As a trademark owner, you must be diligent in reviewing and maintaining your trademarks in the United States Patent and Trademark Office (USPTO). Many brand owners rely on their advice to be vigilant and monitor their brands on their behalf. At Hodgson Russ, our intellectual property team reviews USPTO records in association with our clients’ brand portfolios.

Recently, while performing surveillance services for a client, a well-known clothing company, we learned that an unknown third party had filed a trademark application on behalf of our client using counterfeit specimens to prove the use. The fraudulent claim was filed to appear as if our client had filed the claim itself. All filing information was correct except that the name and email address used in the caller information was fictitious and the email used was from an IP address in China not associated with our client.

Pursuant to 37 CFR §2.146 (a) (3), we have filed a petition with the Director of the USPTO to strike and remove all documents related to the fraudulent trademark application. As a result of our investigation and with the help of the USPTO Director’s office, the USPTO uncovered approximately 10 other fraudulent filings from the same IP address, all targeting well-known brands and including sworn and verified signatures. of well-known people. (for example, William Jefferson Clinton), not associated with the owners of the mark.

The Director immediately issued a show cause order to the plaintiff for violating the USPTO rules of practice and asked him to justify why the USPTO should not:

“(1) remove any trademark related material that you have submitted; (2) permanently prevent you from submitting other trademark documents in your own name or on behalf of others; (3) direct the USPTO CIO’s office to terminate or permanently deactivate any USPTO account used by it in any matter in which associated contact information appears; and (4) terminate any proceedings determined to have been initiated by you. “

The claimant apparently responded to the show cause order, but the content of the response has not been made public. Nonetheless, it would appear that the response confirmed that the deposits were all fraudulent.

Pursuant to 37 CFR §11.18 (c), the Director issued penalties to terminate fraudulent claims and ordered that fraudulent filings not be given any probative weight in future proceedings before the USPTO; and the USPTO can remove filings from public view in TESS / TSDR search results. The fraudulent depositor was also definitively excluded from submitting trademark filings in his own name and in the name of others; and his USPTO account was terminated and deactivated. The USPTO has also indicated that it will take steps to prevent the applicant’s future registration for a USPTO account.

We suspect that the fraudulent application was filed with the intention of transferring or assigning the trademark after registration in order to take control of brand stores or other e-commerce type listings which now require proof of ‘recording.[1] Since the fraudulent request indicated that the correspondent was the fraudulent declarant, the true owner may never have been aware of this deposit.

Hodgson Russ intellectual property attorneys keep abreast of evolving trademark standards and decisions and are able to meet all of your trademark needs. Please contact Neil Friedman (646.218.7605), Ryan McGonigle (646.218.7537) or any member of our Intellectual Property and Technology practice if you have any questions.

[1] For example, Amazon created the Amazon Trademark Registry which offers brand owners the ability to manage the sale of products under their trademarks on Amazon’s e-commerce website. Among some of the powers granted to a brand owner on the Amazon platform is the ability to end sales of products to third parties under the same brand. To register with Amazon’s Trademark Registry, you must have a registered trademark. To verify that a trademark registration application is filed by the actual trademark owner, Amazon sends a special authentication code to the correspondent listed in the USPTO trademark registration records. Therefore, for a trademark registrant, having the correct information in the USPTO records is paramount.

Source link