Trademark Fraud Revisited

August 2020


In 2010, we published an article about fraud on the trademark office. In the intervening decade, the trademark office has cracked down on fraud in a number of ways, all of which are designed to ensure that applicants do not misuse the trademark registration process to lock up marks—names, logos or slogans—that they are not actually using. Here are eight new rules of which anyone seeking to register a trademark or service mark federally should be aware:

1. When I file a new trademark application on behalf of a client, I am required to state, under penalty of perjury, that all of the following statements are true: (a) the applicant is the owner of or has a bona fide intent to use the mark for which registration is sought; (b) the specimens are genuine; (c) the mark was in use in commerce as of the filing date of the application (for a use-based application); (d) no one else has the right to use the mark; and (e) a reasonable inquiry has been made with respect to all of the foregoing. Thus, the onus is on the attorney to ask the right questions, but clients must be forthcoming about the information they provide.

2. If you file a new application on a use basis (this is referred to as a "1A" filing basis), or if you file a Statement of Use in an intent-to-use ("1B" filing basis) application, you will be required to submit specimens evidencing your use of the mark. If these specimens consist of website screenshots, you must indicate when and how (by whom) these website screenshots were taken.

3. If you typically print out a label on your desktop computer and tape it to the product before it is shipped to the customer, the trademark office will no longer accept these "home-made" product labels. Rather, the label must appear to the trademark office to be professionally printed and affixed to the product or the product packaging in a manner that does not raise suspicion.

4. If you are attempting to register a service mark, and if you include services that are what the trademark office would consider "ancillary" to your core business, you may not be allowed to register the mark for those services. The trademark office will require additional documentary evidence to prove that the public associates the mark with your business for those services.

5. If you are attempting to register a service mark, the mark must be used in a manner that clearly signifies to the public that the mark refers to specific services and that you are the source of those services. In the case of a web page, even if the mark is set apart from the other text on the web page and appears in a larger or stylized font, that may not be sufficient. The trademark office will consider the web page as a whole and decide whether the mark shows a direct association between the mark and the services for which you are attempting to register it.

6. Trademark consent agreements must have teeth. It is no longer sufficient to agree to live-and-let live; instead, parties seeking to register similar marks must submit to the trademark office a coexistence agreement with meaningful restrictions on both sides designed to eliminate the possibility of a likelihood of confusion.

7. All foreign parties seeking to register their marks in the U.S. must now be represented by U.S. trademark counsel. This new rule primarily affects Canadian trademark agents, who used to be permitted to file applications in the U.S.

8. Trademark renewal affidavits are no longer accepted under the "honor" system. Now, the USPTO conducts random audits of renewal affidavits in which registrants are required to prove that the mark is still being used in connection with all of the goods and services covered by the registration. Repeated audits of the same registration are not uncommon.

Lastly, although not an issue that relates to U.S. trademark filings, clients registering their marks in foreign jurisdictions should be cautioned not to file with overbroad descriptions of goods and services. Such a filing may have disastrous consequences for the client if the registration is challenged on the basis of non-use and the registration canceled as a result. In countries that are first-to-file (which includes most countries outside of the United States), a client with a canceled trademark registration may be forced to rebrand if the party that challenged the client's registration has already filed a more narrowly tailored application for the same mark. These situations can be avoided by using the Madrid Protocol to register your marks in foreign countries because the foreign registration will have the same description of goods and services as in the U.S. registration. Because the U.S. requires proof of use prior to registration, which is not true of many foreign jurisdictions, the possibility of having an overbroad registration in the U.S. (and, therefore, via the Madrid Protocol) is practically eliminated.

Tease Law has handled nearly 2500 federal trademark filings in the United States alone, and we have unparalleled expertise in clearing trademarks prior to filing and in dealing with the U.S. Patent and Trademark Office to ensure that our clients' trademark registrations issue. Most international trademark applications can be filed via the Madrid Protocol, and our network of foreign associates stands ready to assist with any issues requiring foreign representation.

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Antoinette M. Tease, P.L.L.C.

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