Hello, everyone, everyone. Thank you so much
for joining us today for another of our trademark webinars.
We're going to get started in just a couple of minutes.
But as we always do, we're going to begin with a couple of housekeeping tips
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because someone's going to ask it because everybody does it
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All right. Well, we are going to get started.
So allow me to introduce you to Amy Cotton.
She's the Deputy Commissioner for Trademark Examination Policy.
And in this role, she oversees the offices of Trademark Policy, Petitions,
and ID/Class, as well as the Trademark Assistance Center,
the Office of Trademark Quality Review and Training,
the Trademark Law Library, Customer Experience, and Trademark Outreach.
She joined the USPTO in 1998 as a trademark examining attorney
and then moved to the Office of Policy and International Affairs in 2001,
where she served as senior counsel for trademarks
since 2003, providing domestic and international policy advice to the USPTO
and the U.S. government
agencies and technical assistance to the global trademark offices.
For nearly 20 years, Ms. Cotton has led the U.S.
delegation to the World Intellectual Property
Organization on trademark matters, including negotiations
to conclude the Singapore Treaty on the Law of Trademarks
and the Geneva Act of the Lisbon Agreement for the International Registration
of Appellations of Origin and Geographical Indications.
Prior to joining the USPTO, Ms. Cotton served as external affairs counsel
at the American Intellectual Property Law Association.
She's a member of the Virginia Bar and received her juris doctorate
from Indiana University, Bloomington
and her Bachelor of Arts from the University of Virginia.
Ladies and gentlemen, this is Amy Cotton taking you through
some trademark registration protection initiatives.
-Good afternoon, everybody. Thanks, Jason.
Um, well, I'm here to talk to you about one of the five initiatives
of the trademarks organization within the USPTO.
We certainly, as you know, are dealing with an enormous trademark
application filing surge. That's our first priority.
We're dealing with the implementation of the Trademark Modernization Act.
We're working on IT modernization.
And, of course, we're also working on trade-
and evolving our organization to better deal with these waves
of applications and all the different initiatives that we want to pursue.
But they're - our fifth initiative is register protection.
It is become extremely important
to make sure that we are protecting the integrity of the trademark register.
And I wanted to take you through the work that we've been doing on that.
We've actually been working on this for over 10 years.
So if you go back to 2009 in In re Bose,
that decision came out of the Court of Appeals for the Federal Circuit,
it made it more difficult to prove that a false statement of
use should be considered fraud, if you recall.
A finding a fraud, of course,
voids that tainted class in the application or the registration.
But it really established a clear sanction,
and that's cancelation of the affected goods and services
in that class when you make a false claim of use in a maintenance submission.
Now, looking back, we were concerned at that time in 2009
that the impact of the case would be that we would see more false
claims of use and maintenance submissions and then in applications.
So in 2010, the USPTO convened a roundtable
in conjunction with George Washington University called The Future of the Use-
Based Register and we wanted to see
if stakeholders shared our concern about the potential impact of that case.
And they clearly did.
So between the USPTO and the stakeholders, we came up with a variety
of different suggestions for changes that we could make to the system
to increase the duty
of care of our applicants and disincentivize inaccurate statements.
Now, stakeholders rightly indicated a significant concern
that changes to address, you know, bad faith
behavior might make it harder for good faith filers to use the system.
So we were slow and deliberate as we started poking around at this issue.
So 2012, we instituted a provision.
We wanted to measure the volume of the inaccurate claims of use
that we were seeing in Section 8 or 71 declaration filings.
We established that Proof of Use Audit pilot program.
Now, we made that program permanent in 2017.
And that's the first of the events on our timeline and on the slides.
Do we have the slides up?
Here we go. There we go.
So now, as you see on our timeline,
the Post-registration audit program was made made permanent in 2017,
but of course, our efforts dated back all the way to 2010 and 2012.
But I couldn't fit that on the slides.
Uh, the audit program had limited effect,
in my view, because we did not originally impose a sanction for filing false claims
of use other than just letting the goods and services go.
A deletion at that point. Now,
starting about 2018, 2019,
we started seeing an increase, not just in these false
claims of use that prompted the audit program, but in other things.
We started seeing filings that include fake names,
um, fake addresses, fake specimens of use, and suspicious attorney behavior.
So we were seeing behavior that appeared designed to circumvent our rules of
practice, our rules of representation, professional conduct,
and our website terms of use.
So our slow and conservative start to protecting the register
from false claims of use
back in 2012, it needed to accelerate and expand to address
these other types of behavior. And you see that acceleration in this timeline.
In 2019, USPTO increased the scrutiny of specimens of use.
Uh, we also at that time stood up a special task force
responsible for investigating improper behavior and scams.
2019, we implemented the U.S.
Council rule. The rule that that is the practice of most other countries
where we require foreign domiciliary is to be represented by a U.S.
licensed attorney.
2019 also. We were busy in 2019.
We implemented phase one of the USPTO.gov account
login requirements that allow us to better track filing behaviors.
But that all wasn't enough.
Uh, the filing numbers were increasing and so too were suspicious filings.
So in 2020, we shifted to a more aggressive mindset.
We started thinking like a brand owner dealing with anticounterfeiters,
and we started focusing on sanctions.
How can we sanction the behavior that we don't want to see?
In 2012, I'm sorry, 2021,
we implemented a deletion fee
for any goods or services deleted in the context of an examination
of the maintenance filing, including as to the audit proceedings.
2021, we started issuing
administrative sanctions against actors who are intentionally violating U.S.
rules of practice, representation, or our our terms of use of our website.
And also in 2021, as you know, we're now preparing to implement
the provisions of the Trademark Modernization Act,
which is, of course, the latest
in a series of initiatives and tools that are all designed to increase
the accuracy of submissions and the resulting integrity of the U.S.
trademark register. But I'm going to tell you about each one of these initiatives.
So, as I said, in 2012,
we implemented the Post-registration audit program, and it was to test
the claims of use, the accuracy of the claims of use
in a Section 8 or 71 declaration.
So as you know, registration may be audited if it meets two requirements,
a Section 8 or 71 declaration is filed,
and the registration includes at least either one class with four
or more goods or services or two classes with two or more goods and services.
Now, as you know, the process is the office
action will invite the registrant to provide proof of use
for two additional goods and services for per class.
If the registrant does not either provide proof of use for the queried goods
and services or delete those queried goods and services,
then the examiner will issue a second action and request
more proof of use on additional goods and services in that same class.
If the registrant
ends up having to delete the queried goods and services, the registrant must pay
a deletion fee of $250 per class
in response to that office action.
So this deletion fee, keep in mind, is a is a feature
of both the audit program and regular post-registration examination.
More generally, we introduced the fee in 2021.
It is a sanction for a false claim of use.
Any time you delete in the context of a maintenance examination,
you will have to pay that fee.
And if you fail to pay it, you could lose the entire registration,
not just the queried goods and services.
How do you avoid the penalty?
Keep your registration accurate as to those goods and services
for which the mark remains in use.
Now, why did we implement this deletion fee?
Well, since 2017, we've issued
17,218 office actions.
The deletion fee has remained - the deletion rate, sorry.
The deletion rate has remained pretty steady since, uh, since
the inception of the program in 2012. really.
We're right about 50% deletion rate.
They're only really slight deviations amongst, over time.
And between a Section 1(a) registrant and a 44 or 66
registrant, there's not much, much daylight between them.
Uh, what's troubling to me though is that 82%
of the registrants involved in these audits
who have been required to delete goods and services
or have had their entire registrations, they had attorneys.
Attorneys were representing these registrants where deletion
was occurring, 50% of the cases are deletions
and 82% of the registrants were represented.
So these attorneys are responsible
for filing maintenance documents that claimed use
that was not substantiated when queried in the audit program.
So perhaps maybe we've cleaned up the registrations that were audited,
but the audit program alone was not incentivizing accuracy more broadly.
We hope that the deletion fee will. And I tell you, it's it's
a bit too early to tell whether it's changing maintenance filing behavior.
It's going to take a while for those actions, a response
to office actions where we required the deletion fee to come in
to to see the behavior and see the effects.
But anecdotally, our examiners are seeing more deletions at the filing
of the Section 8s and 71s and slightly fewer
deletions in the context of the examination of the declaration.
So when we have more numbers to share on that, we certainly will do so.
Now, the audit program and
the deletion fee, those are aimed at maintenance filings.
In 2019, we wanted to increase the scrutiny in parallel
then with the claims of use in applications.
