USPTO Offers Insights into the Battle Against Trademark Fraud and Threats
The United States Patent and Trademark Office (USPTO) recently hosted a "USPTO Hour" session, bringing together agency experts to discuss ongoing efforts to combat trademark fraud, threats, and scams.
The webinar session provided valuable insights into the USPTO's strategies for safeguarding the trademark register from suspicious filings and fraudulent submissions. Trademark practitioners, IP owners, and in-house counsel often find themselves navigating an increasingly intricate landscape, and understanding the USPTO's proactive measures is beneficial for all.
Clearing Invalid Applications and Registrations
A primary focus for the USPTO in the coming year involves clearing the inventory of invalid applications and registrations. Amy Cotton, Deputy Commissioner for Trademark Examination Policy, highlighted the substantial challenge posed by fraudulent entries on the federal register. While the full extent of invalid registrations remains unknown, the USPTO is aware that these entries can confuse the public and block legitimate trademark filings.
The process of removing these fraudulent registrations is primarily manual, requiring extensive evidence gathering, the issuance of show cause orders, and detailed record-keeping. The USPTO cannot simply remove applications or registrations upon request; a structured administrative process is necessary. This often involves selecting thousands of applications and registrations for review and initiating sanctions programs to remove invalid groups.
The USPTO has introduced two key developments aimed at accelerating the process of removing unsupported trademark registrations from the official register: reopening registrations for original examination and clarifying policies related to assignments, specifically focusing on improper signatures.
For instance, a February 24, 2025 Show Cause Order against Shenzhen Seller Growth Network Technology Co., Ltd. announced that about 42,000 trademark registration decisions might be vacated and the application or post-registration proceedings reopened.
These measures are part of a broader strategy to combat the rise in suspicious filings and scams that have increased over the last five to six years, ultimately enhancing the integrity of the trademark register by clearing invalid inventory
Addressing Improper Signatures and Intentional Circumvention
The issue of improper signatures in trademark filings has been a significant concern, particularly when such signatures are made with the intent to circumvent USPTO rules. Amy Cotton clarified the USPTO's stance, emphasizing that all documents submitted must be personally signed by the named signatory and cannot be delegated. Signatures also serve as certifications of accuracy and proper purpose.
Historically, if a party without requisite authority mistakenly signed an application, a corrective signature might have been permitted. However, the USPTO’s policy, clarified by the Stelcore Management Services decision, distinguishes between mistakes and intentional circumvention. If an improper signature is made with the intent to bypass USPTO rules, such as the requirement for foreign domicile applicants to have a U.S. licensed attorney, the submission is considered invalid.
The webinar relayed that a new attorney cannot simply "paper over" such a bad signature by taking over the case. In such instances, the best course of action is to abandon the case and refile without the involvement of the scamming entity. This policy clarifies that while an examining attorney might review a corrective submission, it does not automatically render it acceptable if the original filing was part of a widespread pattern of behavior designed to circumvent rules. The TMEP is expected to be updated in November to reflect this clarification.
Preventing Application and Attorney Credential Hijacking
Another critical area of concern involves preventing application and attorney credential hijacking. Sarah Kunkleman, Supervisory Attorney Advisor with the Register Protection Office, noted a growing number of submissions that fraudulently use the names, bar credentials, and signatures of attorneys who did not submit them.
This issue affects over 50 attorneys and involves more than 10,000 known trademark applications and registrations. Scammers exploit this by advertising low-cost trademark services, particularly to foreign domicile applicants who are required to have U.S. licensed attorneys.
When the USPTO receives a report of fraudulent use of credentials, it requests a declaration from the attorney to remove their name from the record and create public notices. The USPTO also analyzes filing data and requests blocks on credit cards used for fraudulent fees.
While the USPTO is not a consumer protection agency and has limitations in directly prosecuting bad actors, it can deny filing dates and void applications that do not meet minimum requirements due to hijacked attorney information. Thousands of such applications have been voided.
IP professionals are encouraged to regularly check the trademark register to ensure their names and bar credentials are not being misused. If misuse is identified, attorneys should email TMScams@uspto.gov. It is important to avoid attempting to correct fraudulent filings by changing correspondence addresses or filing changes of attorney, as this can complicate the USPTO's enforcement efforts.
