JONES DAY TALKS®: Women in IP - USPTO's Trademark Filings Go Digital

Intended to improve efficiencies and reduce processing errors, new rules implemented by the U.S. Patent and Trademark Office require electronic filing of trademark applications and all submissions associated with applications. Requirements for trademark specimens of use were also updated.

Meredith Wilkes, Ilene Tannen, and Carrie Kiedrowski discuss the likely impact of the new requirements, talk about the problems created by fraudulent specimens, and preview Jones Day's Women in IP initiative's event calendar for 2020.

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Dave Dalton:

The U.S. Patent and Trademark Office has issued three new trademark filing rules effective February 15th, 2020. We'll talk with Meredith Wilkes, Ilene Tannen, and Carrie Kiedrowski about what brought about the new requirements, and also discuss the problems related to fraudulent trademark specimens. You definitely want to hear that. And finally, we'll talk about what Jones Day's Women in IP initiative has scheduled on the event calendar for 2020. I'm Dave Dalton. You're listening to JONES DAY TALKS®.

Dave Dalton:

Meredith Wilkes co-leads Jones Day's global trademarks, unfair competition, and copyrights group. She's a lead trial lawyer that is focused on high stakes trademark, trade dress, trade secret, false advertising and design patent litigation matters. Ilene Tannen has more than 25 years experience as a key advisor counseling domestic and multinational companies regarding global trademark clearance, brand development, and use and registration strategies.

Dave Dalton:

Ilene is also a former member of the Trademark Public Advisory Committee. And Carrie Kiedrowski has more than 16 years of brand protection and enforcement experience, and has particular success in resolving online trademark infringement issues and in domain name dispute arbitration actions before the World Intellectual Property Organization. Meredith, Ilene, Carrie, thanks for being here today.

Ilene Tannen:

Thanks for having us Dave.

Carrie Kiedrowski:

Thanks Dave.

Meredith Wilkes:

Thanks Dave.

Dave Dalton:

Meredith let's go to you first. The U.S Patent and Trademark Office has issued three new filing rules that come into force on February 15th. Can you talk about what these rules are, and summarize what prompted the changes that the rules are bringing about?

Meredith Wilkes:

Absolutely, Dave. At a really high level we're looking at three rules going into effect on February the 15th. The first is mandatory electronic filing for all trademark applications and any related submissions to the Trademark Office. So no more paper, all electronic filing with some limited exceptions under some international treaties, but for the most part, all e-filing. Second, the office is going to require an email address for the applicant and their authorized attorney. And third, the office has updated requirements for specimens of use and proving how it is that you're using your mark and interstate commerce such to obtain a registration, or to obtain a renewal of that registration. And I think it's fair to classify the drivers of these roles into two buckets. The first being, improve efficiency and reduce errors, right? Processing type of drivers. But the other is an ongoing message that we've been hearing from the office over the last few years, and it's really aimed at combating improper filings, or fraudulent filings in the trademark office. And so these three rules going into effect, I think further that aim.

Dave Dalton:

Now interesting. Now I certainly would have picked up on the prior. You mentioned that there are two reasons for doing this. Certainly the efficiencies are obvious. In fact, in a sense it's a little surprising I think it's taken this long, if you know what I mean, but we'll talk more about the potential problems that fraud and so forth later, but it's interesting you bring it up at this point. So let's go to Ilene for a second. For those of us who are not familiar, talk about how the rulemaking process works, and explain the role of something called the Trademark Public Advisory Committee, or TPAC. What's that all about?

Ilene Tannen:

Sure. All right. Just a little bit of background on the rulemaking process and with respect to mandatory electronic filing requirement, the way it works at the Trademark Office is mandatory electronic filing is something that has been in the works for a long time, several years of the PTO, it was the pet project of the former trademark commissioner, Mary Boney Denison. And then two years ago, 2018, a notice of proposed rulemaking was published in the federal register about the mandatory electronic filing. It opened up a comment period for stakeholders, trademark owners, to provide comments regarding the electronic filing. They had two months ending in July 30th, 2018. Thereafter the rules package then goes to the office of management and budget, and then after approved there, it goes to the office of the Under Secretary and director for final review and signature. So all that happened, and then the final rule is published in the federal register, and it was published on July 31st, 2019, with an effective date of October 5, 2019.