Now, one suggestion that we routinely hear when we - the issue of fake claims
abuse comes up - is that we should just simply change our rules and require
one specimen of use for each good or services identified
in the application, rather than just
the existing rule, which requires one specimen for each class.
Clearly, we did not implement that suggestion in the audit program
for maintenance filings.
It's a huge lift for everybody.
It's a huge lift for applicants, attorneys, and examining attorneys.
Now, the audit program solves this by randomly selecting filings for audit
and then slowly ramping up the requirements for additional
proof of use for multiple goods and services
in the audited class if the registrant can't provide appropriate proof of use.
So what's the analog in examination?
Well, uh, TMEP 904.01, perhaps?
It's the disparate goods inquiry that's set out in
TMEP 904.01.
So examining attorneys have the discretion to require additional specimens of use
per class when the range of items is wide or contains unrelated articles.
Now, we have heard calls, for instance, from the office of the Inspector General,
the Department of Commerce, in a recent report, that we should issue more guidance
that defines what we mean by a wide range of items or unrelated articles.
And presumably the idea is that we should be encouraging examiners to use
this discretion more.
Now, we have to consider, though, that when we give the examining attorneys
discretion to take an action, it certainly impinges on that discretion
when we tightly prescribe the conditions under which they can exercise it.
Those conditions start making that look more mandatory, right?
And if the examiners were to start requiring
additional specimens for long IDs in all cases,
all applicants will be impacted, not just the bad faith ones.
So we're certainly trying to avoid impacting those good faith actors.
And so we issued guidance in 2019 to establish a policy
that a fake, which is a digitally-altered, created, or mocked-up specimen,
it creates an inference that the mark was not an actual use in commerce.
Now, while this might seem obvious, if there's a fake
specimen spec, then maybe it's probably not in use in commerce.
But it was a significant policy shift for us
because it allows then evidence of nonuse to be considered in examination.
Um, while we had uh, let's see, let me go to the next one. While we had
examination guidance dating back to 2014 on digitally-created specimens,
it was more focused on making sure applicants provided us
with the right kind of specimen, not whether they were trying to fool us.
Our guidance emphasized requiring substitute specimens
that were better showed the mark as it is in use in commerce, in situations
where the original specimen appeared digitally-created or mocked-up.
In 2018, 2019, we started seeing clearly fake images.
And because we were allowing substitute specimens
to overcome every specimen refusal, we started seeing better fakes.
Our 2019 guidance told examiners to refuse registration
when an image was clearly fake,
and that they should then follow up with a request for information to make
the applicant prove that the mark was in actual use.
In the 2019 version,
we did not allow the applicant to respond to the refusal with substitute specimens
or to amend to Section 1(b).
We forced applicants to respond to the requests for information, the RFI.
Now, there was some backlash from both the stakeholders
and examining attorneys that we were being too strict on good faith filers.
So in 2020,
we issued a revised guide that allowed the applicants to respond to a refusal
and an RFI with substitute specimens or amend to 1(b)
without having to provide the proof of use in response to the RFI.
Now, the feedback we're getting now,
for instance, from stakeholders
and from the Office of the Inspector General again in that report,
is that even when the images don't appear fake on their face,
the examining attorney should nonetheless investigate
whether the mark is in actual use in commerce by going to websites
and trying to figure out whether they can buy the products online.
Now, technically, the examining attorneys have the discretion to investigate
if their Spidey senses are going off, based on the information in the record,
but they're not required to do that.
That would grind examination to a halt as examiners started going down
online rabbit holes trying to investigate whether a mark is in use or not
as to every goods or services in - good or service in the record.
So to assist our examiners with collecting that evidence of nonuse,
because the examiners are going to have a hard time
trying to investigate nonuse in every case.
So to assist that and get this evidence in front of the examiners,
we opened up the Letter of Protest program.
It allows of third parties to submit evidence
of nonuse for our consideration under limited circumstances.
So as a reminder,
going back to letters of protest, typically, third parties cannot intervene
in someone else's trademark application without filing an opposition at the TTAB.
The Trademark Trial and Appeal Board.
Now, the letter of protest procedure, which has been in place for a long time,
allows third parties to send evidence to the USPTO regarding another's application.
We review that evidence and we determine whether the evidence is relevant
to a ground of refusal.
And if so, we will forward that evidence to the examining attorney. Not argument.
Evidence, right?
This is a way that third parties can bring some evidence to our attention
that we might otherwise have missed or we didn't have access to.
Now, because our examining attorneys were not historically issuing refusals for nonuse,
just a bad specimen refusal,
we didn't allow for letters or protest to address nonuse issues,
but that changed in 2019 when we opened
that specimen protest mailbox, you might remember that,
and we allowed third parties to submit evidence of the same image
in an application being used by third parties
in the marketplace without the trademark on it.
Same image, no trademark.
And suddenly that's appearing in our files.
Also the same image appearing
in multiple prior applications, all bearing different marks.
Now, we took a conservative approach to the types of evidence
that could be submitted so that the letter of protest procedure
didn't become a proxy for a board proceeding.
In late 2020,
we published a rule change that essentially codified
the letter of protest proceedings into regulations in anticipation,
in anticipation of the implementation of the Trademark Modernization Act.
The TMA allowed us to begin
charging a fifty dollar fee for protests to recover costs.
We were getting more and more protests.
We needed we needed to cover our costs because it's work to to review these.
But that meant we actually had to close the free specimen protest mailbox
and move that process into the existing letter of protest process. So we did that.
And as we did that, we also expanded the evidence
that we'll consider in a letter of protest related to specimens.
Because examiners are looking at evidence of nonuse,
now, it's appropriate that third party protesters
can also submit that evidence of nonuse for our consideration.
So we will now consider
evidence that a specimen was digitally-altered or created
or evidence that demonstrates that a specimen was not
in use on or prior to the date it was submitted.
What we will not take is evidence that you can't find the product on the internet
unless you have other evidence of nonuse. Such evidence standing alone
doesn't tell us whether the goods bearing the mark were offered for sale
at the time the applicant averred that it was offered for sale.
Nor does it tell us whether the mark is in use, particularly if
the goods and services are not ones that are sold online typically.
So those who want to learn
more about our letter of protest proceeding procedures,
I'd encourage you to go to our website.
I'll have a link at the end of the slides here.
Go to the page called "Letters of protest practice tips"
and that will provide information that I'm sharing with you today
and generally, how the letter of protest process works.
Now, we're still looking at ways to improve specimen examination, but
it doesn't seem to us like more guidance is going to be a silver bullet here.
So we're seeking more options that might not require
so much time spent on investigation by our examining attorneys,
but where that investigation could be done by others or automated,
that sort of thing.
Our primary focus, though, right now, is on bad faith submissions, including
bad specimens, is our new and evolving administrative sanction processes,
which pull cases out of examination for review and investigation.
So let me tell you a little bit about that.
Now, any time a new
filing trend evolves, we arm our 700 examining attorneys
with the legal policy guidance that they need to handle that trend.
For years, they have been on the front line
of their battle against individual bad faith actors.
But when it comes to these larger schemes and scams
that we're seeing in all kinds of trademark filings, individual
examining attorneys are not in a position to be able to spot a filing trend
or respond with a coordinated action across thousands of affected applications.
For example, fake specimens often come in large waves
of virtually identical specimens in applications listing different owners.
Because the owners differ,
they aren't grouped as copendings or companion applications
when they are assigned for examination to to our examiners.
And it makes it harder to detect the waves and handle those consistently.
So to do to address that, in 2019, we created the special task force
on improper activities. It's led by attorneys
in Trademark Operations and Trademark Examination Policy.
But they coordinate investigations with personnel from throughout the USPTO.
Now, what are they investigating?
A variety of things: false claims of use,
applicants or registrants that cannot establish use in commerce,
filing firms or applicants that submit fake or doctored specimens.
They're looking at U.S.
counsel circumvention, applications featuring false attorney names
or false U.S. addresses.
Submissions featuring U.S.
attorney names that are real,
but where the attorney is actually unaware
that they have shown up in a file, that they've appeared in a file.
They don't have a representation agreement with the client.
We also are investigating offers to rent U.S.
attorneys' bar credentials.
We're looking into unauthorized practice of law.
Non-attorney filing firms that provide advice or appear in submissions.
We are looking at filing firms that forge signatures on declarations or
applications. We're looking at trafficking in applications or registrations.
Um, we've seen highjacking through unauthorized
changes of correspondence address in our records.
