The use of E-Commerce and online seller platforms such as Amazon, Alibaba, and Walmart have caused an unprecedented rise in trademark filings by sellers. Having a registered trademark on these online platforms gives businesses priorities and perks that aren’t afforded to other online sellers. For example, being listed on the Amazon Brand Registry provides sellers access to valuable analytics tools, content managing software, and priority in regards to filing reports against infringing listings. Therefore, registered business attain a competitive edge over those that are not on the brand registry.
The value of a trademark is usually determined by the origin and credibility of the products or services it represents, but with the rise of Amazon and other e-commerce platforms, some trademarks have been reduced to expedients to obtain brand registries. This is because companies have been filing nonsensical and fraudulent marks in the hopes of getting onto the brand registries or selling the marks to other companies hoping to do the same. In other words, they apply for these bogus marks with no genuine intention of using them in commerce themselves. Many of these marks have no meaning in any known language, and the specimens used to register them are often fabricated and fraudulent.
As such, the mass-filing of bogus marks within the last five years has resulted in a large bottleneck in the USPTO’s application examination process. This worsened during the COVID-19 pandemic, as more and more businesses pivot towards online platforms to sell their goods and services to maintain profits.
In response to the unprecedented number of fraudulent applications, the USPTO has published a new notice, which dictates procedures by which the USPTO will identify fraudulent applications. If these procedures are implemented, they will allow the USPTO to investigate and sanction attorneys as well as applicants. There are four main types of sanctions that the USPTO is proposing:
- Ending the fraudulent registration and/or application.
- Striking submissions.
- Disqualifying trademark owners and applicants from appearing before the USPTO for trademark matters;
- Deactivating the party’s uspto.gov account.
This is a huge step in the right direction by the USPTO. Previously, the USPTO was only equipped with the U.S. Counsel Rule, which mandates that foreign filers to hire a U.S. Trademark attorney to submit their trademark applications. As discussed in a previous blog post, this rule allowed the USPTO to sanction attorneys for violating the USPTO’s rules of professional conduct by allowing foreign bad-faith filers to use their credentials to file thousands of improper trademark applications. Though it has been effective in deterring attorneys from filing improper applications, it is still circumvented by bad actors who find ways to file nonsensical marks.
As such, both attorneys and applicants alike need to keep an eye out for suspicious and deceitful behavior in this field. One of the best ways to vet a trademark attorney is to conduct a preliminary search on his/her identity on the USPTO’s disciplinary decisions page, to ensure that he/she has not been disciplined by the USPTO for unethical or illegal practices.
Wang IP Law Group, P.C. is a Los Angeles based full service legal firm that specializes in intellectual property law (patent, trademark, copyright, and licensing agreement), business and commercial litigation, and a wide range of other legal matters including immigration, real estate, and landlord/tenant cases. Our multilingual attorneys represent clients from all over California and internationally from China, Taiwan, Hong Kong, Japan, and Israel.
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