Congress is moving on Trademark Legislation with a number of different potential proposals circling. Today, the Senate IP Subcommittee (Judiciary) held hearings on trademark law:
Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses
Testimony came from:
- Prof. Professor Barton Beebe (NYU) (trademark depletion; 2/3 of recent registrations from China on apparel include fraudulent specimens; supporting ex parte reexamination of registered marks and expungement);
- Douglas Rettew (Finnegan Henderson) (arguing that eBay should not apply in trademark cases, but rather that mark holders should have a presumption of injunction)
- Megan Bannigan (Debevoise & Plimpton) (clutter due to fraudulent registration and renewal
- Prof. Thomas Williams (Duke) (the system should be one that is fair and reasonable and support small business activity)
- Stephen Lee (Target) (it was Lee’s team at Target’s team that may have first identified the problem of fraudulent registrations)
The USPTO and Congress are working with various interest groups to develop legislation in this area. However, the legislation is not yet out for primetime.
Nobody (save the desperate, when cornered) asserts that “patent” includes “trademark.” About the only overlap between patents and trademarks in US law comes about because patent drafters seem to be in love with trademark terms but do not think or know much about trademark law. But when a trademark appears in a patent claim it’s a fair bet that (1) the claim is fatally indefinite or (2) it’s an improper use of a trademark.
Sadly, excellent posts by Blindman and Bored Lawyer are getting buried in the usual spewed muck from Malcolm.
Maybe the good professor can reclaim the blog section that Hricik rarely uses and simply shunt all of Malcolm’s non-patent law rants there.
What struck me was Blindman’s suggestion, anon, is that people in positions of high responsibility, found to be involved in fraud, should lose their registration. I agree. The key to a good and viable society is trust. Betrayal of that trust erodes the foundations of society and so, for the preservation of the general welfare, must be stopped. Punishment must be effective. Stripping them of their registration to practise strikes me as proportionate and effective.
And the problem is not confined to registers of lawyers, is it?
Your last question seems most odd there MaxDrei.
As if you want to open the door to non-patent law rants on a patent law blog.
If this is a patent law blog, why are we discussing, at the invitation of Dennis Crouch, fraudulent conduct outside the world of patent law? Or are trademark registrations in reality patents? That’s exclusively a lay person’s misconception, isn’t it?
Patent law in the “generic sense” (as a proxy for IP law, which of course includes TMs).
Did that really need to be explained to you?
“Generic sense” as a “proxy” for patent law? Either he just admitted he’s a lay person or that he chooses for words to mean whatever he wants them to mean. Whichever, did you really expect a coherent answer?
My shifty historical pseudonym friend,
There is no “gotcha” moment here for you.
Your suppositions simply do not carry – in any way shape or form.
“in any way shape or form.”
is what lay persons think lawyers say.
gotcha. Again.
That you think so is far more biting than a reply that I would offer.
(hint: that’s not a good thing for you).
Is your “concern” here for what a lay person would understand tied to the straight forward question regarding your line of work that you refuse to answer?
My! What a good dancing monkey!
gotcha. Again.
You keep doubling down, so the prior reply fits here as well:
That you think so is far more biting than a reply that I would offer.
(hint: that’s not a good thing for you).
That self-flagellating thing of yours is a pretty nasty habit….
Good question, Morse. I certainly expected words in reply. The poster who calls him- (it can’t possibly be a “her” can it) self “anon” always aims to have the last word. As to “coherent”, no, not really. Coherency is not anon’s strongest suit. But, here, it is a fact that “trademark” is included in “Popular Tags” to the right of the threads in the Crouch “patent law” blog, lending some support to the notion that “patent law”, at least in the opinion of Dennis Crouch, includes the law of trademarks.
These days, in the UK, we have three distinct professions of equal standing, each with its own system of qualification by written examination of competence to practise: attorneys at law, patent attorneys, trademark attorneys. Nearly all practitioners over here are qualified by examination in only one of these three professions. So, for me, it seems odd to assert that “patent” includes “trademark”. But that’s why I’m here: I’m curious, about how different it is, in the USA.
Nobody (save the desperate, when cornered) asserts that “patent” includes “trademark.” About the only overlap between patents and trademarks in US law comes about because patent drafters seem to be in love with trademark terms but do not think or know much about trademark law. But when a trademark appears in a patent claim it’s a fair bet that (1) the claim is fatally indefinite or (2) it’s an improper use of a trademark.
… also, I think that you attribute to Blindman the impetus provided by Bored Lawyer.
Blindman’s posts sound out in a more “TM filer” side of the coin. That’s why I was interested in Bored Lawyer’s response to Blindman’s posts.
Just saw this.
Blindman is addressing the burden of dealing with bureaucracy meant to weed out fakes. That is a balance between that burden and the burden of having false registrations on the Principal Registry.
