A Strategy for Countering Fraudulent Trademark Registrations at the Patent and Trademark Office

Authors: Barton Beebe & Jeanne Fromer


Summary 


The Biden Administration should enhance the efforts of the U.S. Patent and Trademark Office (PTO) to defend against fraudulent trademark registrations. Since 2015, the PTO has struggled to cope with a rising flood of fraudulent trademark applications originating mainly from China. One study indicates that as many as two-thirds of Chinese trademark applications for certain classes of goods include falsified evidence that the applicant is using the mark in commerce in the United States — a requirement for trademark registration under U.S. law. High proportions (up to 40%) of these fraudulent applications survive the PTO’s application-review process and result in fraudulent trademark registrations.


Urgent action is necessary. The PTO reports that the trademark application rate has recently surged to extreme levels, which has doubled the number of applications awaiting examination. Many of these applications likely contain fraudulent claims of use. Identifying and denying fraudulent claims will help ensure that only those businesses that are actually using their trademarks in U.S. commerce benefit from the U.S. trademark system. In addition to creating a fair playing field for companies (both American and foreign) that abide by the rules, countering fraudulent trademark registrations will support American economic recovery from the COVID-19 pandemic by providing small businesses with robust protection for brand names of new products.


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About the Authors


Barton Beebe is the John M. Desmarais Professor of Intellectual Property Law at NYU School of Law and a Co-Director of the Engelberg Center on Innovation Law & Policy at NYU. He is the author of Trademark Law: An Open-Source Casebook, a free digital trademark law textbook now in use by over sixty law schools around the world. He testified before the U.S. Senate regarding fraudulent trademark applications in connection with the Trademark Modernization Act of 2020.



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Jeanne Fromer is a Professor of Law at New York University School of Law and a faculty co-director of the Engelberg Center on Innovation Law & Policy. She is the co-author, with Chris Sprigman, of the free copyright textbook Copyright Law: Cases and Materials, which is in use by over 50 law schools around the world. She testified before the U.S. House of Representatives regarding trademark depletion and fraud in connection with the Trademark Modernization Act of 2020.