Category Archives: PTO Updates

USPTO To Hold Roundtable on Fraudulent Trademark Solicitations

The USPTO has announced that on July 26, 2017, the Trademark Organization and the Trademark Public Advisory Committee plan to hold a roundtable discussion on fraudulent trademark solicitations.

Fraudulent trademark solicitations have been a problem for trademark holders around the world for decades. Scammers typically mine trademark application and registration information available online from the USPTO public database to obtain contact information of rights holders or their agents. Solicitations often mimic the look of official government documents, or appear to be from companies whose names falsely suggest a connection with the USPTO, including terms such as “United States,” “Registration,” “Office,” or “Agency.” Typical solicitations include offers for legal services, monitoring services, or offers to record trademarks with customs officials, all in exchange for substantial fees. The cost of these scams to trademark holders can be substantial. In late December of last year, the Department of Justice reported on a mass-mailing scam that netted approximately $1.66 million from U.S. rights holders, and has resulted in five convictions to date. Continue reading

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Amended TTAB Rules

New rules for the Trademark Trial and Appeal Board (“TTAB”) go into effect on January 14, 2017, aiming to provide more efficiency and streamlining of inter partes (oppositions, cancellations, and concurrent use) and ex parte appeal proceedings.  The rules apply to all proceedings active on January 14 and those subsequently filed.

Some of the key rules changes are summarized below.  Continue reading

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USPTO Announces Pilot Program To Allow Amendments To The Identification Of Goods And Services Due To Technology Evolution

On September 1, 2015, the USPTO began a pilot program that allows trademark holders to amend the identification of goods and services in their trademark registrations where the underlying subject matter remains unchanged, but evolving technology has changed the manner or medium in which the mark holder provides the products or services.  Thus, if the requirements of the program are met, a mark holder need not re-apply to register its mark or lose the protection of registration.  Mark holders, therefore, would do well to review their portfolios to determine whether they can and should take advantage of this program. Continue reading

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