Ilene Tannen:

However, on October 2, a notice was published, delaying the effective date until December 21st, and then on December 18, another notice published delaying the effective date to February 15, 2020, which is on track at this point. The reasons behind the delay was because stakeholders voiced their concern about needing more time to prepare for electronic filing, and the USPTO needed additional time to ensure their internal implementation of the requirements associated with the final rule.

Dave Dalton:

Okay.

Ilene Tannen:

So, that's how it worked step-by-step. Now with respect to the specimen rule changes, this was part of the USPTO's aggressive efforts to combat the increase in the number of bad faith submissions of false, or inaccurate use claims, and fake, or digitally altered specimens, that don't show use of the mark in commerce that were being filed. And so the Trademark Public Advisory Committee, this is a committee which represents trademark owners, we are appointed by the secretary of commerce for a three-year term. I was appointed by the secretary of commerce starting at the end of 2016 through the end of 2019, I just rolled off. And as TPAC, as we're called, was created for the purpose of providing advice to the Under Secretary of Commerce of the Intellectual Property, and the director of the USPTO, on matters relating to policies, goals, performance, budget, and user fees. And TPAC meets with the USPTO at their headquarters on a quarterly basis to discuss issues addressing these four mentioned items, and also hold a public meeting on a quarterly basis for the USPTO to report to the public on the status of these things.

Dave Dalton:

Okay.

Ilene Tannen:

Now, as I mentioned, mandatory electronic filing been in the works for a while. The improper filings and the bad faith behavior that's been going on has been a growing concern for the USPTO for several years, especially with respect to foreign applicants in their applications. So the USPTO has been working on a variety of initiatives to support both of these, the mandatory electronic filing and the combating of the behavior, and then a number of initiatives have been instituted. Now the PTO regularly consulted, and continues to consult with TPAC regarding these current and proposed initiatives, and they sought TPAC's feedback regarding the proposed new policies and the rule changes. And this gave TPAC an opportunity to comment and provide suggestions on the rules, and how it would affect the trademark community. And then TPAC's comments and suggestions were typically taken under advisement if you will say, but there were often incorporated to some extent into the final rules that were issued by the PTO, and our voices are heard in these final rules as well.

Dave Dalton:

And your three-year term just concluded.

Ilene Tannen:

Just concluded.

Dave Dalton:

Would you do it again?

Ilene Tannen:

Absolutely.

Dave Dalton:

No doubt. No Doubt. Let's swing over to Carrie for a second. As part of this package that's coming in February 15th, the Trademark Office has implemented requirements for specimens of use. Why are these requirements important?

Carrie Kiedrowski:

I think, Dave, the first thing to talk about is what are these new requirements? Meredith alluded to them briefly at the opening, but real quickly for the goods, the specimens actually must show the trademark on the goods, on containers, on packaging for the goods, labels, or tags affixed to the goods, or on a display associated with the goods. So no longer can you just submit hang tags sitting on the table for a pair of shoes, or a label, it has to be actually affixed to the goods. And in addition, for services, the specimens must actually show use of the mark in connection with the sale of the services. And when you use a website as proof of use, it's critical that the webpage must now have the URL address and the access, or print date. So no longer can you just have a screenshot of part of a website page. You need those two additional elements.

Dave Dalton:

Let's stay with you for a second, Carrie. And I'd like Ilene to weigh in on this part as well. Let's talk about fraudulent specimens. What are they? How big is this problem? And what can a client do? So if you will, for parts of our audience maybe who don't know, or don't understand, what is a fraudulent specimen? How would you define that?

