Sunday, May 5, 2013

The End of The United Stated Patent and Trademark Agency?

Brand Ventures IP Law's Blog is back to weekly postings, and ideally, we will be cross-linking content with our other social media platforms (Brand Ventures IP Law's Facebook Page, Brand Venture's Twitter Feed, and the admittedly long overdue monthly release of the Brand Central IP Newsletter) to the point where we will soon look to have new content daily. 

As for recent reports that a New York law firm has taken the role as Plaintiff against the almost unanimously frustrating and oft despised entity known as the United Stated Patent and Trademark Agency, this news could only be described as welcome and long overdue; however, what is curious is the fact that over the US government by way of the USPTO or a class of defendants, it was a law firm that brought suit. 

Don't get me wrong, it has crossed my mind to do something to bring about the end to the companies beyond official looking solicitations and requests for fees from new trademark applicants, and I knew something would be done eventually, I just never imagined it would take a law firm itself to bring about an end to the frustration this entity brings without exception every time a client receives one of the notices seen above.  Once the logic of a law firm acting as Plaintiff set in, as they are arguably the party most harmed by the time wasted explaining the nature of the requests and to assure clients no response is necessary, I then began to wonder if a second action in California would help, and if so, if anybody knew a good affordable litigator.

The root of the problem exemplified and most notably practiced by the USPTA is with the free and unbridled access the public has to the information on the USPTO's TESS database, a useful and necessary tool that nonetheless is ripe for abuse from those looking for some angle to profit off of the information contained in an Applicant's public trademark application.  To provide a quick overview of the aforementioned practice, it is necessary to delve into the procedures involved with a US trademark application.

First, once an application is submitted to the USPTO, the information then becomes publicly viewable after a weeks time.  Given the access to the address, phone number and sometimes the email address of the Applicant, the USPTA sends out thousands of notices that appear to be a bill for services rendered, when in fact, the fine print will show it is actually a pre-populated invoice for the USPTA's trademark watching services.  Once a client sees that they apparently owe an additional $375 never before disclosed to them, a confused sometime upset client will call their attorney for an explanation, or if unrepresented, they will often place a call to the USPTO directly.

Invariably, these conversations begin and end with one general questions:  Do I owe more money for the trademark application you claimed was paid for in full?  Once the nature of the solicitation is explained, I typically feel compelled to reiterate the utility and purpose of some trademark watching service, although whether out of spite or an inherent distrust of any company who promotes themselves in this manner, I tend to recommend other companies if the client appears interested.  So, is this a scam that is a violation of trademark law itself, is this company preying off of the close proximity and association its name has with the USPTO?  Well, even if the DuPont factors led to a neutral finding, there is no getting around the most important and persuasive factor, which is that consumers are actually being confused, a fact that should make the finding of confusion much more plausible.

Now, having established that there could very well be a finding of confusion, which party has the ability or standing to bring such a claim? Is the USPTO the only party with such a right given its monopoly over the agency name that ironically is universally synonymous with US trademarks?  This it would seem will be a crucial part of the eventual analysis, but given the fact that the USPTO is well aware of the USPTA's activities, as demonstrated by the notices attached to filing receipts and in the information section of the USPTO's website, it is unclear whether the party most likely to have a claim for confusion is even interested in invoking itself in such a lawsuit.  This may be immaterial and the reason a law firm moved forward anyway, as the USPTO will undoubtedly be called as the key witness in the now ongoing lawsuit. 

That being said, with the number of calls the USPTO themselves have had to handle when pro se Applicants receive such letters, it is likely they will jump on this opportunity and inject themselves into this case in some meaningful way, but perhaps, they too are unsure of the strength of the claim that the USPTA's practices are on their face in violation of trademark, unfair competition statutes or other business torts that could be easily asserted but less easily proven.  Regardless of the eventual outcome, the publicity and threat of a judgment could have the intended effect without even reaching a final judgment, as the USPTA may deem their era of opportunistic role playing to have reached its inevitable end.  

While just another lawsuit to outsider onlookers, I know that the Plaintiff firm is likely enjoying a revered status at this years INTA.  Doing something many of us have thought necessary and many have been tempted by the prospect of, we may very well be close to being back to the days where client's are confused by the USPTO's own set of "hidden fees" and opaque procedures.  The days of transparency and clarity with respect to the examination of US trademarks may yet still be far far away, but at least hope can be had that if somebody is going to confuse applicants for trademark registrations, it will once again be a power back into the sole possession of the USPTO.  And yes, given the experience a practitioner can have with the sometimes questionable wisdom of the USPTO's own examination process, it is only fair that they do all they can to ensure that they themselves possess the power to create a system likely to confuse.