Is someone tampering with your US trademark registrations?

Erik Pelton

Erik Pelton

One of the smartest trademark practitioners in the US is Erik Pelton.  Erik regularly shares his knowledge and experience on the E-Trademarks listserv and on his blog.  He is a long-standing sponsor of Meet the Bloggers.  Here is something that he posted on the listserv the other day:

I recently came across a peculiar situation for the first time:  a person not affiliated with Applicant filed a correspondence change with the USPTO via TEAS. The only change was to add an additional email address to the record. They did this just before the registration issued.

My guess is that they were trying to game the Amazon Brand Registry system, which I believe automatically generates a link sent to the trademark registration email address(es) of record when creating a new account.

I filed via TEAS to change the correspondence to remove the email; and then the same email address was used to do it a second time. To add to the issue, the email address used is from a secure private email domain (tutanota.com).

My client and I have reached out the USPTO (who has responded quickly, I am pleased to share!) and to Amazon to warn them about this. I suspect it has happened to others who may not be aware.

If anyone has any additional information or experience about this issue, please share.

I had never heard of this until Erik posted this to the listserv.  Prompted by Erik’s posting I surfed around a bit to try to learn what might be going on.  I actually signed up for the Amazon Brand Registry and I can confirm that the trademark hijacking risk that Erik described does exist.  Here is what I learned.

To appreciate the trademark hijacking risk, it is necessary first to understand how Amazon Brand Registry (ABR) works.  ABR is a system by which a trademark owner can prove to Amazon that the owner is indeed the owner.  Having done so, the owner can use a variety of computerized mechanisms within Amazon to take down listings of infringing products.  The owner may likewise use the ABR status to fight off attempts by third parties to take down one’s own listings of legitimate products.  ABR is likely to help stamp out counterfeits and other trademark infringements.

If you are a trademark owner, how do you prove to Amazon that you are the trademark owner?  In the case of a US trademark registration, the approach that Amazon has selected is quite interesting.  You create an account in ABR, and you tell ABR the registration number of your trademark registration.  ABR then looks up your registration in the USPTO TSDR system and makes note of the email address listed in TSDR for your registration.  ABR then sends an email with a Secret Code Number to that email address.  You receive the email with the Secret Code Number and you log in at ABR and tell ABR the Secret Code Number.  At this point ABR knows that you are indeed the owner of that US trademark registration.  You can use your ABR status to fight off wrongful attempts to take down your own listings.  You can use your ABR status to take down listings of infringing products.

Prompted by Erik’s posting, I actually registered “Oppedahl Patent Law Firm LLC” with ABR.  One step in this process was to tell ABR the registration number for our trademark registration for this mark.  ABR then emailed us a Secret Code Number which I then provided back to ABR.  And now we can shut down listings on Amazon that make unauthorized use of “Oppedahl Patent Law Firm LLC”.

The alert reader will realize that ABR is indeed a very powerful new kind of intellectual property right.  For decades it has been well established that smart trademark owners need to register their trademarks with trademark offices around the world.  Likewise it has become well established that trademark owners need to snap up matching Internet domain names.  Some trademark owners have learned to register their marks with US Customs.  And now, in 2017, it is smart to register your trademark rights in ABR.

A potential investor, doing due diligence for a potential investment in a startup company that makes goods sold on Amazon, will now have yet another item on its due-diligence checklist.  Has the startup company registered its trademarks?  Check.  Does it own the matching Internet domain name?  Check.  Registered with US Customs?  Check.  Has it registered its trademarks in Amazon Brand Registry?  Check?

Which brings us back around to what I learned from Erik Pelton last week.  Erik’s client had run into a situation where some third party had filed a TEAS form (the USPTO’s electronic filing system for trademarks) to update the email address listed in TSDR for the client’s trademark registration.  The third party was then able to intercept the Secret Code Number from ABR, and was thus able to gain rights in the ABR system.

The trademark owner was fortunate to have Erik as its trademark lawyer, because Erik was able to figure out what was going on.  Erik contacted Amazon and the USPTO and got things straightened out.

But how many trademark owners are there who might not notice it if a sneaky third party were to file a TEAS form to tamper with the contact email address for a US trademark registration?

The clear action step is for USPTO to add a simple business process rule for updates to email addresses in TSDR records.  When an update occurs, USPTO absolutely must send an email (and a piece of paper mail) to the old TSDR email address and to the old paper mail address.  This would then tip off a trademark owner if a sneaky person is trying to tamper with the TSDR records, for example as a way of intercepting a Secret Code Number as part of an ABR registration process.

We all owe a word of thanks to Erik for sharing what he figured out about ABR and sneaky people hijacking TSDR records.

And we all need to start educating our trademark clients about the possible benefits of registering in the ABR system.

And the USPTO needs to add the business process rules that I just described.

Please post a comment below.

 

7 thoughts on “Is someone tampering with your US trademark registrations?

  1. If managing licensed registrations for a non-US registrants, I would note that you also need to pay attention to licensees attempting to use the ABR in place of the licensor. In addition to the due diligence consideration, control over the ABR listing should be addressed in licensing agreement in the same vein as registration of related domain name and social media accounts.

  2. Ms. Tanya Amos, Managing Attorney at TEAS, has been contacting individuals who have had representative or correspondence email addresses recently changed to an address from tutanota.com. In our case, the persons trying to game ABR kept the current attorney of record and correspondent, but changed the physical address and the email address. This avoids the requirement for a power of attorney and potential scrutiny that could come from identifying a new attorney or correspondent.

    I have since set up dockets with email alerts for status changes on the MyUSPTO site. I then updated our correspondence address in a docketed registration where it was out of date as a test. However, I did not receive an email notification for this change of correspondence address. Apparently changes of correspondence address are not considered status updates that warrant email notification through MyUSPTO’s docket system. I have left a message for Ms. Amos regarding the lack of alerts for changes of correspondence address.

  3. This is another powerful reason to update Feathers every day! Any email change will show up immediately and if you didn’t file it red flags will be flying! Thanks Carl & Erik!

  4. I’ll comment that your blog describes the ABR process well except that it assumes the trademark registrant is the correspondent of record in the USPTO for the registration. That was obviously your firm’s situation and likely the situation for any large company that manages its trademark portfolio in-house. However, and I think your blog implies this but I’ll state it more explicitly, many of us outside IP counsel are the attorneys of record on these registrations for our clients and it is our or our firm’s (or our firm’s docketing) e-mail listed in the TSDR database for the registration. Oftentimes, we may not even be aware of what is going on with our client’s registrations if there is no observed infringement, transactional matters or Section 8/9 declarations due in the registration and then out of the blue, we receive an e-mail from Amazon.com with a code for an ABR registration. Usually, the client initiated the ABR registration process and notifies us about receiving the code. But without that notification from the client, many of us (like our Docketing departments) who are not familiar with the ABR might think the ABR e-mail from Amazon is phishing. And this incident that Erik experienced highlights the danger of the USPTO not notifying the registrant (or its counsel) that anything was changed in the registration record given that we are usually tending to just the registered marks that require our attention because of our client’s request or a docketed item.
    Also, I second Kenneth’s remark about licensees’ use of the ABR, especially with a non-U.S. registrant. We have a non-US registrant client that was experiencing quite a mess allowing a licensee to register the mark with the ABR.

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