Carrie Kiedrowski:

Well, they're often quite colorful, and can actually bring a laugh or two. So sometimes you'll see a fraudulent specimen as a mock-up. So it could be as simple as someone puts the trademark on a piece of tape, and tapes it to a product. So you're looking at very unsophisticated attempts, but over the past several years we've seen much more sophisticated fraudulent specimens in the form of digital mock-ups, or doctored images. Here's an interesting example. There was this one applicant who took a pair of Sony headphones, he removed the Sony mark digitally and then imposed his mark, which was E-O-E-J-T-P. So the trademark examiners are seeing an array of different types of fraudulent specimens.

Carrie Kiedrowski:

And another example is where an applicant files a use based application and sends in a photograph for instance, of a purse with a tag on it. So on the face of it, this photograph of the purse, it has the trademark and the tag. It looks like it's a valid specimen, but that is until the examiners see similar applications from different applicants with the exact same picture of the same purse, but with different trademarks on it. So, apparently it's clear that applicants are trying to game the system, and trying to pull one over on the USPTO. So the goal, again, is to try to trick the USPTO into believing that a trademark isn't a use in commerce.

Dave Dalton:

I see. Well, how big is this problem? Is this is a huge concern?

Carrie Kiedrowski:

There's been a dramatic increase. And as many of us know in this podcast, the problem is that the majority of these fraudulent specimens are coming in from China, and this is a problem.

Dave Dalton:

No way. Really?

Carrie Kiedrowski:

You're surprised.

Dave Dalton:

Uh-huh (affirmative).

Carrie Kiedrowski:

Yeah. In fact, the Chinese government has incentivized filing and obtaining trademark registrations. So a citizen can actually be paid up to, it's about $800, as last reported. And that's for obtaining a trademark registration in the United States. Why would someone want to do this? It actually ultimately impacts commercial progress for our clients. It increases costs. You have to fight to obtain a trademark registration sometimes. Your trademark might be blocked. You have to redo your branding. It just ultimately slows down commerce and increases inefficiencies.

Dave Dalton:

And all this stuff is hard enough without somebody gaming the system on you and trying to get over on everybody, and just speed bumps, but bad speed bumps, right? Ilene, what would you tell a client to do if they're worried, or concerned about this kind of thing?

Ilene Tannen:

Well, there are several things going on. First of all, the PTO, it's hard for them because it's affecting the accuracy and integrity of the trademark register, what's happening is that people are getting registrations that otherwise shouldn't. And the Trademark Office is trying to capture as much of this as they can, but they can't do it all by themselves. What they are doing to the best of their abilities using digital forensic services to detect the fraudulent specimens. They are also setting up databases to test for fraudulent specimens, so an examining attorney would be able to identify multiple applications with virtually identical specimens for different marks filed by different applicants. So there's a lot of things they're doing, but from the client's point of view, there's several things. Right now the trademark office has a streamlined process for the public to report improper specimens, and there's a website called TMSpecimenProtest@uspto.gov.

Ilene Tannen:

And people have submitted information showing fraudulent specimens that they found in the marketplace, or associated maybe with an application that was cited against their mark. And the evidence submitted through this process has significantly aided the detection and examination of fake specimens during the examination period, or the expedited inter partes non-use challenges. What's happening is if clients become aware of these fake specimens during the examination process, they should let us know so that we could submit protest to the USPTO. In addition for us attorneys, it's really important now as we always do when we're confronted with an office action citing a prior mark, we always review the file history for that prior mark. But now we have to be even more vigilant in reviewing the specimens that support the registration of the prior application to make sure they're proper, because if they're not, then we need to protest it, and we also need to bring it to the attention of the examining attorney.

Ilene Tannen:

Now, the Trademark Office has also issued an exam guide in July, of 2019, which provides information to trademark owners about what the Trademark office is doing when they identify these suspicious specimens, and the requirement for additional information. So it's about being vigilant, and it's about doing whatever we can to make sure that, A, our client specimens are always complete and accurate. And number two, that we're watching out in the marketplace, or as the client see things in the marketplace, so that we can bring it to the attention of the Trademark Office, because everybody in the trademark community needs to work together to try to stop this bad behavior.