We see brands that are highjacked through unauthorized applications,
using accurate company information, but with a different
or unauthorized correspondence address snuck into that, to the application.
And we've seen applicant stockpiling registrations for use on
e-commerce platform storefronts.
We're also looking into scam solicitations.
These are those that are solicitations that are meant to appear
as if they originate from the USPTO.
They use our public information.
Then they dupe applicants or registrants into paying for services
that they don't need or that they never receive.
Investigation process.
The special task force
takes in reports of suspicious filings from a variety of sources.
We've got examining attorneys that are reporting possible fraudulent
activity and applications through an internal mailbox.
We've got our data analytics staff.
They're looking for suspicious filing trends in the data.
Law enforcement investigating criminal behavior.
They'll they'll reach out to us.
We also see the media reports that you see, calling out
possible fraudulent behavior that affects U.S. applicants.
We get customer complaints
as they come through the Trademark Assistance Center, TAC.
We see stuff coming in to TMScams@uspto.gov
or TMpolicy@uspto.gov mailboxes.
We see stuff in the
petitions to the Director and we see stuff in letters of protest.
So when we get those reports or when we discover things, we'll launch
an investigation into those allegations of fraudulent activity.
And we determine whether what the nature of the misconduct is
and any - look for any available
circumstantial evidence indicating the intent of the applicant.
Now, some applicants simply misunderstand U.S.
rules, and those cases can be handled by examining attorneys
through office actions.
Other applicants or
representatives, upon investigation, appear to be trying to circumvent U.S.
rules or abuse our electronic systems.
Now, those folks might be subject to administrative or criminal sanctions.
Now, there are three main avenues
where we can look at sanctions against actors
after we go through an investigation.
So we have the Commissioner for Trademarks' authority to sanction violators of U.S.
rules of practice,
the Office of Enrollment and Discipline's authority to sanction violators of U.S.
rules of professional conduct,
and we see law enforcement's authority to pursue criminal prosecution
of those violating criminal laws or who show up in U.S.
applications or other submissions.
Now, the one that the special task force
has the most control over is the authority of the Commissioner for Trademarks.
The authority is to manage and direct all aspects of the activities of the USPTO
that affect the administration of trademark operations.
So this includes the authority to impose sanctions on parties
who file submissions and trademark matters in violation of USPTO rules of
practice, professional conduct, or terms of use of our website.
As part of our investigation process, though, the special task force will also
collect evidence and refer appropriate cases to OED or to law enforcement.
So when we discover a scheme,
we identify affected
applications and sequester unassigned applications into holding dockets,
we direct the examining attorneys to suspend action
on those those applications, and then we start collecting
evidence and establish what rules have been violated
or we think have been violated. Depending on the nature of those violations,
we have two options for moving forward.
We can direct the examining attorneys to issue the appropriate refusals
or request information, or we can issue a
show-cause order that directs the offending party
to explain the conduct that appears to violate USPTO rules.
It will identify potential sanctions and it will set a deadline for response.
Now, after we evaluate the response, if we get one, we can
then move to an order for sanctions.
The sanctions include
not considering or giving any weight to the affected submission,
terminating the proceeding
before the USPTO, including abandoning the application,
precluding parties from filing on behalf of themselves
or others in any trademark matter before the USPTO,
referring practitioners to OED and terminating affected
USPTO.gov accounts through which all electronic forms are filed.
Now if a representative, an attorney, is implicated
in the applications featuring the rule violations, Trademarks will refer
to OED for investigation and possible discipline.
Now, OED may investigate suspected violations of the rules
of professional conduct by attorneys appearing before the USPTO.
And the OED Director may issue warnings, institute formal charges
against the practitioner, or enter into a settlement agreement with the attorney.
OED also has the attorney - the authority
to refer the attorney to his or her state bar for reciprocal discipline.
Now, in cases involving criminal activity or suspected criminal activity,
Trademarks will refer the matter to the Department of Commerce's
Office of the Inspector General, who then may refer the matter
to other law enforcement agencies.
Now, using this administrative sanction process,
most recently, the Commissioner
for Trademarks has issued several orders for sanctions
and we continue to issue show-clause orders,
and these are all available on our website.
I have a link at the end of this presentation.
This first one on this slide, Mr. Ngo.
In late 2020, we issued a show-cause order.
And then an order for sanctions to this individual in Vietnam who was responsible
for over three hundred changes of correspondence address in trademark
registrations, primarily owned by banking institutions.
Now, we have worked with our OCIO,
our chief, um, uh, our folks over in I.T.
and we locked all of his USPTO.gov accounts.
We've taken additional measures
to try to identify and block any new accounts he might try to open.
Now we have, uh, log in requirements, phase two and phase three,
that I'll explain later and
we hope that'll make this process
easier to lock down these accounts going forward.
Now, we also issued,
uh, a final order in late 20 - uh, let's see, it was late November 2020.
We identified one application for a well known mark.
It was filed in the name of the legitimate owner,
but the correspondence address clearly belonged to somebody else.
Um, we identified several more
examples of that in the next few months, and we handled each of those case by case.
But our investigation kind of showed that there was something going on here.
There was a scheme.
So we issued a show-cause order to the individual
that was implicated in the USPTO.gov accounts filing these.
We requested an explanation. After an unsatisfactory response,
we issued an order for sanctions, we terminated those applications,
and we have precluded this individual from making further submissions and
locked his accounts.
Uh, now recently in June, we issued a show-cause order
to an IP firm in China.
The order required evidence and information that would explain
whether Ms. Zhang and her employees were authorized to practice before the USPTO
and why your USPTO.gov accounts were used by thousands of applications
featuring fake names, fake domicile addresses, and fake signatures.
We're currently evaluating the response and determining next steps.
Couple of other things I wanted to bring your attention to.
I talked about OED, so I wanted to share some some information.
Um, OED looks at attorney misconduct related to trademark schemes and scams,
and they recently entered into a settlement agreement with Mr. Lou,
a New York-licensed attorney based in China.
Mr. Lou had a service agreement with the Shenzhen IP company to file U.S.
applications on behalf of that that company's clients.
Now, the agreement states, the OED agreement states that Lou did
not personally advise nor personally enter his electronic signature
on any of the thousands of applications in which he appeared.
Now, OED had suspended Mr. Lou
from practice before the USPTO and he's required to take corrective action
before he can reappear on a probationary basis.
Another order, actually, that just came out.
Here, we have another settlement agreement with a U.S.
attorney, a California-based attorney who has been providing
trademark advice, or trademark legal services, since 2005.
She had a service agreement with an Indian company to review and sign
trademark applications that were prepared by the foreign company
at a rate of one hundred dollars per hour.
She was listed as an attorney of record
in 2300 applications filed over a five-month period.
She - the settlement agreement, you can go and look at it.
There's a link at the end of my slides here.
She reviewed and signed the applications, but said her reviews were
sometimes inadequate and she did not take reasonable steps
to ensure the applicants were properly advised.
She has been, then, if you read the agreement,
you'll see that she has been reprimanded, is on probation.
She has to do trademark and ethics CLE
and she must review the Trademark Manual of Examination Procedure.
So we're pretty happy about that.
And now we're going to move on.
Misleading solicitations.
Okay, so we're taking aggressive actions to stop bad actors,
and we also need to warn our customers about these these what's going on there.
We need to warn our customers about what we're seeing in the way of scams.
What we're doing about it and what they can do to protect themselves.
So we are really ramping up our web content to provide more information
about our work and our resources and try to, you know, address
those who have been affected by these schemes or who might be affected.
So certainly look for more information on our website.
We are ramping up efforts.
It's a huge machine that we're trying to get started.
So be patient with us as we try to make sure
we are providing all the information that our customers need.
Um, so one of these pages here, you'll see it, the scam alert page.
It has a list of entities sending out potentially misleading solicitations
that other customers have received and reported to us.
And we have links to all of those examples of those solicitations on our website.
Now, one of those
I want to draw your attention to actually worked out pretty well for us.
So, uh, law enforcement was investigating a mail fraud scheme and they came across
that list on the last slide of our, uh, misleading solicitations.
They were investigating a uh, scammer, Viktor Suhorukovs, who ran a three year
multimillion dollar mail fraud scheme to defraud trademark holders,
Suhorukovs' company, the Patent and Trademark Office, LLC.
And I guess he was also running the Patent and Trademark Bureau, LLC,
sent out renewal notices to holders indicating
a renewal date that was earlier than what our records said.
