Highlights
- For many years, the U.S. Patent and Trademark Office has seen an increase in applications to register trademarks, and in turn, an increase in fraudulent applications. As a result, the Trademark Office has tightened up a number of its processes.
- On Jan. 25, 2022, the Trademark Office issued an order for sanctions against three companies that operate a series of low-cost trademark filing and design sites that were used to defraud trademark owners and the Trademark Office. According to an alert issued by the Trademark Office, its investigation covered significant fraud resulting in more than 5,500 invalidly filed applications.
- Because of this fraudulent activity, the Trademark Office will terminate applications filed through these entities. If an application was filed via one of these fraudulent operations, the individual or company affected should contact the Trademark Office.
For many years, companies and individuals filing applications to register trademarks at the U.S. Patent and Trademark Office enjoyed a rather quick examination process. Examining attorneys at the Trademark Office reviewed applications within three months of filing and barring problems or objections, registrations were issued about seven to eight months after the initial filing date. That is no longer the case; the Trademark Office faces a deluge of new filings on a daily basis, a problem that has grown over the past few years.
Upon scrutiny, a number of these applications raised questions. The supporting specimens and allegations of actual "use in commerce" found in the applications ranged from "inaccurate to fraudulent," according to the Trademark Office. The U.S. Department of Commerce's Office of Inspector General analyzed a snapshot of data and found that new controls needed to be put into place in order to combat this increase in suspicious filings.
For that reason, the Trademark Office tightened up a number of its processes. For instance, attorneys must now verify themselves when filing and show that they are active and licensed attorneys in the United States before any new application will be accepted.
On Jan. 25, 2022, the Trademark Office issued an order for sanctions against three companies that operate a series of low-cost trademark filing and design sites that were used to defraud trademark owners and the Trademark Office. According to an alert issued by the Trademark Office, its investigation covered significant fraud resulting in more than 5,500 invalidly filed applications.
Because of this fraudulent activity, the Trademark Office will terminate applications filed through these entities.
If an application was filed via one of these fraudulent operations, the individual or company affected should contact the Trademark Office at TMScams@uspto.gov. The applicant should also contact their bank or other financial institutions to determine if they can dispute charges. All affected parties should file a consumer complaint with the Federal Trade Commission, contact the consumer protection authorities in their state as well as notify the Better Business Bureau. If a lawyer or purported lawyer was involved, the applicant should contact the state bar association at which the lawyer is supposedly licensed.
The Trademark Office will work with anyone who has mistakenly filed a fraudulent application and attempt to work out a solution. Affected applicants and concerned parties should also contact a trusted U.S. attorney to assist, including the author or another member of Holland & Knight's Intellectual Property Group.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.