[Federal Register Volume 87, Number 131 (Monday, July 11, 2022)]
[Notices]
[Pages 41114-41116]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-14435]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-T-2022-0005]
Trademarks USPTO.gov Account ID Verification Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
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SUMMARY: In late 2019, as part of the United States Patent and
Trademark Office's (USPTO or Office) continuing efforts to protect the
integrity of the U.S. trademark register, and to better protect its
customers from scams and fraudulent activities related to the trademark
register, the USPTO began requiring customers to create a USPTO.gov
account to file electronic trademark forms. This enabled the Agency to
monitor trademark filing behavior and aided in enforcing the existing
USPTO Rules of Practice regarding submissions in trademark matters. On
January 8, 2022, in anticipation of moving toward a mandatory identity
(ID) verification process to further thwart fraud, the USPTO made ID
verification available to USPTO.gov account holders on a voluntary
basis. This allowed account holders to verify their identity in either
paper or electronic form before ID verification became mandatory. On
August 6, 2022, the USPTO will make it mandatory for existing and new
account holders who occupy an appropriate user role to verify their
identity as a condition for filing electronic trademark forms.
FOR FURTHER INFORMATION CONTACT: Robert Lavache, Office of the Deputy
Commissioner for Trademark Examination Policy, at 571-272-5881. You can
also send inquiries to [email protected].
SUPPLEMENTARY INFORMATION: Historically, trademark customers of the
USPTO have only had to attest to the information in their applications
and other submissions if the USPTO questioned the information. Thus,
for example, if a third party had evidence that the identity of an
applicant or registrant was false, that party would have to oppose the
application or petition to cancel the registration before the USPTO's
Trademark Trial and Appeal Board, a costly and time-consuming process.
In recent years, however, the Office has received an increasing
number of trademark submissions containing false information, resulting
in some bad actors obtaining trademark registrations to which they were
not entitled. In some cases, these actors have filed tens of thousands
of applications containing improper submissions that include false
signatures, false addresses, false claims of use required to obtain and
maintain a registration, and false or hijacked U.S. attorney
credentials. They have also engaged in unauthorized practice of law and
unauthorized representation of others before the USPTO. In other cases,
bad actors have used the system to improperly file unauthorized
submissions in a competitor's application and registration records.
While the levels of misconduct and improper submissions are relatively
low compared to the large annual volume of filings in trademark cases,
the impact of these activities has become disproportionately
significant, as evidenced by the growing number of internet-based scams
that have been sanctioned and that have implicated thousands of
applications featuring rule violations that the USPTO terminated.
Additionally, these activities violate the USPTO rules of practice--
including rules on signatures, certifications, and representation of
others before the USPTO--and website terms of use, potentially calling
into question the validity of any resulting registration.
In response, the USPTO has implemented measures, including a
trademark administrative sanctions process that investigates suspicious
applications and imposes sanctions on rule violators. See Trademarks
Administrative Sanctions Process, 87 FR 431 (Jan. 5, 2022). The USPTO
has also required those filing documents in trademark matters to have a
USPTO.gov account. Moving forward, in an attempt to prevent the filing
of applications and other submissions that are fraudulent or violate
the USPTO's signature and representation rules, the USPTO will require
USPTO.gov account holders to verify their identity in order to file
electronic trademark forms.
I. USPTO.gov Login System
In 2019, as part of the USPTO's register protection initiatives,
the USPTO established a three-phase login system intended to increase
the accountability of those filing submissions. Phase 1, implemented in
2019, requires a user to create a USPTO.gov account in order to file
electronic trademark forms. Once the account is created, the holder is
subject to the terms of use. Account holders who violate the terms of
use may have their accounts blocked to prevent continued abuse of the
USPTO's electronic trademark systems. On January 8, 2022, the USPTO
began implementing Phase 2 by making ID
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verification available on a voluntary basis to existing USPTO.gov
account holders. On August 6, 2022, the USPTO will make it mandatory
for existing and new account holders who occupy an appropriate user
role to verify their identity as a condition for filing electronic
trademark forms. At that time, existing unverified USPTO.gov accounts
will remain active, but will not be able to be used to access or submit
trademark forms. Only verified account holders will be able to access
and submit trademark forms. Phase 3 restricts access to electronic
trademark records to only those authorized to make submissions related
to those specific records. This will prevent unauthorized actors from
filing submissions in application and registration records.