The notices included a QR code that linked to our site and asked holders
to pay him their inflated renewal fees, which they did.
2900 victims fell for the scheme.
The government agents who were investigating the scheme
found the misleading solicitation that we had on our website,
and that actually helped them find the scammer and go after him.
The government actually
was able to seize 2.4 million in Suhorukovs' assets
that now can be used to compensate the victims of the schemes.
The U.S. attorneys who were investigating
asked for our assistance in identifying affected applicants.
They had about 200 of their applicants,
the victims of the scheme that they couldn't find.
And we helped provide them information about
where those applicants could be located so they could get the,
uh, get some restitution from, uh, from the defendant in this case.
So we're pretty happy that this guy has been sentenced to four years
and ordered to pay 4.5 million in restitution.
All right. Moving on.
On our register protection initiatives now, we're at 2019:
U.S. council rule. Um, I'm guessing that you're all familiar
with this rule requiring foreign domiciliés to be represented by a U.S.
licensed attorney in trademark matters before the USPTO.
If I had to guess, the reason
that you are familiar with it is all the media attention paid to it
by those who are attempting to circumvent the rule.
As you know, the U.S.
council rule requires all applicants represented or unrepresented
to provide us their domicile address so we can evaluate whether the council
rule is triggered.
Now, what we see, of course, are attempts to circumvent
the rule. We see fake names, fake addresses located in the U.S.,
and we see U.S. attorneys who are -
who have agreed to rent their attorney credentials to an applicant
or a foreign filing firm to use to file in the United States.
So what are we doing about these unacceptable addresses?
Um, it's been a tough slog
because if we rely on our examining attorneys to use Google Earth
to try to investigate each
and every address, to figure out really, is it a residence?
Is it a real address?
What is it? It's not the most efficient use of their time and their training.
So we have implemented some automated queries.
We're looking for P.O. boxes. We're looking for care of boxes.
We're looking for commercial mail, receiving agency addresses.
We flagged these as unacceptable.
And we let our examining attorneys know that they need to
to issue a refusal or a request for information
or however they might want to handle it in order to get an acceptable address.
We're also seeking ways to have an automated
verification address, verification check upfront
during the application stage or during pre-exam.
So we're still looking at what is the most efficient way to do this
with the least impact on good faith filers.
All right, so what are we doing about the attorney misconduct,
those who are trying to circumvent the U.S.
counsel rule. As part of our investigation process, we identify attorneys
that are seemingly involved in schemes who are violating our rules
or they're violating ethics rules, and we collect evidence.
And when appropriate, as I said,
we refer them to OED or to law enforcement if there's criminal activity.
Now, we have referred dozens of matters over to OED and a couple of matters
over to law enforcement over the last year or two.
Um, what we hear is that there are a lot of attorneys
who are then being investigated, will claim ignorance of our signature
rules, they'll claim they didn't know about their own ethics rules.
They'll claim they didn't know a lot of the TMEP.
We've actually had, um, have discussions, as I understand it, to try to point out
where the TMEP is on our website
to some of these attorneys who are violating their rules.
Now, do they really not know or is that just uh
when they're asked that's what they say? I don't know.
Um, we're certainly going to continue to to press and investigate and discipline
those who are circumventing our rules and violating their own rules of
professional conduct.
Um, you saw those two OED settlement agreements
resulting from our referrals over to OED for specific practitioners.
But uh, and you can track OED's uh, settlement agreement.
You can even track their final orders if you go to our FOIA reading room.
So FIOA reading room, USPTO, OED, you'll find a list of
of all of those agreements or final orders.
And one thing I would say is that it is possible,
uh, for you all to file a grievance against an attorney.
Uh, if you think that there are grounds for discipline of that
that particular practitioner, and you are invited to file a grievance
at OED@uspto.gov
So if you find evidence of attorney misconduct and you want to let the OED
folks know, please do so through OED@uspto.gov.
Let's see. I'm looking to see if I,
you know, I think we'll come
to those questions at the end, that's a really long one.
It'll take me a while to read.
OK, moving on to the next initiative is mandatory account login.
Again, in 2019, busy year, we began requiring a USPTO.gov account
for filing any TEAS form, and that allows us to track filing behavior.
Um, we have two more upcoming phases that I want to tell you
about that will further increase the scrutiny.
I'm sorry, further increase
the security of our database and better tracking for us.
So we're pretty happy about that. Phase two, identity verification.
It's currently in beta testing.
We're partnering with ID.me to authenticate
the owners of USPTO.gov accounts used to file TEAS forms.
The automated process requires a government photo ID - of government-issued
photo ID. A USPTO.gov account that matches the ID.
It requires a smartphone, computer, a tablet with a front-facing camera.
It requires a Social Security number.
And those without a Social Security number, such as foreign nationals,
will be routed to an in-person video session to verify those identities.
If you don't want to do the automated option,
you can still do paper. You can do a paper notarized form,
but obviously that will take a lot longer.
Once we verify identities, we can terminate USPTO.gov accounts
and then prevent new accounts by that same bad actor from being created,
once the sanctions are imposed.
So that will allow us to lock down
accounts and hopefully keep them from popping back up again.
Uh, let's see, uh, phase three,
uh, of log in is role-based access controls. The USPTO
it plans on assigning a limited number of roles to control
and delegate access to TEAS form filings.
The proposed rules are the, I'm sorry, the proposed roles are -
I think I have a slide on this. Did I miss that? Yes, I did.
Okay. Sorry about that.
There we go. Uh, the roles, uh, U.S.-licensed attorney,
a Canadian attorney or agent, attorney support staff, and trademark owner.
Only authorized customers with those roles will be able to file
TEAS forms related to the application or registration.
What will this do for us? It will stop hijacking.
It will stop the unauthorized changes of correspondence addresses that we see.
And they have certainly gone down as -
but it's a manual process for us and rather labor intensive.
So to be able to have a way to stop that from happening
and improve the security of our systems is much, much
welcome from from our standpoint and hopefully from yours.
All right. Now we're going to move on
to our last stop on our register protection
initiative timeline. It's certainly, well,
not our last stop, it's our most recent stop.
We're going to still continue to work on various initiatives to make sure
that our register remains accurate and useful.
Um, 2018, 2019. We faced
a surge of applications and they had sketchy specimens in them.
Congress asked us how they could help,
how we - what we would need from a statutory perspective to respond to the trend
and to deal with the overall concern
about false claims of use in trademark applications and maintenance filings.
Now, Congress passed the TMA and gave us until December 27th, 2021,
to implement most of the proceedings necessitated by the statute.
Now, we were in a hurry.
We we normally would have issued a request for comments,
and then we would have gone out with a notice of proposed rulemaking,
and then we would have gone to a final rule.
But we didn't have that kind of time.
So we did a bunch of roundtables which are on our website.
There's a link at the end to our TMA page which will link you to all of
the roundtables that we had.
In those consultations with stakeholders through the roundtables
then we drafted a notice of proposed rulemaking
and we issued it for public comments. We had more roundtables.
And now the final rule is being drafted.
Now, what's in the the the uh, the final rule?
We've got the letter of protest procedure procedure.
We got flexible response periods and nonuse cancelation proceedings.
So those are the three main features of the TMA that are in the rule package.
Um, letter of protest.
It's the same proceeding that you've known for years.
It's nothing has has changed.
Um, just a few tweaks.
Uh, the legislation authorized, as I said, to charge a fee of fifty dollars
to cover our cost.
And Congress imposed a two month time limit for sending the relevant evidence
to the examining attorney.
Everything remains the same as you've always known it.
Uh, flexible response periods.
Um, we offered three options in the NPRM.
We got comments.
Um, and let's see.
I think I have a slide on that.
So let's go there. No.
Okay. I took that one out. Um.
Let's see right now, you know,
for an office action and examination, you've got a six-month response period.
And that might be reasonable and necessary.
I think it was started
back when we had boats crossing with office actions and responses.
So it's still maybe reasonable and even necessary
for a particularly complex office action, but it's not necessary for all.
And that time lag
where applications are taking up space in our system longer than they need to.
That means it's harder to clear marks.
And it's particularly frustrating
if the applications that are sitting there are suspicious ones.
So we are looking for ways to increase the flexibility
for us to move applications through the system more quickly
and certainly to to move applications through for the benefit
of our stakeholders
to try to clear marks a little bit faster, get marks off the register.
We are reviewing the comments on the various options that we presented
as we develop the final rule. And just be aware,
we did propose a delayed implementation date for flexible response periods.
