USPTO Interviews: A story of success
During her five-year tenure at the US Patent and Trademark Office (USPTO), trademark commissioner Mary Boney Denison has witnessed an “unprecedented wave” of what she calls “bad behaviour”, such as forged attorneys’ names, unauthorised assignments, fake and doctored specimens, and false claims of use.
“We issued the first US trademark registration almost 150 years ago and during that time trusting our users to do the right thing has generally worked well,” says Boney Denison.
But times have changed, forcing the USPTO to implement measures to protect its users, including auditing post-registration claims of use and issuing guidance on misleading third-party solicitations.
In August, the office began requiring a US attorney to act for foreign-domiciled applicants, in a bid to stem the tide of fraudulent submissions.
“It’s still a little too early to measure the impact the new rule will have on curtailing improper filings, but we did see a surge in pro se applications from several countries in the days leading up to the implementation date, followed by a steep decline after the effective date,” she says.
The trademark team has also attacked the “dramatic rise” in the unauthorised practice of law and the misuse of its electronic systems related to improper filings in multiple ways.
To improve the security of its electronic filing systems, the office moved to a mandatory login system, the first step in a three-step security enhancement project designed to authenticate and verify the identity of filing parties.
Earlier this year, the USPTO created a special task force, consisting of personnel with legal and IT expertise who coordinate efforts to identify improper activity and determine the appropriate action.
“Since autumn 2018, the task force has stopped more than 1,100 unauthorised changes of correspondence addresses improperly filed through our electronic systems,” Boney Denison reports.
“We are also developing a searchable database of specimens of use to identify applications where the same picture of goods is submitted by multiple parties bearing different marks.
“Misleading solicitations are still a problem we hear about from applicants and registrants,” she explains, noting that two USPTO attorneys are currently working on assignment at the Criminal Fraud Division of the US Department of Justice to investigate misleading trademark-related solicitations.
The office is also encouraging stakeholders to send information about new scams and techniques employed, in addition to information relating to instances of people or companies that have fallen victim to these scams.
Customers and perseverance
“As a long-time customer of the office prior to 2011, it has been important to me to ensure that the customer is at the centre of all that we do,” says Boney Denison, who was a founding partner of Manelli Denison & Selter in Washington, DC, where she served between 1996 and 2011.
As a result of an office-wide consultancy assessment on the customer experience, the trademark unit hired a customer experience administrator, plain language writers, and web communications strategists.
