Protecting our trademark customers with federal registration of USPTO marks
Guest blog by David Gooder, Commissioner for Trademarks
Exterior shot of the Madison Building and Dulany Gardens at the United States Patent and Trademark Office (USPTO). Photo by Jay Premack/USPTO.
Imagine you are a trademark applicant who receives a notice in the mail from an agency claiming to be the USPTO, with an almost identical logo, informing you that the USPTO will deny or cancel your registration unless you pay a required fee. Or if a business appearing to be affiliated with the USPTO solicits fees to help file your application and perform other registration services for you at a price that seems too good to be true. You pay the fees, assuming the businesses and promised services are legitimate, only to never hear from them again.
These types of misleading solicitations and trademark filing scams are a growing problem, especially as we are seeing more sophisticated enterprises entering the space. Some of these scammers attempt to impersonate the USPTO or claim varying forms of endorsement. The USPTO has taken several proactive steps to protect trademark applicants from being victimized by these opportunists, including alerting users to known scammers by posting a list on the USPTO website, working with law enforcement when appropriate, and sanctioning filers that violate USPTO rules.
Yesterday, the Department of Commerce took another important step to protect trademark customers by filing for federal registration of the USPTO marks. Like any other brand owner facing infringement by third parties, if we have federal trademark registrations, they will help us take appropriate legal action as needed to protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation or endorsement with the USPTO.
We recognize the intrigue and irony of filing for federal registration of the USPTO marks...with the USPTO. It’s a big reason why the Department of Commerce is filing the application on our behalf, just as it has for its other bureaus. In fact, many other federal agencies own federal trademark registrations, including the Internal Revenue Service, the Environmental Protection Agency, the Food and Drug Administration, the Federal Aviation Administration, the National Aeronautics and Space Administration, the National Oceanic and Atmospheric Administration, the Department of Homeland Security, the National Park Service, and branches of the U.S. military, to name just a few.
As for process, the USPTO trademark examining attorney will examine the application as he or she does any application, and make his or her own determination. And while some could ask why we didn’t federally register these marks years ago, we realized we require the additional legal protections afforded the owner of a federally registered trademark in light of the rapid increase in sophistication of those unlawfully passing themselves off as the USPTO. We firmly believe that it’s never too late to do the right thing, and doing everything within our power to protect our trademark customers is the right thing.
While there is no one-size-fits-all strategy to address illicit or misleading activity of scammers, we are committed to keeping our customers well-informed and to fighting these scams. We look forward to building upon our comprehensive efforts and sharing more about them in the weeks to come. In the meantime, we encourage you to visit the USPTO website to learn more about ways to identify scams and keep your brand(s) protected.