My suggestion only works after the fact. If it turns out you submitted something false, and you failed to do due diligence to get you there, then you should lose what you got. There is no initial burden in terms of paperwork, but what you are expected to do is understand your own business and know that what you are representing is accurate.
‘Fraud’ which the current statute requires is, IMO, too high a standard. The standard should be due diligence.
Let me illustrate with an example from the Medinol case I cited. The respondent, Neurovasx, had registered the NEUROVASX for “medical devices, namely, neurological stents and catheters.” As part of that process, it has to certify that it used its mark in connection with those goods in U.S. Commerce. (Use in commerce is a bedrock requirement to gain trademark rights.)
It had used the mark for catheters. It NEVER used the mark for stents. NEVER EVER.
Under Medinol, that was enough to cancel the registration. Under Bose, it is not enough, you have to show an intent to deceive the Trademark Office. Since Bose, the chances of that happening are virtually nil.
Again, IMO, that is just wrong. It really is not too much to ask that the applicant for a TM registration know its own business, or do some due diligence to ascertain the basic facts. If you don’t do it, then you lost your registration.
I wonder if shortly after the Senate acquital of Trump this board will be full of complaints about Examiners saying “I would like you to do me a favor though…” in interviews.
While clearly intended to pursue folks with fraudulent registrations, it is a real and costly pain for small business clients with goods having “Made in China” tags on their specimens. Extra professional fees required to answer and comply to the detailed Trademark Office questions and further information requests run, in my experience, an additional $1000 or more per trademark application. This is an unreasonable burden for small businesses where there is absolutely no showing by the Trademark Examining Attorney of any reason whatsoever to even question the specimens already provided in the Statement of Use.
The current USPTO questions:
To permit proper examination of the application record for compliance with use in commerce requirements, applicant must respond to the
following requests for information and documentation about the specimen(s). See 37 C.F.R. §2.61(b); TMEP §814. Answer for each
specimen/photograph/image provided. For any website source, provide a digital copy of the entire webpage from top to bottom, as rendered in an
Internet browser, that includes the URL and access or print date. TMEP §710.01(b) (citing In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB
2018)).
(1) Identify the particular good(s) listed in the application for which the specimen(s) was submitted to show use of the mark.
(2) Was the specimen created for submission with this application? If so, specify the date each specimen was created. If applicant
obtained the image(s) of the goods shown in the specimen(s) from a third-party website, provide the URL of the website and a
digital copy of relevant webpage(s) for each image.
(3) Provide information about and examples of how applicant’s goods appear in the actual sales environment.
(a) If sold in stores, provide a representative sample of the name(s) of the stores and of photographs showing the goods for
sale in the named stores, such as photographs of the sales displays or goods on shelves with the mark.
(b) If sold online, provide a representative sample of the name(s) of the online retailers, the website URL(s) for each named
retailer, and a digital copy of the webpages showing the goods for sale on the named website.
(c) If sold in another type of sales environment (e.g., catalogs, trade shows), identify the environment and provide photographs
and/or documentation showing the goods for sale in that environment.
(4) If the information in question (3) about how the goods appear in the actual sales environment is not available to applicant, please
describe how applicant’s goods are sold or transported and provide photographs and other documentation showing how
applicant’s mark appears on the goods and/or its packaging when the goods are sold or transported to or within the United States.
(5) For each category of sales environment specified in response to questions (3) and (4), specify when the goods bearing the mark
were first available for purchase within the United States, the date of the first sale of the goods to or within the United States, and
whether the goods are still for sale to or within the United States in that environment.
(6) For the goods identified in response to question (1), specify the dollar amount of sales with or within the United States and
provide at least three invoices or other supporting documentation that show payments or other consideration made, redacting
personal or private information of buyers as necessary.
Applicant must also fully respond to all the requirements for information and documentation. Failure to comply with a requirement to furnish
information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that
evidence is available on applicant’s or a third party website or providing a hyperlink of such a website is an insufficient response and will not
make the additional information or materials of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
The answer, IMO, is to legisaltively reverse In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed Cir 2009). Which held that a finding of “fraud” on the TM Office to cancel a registration requires a high showing of intent to deceive.
IMO, the better policy was the holding of Medinol Ltd. v. Neuro Vasx, Inc., 67 U.S.P.Q.2d 1205 (T.T.A.B. 2003). Basically, if you are going to make representations about your own business to the PTO to get a registration, you had better know what you are talking about, or risk losing your registration. (Maybe their could be an escape clause for a wholly innocent mistake.) In fact, I would expand it to include losing all your registrations.
BL,
I am not sure that I can agree that the ramifications of “fraud” should be set differently for TM than for most any other thing.
To that end, and once again looking at a mirror reflection to patents, the AIA went in the opposite direction and removed wholesale the aspects of “deceptive intent” (and penalties thereof). Sure, outright fraud is still an item that can/will/should be penalized, and perhaps having inventorship in error with its penalty was a bit draconian, but the level that the AIA took things was much more than merely “centering” things.
