USPTO failing to curb fraudulent TMs, finds report
The US Patent and Trademark Office (USPTO) is inefficient at preventing fraudulent or inaccurate trademark registrations, according to a report from the US Department of Commerce Office of Inspector General (OIG).
The study found that, despite the USPTO’s efforts to crack down on fraudulent registrations, more controls, guides and procedures were required to “improve the integrity” of the trademark register.
The OIG published the report, “ USPTO Should Improve Controls over Examination of Trademark Filings to Enhance the Integrity of the Trademark Register, on August 11.
“Due to the changing tactics and incentives of bad-faith actors, USPTO should improve its registration process or it will be at risk of allowing additional inaccurate registrations to clutter the trademark register,” the report said.
It added: “This clutter imposes costs—such as increased time and effort to search for or challenge unused marks—on legitimate users of the trademark system.”
Key findings
The OIG claimed that the USPTO had not effectively enforced the US Counsel Rule, which requires foreign applications to be represented by a US attorney.
The rule, introduced in 2019, aimed to increase the accuracy of trademark filings. But the report highlighted “multiple” ways that applicants have attempted to circumvent the rule, including the listing attorneys on applications without their consent.
It also highlighted instances where the USPTO approved trademark filings with digitally altered or “mocked up” specimens, did not ensure accurate identification of goods and services, and lacked a comprehensive fraud risk strategy.
The audit was conducted from June 2020 until the end of January 2021.
Responding to the first draft, the USPTO highlighted actions that it had taken to improve the integrity of filings, including increasing efforts to detect unacceptable domicile addresses and taking action against individuals responsible for inaccurate filings.
OIG Recommendations
The OIG recommended that the USPTO develop controls or tools to detect “unacceptable” domicile addresses including post boxes, post offices, and commercial malls, and urged the office to implement new standards and procedures to examine the proper listings of US attorneys.
It also recommended that the office create a risk framework that includes goals and targets that incentivise taking action against fraudulent and inaccurate filings.
Additionally, the report stated that the USPTO should revise its examination guide and develop tools to better examine multiple trademark applications from a single applicant.
The office should also develop guidance for examining an attorney’s use of the Trademark Manual of Examining Procedure, and aggregate data to better assess the effectiveness of its measures to improve the accuracy of registrations, according to the OIG.
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