II. Phase 1 Account Login
When a user creates a USPTO.gov account, the USPTO can monitor
filing behaviors and link improper submissions to a particular account,
which it can then block. Currently, however, there is nothing to
prevent a blocked account holder from using false information to create
a new account in order to file trademark submissions. The USPTO must
then investigate and pursue sanctions once it discovers that the
blocked account holder has created a new account. There is also nothing
to prevent someone who is engaging in the unauthorized practice of law
and unauthorized representation of others before the USPTO from filing
submissions that are contrary to the USPTO rules of practice, including
rules on signatures, certifications, and representation of others
before the USPTO. Again, the USPTO can only address rule violations
after they are investigated and undergo an administrative sanctions
process. These are resource-intensive. Lastly, there is nothing to
prevent account holders from sharing accounts, which is a violation of
the terms of use, unless or until the USPTO investigates and imposes
sanctions. Phase 2 ID verification is designed to help address these
three gaps.
III. Phase 2 ID Verification and Phase 3 Role-Based Access Controls
ID verification ensures that those making submissions to the USPTO
to obtain or maintain a trademark registration are who they say they
are and can be held accountable for misconduct, fraud, and/or abuse of
the USPTO's systems. This will allow the USPTO to take down USPTO.gov
accounts registered to bad actors and prevent them from creating new
accounts or sharing accounts. Phase 2 of the USPTO's ID verification
process also requires USPTO.gov account holders to identify their user
role when verifying their identity. These user roles set the stage for
the future implementation of Phase 3's role-based access controls.
Phase 3 will enable the USPTO to limit submissions on a particular
application or registration to a specific USPTO.gov account holder with
the appropriate user role.
There are four authorized user roles: (1) trademark owner,\1\ (2)
U.S.-licensed attorney, (3) Canadian attorney or agent, and (4)
sponsored attorney support staff. Under role-based access controls,
owner accounts would have submission rights only for their own
applications or registrations. For that reason, an owner account can
only be established by the owner or by its authorized employees. Each
employee who is authorized to file submissions on behalf of the owner
may have a separate owner account. However, the owner account is
limited to submissions related to the owner's applications and
registrations. Only an attorney account or a sponsored staff account
can be used to file submissions in multiple applications and
registrations. An attorney account would have submission rights for
only those applications or registrations in which the attorney is
designated as an attorney of record. An attorney-sponsored support
staff account would be similarly limited to applications or
registrations in which a supervising attorney who sponsors the support
staff account has access rights. Support staff who work with several
attorneys must be sponsored by each attorney in order to have access
rights to each attorney's applications or registrations. A reciprocally
recognized Canadian trademark attorney or agent may prepare, sign, and
file a new application and prepare and sign other application- and
registration-related submissions on behalf of clients located in
Canada, although a qualified U.S. attorney must file such submissions.
ID verification, user roles, and access controls based on those user
roles will provide more security for the trademark registration system,
help prevent fraud in the system, and greatly aid in removing improper
filings once discovered.
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\1\ A represented owner does not need a verified account because
the owner's attorney will have a verified account and because the
owner can electronically sign forms without verifying an account. If
an owner becomes unrepresented after recognition of their attorney
ends, by revocation or withdrawal, for example, an owner will have
to establish and verify their own account in order to file an
electronic form without representation.
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IV. User Roles Limited to Owners and Attorneys
Section 1 of the Lanham Act provides that ``the owner of a
trademark used in commerce may request registration of its trademark.''
Under USPTO rules, owners who are not represented by an attorney are
authorized to file and make submissions regarding their trademarks.