I think we are hung up on the word “fraud,” which has a long common law history that was then imported to the Lanham Act. (Bose was right about this, in terms of statutory interpretation. It’s just bad policy, IMO.)
My point is this. To get a TM registration, you have to make certain representation to the TM Office. And most of them concern your own business — you are actually using this trademark for these goods/services, in commerce. And this specimen you are providing is a real specimen of the mark being used in commerce. This is not rocket science .
At minimum, you need to do due diligence to make sure what you are representing about your own business is true. If not, there needs to be serious penalties for that.
Now I am not sure about how that translates to the patent sphere. Some of what goes into a patent application is indeed something you are supposed to know. “These people invented this.” “This invention has been enabled.” Etc. So, yes, for those I would think that you also need to have a different standard lower than fraud.
Remember, in both cases you are asking the government to give you something that is valuable — a patent or TM registration — which is a limited monopoly. At least make basic efforts to make sure you are telling the accurate truth.
As to: “ At least make basic efforts to make sure you are telling the accurate truth.” – I am certainly not advocating otherwise (in either of patent or trademark prosecution).
I was pointing out that “serious penalties” in the AIA were made far less serious (in almost — but not all — regards).
I do NOT see any “hung-up” on the word “fraud.”
If anything, that word is critical, and remains critical. There is a reason why that word carries impact and the very response that you state (your “ If not, there needs to be serious penalties for that.” is exactly that impact).
I do not understand what point you are trying to make with your “rocket science” comment.
By the way – I do appreciate the case citations (with the caveat that I have not yet read them). But I need not read them for the points I have presented.
… would also be interested in your response to Blindman’s posts at 6. and 6.1.
Bildo: “ At least make basic efforts to make sure you are telling the accurate truth.” – I am certainly not advocating otherwise (in either of patent or trademark prosecution).
Should there be any penalties for failing to make those “basic efforts” , Bildo?
Let everyone know how serious you are and what those penalties should be. Should the penalties be higher or lower depending on the status and power of the person making the false statements and the number of people affected by the false statements?
Let everyone know, Bildo. You’re a very serious person. And so is Dennis! He’s a professor of law, after all.
Careful there, “anon”. The AIA removed the need to certify that a previous action or omission occurred “without deceptive intent” on someone’s part, but submissions to the PTO still have to be truthful, willful false statements are still punishable, and if it’s proven you deceived or tried to deceive the PTO, you still run the risk of your patent being declared invalid and/or unenforceable.
Thanks AM – the lack of certification is exactly what I was thinking of.
With that lack, how is it that you suppose a “proven to be deceitful” would be forthcoming?
We already know that trademark depletion will be a huge problem by the year 3000.
I found the article by Douglas Rettew (Finnegan Henderson) to be interesting, but ill-aimed, and its attempted distinguishing of “presumption” from the realm of patents (and copyright by way of the Patent Clause) from the realm of trademark (by way of the Commerce Clause) to miss the boat on ALL of “presumption,” “intangible harm,” the underlying right at issue, AND the factors by which the norms of equity need be applied.
Of course, the Court in eBay clearly “missed” — and as noted elsewhere ( link to patentlyo.com ), an anti-patent attitude puts a heavy thumb on the scales of Justice.
In eBay, SCOTUS in essence said, there are requirements for injunctions, and those requirements have to be met in all cases. Even patents.
Hard to believe SCOTUS would now say that the bar for an injunction is lower for TM cases, even if there isn’t an anti-TM animus similar to the anti-patent animus among the naughty nine.
Where they missed in eBay is not in saying that the factors must be present, but in how they viewed those factors (they violated the very “principles of equity” that Congress intended the Courts to follow in order to prevent the violation of any right secured by patent (see 35 USC 283), even if Congress also provided “on such terms as the Court deems reasonable.”
The principles of equity start with making the transgressed as whole as possible, and there is nothing more “whole” in regards to the “negative nature” of the patent right than an injunction. The court instead of realizing the nature of the right transgressed, appeared to view “equity” in a vacuum and fell back to the hoary notion that “injunctions are a most severe form” of equity.
The mistake simply was not paying attention to the nature of what the particular right being transgressed was all about.
Douglas Rettew… argu[es] that eBay should not apply in trademark cases, but rather that mark holders should have a presumption of injunction…
Of course there should be a presumption of an injunction following a finding of trademark infringement. Of course, there should also be a presumption of an injunction following a finding of patent infringement. Once again, the SCotUS swung and popped foul.
Careful there Greg, as you may be placed into a One Bucket…
Greg: Of course, there should also be a presumption of an injunction following a finding of patent infringement.
Because … why?
Please pardon potential (re)post:
Malcolm, your cognitive dissonance is noted.
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