Dave Dalton:

Well, as problematic as this all is, at least there are processes in place where grievances could be heard, or addressed, or some of the stuff could be stopped short. So you take some comfort, I think, in the notion that at least there's a system out there where these concerns can be brought, is that true?

Ilene Tannen:

Absolutely. And the Trademark Office is also looking at a number of other initiatives. And like I said, one of the biggest ones is this database they're putting together so that they can compare specimens as they come in the door, which is a big deal. And these new requirements are another way for the Trademark Office to stop the bad behavior, because at the end of the day, it's the trademark community that's affected by this because the register is no longer accurate, and the register is what's used by all the businesses to make decisions with respect to their branding. So, there's safeguards out there that the Trademark Office is using now, but I anticipate based on just my knowledge of being part of TPAC, that there are other things in the works, it's just the timing of it because the USPTO is a big operation. So it just takes the wheels a little bit longer to get moving.

Dave Dalton:

Yeah. Well, good. Let's stay with that for a second though. Are there other rulemaking changes looming, do you think, or what's your hunch in terms of later on in 2020? Are there other things we got to be looking for?

Ilene Tannen:

Yeah. 2020 is huge for changes. I'll run through what I'm aware of right now. I think you're going to see more initiatives in the coming year for correcting bad behavior. And some of the things that the USPTO is considering is creating incentives for registrants to ensure that their registrations are, and remain accurate regarding the goods and services on which they're using the mark. And so instead of waiting for the maintenance time, when you've got to file your renewal, or your declaration of use, the Trademark Office's considering charging a zero fee to people to file a request to delete unused goods and services from their registration before they possibly get stuck in a proof of use audit, or a TTAB proceeding. And they're also considering charging a fee if you amend a registration when goods, or services, are deleted as a result of an audit. And I can tell you, it can be quite expensive.

Ilene Tannen:

So these are two proposals they're looking at. They're also looking, right now so far at the end of this past year, because there are bad actors going in and filing and making unauthorized changes to other people's trademark records, you now have to log into MyUSPTO.gov, which is an app, in order to do any work in the Trademark Office. And the next phase that's going to be coming up this year will be a verification requirement to identify who you are. And then a third one will be for delegates. So what the Trademark Office is doing is trying to make sure that whoever goes into a record in the Trademark Office is allowed to do so. So that third parties can't get in there and make changes to your records.

Dave Dalton:

Excellent.

Ilene Tannen:

And there's a few other legislative changes I'll point out just real quickly. On an aside, there's going to be a new expungement proceeding where any person could file a petition to expunge your registration on the basis the mark was never used in commerce in connection with the goods or services in the registration. So another way of combating it after the fact. They're looking to amend the rules to provide for cancellation action at any time, if you've determined that the mark has never been used in commerce since it was registered. They're also looking at flexible response periods for office action responses, so it's going to change the timeframe from six months to something shorter on certain office actions. And then the last thing they're going to be doing is there's going to be a new trademark fee schedule coming out this year, which is going to affect almost all filings and other activities of the PTO. And there's going to be fees involved in trying to go after people who commit bad-ass at the Trademark Office.

Dave Dalton:

A lot's going on there, and I got to tell you, we've done a lot of these podcasts and I've been involved with some of the commentaries and white papers the firm puts out, this is an area of the law that's quietly effective. People who run things seem to know where the issues are, what the problems are, and there always seems like there's some plan, something's in motion to make this better, more efficient, more effective. I hear this all the time. Now you three are on the ground with this stuff every day, and maybe you'll disagree with me, maybe that's not the way it works in the real world, but I'm impressed by the things I hear. In terms of access to information, and better processes, and better efficiencies that the clients seem to have. Let's swing back to Meredith for a second, and I'd like Carrie to input too, talk about all these changes and what the probable impact will be on clients as we move forward.

