U.S. Department of Commerce Files Federal Trademark Registrations to Combat Scams Against Trademark Applicants

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On August 4, 2021, the U.S. Department of Commerce filed applications to register several USPTO trademarks. The applications are part of ongoing efforts by the USPTO to combat frauds committed against trademark owners and applicants. The USPTO applications include:

The USPTO specified various goods and services in its applications, including but not limited to downloadable documents in the field of intellectual property, maintaining registries of trademarks, providing training in the field of intellectual property rights, providing temporary use of on-line non-downloadable software for searching databases, and advisory services relating to intellectual property rights.

Since its inception in January 1975, the USPTO has examined trademark filings for other applicants. Now, for the first time in its history, the agency will review its own trademark applications and determine the registrability of each mark. To avoid certain issues that may arise in the USPTO’s examination of its own applications, the U.S. Department of Commerce filed the applications on behalf of the USPTO. This follows a pattern used by other bureaus of the Department of Commerce where, for example, the Department of Commerce has submitted filings for the Internal Revenue Service and the Food and Drug Administration.

According to comments by the USPTO, the USPTO is seeking protection of its logo and name in hopes of preventing scammers from using the agency’s trademarks to commit fraud, such as falsely soliciting maintenance fees on trademark applicants. There has been a significant increase in the number of third parties who are unlawfully passing themselves off as the USPTO. The USPTO has already taken several steps to protect trademark applicants from various scams, including posting a list of known scammers on the USPTO website. In a blog post released on the www.uspto.gov website, David Gooder, the Commissioner for Trademarks, stated that the federal trademark registrations will help the USPTO “take appropriate legal action as needed to protect the USPTO brand from improper use by those trying to impersonate or falsely claim affiliation or endorsement with the USPTO.”

The USPTO took approximately 46 years to seek federal registration of its marks. However, the agency believes that “it’s never too late to do the right thing” and will continue to fight against scammers to protect trademark customers.

In addition to the USPTO’s efforts to protect trademark customers from third parties, it is also important for owners to protect themselves. If a trademark owner or applicant receives any solicitations from an agency claiming to be the USPTO and demanding the payment of required fees, it should carefully review the demand and seek the advice of counsel before submitting any such payments.

Like the USPTO, trademark owners should seek federal registration to preserve the exclusive right to use their trademarks. Moreover, once the owner secures a federal registration, it should proactively monitor its marks and enforce its rights to protect its brand from any unauthorized third-party use. Failure to do so could run the risk that the mark may become weakened in the future and potentially unable to serve as a unique source identifier.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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