Following our posts regarding the USPTO’s increased interest in trademark filing quality and amended procedures, including Director Iancu’s public statement, the Final Rule published regarding amended filing requirements, and the new trademark Examination Guide, in July 2019 Commissioner Mary Boney Denison delivered remarks to United States House Subcommittee on Courts, Intellectual Property, and the Internet Committee on the Judiciary. Commissioner Denison also spoke to the Trademark Public Advisory Committee (TPAC) this month.
The Purported China Problem
In her remarks, Commissioner Denison highlighted the importance of ensuring an accurate trademark register, including by emphasizing issues related to trademark clearance and unnecessary or expensive proceedings and litigation to enforce rights. The Commissioner highlighted allegations of not only fraudulent claims of use, but also fraudulent assignments and unauthorized changes to correspondence addresses. The statement noted that some of these actions were by domestic actors, but the Commissioner was quick to say that “a significant and increasing number of these come from overseas, primarily from mainland China.” Notably, the Commissioner explained that China represents 11% of total trademark application filings, with the largest number of pro se applications. She further remarked that total submissions from China have increased from 5,161 in FY 2014 to 54,064 in FY 2018.
The folks at TM TKO also highlighted the issue of fraudulent specimens in a recent blog post. Specifically, the data they found shows that specimen refusals increased fourfold between 2015-2018. Interestingly, they noted that 45% of the refusals each year since 2016 were from Chinese applicants.
The USPTO’s Solution
Beyond the regulatory efforts in the Final Rule, the Commissioner discussed exclusion orders, the USPTO’s Proof of Use Audit Program, and a special task force created to develop and implement policies, procedures, and other solutions to combat fake specimens, false use claims, and unauthorized Trademark Electronic Application System submissions. Encouragingly, the USPTO appears to finally be taking action to secure the TEAS filing system. As someone who has repeatedly commented about the need to require a TEAS log-on feature, I was thrilled to see the Commissioner announce that the USPTO is exploring options to require TEAS filers to maintain a MyUSPTO account. While the implementation may begin in phases, the goal appears to ultimately require filers to provide a copy of their driver’s license or passport in order to file applications.
The USPTO is also planning a forthcoming rule to make TEAS mandatory for all filers, except in limited circumstances. Equally important, the USPTO is making it easier and less costly to amend trademark registrations prior to an audit. For example, the USPTO is exploring an option to waive the fee for deletion of goods and services during the life of a registration, but charge a fee to amend the registration when the goods or services are deleted due to an audit. The Commissioner also discussed that many egregious matters are being referred to the Office of Enrollment and Discipline (OED) for review and investigation.
Duties of Practitioners
Practitioners should be mindful that their submissions, including declarations, are properly based in fact, and submitted after a reasonable inquiry. To wit, practitioners should keep abreast of changes in the TMEP, as well as review the Final Rule and new trademark Examination Guide. It appears that the USPTO, and OED, have taken a keen interest in practitioners who deal with foreign applicants. Practitioners should be mindful of their duties to the USPTO, and to their client, in responding to both USPTO-initiated audits and OED Requests for Information and Evidence (RFI).
For additional information, please contact McCabe & Ali, LLP at 877-OED-4097.
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