But we know we have docketing issues, you have docketing issues.
And so we are taking that into account as to delaying implementation.
So don't look for flexible response periods to be implemented
December 2021, because it's not going to happen.
Don't worry, it will be delayed.
But I really want to focus on nonuse cancelation proceedings, because that's
really where from a registered protection initiative the action is.
OK, let's talk about
nonuse cancelation.
The first type of proceeding is expungement, um.
The target of an expungement proceeding is a Section 1,
a Section 44, or Section 66 registration that has never been used on
some or all of the goods and services identified in the registration.
There are three types of proceedings in which this new
claim or new ground for cancelation is available.
Number one, a petition initiated proceedings before the Director.
Number two, a Director-initiated proceeding before the Director.
And third, is a cancelation proceeding at the TTAB.
Now, the first two types of proceedings here before the Director,
they may be instituted in the window of time between year
three and year 10 after registration.
The third type of proceeding before the board is a bit different.
The timing is different.
The claim is available any time after the first three years post-registration.
But it doesn't cut off at 10 years like the proceedings before the Director.
So keep that in mind.
An expungement proceeding is any time, post-registration three years. Okay.
Now, a point of distinction here.
The claim of expungement is fundamentally different from a claim of abandonment.
Abandonment, as you know, requires nonuse, plus an intent not to resume use.
Expungement does not look at the registrant's intent.
We're not evaluating the intent of the registrant.
It's an entirely new statutory basis for cancelation.
It only evaluates whether the mark was used on the challenged
goods and services prior to the date of filing of the expungement petition.
It does not evaluate whether the mark was put into
use as of the dates required by the statute.
That is a question for reexamination proceeding,
which let's turn to next.
Congress created
the second new proceeding before the Director called reexamination.
The target is Section 1 registrations that were not in use
as of the relevant date.
The relevant date for purposes of this
proceeding in a Section 1(a) is the application filing date.
The relevant date for 1(b) applications is the later
of the filing date of the amendment to allege use, the AAU,
or the expiration of time to file the SOU, the statement of use.
As for timing, a petition to request institution of proceedings for
reexamination may be filed in the first five years after registration.
There are two new types of proceedings before the Director in which this claim
is available, as you see here, petition- initiated and Director-initiated.
Note that I did not put the third proceeding
before the Board for reexamination like I had it for expungement. Why?
This is because this this ground already exists.
This claim - ground for cancelation, nonuse
as of the relevant date, is already there in Section 14.
You can bring it at the TTAB.
These reexamination proceedings before the Director
do not affect the existing nonuse claim at the TTAB as to evidence or as to timing.
There's no relationship.
Now, let me walk you through the proceeding.
Well, actually, let me tell you what the petition says first, hold on.
OK, so the NPRM that you all hopefully reviewed very carefully and provided
comments to us, which for which we really appreciate those comments.
It lays out the matching procedures that will be followed
in both expungement and reexamination proceedings.
To start with, we're proposing a $600 per class fee.
Now, that was a point of contention
in the comments that we are looking at that in the final rule.
The statute says any person may file a petition requesting
that either expungement or reexamination proceeding be instituted.
To file the petition, however, the petitioner
must have a USPTO.gov account so we know who they are.
Now, we might not know who
the real party in interest is, but we know who the petitioner is.
The petition must include a verified statement,
as well as any dockery - documentary evidence of nonuse.
The verified statement must identify the elements
of the petitioner's investigation for nonuse.
Where did you search? How did you search?
When did you search?
And what did you find as to each of the sources of information relied on?
Now, the reasonableness of the search and the number and the nature
of the sources the petitioner must search will be determined case by case,
because, of course, industry sectors differ. Nonuse evidence
is not going to be found in the same place for every industry sector.
So there is no one, one-size-fits-all here,
and the the the NPRM reflects that as to a case by case analysis.
Now, once a complete petition is filed and has all of the required elements,
a courtesy email notice of the filing of the petition will go to the registrant
and the registrant's attorney, if we have one in our files.
We want the registrant to be notified early that something is happening.
The petition and the evidence will also be uploaded immediately
into the Trademark Status and Document Retrieval system, TSDR,
and it will be made public.
OK. The procedures, how they go.
Once that petition is submitted and is complete,
the petitioner is entirely out of the process.
It is the Director who decides whether the prima facie case is made
based on evidence and information in the petition
and our records, the electronic record of the involved registration.
We're not just looking at the petition, we're also looking at our records.
The Director has the authority to institute proceedings without a petition.
If the Director has evidence of establishing a prima facie case.
The same procedures as those listed here would apply to a Director-initiated
proceeding, it just doesn't have the petition or the verified statement.
If a prima facie case is established, the Director must institute proceedings.
If a proceeding is instituted,
the examiner will issue both a notice of institution and an office action
that directs the registrant to respond within
two months with proof of use of the mark on the challenged goods or services.
Now, I said two months here, but of course, in our request,
in our comments,
we got a lot of different views as to how long that period would be.
And we are looking at that in the final rule.
So before you gasp at the two months, let's wait and see what the final rule
says. Now, the registrant has three options for his or her response:
provide evidence of use, excusable nonuse, or deletion.
Now let's walk through those options, right?
If the registrant provides an acceptable response, the proceedings are terminated.
So everything's done. Now,
if the registrant provides evidence of use,
the registrant has to rebut the prima facie case with evidence of
of use information, exhibits, affidavits, declarations
that establish that the required use in commerce has been made
on or in connection with the goods and services that are being challenged.
Second, the registrant can provide evidence supporting
excusable nonuse, but only in limited circumstances.
The statute sets out that this only applies to a Section 44
or 66 registrant in the context of an expungement proceeding.
This does not apply in reexamination.
Now, third, the third option is deletion.
A registrant may simply just delete all of the challenged
goods and services in his or her response with immediate effect.
And then we move on. Right?
If the response is acceptable, if anyone of any one of those three is is
is taken care of and it's acceptable,
then we will terminate the proceedings and everybody goes home.
OK, now what happens, though, in a second
scenario here where the registrant's response is unacceptable.
The examiner will issue a final action then that includes the examiner's decision
that the registration should be canceled for each good or service for
the registrant did not provide an acceptable response
or for noncompliance with any requirement under the U.S. council rule,
the electronic correspondence rule, or the domicile address rule.
We will go final on a requirement under those three.
The registrant must respond to the final action within two months
with a request for reconsideration and a notice of appeal.
Now, if that request for reconsideration contains acceptable
proof of use or deletions,
then we're done. We will terminate proceedings and walk away.
But if not, the examiner's decision to cancel his appeal to the TTAB
and then everything goes to the Board, regular timelines apply.
Now we have a third scenario here.
No response. Registrant does not respond.
No response results in immediate cancelation for the goods and services on
which the proceeding was instituted.
Not the entire registration, just those where the proceeding was instituted.
Unless, of course, the whole thing was challenged.
Now, once the goods and services are ordered for cancelation,
a petition for reinstatement is available, but only for an extraordinary situation.
So if the office action was not received
and there's an extraordinary situation for which it was not received,
we can consider that in a petition for reinstatement.
All right. Now, remember
I said that any person may file, and that's in the statute.
So there's no standing requirement for the petitioner.
Now, that has raised some concerns
that there may be abuse, and we totally understand that.
But there are several provisions built into the statute
or that we propose to implement that will help prevent the abuse.
The Director is the gatekeeper
and the Director makes the call on whether a prima facie case has been made.
And neither the petitioner nor the registrant may appeal that determination.
If the evidence of nonuse makes a prima facie prima facie case,
and only then will proceedings be instituted.
Secondly, estoppel. We have estoppel provisions. Goods
and services for which use in commerce has already been established
may not be subject to further expungement or reexamination proceedings.
They can still be challenged at the Board.
But in the context of these proceedings, if a registrant has provided acceptable
proof of use for those goods and services that were challenged, those goods
and services cannot be challenged again in these proceedings.
Third. Administrative sanctions.
Now, I just told you all about our administration -
administrative sanctions process.
So if we see that a petitioner is abusing these proceedings or harassing
registrants, we can sanction them outside the context of these proceedings
through the authority of the Commissioner for Trademarks that I told you all about.
So if we were to discover that there was a problem,
we could stop that petitioner from
from filing future submissions in any any proceeding before the USPTO,
and we could terminate their USPTO.gov account.
And once we have phase two of our log in requirements,
then we could certainly stop them from creating new accounts.
So that is certainly a help.
