On January 8, 2022, the United States Patent and Trademark Office (“USPTO”) introduced identity verification for USPTO.gov account holders using the Trademark Electronic Application System (“TEAS”) and TEAS International (“TEASi”).  Starting April 9, 2022 identify verification will be required for USPTO.gov account holders to file through TEAS and TEASi.  The identify verification is part of the USPTO’s ongoing initiative to strengthen its security of the trademark filing process and protect the integrity of the U.S. trademark register.

Who is required to verify their identity?

You must verify your identify if you are a: 1) trademark owner or corporate office not represented by an attorney; 2) U.S. licensed attorney, including in-house counsel; or 3) Canadian attorney or agent.  You must be sponsored by a verified attorney if you are a: 1) paralegal; or 2) other support staff working for an attorney.  If the USPTO has previously verified your identity during the patent application process, you do not need to verify again, but may need to select a trademark filing role.

How to verify your identity?

You will verify your identity online through ID.me, which is a self-service system that should take less than 15 minutes (international customers will be routed to a Trusted Referee, in lieu of the self-service system).

You will need: 1) A smartphone, tablet or computer with a front-facing camera and internet connection; and 2) A government-issued photo ID with the name identical to the name on your USPTO account (if the name on your government-issued photo ID and USPTO account do not match, the name on your USPTO account will be automatically updated to match your government-issued photo ID).

ID.me will ask you for: 1) Your social security number (U.S. only); 2) Biometric data (in the form of a selfie and government-issued photo ID to verify your identity); and 3) Permission to access your credit profile (soft credit check).

Step-by-step:

  1. Log in to your USPTO account
  2. Confirm the name on your USPTO account matches your government-issued ID
  3. Go to the Trademark account ID verification page by selecting any TEAS form link
  4. Select your filing role in USPTO account (Trademark owner, U.S. licensed attorney, Canadian attorney/agent or Support staff member)
  5. Select “Verify with ID.me”
  6. Create ID.me account (or use an existing account)
  7. Verification: upload picture of government-issued ID and selfie
  8. Review information
  9. Click “Allow” so confirmation is shared with the USPTO

In the event that ID.me cannot verify your identity through the self-service, you may be prompted to continue in a short video call where you will be required to show your physical documents to a Trusted Referee.

This page addresses any issues you may encounter during the ID.me process.

Alternative: Paper Verification

If you prefer paper verification instead of online verification, you must download and complete the paper ID verification form, which is available here.  Present two forms of government-issued ID to a notary public to get your completed form notarized.  Once notarized, mail the original notarized form to:

Mail Stop EBC

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA 223313-1451

Note that paper verification can take up to two to three weeks of processing time.  More information regarding the paper verification process is available here.

What about sponsoring legal support staff?

Before using the sponsorship tool through MyUSPTO, attorneys must first be verified themselves and their to-be sponsored support staff must have their own USPTO account.  Through the sponsorship tool, attorneys can sponsor support staff, revoke/manage sponsorships, restore previously sponsored support staff and view sponsorship history.  Sponsored support staff can withdraw from sponsorship, request sponsorship for another support staff member and view sponsorship history.  The Trademark Sponsorship Tool Guide is available here.

Answers to common questions and additional information about the identity verification process is available here.

On December 18, 2021, regulations implementing the Trademark Modernization Act of 2020 went into effect.  According to the USPTO’s website, the changes provide individuals, businesses, and the USPTO with “new tools to clear away unused registered trademarks from the federal trademark register” and give the USPTO “the ability to move applications through the registration process more efficiently.”

Summaries of the new procedures and the changes to existing procedures are located on the USPTO’s website, and we previously blogged about them here and here. As a reminder, the final rule (available here) went into effect on December 18, 2021, except for the implementation of the shorter response period for Office Actions, which does not go into effect until December 1, 2022.  According to the USPTO, petitions requesting institution of proceedings for reexamination or expungement will be accepted on or after December 27, 2021.

On December 10, 2021, the TTAB issued a precedential decision reminding trademark practitioners and applicants that service mark use requires that an applicant actually render the services recited in the trademark application; mere preparation to render the services is insufficient.

Alessandra Suuberg filed a use-based application to register the mark HAVE SOME DECENCY in connection with various charitable services. The examining attorney refused the subject application on the ground that, while Suuberg had made preparatory measures to use the mark, she never actually rendered the services before her Section 1(a) filing date.

At the time of filing the subject application, Suuberg’s website indicated that she was not yet accepting donations and was looking for volunteers to “get our organization off the ground.” Opinion, at p. 4. Still, Suuberg argued that she had engaged in sufficient “use” of the service mark because she had (1) completed a post-baccalaureate premedical program, (2) incorporated a non-profit organization, (3) applied for tax exemption status, and (4) registered a domain name. Id., at p. 5.

