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Thursday Aug 05, 2021

Protecting our trademark customers with federal registration of USPTO marks

Guest blog by David Gooder, Commissioner for Trademarks 

Exterior photo of the Madison building at USPTO headquarters in Alexandria, VirginiaExterior 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.

Comments:

This is great news. I hope that there will be substantial enforcement behind the new registrations.

Posted by Anthony Keats on August 05, 2021 at 11:35 AM EDT #

This is a great step forward and long overdue. I have made it a practice to alert clients of these scams and never to respond without first talking to counsel. In fact, in my experience, these scammers' charges are often well in excess of the fees many counsel charge for the same or similar services. Thank you to those at the USPTO trademark office who pushed this initiative.

Posted by Adv. Alan Barth on August 06, 2021 at 04:06 AM EDT #

I have not experienced what is described, but rather quite the opposite. Of greater concern to my freedom and liberty, is a registered mark, ABC® (for instance), that purposefully omits to disclose its trademarked identity to the very consumers, and society at large, to whom disclosure is materially pertinent. Truthful disclosure and representations necessary to mutual assent, which gives to consumers the knowledge upon which to make a competent and freewill decision, is instead denied. Moreover, all knowledge is purposefully concealed by false designation, as ABC (for instance), with misleading representations fostered for the believable illusion to dead paradigm. This is malicious, as the intended purpose is to move consumers and society at large into a state of ignorance. These are violations 15 U.S. Code § 1125. A couple hundred million persons are directly affected by this, tens of millions of whom have suffered irreparable harms by these deceptive trade practices/secrets.

Posted by Ken Dost on August 07, 2021 at 12:54 AM EDT #

This is wonderful news. I can honestly say that I think the only ones that would oppose it are the scammers who are trying to maliciously take advantage of small business owners and entrepreneurs that can't afford council to act as an intermediary in handling these notices.

Posted by Sarita Pickett on August 10, 2021 at 10:56 AM EDT #

Finally taking some pretty basic steps to protect consumers - isn't that one of the original purposes of trademark protection? I started warning clients a year ahead of their maintenance window - then the scammers starting sending misleading messages 2 years before the windows were open. Aggressive steps are needed.

Posted by Kenneth Kunkle on August 10, 2021 at 01:53 PM EDT #

This is great news. I hope that there will be substantial enforcement behind the new registrations.

Posted by Abhishek dhruw on August 10, 2021 at 05:28 PM EDT #

This is a great step forward and long overdue. I have made it a practice to alert clients of these scams and never to respond without first talking to counsel. Finally taking some pretty basic steps to protect consumers - isn't that one of the original purposes of trademark protection ?

Posted by SANJEEV KUMAR on August 23, 2021 at 12:52 AM EDT #

This is a great step forward and long overdue. I have made it a practice to alert clients of these scams and never to respond without first talking to counsel. Finally taking some pretty basic steps to protect consumers

Posted by Download iphone apps on August 25, 2021 at 10:53 AM EDT #

This is great news. I hope that there will be substantial enforcement behind the new registrations.

Posted by UME on September 02, 2021 at 10:06 PM EDT #

isn't that one of the original purposes of trademark protection? I started warning clients a year ahead of their maintenance window - then the scammers starting sending misleading messages 2 years before the windows were open. Aggressive steps are needed.

Posted by JOE on September 02, 2021 at 10:07 PM EDT #

This is a great step forward and long overdue to protect consumers - isn't that one of the original purposes of trademark protection. That's steps are needed.

Posted by AOL com login on September 23, 2021 at 02:38 AM EDT #

It will definitely going to help small firms, and protect them.

Posted by Love on October 03, 2021 at 03:09 AM EDT #

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