And lastly, relationship to other proceedings.
Now, as a fourth measure here,
we're proposing that expungement and reexamination proceedings be included
among the types of proceedings for which suspension of action by the office
or the TTAB is authorized.
So your normal suspension rules will apply.
Let's see. All right. Timeline.
This is the TMA implementation timeline, so don't confuse this
with the first one you saw for register protection.
We're working on the final rule.
It will lay out the implementation of the provisions in the TMA, and
it will also identify the dates of entry into force of the various provisions.
We are looking to publish this final rule in November,
2021.
We again, we're planning on implementing the nonuse cancelation
provisions by December 18th, hopefully, the weekend before Christmas.
So it doesn't hit on Christmas.
And of course, the statute mandates that we have to have
expungement and reexamination in place by at least
December 27, 2021.
So look for that. Now,
one public service announcement.
Update your owner email and correspondence email addresses
and all your registrations to make sure that you'll get notice of
a filing of these
particular petitions.
We don't want anybody caught off guard, so make sure that you keep everything
in your records accurate, in our records accurate,
so that we can contact you if one of these were filed.
And again, a plea: update your registrations
as to only those goods and services that are in use. Use
the Section 7 amendment proceeding and and delete any unused goods and services
so that you don't get caught up in one of these proceedings.
Lastly, I mentioned that we had a bunch of slides with links,
and they actually go to each of the initiatives that I mentioned here today.
These will be available as part of this recording and on our website.
So so go and go back and take some time
and look at all of these links.
And here you can see
the the the administrative sanction orders that we issue here.
Now, keep in mind, this website is clunky and we're working on it.
We certainly want to make it easier for you all to find what we're doing.
And we are working on a web page overhaul, honestly,
on all our protect - register protection initiatives
so we can make it easier for everybody to find what they're looking for.
These are the OED settlement agreements that were just talked about.
If a party has been - has been excluded by an OED order, you'd find that here.
And here's the Trademark Modernization Act link.
And it has all the recordings and all the slides and all the information
that we have to offer you on the Trademark Modernization Act.
So that, my friends, is my presentation.
And I'm going to throw it to Jason now.
-All right, thank you very much, Amy.
We are going to be moving now into the question and answer portion.
So we're going to be joined here by Bob Lavache.
But just a quick reminder, folks, for those of you who are sending in questions.
The email address to use is TMFeedback@uspto.gov.
We understand a couple of
you might have sent some questions into another @uspto.gov
email address. So we're trying to collect any questions that might have come
to another email address.
But please, if you could, send them to TMFeedback@uspto.gov.
I know we've had a couple come in,
so hopefully we have some good questions for Amy and Bob to answer.
So let me give you a little bio on Bob,
because he's now joining us and we want you to know who he is.
He's the Senior Trademark Legal Policy Advisor in the USPTO's Office
of the Deputy Commissioner for Trademark Examination Policy and is the assistant
editor of the Trademark Manual of Examining Procedure.
He started at the USPTO in 2005, working five years
as a trademark examining attorney before becoming a Legal Policy staff attorney.
His current responsibilities as Senior Trademark Legal Policy Advisor
include managing the work of Legal Policy staff attorneys
and developing trademark examination policy guidance.
He also provides counsel on rulemaking and various trademark legal policy topics,
including specimens of use, nontraditional marks,
lawful use in commerce, geographic certification marks, practice
before the USPTO, and statutorily protected matter.
In addition, Bob serves as a liaison to the USPTO's Office of Enrollment
and Discipline and assists
with the enhancement of the USPTO's Trademark Electronic Application System.
He's a graduate of the University of Miami and Cornell Law School
and is a member of the bars of New York and the District of Columbia.
So as you can tell folks, you are in really great hands.
These are two people who really know what they're talking about.
The experts in the field. So I'm going to turn it back to you two
and let's hear some good answers to some of these good questions.
-Okay. And I'm sorry I couldn't get to a lot of the questions
as we were going through, but it was difficult
to stay on track and address the questions at the same time.
But we will turn to those now.
The first question that we got is, is there a process for a third party
to report a registration which should be audited?
The - everybody wants to report somebody else's bad guy work,
and that can be a little tough because you never know
if it's a real or just somebody trying to harass somebody else.
So we do have to be careful about the various inputs
that that we we get.
Now, with regard to a registration where,
you know, because the registration has been issued
and and we're not in a position to to,
you know, look into that registration at this point, we would direct you
to the expungement or reexamination proceedings that we will be implementing
December 27th or actually should be December 18th.
Well, we'll have to see what the date is at that point.
But if you find that there is a registration
where you believe that there is evidence of nonuse
and you can find that evidence of nonuse and you have a prima facie case of nonuse,
then we urge you to use that proceeding to take to take an action
against that. That then, of course, gives that information to us.
We look to see if you've made a prima facie case.
And if you have made a prima facie case, then we will ask the registrant
to provide proof of use.
So that would be the mechanism by which you would address one of these.
The proof of use audit program is is not something
that third parties can opine on or give us
a - ping us to to audit somebody.
That's not how the program works.
And I think you can appreciate that it could be used for harassment
if we were to allow it to be used that way.
So I appreciate the question, but definitely I think
these reexamination proceedings will be helpful in that regard.
OK, next question.
-Before we get to the next one.
-Yeah. Oh, go ahead.
-Yeah, we could, but before we get to that, there was a related question about
whether the letter of protest procedure could be used for registration. And the answer is "No."
That is for pre-registration, um, during pendency of the application
up until 30 days after its published for oppoaition. So, no. And
under current audit procedures, uh,
the audit is done on a random basis
based on criteria of being met relating to the goods and services.
-Right now, Bob, you were doing that stuttering thing,
your connection isn't great, so I know you love that.
-I do. -Okay. For those who didn't catch all that, because you're not a robot,
the uh, the the issue is a letter of protest preceding
is only available for applications, is not available for registrations.
And so, you know, we're not we're not going to open up a registration
because a letter of protest was filed,
because that's not what the proceeding is for.
So, uh, that was that was the long and short of of what
what Bob said. Okay. Um.
Let's see. With regard to the question about letters of protest
and what is an example of good evidence of nonuse of a mark,
I'm going to direct you to the letter of protest practice tip page.
I think you'll find some really good information there.
I don't really want to get into,
you know, getting pinned down into what is good evidence of nonuse
and what is not good evidence of nonuse at this stage.
I don't think that that's
probably a good use on on this recording.
So please go to the letter of protest practice tip page
to find some some good information about that. And let's see.
Can you provide a link to the inspector general report
that I mentioned several times?
Uh, sure. I believe that it was on the
of the Department of Commerce Office of the Inspector General's page.
So that's not something that we wrote.
It's something that we have responded to.
But I would note that that report was issued based on, um,
a sample of applications that the auditors
looked at dating back to 2019.
And as you can can recognize from
this talk that we have done a whole lot of work
since 2019 to address the issue that were raised in the report.
And certainly, as I also said,
it is a machine, a large machine that we're trying to get moving.
And it's, uh, it's certainly slow to ramp up and rev up.
And so we're certainly trying to
to move as quickly as we can and devote a lot of resources to it.
But we're, uh, it takes some time to get there.
So while we appreciate the the issues that the Inspector General raised for us
to look at, we've been looking at those for a very long time.
And we think we have found some good ways forward to address those issues
that we've been doing
as you can see from from my timeline that we've we've done this for a long time.
Okay. Um. Next question is, does the USPTO consider
that the attorneys who are involved in fraudulent fine - filings
might, may also be deceived by the applicant?
In other words, simply because an attorney is involved
in a maintenance filing in which it is determined
there is an improper or fraudulent specimen, does that mean the attorney
is complicit with the applicant in intending to deceive the USPTO?
In addition, problems with use and what can be claimed as use in
commerce can also be caused
by the applicant's failure to understand what proper use is,
despite being properly instructed by their counsel as to
what type of use is proper to support a trademark maintenace filing.
Where should we as practitioners
report the fraudulent solicitations our clients receive?
OK, so there's two different issues here.
The first one is a concern that an attorney
is not being told the truth by the applicant,
and therefore then the attorney might not be complicit. Well, certainly
that is something that
if an attorney was to be, you know, investigated
by OED, if a grievance were filed or if a referral came from us over to OED,
that would certainly come out in the conversations with OED.
So I certainly don't want -
we understand that.
That's why there's an investigation process that that is behind this.
And certainly we do understand that applicants
many times fail to understand proper use
and then give you - there's only so much that you as an attorney can do.