Also, USPTO rules allow submissions from attorneys who are authorized
by the owner to represent them. Attorneys are subject to professional
responsibility rules, ethical sanctions, potential malpractice
remedies, and the loss of a law license for misrepresentation. These
penalties are designed to ensure that the attorney representing the
owner is acting on behalf of the owner.
Through investigations of suspicious filings, the USPTO has
discovered that tens of thousands of trademark submissions have been
made by actors who purport to act on behalf of the owner but are not
adhering to USPTO rules that govern signatures, certifications, and
representation of others before the USPTO. These rule violations
jeopardize the validity of the submissions made as well as any
resulting registration. The USPTO does not have assurances that these
actors, typically non-attorney entities (i.e., those engaging in
unauthorized practice of law or unauthorized representation of others
before the USPTO), are acting on behalf of the owner and with the
owner's knowledge of the information contained in the submissions.
Limiting access to electronic trademark forms through ID verification
and user roles to only those whose submissions in trademark matters can
be deemed an act of the owner will provide assurances to the USPTO and
the public that filings are authorized by the owner, are made at their
request, and are made with specific knowledge of the information
contained in the submission.
V. No User Roles for Non-Attorney Entities
Under USPTO rules, non-attorney entities are not authorized to
practice law or represent owners before the USPTO, and thus, there is
no corresponding user role. A non-attorney entity such as a trademark
preparation and/or filing company is one that: (1) does not have an
attorney directly supervising the staff's interactions with clients or
the USPTO, and (2) provides only law-related services to clients (e.g.,
offers trademark information, not advice; acts as a mere scrivener when
assisting in the preparation of trademark documents; or conducts
trademark searches but does not offer opinions on
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the registrability of a mark). When these entities provide legal
advice, prepare trademark applications, or file submissions on behalf
of others, they are likely engaging in unauthorized practice of law and
unauthorized representation of others before the USPTO. Practice of law
before the Office in trademark matters is described in 37 CFR
11.5(b)(2).
The USPTO has the authority to regulate the conduct of proceedings
before the Office and the conduct of those who appear before the Office
in proceedings, including practitioners and non-practitioners. See 5
U.S.C. 500(d)(2) (Federal agencies may sanction those ``individuals who
appear in a representative capacity before the agency''); 35 U.S.C.
2(b)(2)(A) (the USPTO has the authority to establish regulations that
``shall govern the conduct of proceedings in the Office''); and 35
U.S.C. 3(b)(2)(A) (the Commissioner for Trademarks has the authority to
manage and direct all aspects of trademark operations).
Some customers appear to rely on non-attorney entities for legal
advice without realizing that the non-attorney entity cannot represent
trademark applicants before the USPTO or that the entity's behavior
could undermine the validity of their application or registration.
Furthermore, these non-attorney entities are also routinely providing
signatures on trademark submissions that violate the USPTO's rules.
Under these rules, submissions must be personally signed, and
therefore, signatures are non-delegable. 37 CFR 2.193(a), 11.18;
Trademark Manual of Examining Procedure Sec. 611.01(c). Authorizing
someone who is not the signatory to sign a trademark submission
jeopardizes the validity of the submission and may affect the validity
of the entire application or registration.
The USPTO has imposed sanctions and terminated pending applications
that contain violations of USPTO rules, without regard to whether the
applicant was aware of the rule violations perpetrated by those making
submissions on their behalf. These trademark applicants have been
misled and defrauded by actors filing submissions at the USPTO,
purportedly on their behalf but clearly against the owner's interest
and, in most cases, without the owner's knowledge. To discourage
reliance on non-attorney entities and to adhere to the Lanham Act and
the USPTO rules more closely, the USPTO is limiting user roles through
the ID verification process for a USPTO.gov account to those authorized
under USPTO rules to make trademark submissions filings for the owner
(i.e., the owner and the owner's representative authorized to practice
law before the USPTO in trademark matters).
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-14435 Filed 7-8-22; 8:45 am]
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