The TTAB affirmed the non-use refusal, reminding Suuberg that, in a use-based application under Section 1(a) of the Lanham Act, the applicant must use the mark in commerce on or in connection with all the goods and services listed in the application as of the application filing date. Opinion, at pp. 2-3 (citing Couture v. Playdom, Inc., 778 F.3d 1379, 113 USPQ2d 2042, 2043 (Fed. Cir. 2015)). A mark is used in commerce “on services when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.” Id., at p. 3 (citing 15 U.S.C. § 1127) (emphasis added).

The Board ultimately found the Couture case instructive. Id., at p. 6. In Couture, the applicant had not rendered his entertainment services in commerce as of his filing date, but had merely advertised his “readiness, willingness and ability” to do so. Id. The United States Court of Appeals for the Federal Circuit held that “‘an applicant’s preparations to use a mark in commerce are insufficient to constitute use in commerce. Rather, the mark must be actually used in conjunction with the services described in the application for the mark.’” Id. (quoting Couture, 113 USPQ2d at 2042-43). The TTAB concluded that none of Suuberg’s “preparatory measures” constituted use in commerce. Accordingly, the Board deemed the application “void ab initio for non-use of the proposed mark in commerce on any of the recited services.” Id., at p. 9.

The case is In re Alessandro Suuberg, U.S. Trademark Application Serial No. 88234650 (TTAB Dec. 10, 2021).

In a decision issued last month, the National Advertising Division (“NAD”) determined that the use of emojis in an advertisement is enough to constitute a claim. Stokely-Van Camp, the manufacturer of Gatorade challenged four of BodyArmor’s express claims which were made in a social media post. In the video, Baker Mayfield, BodyArmor endorser and Cleveland Browns quarterback, does a blind “taste test” of four drinks. During the “taste test”, Mayfield samples three BodyArmor flavors and one containing Gatorade. Mayfield proudly identifies the BodyArmor flavors, but when faced with the Gatorade, he spits it out saying “Yo, that is not cool. That’s awful.” At the same time, the green nauseated face emoji and face with tears of joy emoji appear on the screen.

Stokely challenged the advertisement as falsely disparaging under the Fast-Track SWIFT process with the NAD. The four express claims included: (1) Gatorade is “awful”; (2) having to drink Gatorade is “not cool”; (3) Gatorade is nauseating (as depicted via nauseated emoji); and (4) people spit Gatorade out after drinking it. BodyArmor argued that emojis are subjective and open to interpretation, but the NAD disagreed stating that emojis are commonly substituted for written word in “contemporary communications and some emojis more clearly communicate feelings or emotions than others.” The NAD further concluded that appearance of the emojis coupled with Mayfield’s reaction conveyed a negative message about Gatorade. After the NAD recommended that BodyArmor discontinue the express claims made in the video. BodyArmor removed the post from its social media pages. Read more about this decision in the press release here.

Congress is now taking steps to beef-up cyber security regulations at the federal level.  The Senate introduced a bill titled the “Cyber Incident Reporting Act of 2021,” which requires covered entities—meaning an entity that owns or operates critical infrastructure—to promptly report cyber security breaches to a Cyber Incident Review Office, which then receives, aggregates, and analyzes the incident.  The proposed legislation also mandates that covered entities, and business with more than fifty employees, report ransomware payments no later than twenty-four hours after the payment has been made.  While the final iteration of the bill has yet to take shape, it is a safe bet that some cyber security legislation will become law in the near future.  Given the pervasiveness of cyberattacks, it is important that businesses keep current on these regulatory developments.  Stay tuned.

As Fall comes to an end and we’ve consumed enough pumpkin pie to last us until next year, we remind you of the pumpkin vs. squash advertising debate that is more mind-boggling than what Grandma brought to your Thanksgiving feast.

To wit, canned pumpkin is not always canned pumpkin.  Canned pumpkin is sometimes packed from field pumpkin, sometimes packed from certain varieties of squash, and sometimes packed from a mixture of the two.  Since 1938, the Federal Trade Commission (FTC) has advised canners that it will not enforce the use of “pumpkin” or “canned pumpkin” for products that consist of certain varieties of squash alone or mixed with field pumpkin. In its Compliance Policy Guide, the FTC states, “In the absence of any evidence that this designation misleads or deceives consumers we see no reason to change this policy.”

More legally speaking (for those inclined following Turkey Coma Day), the FTC explains that it considers “the designation ‘pumpkin’ to be in essential compliance with the ‘common or usual name’ requirements of sections 403(i)(l) and 403(i)(2) of the Federal Food, Drug, and Cosmetic Act, and the ‘specifying of identity’ required by section 1453(a)(1) of the Fair Packaging and Labeling Act.”  Whatever that really means, we’re all happy that canned pumpkin tastes like it does so we can get our once-a-year fix.  Happy Thanksgiving weekend everyone.

Today, the USPTO issued regulations implementing the provisions of the Trademark Modernization Act of 2020 (“TMA”).  The Regulations can be found here.

Practitioners should review the Regulations as soon as possible to familiarize themselves with the new Rules.  Practitioners should take notice that the majority of the of the provisions take effect December 18, 2021.  However, a handful of provisions, such as those relating to flexible periods to respond to office actions, will not take effect until December 1, 2022.