We would like to see, you know, best practices out in the marketplace.
And we we do believe that there there are best practices.
We would love to see best practices more widely used
by more attorneys who are practicing before us
in terms of educating applicants about what use is and then and
and certainly ensuring that the mark is in use on all of the goods
and services in maintenance filing or in an application before it's filed.
Bob, are you still connecting? -I'm back.
Comms checking me.
-Oh, that's good.
-Okay. -Okay, great. You're good. All right.
Anything you want to say on that?
-Yeah, I think and I don't know if you touched on it, but
under the rules of professional conduct,
attorneys practicing before us have certain duties as to due
diligence and reasonable investigation and confirming use of
the goods and services.
So, again, I think you alluded to this.
OED would be looking into that.
If they think there might be
some violation of those rules. -Yep.
Um, okay, where should we as practitioners report
the fraudulent solicitations our clients received?
Is there any way to track what happens to a fraudulent solicit -
solicitation after it's reported to the USPTO?
Um, okay. So two different issues here.
Um, we are collecting reports from customers,
including practitioners, of uh examples of solicitations,
uh, that customers are getting that
are considered to be misleading by the customer.
We will post those examples on our website.
If we already have an example,
then we're not going to post your example, but we certainly will do that.
So send those to TMScams@uspto.gov.
Repeat: TMScams@uspto.gov.
Okay, so what are we doing with those fraudulent solicitations? Okay.
We are not a law enforcement agency.
We do not have a mandate to investigate criminal behavior or these solicitations
or to figure out whether a particular solicitation has crossed the line.
We only can deal with the, you know, to the effect to
to the extent that an application is at issue or registration
is at issued, that's what's before us.
And so that's what we can we can work on.
Now, that said, we're not powerless here.
We are posting these things on our website.
We are, you know, highlighting these for law enforcement.
And certainly we're trying to make folks aware of - that
these solicitations are out there.
You can go on our website and see all the information that we've provided.
It's a scourge and it's it's happening globally.
These are global schemes to to mislead folks as to what they need to do.
They have to get on some sort of global database and pay
an enormous fee to get on that. No, you don't need to do that.
So we want to make sure that our customers are aware that these are not necessary.
You really don't need to pay these fees.
Um, and we're trying to do that, but we have limited resources
and we don't have the the mission or the mandate to actually, you know, go
after what appears to be criminal fraud or mail fraud.
And as you saw in the case of the Suhorukovs case.
So we do refer these issues to law enforcement to look into.
So to the extent
that it's it's a large scheme like you saw with the Suhorukovs case,
we work with law enforcement to provide whatever information we can
to make sure that they have what they need to go forward with the prosecution.
And you can see that it was successful.
We would love to see more of these.
And so we are having those conversations where we can.
But internally, if the application isn't before us, that's at issue,
there's limited, you know, things that we can do on that.
Anything you want to add on that, Bob?
-No, that covers it. -Okey dokey.
Okay. Let's see.
Pardon me while I read this very long question, I apologize.
Sorry about that.
Okay. Um, there's a uh,
I think it's a question, but I'm not sure. Have or
will you fix the glitch where examiners cannot tell when the filer of the change
of domicile address clicks the check box to keep the address private?
Um. And there's a whole lot of information here. Wait, it just moved.
-I checked with a couple.
I saw that question, I checked with a couple of subject matter experts on it.
There shouldn't be a glitch.
There might have been some confusion when we implemented
that new mask domicile procedure.
So it may have been an awareness issue on behalf of the examining attorneys.
So if it's hidden from view publicly, the examining attorney
should still be able to see it in their internal systems in a file wrapper.
There should be no glitch.
But to the extent
the questioner wants to follow up on that, well, we'll reach out to you
through the email we received. -Yeah. Okay.
If a trademark owner uses an outside law firm
but wants to receive correspondence copy from the USPTO on its matters,
will the trademark owner be required to have a USPTO.gov account.
So the question is, Bob,
tell me if I'm wrong, is the question is, is can the trademark owner be -
have a correspondence email address in the record?
And if they have that, do they have to have a USPTO.gov account?
-Under under our current plans, under our current plans, if it's a CC
address, they can receive correspondence. The myUSPTO account and ID
verification are for access to forms and records.
So as we're planning now,
there's no requirement for that CC address
to also have a USPTO.gov account.
But again, we are currently planning how all that's going to go,
so no commitments on that one. -Right.
But if the attorney representation or recognition ended
and the trademark owner wanted to file a TEAS document,
a maintenance document or something like that, yes,
you would have to have a USPTO.gov account at that point.
But if you're represented, you don't have to.
But I suspect the questioner knows that.
Is the letter of protest to be used for post-registration challenge?
No, we addressed that. Okay.
Um. Okay. Is the new identity - this is about log in phase two.
Is the new identity protection program, its identity protection -
identity verification program going to require Social Security numbers?
Yes, many of us are very careful to protect our Social Security numbers
given rampant identity theft. Agreed.
And certainly you will be hearing more and more about log in
phase two identity verification as we move forward.
Certainly aware of the Social Security number concern.
That is why we're partnering with ID.me.
It is a vendor that has many programs with government agencies:
IRS, Social Security, and the Veterans Affairs, I think.
And they - we do not hold the data.
They hold the data.
And you can actually have it after it's been used to verify your account,
you can actually have the data purged and they will not hold it anymore.
So I'm not the expert in this. This
is just part of our register protection initiatives.
And I wanted to go through those those slowly today.
But I think as you go forward, as we move forward
with phase two, you'll be hearing more and more information about this.
And you will certainly have the opportunity
to let us know what you think when you hear more
about how ID.me is going to protect the PII that they that they collect and hold
and then eventually purge,
uh, if you choose that.
So stay tuned on log in phase two, we're at early stages now.
Would the office consider a trademark registration bar exam
like the patent bar to control combat, to combat bad actors and - Yes.
No, not yet. Oh, it would require a statutory change
to Section five of the Administrative Procedures Act? No.
It needs - we would need a statute change, uh, to the extent we want it to move
forward with creating a trademark bar like the patent side has,
you'll hear about it, um, because it would require Congress to act, to intervene.
But if more and more people are interested
in that, we'd like to hear more about it.
Um, if there is a lot of support for that, certainly it seems like
it would be very helpful
to regulate attorney conduct before us or misconduct, I should say.
And it's something I'm paying attention to.
So if you all are interested, let us know.
All right. Oh, I
think Allison Ricketts must be on the line.
Will notice pleading be the standard for instituting a new Section
14 cancelation proceeding on the basis that the mark has never been used
on some or all of the goods and services. In other words,
does this proceeding,
I guess that's an expungement
proceeding before the Board, require documentary evidence of nonuse
or is that evidence required only for the petition to the Commissioner
procedure? And let's see.
The answer is it depends.
And I will plead a lot of ignorance to this.
So I might have to have a conversation offline with the person who asked the question.
Um uh, let's see.
Pleading at the Board is always subject
to the governing principles for notice pleading.
Um, that said, we certainly have some claims that require more facts
to be alleged to constitute sufficient notice pleading.
For example, pleading dilution and fraud claims require some specificity.
Uh, this is really a matter of first impression,
so I don't think we're going to be able to answer that right now,
but I think a further follow up conversation with the questioner,
we're we're happy to do that with somebody a lot more qualified
than I am to to speak to that issue.
Maybe Bob is, but I. I don't know.
-No, I was going to suggest that we want to consult the TTAB on that one.
-Yeah, I think that's right.
When are these new procedures for expungement reexamination
available? December, late December. Look for them.
You'll certainly hear about it. We'll be, I will be
very excited to get these launched and ready for you all to use.
So at the end of this year, you should be looking to file one of those petitions
or file an expungement proceeding before the Board. Let's see.
Using Section 7 to -
the Section 7 amendment procedure to delete goods are encouraged.
Yes, I am encouraging you to use that, but
I filed one in February to correct a typo in the owner's name,
and I still have not received any news of acceptance.
How fast do you anticipate Section 7 for deletions to
be processed in the future?
Uh, that's a good question.
And I will say, I can't really answer that right right now,
but I expect them to be
processed very quickly.
Now, whether that can happen based on workload, we'll have to see.
But I will say that if a Section 7 amendment is filed
during an expungement or reexamination proceeding, we're going to move on that
really fast, because that will obviously
moot the proceeding and we want that to happen.