Meredith Wilkes:

So, Dave, I think you heard Ilene really lay out a very thorough landscape about what changes we can expect either in 2020, or beyond, and aimed really at the intake process, at the prosecution and maintenance process, and then in the post registration process, right? Some prevention action and some cure action. And those are things that the community is very much looking forward to. At the end of the day, the problem always is the cost to our clients, and Carrie and Ilene have referenced this throughout our podcast. When we're asked to search a mark for a client, or clear a mark, and we uncover marks that may pose an obstacle. Now the client has to make a determination as to whether or not they still want to proceed in the face of this obstacle. And if the obstacle is in fact a registration that was fraudulently procured, it's sitting out there and we're going to have to spend money to get rid of it.

Meredith Wilkes:

Some of these expedited proceedings are helpful, but some of them, unfortunately they're well-intentioned, but they require the other party to be engaged, the owner of this fraudulent registration in order for some of these processes and procedures to truly be effective. It requires their participation, which if it's a fraudulent registration, they're not going to participate.

Dave Dalton:

Yeah. They're not going to raise their hand. Right?

Meredith Wilkes:

Yeah, exactly, exactly. And so some of these curbing mechanisms that are in place now requiring email addresses, requiring US counsel for foreign applicants, really aimed at curtailing the behavior before it becomes a costly problem for our clients. But at the end of the day, there is money, that money is going to have to be spent for our clients to continue to deal with the problems of the fraudulently procured registrations.

Dave Dalton:

Sure. Well, great information, great insights. A lot to watch in the months ahead. It's an interesting area that just never seems to stand still. There's always something new. I talk to you guys at least once a quarter, and it's always something like this. Always very informative. Speaking of talking to you guys once a quarter, let's stay with Meredith for a second. Jones Day's Women in IP initiative has quite the agenda plan for 2020. Talk about what's coming up, and also were interested people can go for more information.

Meredith Wilkes:

Absolutely. So we have four CLE programs for Women in IP CLE programs lined up for 2020. Our first one is a brand update, Carrie and I will be delivering a CLE program in our Atlanta office on March 5th, on memes, marketing, money and more.

Dave Dalton:

Oh, alliteration. What was it again?

Meredith Wilkes:

Yes, March 5th in our Atlanta office.

Dave Dalton:

March 5th in the ATL. All right.

Meredith Wilkes:

Yep.

Dave Dalton:

All right.

Meredith Wilkes:

And, of course, it'll also be available through the webinar as well. So if you can't make it live in-person in Atlanta, you can dial in through the web. And there will be more information about that program on the Jones Day website. If you just log into the website and search Women in IP, the information about our most current program offering will certainly be available and you can always send questions to womeninip@jonesday.com to that email address, and we're happy to get back with you. But we do have three other programs that we're offering in 2020. Our leadership program, A View from the Top, is June 9th in the Cleveland office. On September 15th in Minneapolis we'll be doing our women in the courtroom program, and then rounding out the year in Silicon Valley in November, we'll be doing a tech transactions and licensing seminar.

Dave Dalton:

California's nice in November. You're going to have a ball, I think. Hey, always a pleasure you three. This has been great. We'll do this again next quarter, I know, if not sooner, but thanks so much for being here today. And what's the email address again, Meredith, for information on Women in IP? Is it womeninip@jonesday.com ?

Meredith Wilkes:

That's it.

Dave Dalton:

WomeninIP@jonesday.com. Sounds real good. Thanks all three of you for being here today.

Meredith Wilkes:

Thank you.

Carrie Kiedrowski:

Thanks for having us.

Dave Dalton:

Take care.

Carrie Kiedrowski:

Bye-bye.

Ilene Tannen:

Bye-bye

Dave Dalton:

You can find complete biographies for Meredith, Ilene and Carrie on the intellectual property practice page at jonesday.com. Be sure to visit our insights page while you're there. You'll find commentaries, newsletters, white papers, podcasts like this one and video content. Subscribe to JONES DAY TALKS® at Apple podcasts, or wherever else quality podcasts can be found. I'm Dave Dalton, we'll talk to you next time.

Speaker 5:

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