Earlier this month, the Federal Trade Commission (FTC) announced that it is now using its Penalty Offense Authority to remind companies not to use fake online reviews or other deceptive endorsements and that stiff penalties (up to $43,792 per violation) will apply if they do.

The FTC sent a Notice of Penalty Offenses letter to a list of over 700 companies, which the FTC described as “an array of large companies, top advertisers, leading retailers, top consumer product companies, and major advertising agencies,” but also noted was not an indication that any company has engaged in unlawful conduct.  The Notice provides a reminder not to use a number of practices, such as:

  • Falsely claiming an endorsement by a third party.
  • Misrepresenting whether an endorser is an actual, current, or  recent user.
  • Using an endorsement to make deceptive performance claims.
  • Failing to disclose an unexpected material connection with an endorser.
  • Misrepresenting that the experience of endorsers represents consumers’ typical or ordinary experience.

As a reminder, under Section 5 of the FTC Act, which prohibits deceptive advertising, the FTC conducts investigations and can bring cases involving endorsements.  The FTC also publishes Endorsement Guides to provide guidance to companies that use endorsements to advertise their products/services.

The U.S. Copyright Office (“USCO”) is expanding the right to repair digital devices via exemptions to the Digital Millennium Copyright Act (“DMCA”)’s rules governing access to devices and software, which includes automobiles and medical devices.  Enacted in 1998, the DMCA works to prohibit people from circumventing technological measures used by copyright owners to control access to protected works.  Essentially, the purpose of the law is to protect digital works from piracy.

The USCO’s move comes after years of complaints from consumers that products have a limited lifespan and are typically more expensive to repair than purchasing a new product, which is not only expensive for consumers, but creates waste from the growing number of unused products.  At the same time, manufacturers contend that they are now more limited in protecting their ownership rights, including employing the use of anti-jailbreaking features, and there is a concern that consumers might be able to access proprietary information more easily.

The USCO recommends “anti-circumvention” exemptions every three years, so we will likely see developments on the right to repair well into the future as our society becomes more and more dependent on technology.  The USCO’s recommendation can be found here.

All TTAB practitioners are familiar with the heightened standard of proof required to prove fraud before the USPTO.  However, many forget that proving an intent to deceive the USPTO, not the falsity of the statement or its materiality, is the lynchpin of every fraud claim.  In a recent decision, the TTAB reminded practitioners of this critical fact.

Petitioner Jason Green commenced a cancellation proceeding against a registration for the mark OMNI BIOTIC for food supplements, claiming priority and likelihood of confusion with his common law mark OMNIBIOTICS for supplements.  Green also asserted a fraud claim against Respondent based on Green’s allegation that Respondent did not have a bona fide intent to use the OMNI BIOTIC mark when it filed its Section 66(a) application that matured into the subject registration.

The TTAB dismissed Green’s likelihood of confusion claim finding that he failed to show, by a preponderance of the evidence, that he used his OMNIBIOTICS mark in the United States before Respondent used its OMNI BIOTIC mark in the United States.  The TTAB further ruled that, although minimal, Respondent’s sales in the United States were sufficient to establish priority.

The TTAB similarly found Green’s fraud claim deficient.  To show fraud, Green needed to prove that (1) Respondent made a false representation to the USPTO, (2) the false representation was material to the registrability of the subject mark, (3) Respondent had knowledge of the falsity of the representation, and (4) Respondent made the representation with intent to deceive the USPTO.  Decision, at p. 40.

Green alleged that Respondent had perpetrated a fraud on the USPTO because it introduced “no documentary evidence to show any intention of [sic] plans for using its mark in the United States at the time of filing the OMNI BIOTIC mark.”  Id., at p. 41.  The TTAB discounted this argument, noting, at the outset, that it did not need to decide whether Respondent had a bona fide intent because “that is not the claim before us.”  To the contrary, Green asserted fraud.  Accordingly, the TTAB held, “[E]ven if Respondent materially misrepresented to the USPTO that it had a bona fide intention to use the mark in commerce, Petitioner must show that the false representation was made with a ‘knowing intent to deceive.’”  Id., at p. 42 (emphasis added).

The TTAB dismissed Green’s fraud claim, finding he made no effort to establish that Respondent had a “knowing intent to deceive.”  Id.  Instead, he simply assumed the existence of such intent based on the fact that Respondent purportedly made “knowingly false material representations of fact.”  Id.  The TTAB concluded: “Absent proof of the requisite intent to mislead the PTO, ‘even a material misrepresentation would not qualify as fraud under the Lanham Act.’” Id. at p. 43.

Takeaway:  Proof of a knowingly false material representation of fact is not enough to prove fraud; petitioner must present sufficient evidence to establish that respondent made the knowing and false representation for the express purpose of deceiving the USPTO.

The decision is Jason Green v. Institut Allergosan Pharmazeutische Produkte Forschungs-und Vertriebs GmbH, Cancellation No. 92069600 (TTAB Sept. 1, 2021) (non-precedential).