Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses

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.

48 thoughts on “Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses

  1. 10

    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.

    1. 10.1

      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?

      1. 10.1.1

        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.

        1. 10.1.1.1

          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?

          1. 10.1.1.1.1

            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?

          2. 10.1.1.1.2

            “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?

            1. 10.1.1.1.2.1

              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.

      2. 10.1.2

        … 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.

  2. 9

    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.

  3. 8

    If a practitioner behaved toward the PTO in the manner in which Pwezident R@-ping R@-c-i-s-t Ay-h0le behaves on a daily basis, what would happen to that practitioner?

    I’d like to hear from the very serious Repu-k-k-k-e patent attorneys out there. I know you’re out there. And you’re very serious people. Totally not just greedy p-i-g-s who will do and say anything to line your wallets.

    Step up. Dennis won’t mind. Heck, he has a strange fondness for your type.

    1. 8.1

      Find
      An
      Appropriate
      Forum

      for your rants. A patent law forum is NOT that forum.

      1. 8.1.1

        In fact, Bildo, *any* forum where glibertarian/Repu-k-k-k-e attorneys are shrieking about “the rule of law” out of one side of their mouths and also trying to maximize profits for “owners” of “intellectual property” is an appropriate forum to ask these questions.

        It’s not surprising that you wouldn’t want these questions to be asked, of course, since you and your maximalist cohorts are mostly glibertarian/Repu-k-k-k-es and these questions put you in a rather awkward position.

        I am never going to stop asking these questions, by the way. And I’m never going to let you or your hypocritical friends off the hook.

        Silence is complicity. You should be ashamed and crawl back under your rock and s-u-ck the moisture of your wet di-a-pers, or you should stand up and answer the questions like a big boy. Your choice, Bildo. Life is all about choices.

        1. 8.1.1.1

          A patent law forum is not the appropriate forum.

          This should be clear to you, given the number of your off-topic rants that have been expunged.

          But you just don’t care about anything other than your own feelings.

          How Trump of you.

    2. 8.2

      Step up. Dennis won’t mind.

      That’s either an outlandish
      L
      I
      E
      on your part (saying something you know to be untrue given your record number of posts being expunged),

      or,

      you are (again) exhibiting a Trump level of lack of self-awareness,

      or,

      you just don’t care about anything except your own feelings (another Trump characteristic),

      or,

      some combination of these things.

      In any event, your blight is noted.

    3. 8.3

      If there was ever an argument for moderating comments, Patently-O has been it for the last ten years at least.

      1. 8.3.1

        No doubt! But for whatever reason, Dennis has decided to let Bildo and his maximalist l-y-ing t-0-0-ls and hypocrites continue to post here.

        Not only that, but even blatant neo-N@-zi sh-tb@gs like 6 are allowed to “contribute” their super serious views.

        But the worst thing ever, of course, is for a patent attorney to comment on the psych-0-p@th in the oval office who appoints the PTO Director, or to comment on the unrepentant bags of d-0-g-s—t who voted for Mango knowing full well what kind of diseased s-i-c-k-0 he was and is. It’s just so uncivil to do that! Why, we should all just be able to get along and let bygones be bygones. Right?

        LOL

      2. 8.3.2

        You must not get around the Internet much.

        1. 8.3.2.1

          … leave it to Ben “Upvote anything from Malcolm” to show support for Malcolm here.

      3. 8.3.3

        id,

        During a “let’s be nice” blog post and exchange a little while back, it was shown that Malcolm has been the same type of blight for what will be 15 years this coming February 2020.

        It is worth noting that Malcolm “proclaims” that he will never stop his abuse of this forum with non-patent law rants.

        This is on top of the fact that he has had more posts expunged than any other poster, ever.

        This is on top of the fact that he has had more posts expunged than ALL other posters combined.

        He has made it abundantly clear that he views his own wants and feelings to be unassailable and that any forum he chooses to rant on is (in his mind) an appropriate forum.

        This is with entire disregard of any actual thread topic.

  4. 7

    Patent maximalist commenters here have repeatedly asserted that it is impossible to prove what someone is thinking.

    Therefore “intent” can’t be proven.

    As noted above, this view appears to be held by nearly every Repu-k-k-k-e legislator in Congress as well. Is the Pwezident a path-0-l0gical li-@r and con artist? Golly, it’s just impossible to say if there is an (R) after your name.

    Right? Am I missing something? Step up all of you self-important patent commenters who always pretend to be super concerned about the “rule of law” (LOL), consistency, etc. You’re very serious people, after all!

    I’d especially like to hear from admitted Repu-k-k-k-e voters. We all know you’re out there. Afraid of something? LOL

    1. 7.1

      You are clearly missing that this a patent law forum.

      You want to take issue with “shrieking about the Rule of Law”…? Do so in a patent law context.

      I do note that for the amount of NON patent law rants that you engage in, there is an inverse shortage of substantive, cogent, inte11ectually honest counter points to the “shrieking” that you seem to want to take issue with.

      But that surprises no one, given as Malcolm is just being Malcolm.

  5. 6

    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.

    1. 6.1

      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).

  6. 5

    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.

    1. 5.1

      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.

      1. 5.1.1

        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.

        1. 5.1.1.1

          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.

        2. 5.1.1.2

          … would also be interested in your response to Blindman’s posts at 6. and 6.1.

        3. 5.1.1.3

          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.

      2. 5.1.2

        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.

        1. 5.1.2.1

          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?

    2. 5.2

      Patent maximalist commenters here have repeatedly asserted that it is impossible to prove what someone is thinking.

      Therefore “intent” can’t be proven.

      As noted above, this view appears to be held by nearly every Repu-k-k-k-e legislator in Congress as well.

      Right? Am I missing something? Step up, oh serious people.

      1. 5.2.1

        Your strawman is noted.

        1. 5.2.1.1

          Where are these notes of yours. Cite?

          1. 5.2.1.1.1

            notes….?

            Did you mean to ask Malcolm to back up his strawman (instead of trying to play another “gotcha” game with me)…?

        1. 5.2.2.1

          Dennis, your resident Proud Boy left his plastic blow-up doll unattended long enough to read an article in the New York Post.

          Maybe it’s time to warm up another bottle for him?

          Or better yet: introduce your kids to him. Why not? He has so much to teach people.

          1. 5.2.2.1.1

            According to the article: “She said women on the pill are attracted to less masculine men and are less interested in sex.”

            You got a problem with that?

  7. 3

    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.

    1. 3.1

      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.

      1. 3.1.1

        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.

  8. 2

    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.

    1. 2.1

      Careful there Greg, as you may be placed into a One Bucket…

    2. 2.2

      Greg: Of course, there should also be a presumption of an injunction following a finding of patent infringement.

      Because … why?

      1. 2.2.1

        Please pardon potential (re)post:

        Malcolm, your cognitive dissonance is noted.

  9. 1

    “Fraudulent” is subjective, no? You can’t really prove it. It’s like “lying”, in that respect. Or so it appears to Repu-k-k-k-es.

    Right? Am I missing something?

    Presumably this is a purely Democratic Party initiative since there aren’t any Republicans in the Senate that care about “lying”. At least not when there’s a Repu-k-k-e Pwezident.

    Right? Am I missing something?

    Maybe one of the very serious Repu-k-k-k-e patent attorneys out there can explain this better.

    1. 1.1

      Stultifying – considering the source of the above comment.

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