The Department of Commerce recently filed several applications to register the United States Patent and Trademark Office’s (USPTO) trademarks in an ongoing effort to counter scam solicitations of Trademark owners. As anyone who has ever filed a federal Trademark application knows, companies masking as government agencies with names like “Patent and Trademark Bureau” and “Patent and Trademark Office” send official-looking letters to trademark owners, aimed to confuse, mislead, and strike panic about abandoning a pending application or issued registration for failure to take some action. Key to the scam is providing inaccurate, premature deadlines, triggering the Trademark owner to pay unnecessary fees before they are even due. The scammers accept only payment by check (red flag!) so once the owner discovers the deception, getting a refund is virtually impossible.
The USPTO has tried to combat the scammers by warning Trademark applicants and registrants, working with law enforcement, sanctioning filers who violate USPTO rules, and even posting a list of bad actors on its website https://www.uspto.gov/trademarks/protect/caution-misleading-notices. Yet the scammers keep getting more sophisticated and owners keep getting hoodwinked. So, now the USPTO has new weapon: Trademark registrations of its own.
Government agencies, just like any other brand owner, can and do take advantage of the federal Trademark registration system to protect and enforce some of their most valuable assets. Indeed, branches of the U.S. military, the Food and Drug Administration, and the Internal Revenue Service are just a few examples of the many government entity Trademark owners. But until recently, the USPTO, the gatekeeper of Trademark , ironically has never taken advantage of the services it provides. The Department of Commerce’s recent filings seek protection of “USPTO,” “United States Patent and Trademark Office,” and others.
Once armed with federal Trademark registrations, the USPTO will have benefits not previously available, such as seeking certain monetary damages and recovering attorneys’ fees from infringers. The USPTO’s applications will be assigned and examined just as any other application would be. The hope and goal are that the USPTO’s federal Trademark registrations will prove to be the powerful deterrents to scammers.