Applicants and registrants are also cautioned to be vigilant when dealing with email solicitations, as scammers often impersonate legitimate attorneys or even USPTO employees. The USPTO's scam awareness page provides resources on identifying and reporting scams, including links to agencies like the FTC, FCC, and FBI.
Matt Schwab, Senior Legal Administrator for Trademarks Technology and Systems, discussed efforts to combat application hijacking. While ID verification initially proved effective in reducing instances of changed owner or attorney contact information, scammers adapted their tactics. They began creating USPTO.gov accounts for victims by offering low-cost trademark filing services, then gaining control over the login information after the user verified their identity.
To address this, the USPTO has implemented additional authorization elements on certain forms, particularly those that involve changes to attorney or correspondence information. This pilot program, rolled out in May and June, requires users to pass a profile check or receive additional connection emails for authorization. While this may add steps for legitimate users, it has shown signs of deterring scammers.
The USPTO recognizes the unique challenge of new attorneys taking over a case and plans to refine this process, potentially allowing for single-step authorization from the owner in the future. Attorneys are advised to file a revocation of the previous attorney's power of attorney without immediately appearing on the record, then appear in a subsequent filing, to help mitigate fraud detection.
Increasing Efficiencies and Future Solutions
The USPTO is actively seeking to increase efficiencies in filing and case management to more effectively combat trademark fraud. Sarah Kunkleman acknowledged that current administrative review processes, while comprehensive, are largely manual and rely on less efficient technology like spreadsheets and email.
The USPTO is pursuing new solutions, including a register protection workflow designed to handle bulk actions on applications and registrations that show evidence of violations, similar to how trademark examining attorneys process applications. A case management solution is also in development to better organize and manage the data collected during the administrative review process.
Amy Cotton emphasized the need for a larger, more comprehensive security solution. The current environment, where the USPTO spends significant time manually addressing individual fraudulent activities, is unsustainable. Plans are underway to implement more robust security measures for filing systems, including user roles that define account permissions and further steps for authentication.
The USPTO is considering amending attorney recognition rules to presume continued recognition, allowing for rule-based access controls where attorneys only have access to files with which they are genuinely affiliated. This will presumably help eliminate hijacking and provide clearer records of authority.
Looking ahead, the USPTO has plans to incorporate AI to help identify suspicious filings. While the exact form of this AI tool is still in development, it could be used to identify existing fraudulent entries or monitor filing behavior for patterns that deviate from normal.
Amy Cotton stressed that any AI tool would serve as a flagging mechanism, with human review by the Register Protection Office remaining crucial for final decisions. The ultimate goal is to move faster in processing identified fraud, whether through improved workflow tools or advanced AI.
Trademark Center and Role-Based Access
Matt Schwab provided insights into the development of the Trademark Center, which aims to enhance security and improve the filing experience. The Trademark Center is being developed with role-based access in mind, distinguishing between U.S. licensed attorney roles, trademark owner roles, and attorney support staff roles. This approach acknowledges that a significant portion of filing traffic comes from practitioners who manage many files, while unrepresented owners typically manage only one.
The Trademark Center will feature an action-based common interface with color-coded status indicators, deadlines, and action buttons. This streamlined approach not only improves quality of life for users but also serves as a security measure by creating a continuous ecosystem where users know they are interacting safely within a USPTO system.
This will hopefully help to mitigate fraudulent correspondence that often mimics USPTO communications. Future functionalities will allow law firms to share filings securely among attorneys and support staff, further reinforcing trust in the information within the system.
The Path Forward
The USPTO's commitment to combating trademark fraud and threats is evident in its multi-faceted approach, encompassing administrative sanctions, policy clarifications, technological advancements, and public awareness campaigns.
While the challenge is substantial and constantly evolving with new scam tactics, the agency's cautious yet optimistic outlook on leveraging technology, including AI, to enhance security and efficiency is a positive sign for the integrity of the U.S. trademark system.
Continued vigilance from IP professionals and the public, coupled with ongoing collaboration with the USPTO, will be essential in protecting intellectual property rights in the future.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.