Business people and IP lawyers should be aware as new reports from Bloomberg Law reveal the importance of taking great care when filing trademark and patent applications.
THREE Key Steps for Counsel:
- VERIFY APPLICANT USE Complete due diligence on foreign trademark applications to ensure validity of mark and that it is in use. Ensure it is used by client.
- VERIFY CREATION OF MARK. Talk with the client about how they developed their mark.
- DO A SEARCH. Do a conflicts search to ensure it does not infringe upon the mark of any other company.
The U.S. Patent and Trademark Office (“USPTO”) has increased prosecutions of attorneys that file fraudulent applications on behalf of foreign entities. The problem lies in the surge in applications that are flooding the offices of law firms and others that file trademarks.
In recent years, the number of trademark applications filed from foreign countries with the USPTO has increased. For example, in 2013, the USPTO received 4,700 applications from China; yet by 2019, the number had increased to 76,500. The increase has contributed to a backlog and almost doubled examination times. To combat what were likely seen as inadequate applications, the USPTO issued a rule in 2019 requiring overseas applicants to file with a US attorney. However, this was not as effective a deterrent as expected. In response, the USPTO has started investigating and sanctioning attorneys who file large numbers of bad-faith applications without doing due diligence. Read more at https://news.bloomberglaw.com/ip-law/trademark-office-targets-attorneys-for-fraudulent-applications.
These developments demonstrate the importance of having competent counsel when engaging the USPTO. Navigating the trademark registration process is doable yet it is a complex legal process. Parties you have never interacted with may claim your mark as their own or try to prevent your registration by claiming it is too similar to theirs. When you work with experienced trademark counsel, you can avoid fraudulent claims and bad actors who may try to impede your work.
At Gonzalo Law, we regularly file trademarks for clients with diligence and focus. Learn more about our U.S. and international trademark practice here https://gonzalolaw.com/intellectual-property/.