“USPTO Publishes Notice of New Trademark Administrative Sanctions Process”

On January 5, 2022, the United States Patent & Trademark Office (the “USPTO”) published a Notice to the Federal Register detailing a new administrative process established by the Commissioner of Trademarks to investigate improper submissions filed with the USPTO in trademark matters.¹ The Notice details a procedure in which the USPTO will investigate suspicious filings, potentially impose sanctions on relevant individuals and entities, and ensure those sanction are reflected in the file histories of the affected applications and registrations. This Notice along with the passage of the Trademark Modernization Act of 2020, and the recent promulgation of its associated rules show a strong effort by the USPTO to crack down on fraudulent and suspicious trademark filings.

The proposed administrative process will begin when the USPTO identifies or becomes aware of a suspicious submission in connection with a trademark application or registration. Such knowledge may be referred to the USPTO by internal sources (examining attorneys or data analytics personnel) or by external sources (letters-of-protest, [email protected] mailbox, law enforcement, or media reports). The USPTO will investigate suspicious submissions to determine if they violate USPTO rules and/or the USPTO website’s Terms of Use, and are part of an improper filing scheme.

Upon initiation of investigation relating to an application, that application may be removed from examination, in which case the USPTO will update the prosecution history to reflect that the application is suspended pending review. If appropriate, a suspension letter will be sent to all correspondence email addresses in application’s file and any associated deadlines will be suspended. The applicant will not be able to make any electronic submissions except for an express abandonment or a withdrawal of attorney. For any other submissions, the applicant must petition the Director under 37 C.F.R. § 2.146 requesting permission to file a further submission. If the investigation ends and the USPTO does not issue an order, the suspension will be lifted and the application will be either assigned to an examining attorney or returned to the prior examining attorney, where appropriate.

If the USPTO does find conduct that appears to violate USPTO rules and/or the USPTO website’s Terms of Use, the USPTO may issue an order to show cause why sanctions should not be imposed on any relevant individuals or entities, which will be placed in the records of the relevant application or registration.

Such an order will:

Such proposed actions or sanctions may include:

The relevant parties must respond to the order and explain why the USPTO should not impose the proposed actions or sanctions. The resubmission of documents or appointment of a new attorney will not be sufficient to avoid the imposition of sanctions.

After the relevant individuals or entities respond to the order to show cause, if the USPTO does find a violation of USPTO rules and/or the USPTO website’s Terms of Use, the USPTO will issue a final decision which will include an order for sanctions. For purposes of transparency, the USPTO will include a copy of the final decision in the TSDR record of the relevant applications or registrations.

When the USPTO issues an order of sanctions of termination for a pending application, the USPTO will update the application’s records to reflect this termination. Generally, an applicant will not be able to revive this application except in the case of a mistake by the USPTO. Instead, an applicant will have to file another application seeking registration of the mark.

When the USPTO issues an order of sanctions of termination for a registration, the USPTO will not necessarily immediately terminate the registration, but instead will update the prosecution history to reflect that the registration was subject to an order for sanctions. Although the registration will not necessarily be immediately terminated, USPTO findings made in the sanctions order may affect the validity of the registration and will be considered to be a final decision adverse to the registrant’s right to keep a mark on the register. This may severely weaken a registration if it is later subject to an attack. As such, registrants should consider filing another application seeking registration of the mark.

In summation, the USPTO has proposed an administrative procedure that will target suspicious trademark filings at the USPTO and increase transparency around the sanctions imposed on violations of USPTO rules. This proposed administrative procedure dovetails with the USPTO’s recent promulgation of rules implementing the Trademark Modernization Act of 2020. Both actions indicate that the USPTO is taking action against suspicious and fraudulent behavior in relation to trademark filings. If a party wishes to provide the USPTO with input on the proposed administrative process, the period for public comment on the Notice ends on January 20, 2022.