So those will more than likely go to the front of the line in order
to make sure that we get the expungement and reexamination
proceeding over as quickly as possible if if the Section 7 would moot it.
So we certainly are looking at that.
And I'm sorry that it's taking so long
on the Section 7, but we are we're working on that.
-Yeah. Regular regular post-registration
review of Section 7s are at about four months pendency right now.
So February should have been reviewed by now.
So we might need to follow up with that that questioner
to get some more facts. -We can do that.
Craig has the email so we can do that. Yep. Okay.
Can you elaborate on the role that the task force has when coordinating
with the Department of Justice?
Is there an ongoing role after matters are referred to DOJ
or is it a clean pass off?
A little bit of both.
Um, generally, if it goes to OED or it goes to Department of Justice,
we don't hear anything. Um.
OED is confidential, so we really don't hear anything.
DOJ, if they need something from us, if they need more information,
we're asked to provide it, but we're not asked why,
and we can't really ask any questions.
So it's the - if they need more from us, we give it.
But they're not sharing,
they're not sharing their investigation with us for the most part.
Is that fair, Bob?
-Yes. -OK. If we see an owner address that appears to be a mail drop,
can we pass that information along TMFeedback
or is it necessary to file a letter of protest?
You know what, I you know,
I think we are now running a program that's going to catch those.
We are running all addresses against the USPS database
and it identifies which are mail drops and commercial mail receiving agencies.
So I, you know, we should catch it.
We will put a note in the file for the examiner to take an action on that.
And they can't move the application forward until they do.
So the examiner will catch that.
So I think it would be a redundancy if you all were to provide
us that information as well.
If it's really bothering you,
send it to TMScams@uspto.gov.
And we'll take a look.
But again, I think it's probably I think we're covered
because we've automated that procedure.
ID verification.
How are they - oh, another hard question that I -
Wow, OK. How will this work if a filer is the secretary?
Often the secretary prepares the filing for execution by attorney or client.
Um, perhaps I'm not entirely understanding this new implementation.
You and me both.
OK, so this is phase three of log in.
We're not there yet.
That is going to be a ways out. Um, so hold on.
And certainly, you know, we're we're we're good about, uh, putting out,
uh, communications on these things as we roll out these initiatives.
We are planning on doing a webinar much like this one, uh, next summer,
uh, on log in. And on phase two and whatever phase we're at at that point.
And if we have more information about phase three, we will share it. So,
you know, at this stage, it's premature for us to to share that information
because we don't have it all figured out yet,
but we're certainly working on it, and we'll share that with you
in a webinar, hopefully it's not going to be me telling you about it.
Hopefully it'll be somebody who's actually integral during that process.
Um, although if you really want me, I can come back,
but I don't really have to do that. Okay.
Uh, somebody else is asking about Section 7.
Uh, I think we answered that question.
Yes, we're looking to shorten it,
shorten the processing time if a Section 7 is filed.
Certainly we you know, if if we're encouraging you to use that process
in order to delete goods and services so that you don't get caught up in, uh,
an expungement or reexamination, then we darn well need to
to move those forward faster. So we will we will definitely look to do that.
Thank you for the question.
For the order to show-cause sanctions,
what is the USPTO timeline in issuing a resolution? Um.
OK, I guess I can share this.
The reason for the question is that there there is a trademark application
that my client wants to oppose,
and the application has been withdrawn from publication.
We are currently monitoring the status of this application.
Perhaps an explanation of the USPTO process in analyzing the order
to show-cause and reviewing the responses would be helpful.
And how transparent is the process?
Okay. Um. We, okay,
we are working on it.
We are developing the processes that we need, we are garnering
the resources that we need to move forward more quickly with investigations,
with show-cause orders and with final orders.
We would love to be ready to go and issue all these things all at once
and move these things through
so that you can get stuff that you're watching off the register.
We are doing the best we can
to try to move this new process forward as quickly as we can.
We're working on website content.
We're trying to make it more transparent.
But certainly because this
is investigation, there's not a whole lot we can share.
We are looking to to implement various prosecution
history entries in TSDR that would reflect what is happening to
an application if it's just sitting there and it's not moving,
we're we're going to put prosecution history entries in there
indicating that it's been suspended
pending an administrative decision on an investigation.
If it's been, you know, if a show-cause order has been issued, that sort of thing.
So we're trying to create some more transparency in the in the system.
But as you know, any I.T. change is very difficult.
And so we're certainly trying to to do that and create
that transparency for you in the process.
As for timing, it's a matter of resources.
So if we are undertaking an investigation and we have
thousands of applications that we are, you know, holding and investigating
and trying to move forward
into either a show-cause order or release them back into examination.
So you can appreciate with limited resources that we have,
that we're working on building up, that we're moving as fast as we can,
but it is difficult to make sure we have everything in place
to be able to move these through quickly
and make sure that any affected applicants have the information that they need
after a final order has been issued
on a particular application or group of applications.
So apologize that we can't give you more information.
Watch our website.
Watch TSDR entries, to see what's going on there.
And as we can move forward with these these changes to to make the proceedings
more more transparent, we will do that.
So apologies for that.
But we are certainly under under -
developing. We are we are certainly working on developing everything.
So will the owner domicile addresses
and the applicant's email address stay masked?
This is in cases where a client runs an online business from home
and maintains a P.O.
box for their mailing address.
If it's masked now, it will stay masked.
I think that's fair.
Not sure I fully understand the question why it would become unmasked, but OK.
Can you explain what
the identity verification phase for USPTO.gov accounts will entail?
Um, went through that briefly. I'm sorry.
I had a slide that I had to rush through. Again when when we're ready
to roll these things out, because right again, we're in beta testing
and then we will start making the uh optional
for folks to use the USPTO account of identity verification,
and then eventually we will make it mandatory.
And so as we move through these processes,
you'll hear more and more information about what we're offering.
But essentially, it is ID.me. If you go to their website,
you can see what the the process is and we will be providing more information.
Would the USPTO considering offering a service of giving an advance thumbs up
or down on specimens before the registrant files the declaration of use?
Um. Wow. An advisory opinion,
I'm not sure I think, uh, I think that the answer to that is to.
I think they mean the SOU, right?
The SOU stage, Bob? Or would you say that's the application stage?
-I guess it could be either if they're talking about a specimen of use, but,
you know, typically we don't provide an advisory opinion.
Right. If you file your SOU early on
in the maintenance timeframe
and then you get a,
you know, you can come back and fix whatever problems are there, so file early.
And then lastly, I see Jason's coming on.
Uh, who do we contact
when we suspect an attorney is running a filing mill?
Um oh, file a grievance at OED@USPTO.gov.
Uh, and you can also um file, send something to
TMScams@USPTO.gov.
You might not get a response, but it will go into um,
you know, into the queue and we'll, we'll be able to take a look at it.
-Well we are at four thirty,
so it's up to you. I mean, if you want to try and knock out
some of these that are here,
otherwise we can try and handle them via email.
-These are pretty, pretty detailed ones.
Um uh, I don't think we have a - oh wow, they keep coming.
No, I don't think we're going to be able to handle all those right now. -OK.
Great. -Well, we'll have to follow up.
-Great. Well, that sounds good.
All right, folks. Well, we got to shut it down then.
But if you did send in one of those questions,
especially one of those detailed questions, we will get you a response.
As we close out today, just a couple of quick reminders.
Well, first of all, thank you very much for being here today.
We really appreciate it
when folks show up for these types of things and ask the really great questions
that all of you ask.
So just to let you know, you should be getting an email
from Eventbrite very, very soon
if you didn't receive one already, which has a link to a very short survey.
Literally will take you one to two minutes to fill out.
And we would encourage you to do that.
We really do want to know what you think.
And if there are things that we can do better, what you liked
or if they are suggestions you have for things that we could maybe talk
about in in future webinars.
And just just a reminder, if those of you who found us
through Eventbrite, you can always go to our website, USPTO.gov.
And there's lots of great information there.
And we also have various events that are always happening all across
the USPTO that cover not just trademarks, but also patents as well.
So if you have any interest in those things,
be sure to go to our events page on USPTO.gov and sign up.
So thank you very much, folks, for tuning in today.
And as we said before,
we should have this recording posted in about three to four weeks.
And if you are someone who wants CLE credit and you were
somebody who signed in today using your email address
into the Livestream, then that will count as a verified attendance.
And we will be sending you information so you can claim your CLE credit.
So thank you very much to Amy and Bob.
And thank you very much, folks, for tuning in today.
Take care. We'll see you next time.