all trademark applications filed on or after August 3, 2019.  For owners of existing registrations, a U.S.-licensed attorney must be appointed prior to the next required filing. Moreover, parties to TTAB proceedings commenced on or after August 3, 2019 whose domicile is not located within the U.S. or its territories must be represented by a U.S. licensed attorney.

In order to combat an increase in the number of inaccurate or fraudulent submissions by foreign-domiciled parties that do not comply with U.S. trademark law or the USPTO’s rules, the USPTO implemented this change to protect the integrity of the trademark register which individuals and businesses rely upon, to protect foreign applicants from improper invalidation, such as improper signatures and use claims, and to better enable the USPTO to enforce compliance with U.S. statutory and regulatory requirements.

What this means is that if you are a foreign applicant or registrant, or a foreign trademark practitioner, you will be required to appoint a U.S- licensed attorney to handle any prosecution or maintenance filings, or TTAB proceedings.  It is recommended to appoint a U.S.-licensed attorney as soon as possible to ensure you are prepared to address any upcoming actions required.

For more information on the appointment process, or to discuss any of these changes and other trademark related questions, contact Lisel Ferguson at (619) 515-3207, or via email at lisel.ferguson@procopio.com.

Lisel M. Ferguson counsels clients on patent, trademark and copyright prosecution worldwide, and intellectual property litigation throughout the United States. She is the co-leader of Procopio's Sports and Active Lifestyle Practice Group and has been named a Top Attorney in San Diego County for Intellectual Property by San Diego Magazine. Lisel’s practice focuses on computer hardware and software, sporting goods, apparel, Internet, entertainment, medical devices, agricultural products and services, and consumer goods. She has experience working with Federal Litigation, Trademark Trial and Appeal Board (TTAB) actions, Uniform Domain-Name Dispute Resolution Policy (UDRP) actions, domain name disputes and Internet law.  She is experienced in handling all aspects of intellectual property; in addition to protection and enforcement she has experience with customs, negotiating and drafting licenses and royalty agreements worldwide, with clients from Asia, Mexico, Chile, Australia, Canada, the European Union and the United Kingdom.

Neil A. Salyards is a Trademarks & Copyright attorney representing clients in the enforcement of international and domestic intellectual property assets with a focus on trademark, copyright and brand protection in a wide range of industries.